Poonam Majithia, trainee solicitor at CMS, discusses how successful FIFA and its sponsors were at protecting their brands during the recent world cup in Law in Sport.
How successful were FIFA and its sponsors at protecting their brands during the World Cup?
This article reflects on how successful FIFA and its sponsors were at protecting their brands during this year’s FIFA World Cup. It also looks at the extent to which non-sponsors were able to mobilise the online population behind their clever campaigns.
In what was dubbed the first proper social media World Cup by The International News Media Association (INMA), observers were keen to see how successful FIFA’s ever-vigilant rights protection strategy would be in relation to its most valuable assets, its intellectual property, especially in light of the explosion in social media coverage. It is worth noting that FIFA’s IP Manual solemnly declared that “FIFA’s official logos, symbols and other graphic trade marks may not be used on any social media platform”.
FIFA had already made its intentions clear prior to the start of the tournament by filing numerous trade mark registrations and getting the Brazilian government to include stringent measures against ambush marketing in the Lei Geral da Copa (the “World Cup Law”). Given that research from June 2014 indicated that nearly 40% of UK, US and Brazilian consumers wrongly believed that Nike, MasterCard and Pepsi were official World Cup sponsors, FIFA’s concerns could perhaps be seen as somewhat understandable.
At the same time the influence of smartphones and social media is stronger than ever. Even before the tournament started, the World Cup had already been mentioned approximately 10 million times on Twitter this year. The Nike commercial for this year’s event has been viewed a staggering 86 million times on YouTube. In comparison, the commercial for the 2010 World Cup has 4.6 million views. As football fans share ads, videos and thoughts online, these digital channels have the power to reach more people quicker than ever and make anything go viral. As an example, with 35.6 million tweets, the semi-final between Brazil and Germany is the most-discussed single sports game ever on Twitter. Facebook also claimed that the event created an unprecedented level of activity on the platform with a total of 3.6 billion interactions.
This growth in digital and social media has given non-sponsors a chance to capitalise on the World Cup; as of 6 June, only 6 of the 11 most shared football ads online were from official sponsors.
The exclusive sponsorship model
FIFA finances its World Cup organisational activities with capital raised from the exploitation of its exclusive World Cup IP rights, auctioning their use to commercial sponsors, who in turn exploit them in advertising and event association. Sponsorship can be a powerful tool that brings unrivalled exposure. For example, as the official credit card sponsor Visa benefitted from millions of credit card transactions as all purchases of World Cup tickets had to be made using a Visa card. Similarly, Budweiser had exclusive pouring rights at stadiums.
A threat to this exclusive sponsorship model comes from ambush marketing whereby companies that have not paid sponsorship fees use advertising in an attempt to associate themselves with the event, potentially confusing consumers into believing that they have been endorsed by FIFA. This undermines the involvement and brand value of official sponsors and may deter them from sponsoring the World Cup in the future. FIFA are therefore always keen to ensure that adequate measures were put in place to curb ambush marketing and protect their sponsors’ rights.
Solid defending – using intellectual property rights
FIFA has around 13,000 trade marks registered worldwide to protect against the unauthorised use of identical or similar marks. In Brazil alone, FIFA has around 1,116 trade marks, 400 of which were registered after the World Cup Law came into force. The organisation faced criticism for registering trade marks for a number of terms considered to be too generic or descriptive. Examples include “BRASIL 2014”, “COPA DO MUNDO” (the Portuguese for World Cup) and “FOOTBALL WORLD CUP” as well as the name of each host city with “2014” such as “RIO 2014” and “FORTALEZA 2014”.
FIFA has even registered the term “WORLD CUP” in many jurisdictions albeit for a narrow class of goods; for example, in the UK the registration covers only football boots and clothing. Nevertheless the term “BRAZIL 2014” was successfully registered as a Community Trade Mark for a wide range of classes. Such wide protection can potentially catch many businesses out, including those that did not intentionally attempt to associate themselves with the World Cup.
