A recent court decision of the Court of Commerce in Liège of 24 November 2006 dealt with a claim launched by several major European soccer clubs and players in an attempt to prevent soccer betting websites from inserting its names, images and trademarks.
Some clubs and players had previously lodged similar lawsuits in other European countries:
- on 2 March 2005, the Landesgericht in Cologne enjoined a particular betting website from the commercial use of a photographic picture of David Beckham;
- on 8 July 2005, the President of the Tribunal de Grande Instance of Paris, seating in summary proceedings, dismissed the joint claims of various soccer clubs and players against various betting websites.
Here, we describe the full background and implications of the well motivated decision of the Court of Commerce in Liège, which, contrary to the German and in line with the French decision, dismissed the claims of the clubs and players.
Since February 2005, several top soccer clubs (Real Madrid, Porto, Juventus Turin and PSV Eindhoven) and some of its well known individual players (such as Zidane, Beckham, Ronaldo, Raul, etc) have been involved in various parallel lawsuits before the Court of Commerce in Liège against seven internet betting companies (such as Bwin, Unibet, Victor Chadler, William Hill, Ladbrokes and Betfair) over alleged illegal use of their respective names, images and trademark rights.
These internet companies, some of which are based in - and remotely operating from - countries such as Antigua, Malta or Gibraltar, do indeed generally use the names of the clubs and players when they offer soccer bets, and, occasionally they also publish small photographic images of individual players.
Although the separate claims against these seven betting websites were very similar, we will concentrate on the decision which was rendered by the Court of Commerce in Liège on 24 November 2006 against Unibet Ltd., a company based in Antigua (successor of Mr. Bookmaker.com Ltd., a Maltese company).
In this case, the plaintiffs claimed first that Unibet’s betting website was using their names and insignia for purely commercial gain or advertising purposes, without any prior authorisation and/or form of remuneration. Therefore, the plaintiffs requested the Court to confirm the illegal utilisation by Unibet of i) the clubs’ trade names and Benelux and Community trademarks and ii) the patronymic names and images of the individual players on Unibet’s website. Furthermore, they requested Unibet to cease any further utilisation thereof, under penalty of a fine of € 50.000 per ascertained infringement. The plaintiffs also claimed damages for the illegal use in the past, but did not yet assess the full extent of their damages. It should be clarified that these claims were not based on any copyright or database rights, but only on the legal protection of patronymic and trade names as well as on Community and Benelux trademarks.
Secondly, the players (not the clubs) claimed that Unibet’s betting website impinged on their honour and reputation by associating their names to “illegal websites exploiting the dependence of fragile betters”. In an indirect manner, the plaintiffs also claimed that betting companies such as Unibet are not legally authorised to work in Belgium, nor the European Union, and that this fact alone impinges on their good name and reputation.
In support of their claims, plaintiffs submitted print-outs and a bailiff report showing that Unibet infringed upon the rights of the plaintiffs on its website.
In reaction to the first part of the claim, Unibet argued, among other things, that while referring to or including the patronymic names of the soccer players in the context of their professional activities, it makes a normal use and exercises its right of freedom of expression as provided for in section 10 of the European Convention on Human Rights (ECHR). With regard to the images of the players, it argues that they were limited in size, and form part of the public aspect of the players’ lives. According to Unibet, these images appear always in relation to the event that they illustrate and disappear every time when the event open for bets has passed. Since it is offering these soccer bets for many years and players have remained inactive vis-à-vis this reality, it would amount to a waiver or implicit authorisation from the players in general.
On the second part of the claim, Unibet counter-argued that the soccer betting activities are fully legitimate and that publicity for soccer betting is even present in numerous soccer stadiums whereby certain clubs, such as Porto (one of the plaintiffs), also engage in overt publicity for soccer betting on their own club websites.
On 24 November 2006, the Court of Commerce in Liège, acting on the merits, did not accept to formally merge the case against Unibet with the six other parallel cases launched against other betting companies. The objects of the respective claims were considered similar, but not identical.
First, the Court retained its international jurisdiction on the basis of section 24 of EU Regulation n° 44/2001of 22 December 2000, as such jurisdiction was not contested by Unibet. With regard to its domestic jurisdiction within Belgium, however, the Court partially referred the case to the Court of Commerce in Brussels for the claims based on the Community trademarks of Real Madrid and Porto, since these kinds of case are exclusively reserved for that Court. Furthermore, the Court also considered that the right to protect a person’s name and the right to public divulgence of images, as invoked by both the clubs and the individual players, did form part of the rights of personality. However, this did not impact on the Court’s internal jurisdiction.
Concerning the applicable law, the Court refused to apply any foreign laws and confirmed the applicability of Belgian law. It argued that the website was targeted to a Belgian public (in Dutch and French) and that the potential damages relating to the claims of the plaintiffs could therefore occur on Belgian territory. In this context, the Court also rejected Unibet’s defense that the free provision of “information society services” under the E-Commerce Directive would apply to the informative part of its website. The latter entails, according to Unibet, a different service from the underlying betting activity (an area which is expressly excluded form the Directive). The Court held that the information is inherently provided for the sole purpose of explaining the betting game data and illustrating it with images. The fact that this information is made available to both betters and non-betters is considered as irrelevant.
