Alex Kelham, Farisha Constable
When it was announced that London had been successful in its bid to host the 2012 Olympic Games Farrer & Co solicitor Alex Kelham (pictured, on left), just back from secondment with the British Olympic Association, was eager to be involved.
“I’d got the bug and wanted to work in sport; this was too big an opportunity to miss,” she says. “It’s incredibly interesting work. I don’t really want to be saying ’no’ to everyone every day, but hopefully the way we manage it means everyone understands what we’re about.”
Farisha Constable (pictured, on right), Kelham’s fellow senior brand protection lawyer at the London Organising Committee of the Olympic Games and Paralympic Games (Locog), the company running London 2012, agrees.
“When someone says ’Do you want the job to protect the most valuable and recognisable brand in the world?’ it’s not something you turn down,” she says.
Rings for attention
Kelham and Constable head a team of two junior lawyers and various interns plus seconded solicitors tasked with protecting the London 2012 brand by curbing infringements and educating the wider public about why protecting the Games’ IP is so important.
The two lawyers’ enthusiasm is evident even though, as Kelham concedes, they spend much of their time telling people to stop using the logo and Olympic rings illegally.
“We have to raise £2bn to host the games and we need to raise that privately,” says Constable. “Some comes from tickets and broadcasting rights, but a huge chunk is from licensing our brand, so it needs to be well-protected and our rights enforced.
“We can’t do anything that would seem to undermine or dilute our brand, and it’s from these principles that everything else follows.”
IP infringements are brought to their attention by members of the public, sponsors and suppliers, as well as an internal monitoring service. Constable claims that often, people simply do not understand that they can’t use the brand without official permission or for free, and stop once this has been explained to them.
“Our response is always pragmatic and proper,” she says. “I know there’s a perception we’re heavy-handed, but 90 per cent of infringements start with a telephone call. We seek to resolve matters amicably where we can.
“We’re not protecting dividends for shareholders, and a lot of our time goes into educating people about that. On the whole, they understand.”
Once an infringement has been established a letter is sent asking the person or company to sign an undertaking to stop using the brand illegally. If they do not, Kelham and Constable seek damages and potentially take legal action. They have not yet been to court, although Constable says they have been “to the doors”.
Damages have been sought in numerous cases. The team calculates them by establishing what it would have cost if the activity had been carried out legally. They take advice on the amount, and other IP matters, from Freshfields Bruckhaus Deringer. The City firm is a sponsor and provides advice for free.
Constable estimates that the number of infringements they have pursued so far is “in the hundreds”.
“Barely a day goes by when something new doesn’t end up on my desk,” adds Kelham.
Although Locog, like all companies, can use the civil courts to pursue IP infringements, Kelham and Constable also have criminal routes open to them, thanks to the Olympic Symbol etc (Protection) Act 1995 and the London Olympics and Paralympics Games Act 2006, which Kelham worked on at Farrer.
Three infringements have been criminalised: counterfeit goods; ticket touting; and infringement of advertising and street trading at the site
of the Games.
The 2006 act states that there must be regulations that restrict advertising and street trading around Games sites. That legislation is being drafted and is expected to come before Parliament by the end of this year.
Just the ticket
In the case of ticket touting, the Olympic Games and football are the only two sports events where it is a criminal offence to sell tickets on the open market without the express consent of the rights holder.
When Kelham and Constable come across intelligence of potential ticket touting or counterfeit goods, they pass it on to the relevant criminal body. But they can and do also pursue civil options – to seek an immediate injunction, for example, or for damages. Decisions as to what route to pursue are taken on a case-by-case basis.
The 2006 act is proving an invaluable tool in the defence of IP rights. “The act prevents people creating an association with the Games,” says Kelham. “They may do this by using our IP – our logo, for example – in which case the act is useful, but we’d probably also be able to rely on trademark and copyright infringement. The act protects against more than just misuse of IP, it prevents the creation of an association however it is done.”
Schedule 4, for example, is designed to prevent ambush marketing whereby companies try to use an event to their advantage without paying sponsorship fees. Examples could include using the logo without permission but also publicity stunts: the group of young women who turned up at a match during last year’s FIFA World Cup decked out in bright orange tops provided by a drinks company is one example.
Illegal activity is expected to increase from here on in. The first milestone will be when tickets go on sale this month (March).
“It’s inevitable,” says Kelham. “As the Games get nearer there will be more people using the brand, often not even realising we have IP rights in place. That’s why education is key. It’s vital.”