First published in IPPro The Internet
IPPro The Internet recently interviewed Finnegan partner Danny M. Awdeh on how sports competition organisers and brands protect their intellectual property, including the effect Leicester City’s win will have on its protection and enforcement strategy, how leagues and competition organisers react to counterfeiting, and ambush marketing tactics. Says Danny, "Leicester City is no longer only an exceptional sports club, but now also a world-recognised brand name. Through its phenomenal success over a relatively short period of time, it has catapulted itself into rare air enjoyed by an elite universe of well-known, widely recognised brands. The club's success, popularity, and compelling story will no doubt attract counterfeiters and infringers. In today's marketplace, these goods are more likely to be distributed in mass online, though there will no doubt be street vendors hawking knock-off t-shirts and other goods too. Brand owners that suddenly and unexpectedly find themselves in Leicester City's position may not have the fully developed IP portfolio in place that mature companies use to protect their rights. As a frontline defence, these brand owners should supplement their trademark, copyright, and domain name filings as needed, implement an online watch for counterfeiters/infringers, and record their IP with customs to seize counterfeit products before they hit the market."
He further explains that "the explosion of counterfeit goods commonly occurs not only when an unexpected team wins a championship, but when any team, even a favorite, wins a championship. Fans want to support their favourite team, but there can often be a shortage in team apparel (especially in Leicester City’s case). Fans can be duped into buying counterfeit goods, or they may be indifferent as to whether they have a jersey that is real or fake. This allows an opening for counterfeiters to enter the market."
In speaking to how leagues and competition organizers respond to counterfeiting, Danny notes that many leagues implement fairly aggressive measures to prevent the widespread sale of counterfeit products, including through use of government enforcement programmes, seizure operations, court proceedings, and advertising campaigns. "Educating consumers has also been an effective way of combating counterfeiting, particularly in industries where the counterfeit goods can cause physical harm. For example, the US Food and Drug Administration warns of the dangers associated with counterfeit drugs in an attempt to prevent consumers from purchasing counterfeit prescription drugs online or in other jurisdictions."
Ambush marketing, Danny says, should be "top of mind" for all advertisers, especially in light of the upcoming Summer Olympic Games. "Official sponsors make considerable investments for the spotlight to be on their brands during these events and 'ambush advertising' is not well received. Depending on the jurisdiction, such conduct may run afoul of trademark and false advertising laws, subjecting the advertiser to injunctions and possibly considerable monetary fines. In the case of the Olympics, the International Olympic Committee publishes a fairly extensive list of guidelines, which it actively enforces, aimed at keeping unofficial sponsors a safe distance away from the spotlight that official sponsors pay so dearly to enjoy."