With regard to the admissibility of the claim, the Court ruled that the plaintiffs could validly take recourse to the image rights invoked, even when certain media rights had been transferred by the clubs to UEFA for Champions League games. In fact, the soccer betting offered by Unibet relates to both national championships and UEFA games.
Coming to the merits of the claim, the Court did, however, reject the plaintiffs’ arguments and found that Unibet was not infringing any personal or intellectual property rights nor that it was rendering its betting services in Belgium in an illegal manner.
1. No infringement of any personal or intellectual property rights
The Court accepted in the case at hand that Unibet’s right to free expression, irrespective of the lucrative purpose of its website, could not be restricted by a violation of the private life, as invoked by the players, since the patronymic names of the players are solely used in relation to their professional activities and the images originated solely from official club sports events.
Whilst the Court recalls the general principle established by Belgian case law that the use of the names or images of sportsmen for promotional or advertising purposes could impinge on the right to protection of the patronymic name and image, it considered that the present case can be distinguished because here, the use is not for such promotional or advertising purposes, but as a mere information element illustrating an upcoming sport event in relation to the commercial product at stake, namely the bets.
The Court found that the patronymic names and images of the players were not put on the home page of the betting websites, but only on the proper betting web pages, where, in fact, it is even possible to bet on individual players (e.g. first or best scorer in a particular match). In this respect, the Court confirmed that it is practically impossible to present a betting offer on an anonymous basis if the performance of the player constitutes the object of the bet.
Furthermore the Court argued that Unibet did not make an illegal use of the widespread fame or reputation of the players, since:
- the litigious patronymic names and images of the players only constitute a “characteristic” of the betting product and are immediately removed once the sport event is over;
- the litigious images are legally obtained under a license from an official photo press agency and it is not contested by the plaintiffs that this use would as such infringe on the granted exploitation rights;
- search engines – according to the prior ascertainments made by a bailiff - do not automatically lead to these betting sites or deviate web traffic when the name of the player is typed in as a keyword.
The Court also refused to accept – among others in light of the Benelux Convention on Intellectual Property Rights of 25 February 2005 (with entry in force on 1 September 2006) - that Unibet infringed upon the international and Benelux verbal and figurative trademarks invoked by the clubs of PSV Eindhoven and Juventus Turin respectively, even if these also applied to the categories of communications via computer or information networks or of leisure services. This reasoning is based on the viewpoint that Unibet used the names of these clubs as a necessary element of its betting operations, without wanting to distinguish any products or services which would be the proper economic purpose as protected under a trademark. Given the existence of this necessity criterion, the Court appraised that one could not reasonably require a third party to abstain from the use of the trademark sign. It considered that it is not possible to organise a soccer betting game without quoting the name of the soccer clubs in question, and that each consumer perfectly knows that the clubs, being the object of the betting games, are not associated to the betting companies.
Finally, the Court also refused to uphold the claims of the clubs and players based on the protection of their commercial names or denominations, thereby rejecting the allegation that Unibet had adopted a parasitising behavior or created confusion from which it would abusively benefit.
2. No illegality of performing soccer betting activities in Belgium
With regard to the legality of the online betting services offered in Belgium, the Court appraised that the plaintiffs did not claim that the activity of betting on soccer matches or performances of players would be illegal or that a prior consent of the clubs and/or players would be required for that. The Court confirmed that the plaintiffs can as such not claim any subjective rights on the betting activities.
In this respect the Court held also that the Belgian Act of 26 June 1963, as invoked by the plaintiffs, submitting the organisation of sport betting on the Belgian territory to a prior ministerial authorisation, constitutes a restriction on the freedom of establishment and services as provided for in EU law (sections 43 and 49 of EU Treaty with a reference to the Gambelli case law of the European Court of Justice (C-243/01)). The Court confirmed the prevalence of the EU law principles over the national Belgian legislation and refused to declare illegal the betting activities of Unibet under existing national legislation.
Finally, the Court considered that in any case, from the viewpoint of the average reasonably attentive consumer, the names of the players are by no means associated to the companies organising the betting activities.
The Court thus dismissed the major part of the plaintiffs’ claims, except for the community trademark claims of some clubs which were referred to the Court of Commerce in Brussels, for further consideration.
In its ruling for this serious test case, the Court mainly followed the prior findings of the Paris court and the arguments of Unibet that there were no manifest violations of applicable law.
The Court of Commerce in Liège found that use of the names and images of the players is not commercial, but a mere legitimate application of the right to information. The Court appraised that in order to bet with full knowledge of the cause, the participating better should dispose of all the necessary data of clubs and players, including images.
Although the plaintiffs could still file an appeal, the well motivated decision in this test case can be considered a serious setback for soccer players and clubs and eventually also for all other professional sports associations, clubs and practitioners.
The pan-European war game between clubs, players and betting companies does not however seem to have come to a final end yet. Other clubs and players have also announced that they may summon various betting websites, among others in France and/or Belgium, for the alleged illegal use of their names, images and fame.