As well as trade marks, FIFA filed numerous design registrations for the World Cup trophy, mascots and posters, including the representation of the official mascot’s habitat known as the “Official Look Element”. In some jurisdictions, FIFA is also able to rely on unregistered IP rights. In the UK for example, passing off prevents a company from associating its goods or services with the goodwill of another by misleading consumers into believing that there is a connection between the two.
FIFA also published the “FIFA Public Guidelines for use of FIFA’s Official Marks”, a non legally-binding Manual which outlined FIFA’s position on the use of its IP for the 2014 World Cup and claimed “to assist third parties who wish to avoid any unauthorised association with the tournament”. The Manual permitted general football-themed and Brazil-themed advertising but deemed explicit reference to the World Cup or the use of the year “2014” with such advertising to be unauthorised. A comparison with the Manual published for the 2010 World Cup indicates that FIFA had since widened its scope of protection. For instance, unlike in the 2014 Manual, FIFA did not include any host city names in its trade marks in 2010 and did not expressly state that the use of its marks on social media and mobile applications is unauthorised.
One of the ads caught infringing FIFA’s IP rights in the run up to the World Cup was Brazilian travel company Decolar, which ran a campaign with the tagline “Viva o Mundial”. The term “MUNDIAL”, which means World Cup in Portuguese, is another trade mark registered by FIFA. FIFA argued that as the company were promoting travel packages specifically to host cities, which could therefore be considered to be “World Cup travel packages”, and they used the term “MUNDIAL”, infringing FIFA’s trade mark, consumers would think that they were endorsed by FIFA when this was not the case. FIFA asked Decolar to cease and desist immediately, which it did.
In practice, FIFA sent cease and desist letters, including takedown requests to Twitter users infringing its IP rights. It also requested the assistance of the Instituto Nacional de Propriedade Intelectual (“INPI”), Brazil’s Intellectual Property office, and the Conselho Nacional de Combate a Pirataria e Delitos contra a Propriedade Intelectual (“CNCP”), a body whose powers derive from the Ministry of Justice. The CNCP signed agreements with the 12 host city municipal governments to give them the power to identify and confiscate infringing articles; in the four World Cup group games at the Maracanã, the CHCP confiscated 274 items considered to infringe the rights of FIFA and its sponsors.
Legislative goalkeeping – the World Cup Law
Under Brazil’s Pelé Law (Law no. 9.615/98), the names and logos of sports organisations and athletes are owned exclusively by them and do not need to be registered for those organisations or athletes to benefit from the requisite legal protection. Moreover, under Brazil’s Industrial Property Law (Law no. 9.279/96), it is not possible to register the name, logo or prize of a sporting event, or imitations likely to cause confusion, unless authorised by the relevant competent authority or entity promoting the event.
FIFA and its sponsors managed to gain further brand protection under Brazil’s World Cup Law, the provisions of which went beyond the protection already provided under Brazilian law as outlined above. As well as including express provisions obliging INPI to assist FIFA in protecting its IP, the Law, which applied to all businesses targeting the Brazilian market, included an express definition of “ambush marketing” which had previously not been determined under Brazilian IP law.
The World Cup Law recognised two types of “ambush marketing”; marketing by intrusion, a more direct method, which is easier to recognise and police, and marketing by association. The Law defined ambush marketing by association as “the use of marks, products or services, with the aim of taking economic advantage or gaining publicity, by directly or indirectly creating an association with the World Cup or FIFA’s Official Marks without FIFA’s authorisation, which induces others to believe that the marks, products or services in question are approved, authorised or endorsed by FIFA”.
The key element in this definition is that the infringing products or services would mislead consumers into thinking that there is an authorised link with FIFA. However, the non-legally binding guidance on FIFA’s website went further and stated that FIFA considered marketing activities “which try to take advantage of the huge interest and high profile of an event by creating a commercial association and/or seeking promotional exposure” without authorisation to be prohibited regardless of whether it misleads consumers. The Law also introduced both civil and criminal penalties (up to one years’ imprisonment) for non-compliance.
One of the companies currently being investigated for ambush marketing under the Law is Blue Man, a Brazilian beachwear brand. The brand caught FIFA’s attention when Brazil’s star striker Neymar was pictured wearing Blue Man boxers under his Brazil shorts during the Brazil vs Cameroon game, an image that was shared numerous times on social media. Rather than affect the brand negatively, FIFA’s reaction added to the growing publicity around it; the brand claimed that it experienced a 25% increase in sales of the boxers in question after the incident.
Although it is not yet known whether Blue Man will be punished, it is worth noting that Danish player Nicklas Bendtner was banned for one match and fined £80,000 by UEFA for displaying boxer shorts revealing the name of bookmaker Paddy Power during a Euro 2012 match, which broke UEFA’s ambush marketing regulations, although the company itself was not punished.
The other players off the pitch
As well as FIFA, national federations and famous players were also concerned with protecting their brand at the World Cup. These entities have sponsors also; for example, Neymar has 11 sponsors and advertises everything from mobile phones to mammograms. The Confederação Brasileira de Futebol (“CBF”), the Brazilian football federation, has 14 sponsors and is also fiercely protective of its IP; from the beginning of 2014 up until the start of the World Cup, the organisation sent cease and desist letters to 40 companies for unauthorised association with the Brazilian national team or the famous yellow Brazil football jersey. In the UK, the Football Association has also registered various trade marks including the “Three Lions” logo.
This can create confusion between various exclusive sponsorship categories, with official sponsors of events, national teams and players having to co-exist and ensure that they do not infringe each others’ rights. For example, official World Cup sponsor Hyundai received a cease and desist letter from the CBF regarding an advert which they considered focused too much on Brazil’s mission to win a sixth World Cup rather than the event generally and therefore infringed CBF sponsor Volkswagen’s rights to associate itself with the Brazilian national team.
In another high-profile TV commercial, Brazilian airline TAM showed players David Luiz, Thiago Silva and Marcelo at the airport getting ready to board flights to Brazil and suggested that the airline was responsible for bringing Brazil’s players home for the World Cup. Gol Airlines was infuriated as they considered that the focus of the ad on Brazil’s players breached their exclusive sponsorship rights with the CBF. Conar, Brazil’s self-regulatory advertising standards body, asked TAM to alter the ad; TAM subsequently altered the ad to indicate that it was only bringing the three players featured in the ad home as opposed to the whole team.
Interestingly, Emirates, the official World Cup airline did not complain about TAM’s ad, perhaps because it could not find that the ad infringed their rights in relation to the event; the ad did not refer to the World Cup explicitly but simply stated that the players were “coming home to play [football]”. A similar incident occurred at World Cup 2006 when German airline Lufthansa painted footballs on the cones of their airplanes. Emirates were not able to stop them as they did not refer to the event explicitly or use any FIFA trade marks even though there were concerns that consumers seeing the Lufthansa planes may think that they were official event sponsors.
Nike – the true World Cup winner
Perhaps one of the biggest brands to benefit from this year’s World Cup was Nike even though it was not an official sponsor of the event. Nike sponsored 10 teams at the World Cup including Brazil, and a third of all players, who all took to the field in Nike football boots. Its explosive advertising campaign was full of stars; indeed, a search for “World Cup ad” on YouTube brings up the Nike “Winner Stays” ad as the first result even though the ad does not refer to the World Cup.
Nike has a massive presence on social media also which it used to spread its ”Risk Everything” campaign for this year’s tournament; it has 3.46 million followers on Twitter compared to official FIFA World Cup sponsor Adidas’ 1.2 million[. The company believes that the campaign was responsible for a 13% increase in sales in its latest quarter.
In response, Adidas attempted to ramp up its social media activity; Adidas posted four or five videos on social media a day during this year’s event and as a consequence became the most talked about brand on Twitter, with over 1.6 million tweets, retweets and replies mentioning it. Adidas’ success was helped by the fact that both World Cup finalists, Germany and Argentina, were sponsored by the sports brand. Nevertheless, Adidas has lowered profit expectations for the year because of the money spent on these marketing campaigns in Brazil.
Not just spectators?
Despite the efforts made by FIFA, national federations and their sponsors to curtail non-sponsors’ marketing opportunities at the World Cup, many still profited from the event with creative campaigns that celebrated the thematic space around sport and which did not infringe any IP rights. Some of these campaigns have blurred the line between what would constitute acceptable and ambush marketing as it is often so clear to the consumer that they are referring to the World Cup despite prima facie breaking any of FIFA’s rules.
A prime example is the Havaiana flip flop brand. Although Amazonas won the contract to produce 1.5 million FIFA-branded flip flops for the World Cup, the Havaiana ads, which were shared on social media and include football legend Romario, helped to increase sales of their Brazil-themed and other nation-themed flip flops. Havaiana was not the only company using past World Cup players to promote their brands to avoid falling foul of ambush marketing; Subway used Pelé in their ads with the tagline “Subway – Where Winners Eat”.
Many advertisers also created spoof or comedy ads to avoid infringing IP or exclusive sponsorship rights; a clever example was a series of ads from Curry’s, with the tagline “What Football?”. In one, the inability of the ad to mention the World Cup was mocked when a man is shown having dinner with his wife and exclaims that he’d like to buy a large screen TV so that they can enjoy “the wo...wo...programme about the castle” that she loves.
The popularity of non-sponsors’ campaigns were further spearheaded by social media. One company to take advantage of this was Beats by Dre which launched “The Game Before The Game” campaign with a video on YouTube just a week before the World Cup began. The video features numerous stars such as Neymar, Robin van Persie, Bastian Schweinsteiger and Thierry Henry, as well as beautiful images of Rio de Janeiro, but makes no reference to the World Cup. By the end of the tournament it had been viewed 22 million times on YouTube and was retweeted 675 times on the first day alone when promoted on Twitter. Beats by Dre also gave players free headphones but FIFA banned them from being worn in favour of official World Cup sponsor’s Sony’s headphones.
Another brand that took advantage of the World Cup without referring to it was Volkswagen. The car manufacturer teamed up with ESPN, Univision TV and a host of football personalities to promote the Volkswagen Golf. After each World Cup goal, the company posted a video on social media of a famous personality shouting “Goooooooooolf”. Although the event itself was not mentioned, the fact that a video came out after each World Cup goal inextricably linked it to the event.
Some of the most amusing ads came from non-sponsors that cleverly managed to exploit Luis Suarez’s biting incident from the Uruguay vs Italy game. These ads quickly went viral via social media. Notable examples include when Nando’s posted a picture of one of its meals on Twitter with a tweet to Luis Suarez saying “if you’re that hungry, why not get your teeth stuck into something really tasty?”. The tweet was retweeted over 38,000 times. Snickers also created an ad with the tag line “More satisfactory than Italian” which was retweeted 48,000 times. None of these campaigns infringed on any IP rights or verged on ambush marketing.
The final score
Arguably an entertaining and successful World Cup has done lots to bury some of the negative publicity surrounding a FIFA embroiled in corruption and greed allegations, which was not helped by the organisation’s strong stance on brand protection, as well as concerns over organisation in the run up to the event. Clear cases of ambush marketing were curtailed, allowing FIFA and its sponsors to claim victory.
Equally however, companies successfully adapted their marketing approach to acknowledge the thematic space around sport and sporting events; they consequently avoided infringing exclusive sponsorship and IP rights or breaching ambush marketing legislation. Arguably, there is also perhaps simply more space for sponsors and non-sponsors alike to benefit from major sporting events and social media has been the catalyst for this in many respects. Potential ambushers no longer need to rock up to events with scantily-clad women dressed in Bavarian Beer colours; they can now reach huge audiences via a different means.
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