The FIFA World Cup is upon us. We’ve already been bombarded with an extensive range of marketing campaigns, such as McDonald’s new range of World Cup burgers, and Coke’s specially designed World Cup bottles. These companies have paid a premium to be associated with the event.
But what about those companies who use more stealth methods to get their name out there?
Efforts to target ambush marketing, the practice of non-sponsors of an event advertising their brand at that event, or suggesting a link between their brand and the event, are often undertaken in conjunction with major sporting events. We have posted before on the crackdown on non-sponsors at the London Olympics in 2012 (see here and here). Now, the recently enacted Major Sporting Events (Indicia and Images) Protection Act 2014 (Cth) will deal with sponsorship rights of the Asian Football Confederation Asian Cup 2015, the Cricket World Cup 2015 and the Gold Coast 2018 Commonwealth Games.
This Act regulates the commercial use of indicia and images associated with those sporting events. It prohibits the use of one of the event’s protected indicia or images for commercial purposes during the event’s protection period. Protected indicia include essentially all variations of the event’s name, but also the event’s name used in conjunction with a range of words describing services commonly provided at or in relation to the event. For example, for the Cricket World Cup 2015, protected indicia include “Cricket World Cup”, “Cricket World Champions”, “Cricket World Cup broadcaster”, “ICC World Cup host”, “CWC caterer”, etc. For the Commonwealth Games, protected indicia include phrases like “Australian Commonwealth Games team Celebrating 2018”, but also somewhat surprisingly, more generic phrases such as “Commonwealth Games Gold” and “Commonwealth Games Silver”.
The Act also allows an official user to give Customs a notice objecting to the importation of goods into Australia that have had one of the event’s ‘protected images’ applied to it. Protected images are very broadly defined as being ‘any visual or aural representations that, to a reasonable person, in the circumstances of the presentation, would suggest a connection with the event’. These goods can then be seized.
Interestingly, not only will unauthorised uses of exact matches of the images and indicia be prohibited, but the use of an indicium that so closely resembles a protected indicium, that a reasonable person is likely to mistake it for the protected indicia or image, will be taken to be use of that protected indicia or image. However, there are exceptions in the Act for criticism and review, and for news reporting, much like the exceptions to copyright infringement under the Copyright Act 1968 (Cth).
The Act allows official sponsors to seek a number of remedies against unauthorised uses of the indicia and images, including injunctions, damages, an account of profits, and corrective advertisements. However, official users require the consent of the person who gave them authorisation in order to make an application for an injunction, or to bring an action for damages or for account of profits. They also need a proper basis on which to bring their claim –if it is found to be a groundless threat, they may be countersued for damages or an injunction.
The Act also expressly states that official users retain all their rights under the Australian Consumer Law in relation to misleading or deceptive conduct. For example, the ACL would prohibit someone from representing that goods or services have sponsorship or approval that they do not have (see paragraph 29(1)(g)). Official sponsors and the relevant sporting bodies may also have recourse under the Copyright Act 1968 (Cth) or the Trade Marks Act 1995 (Cth) for intellectual property infringement (though one of the purposes of the Act is to protect indicia that are not able to be registered as trade marks).
According to the explanatory memorandum, the Act is intended to give sponsors peace of mind that their sponsorship dollars are protected, so that the level of sponsorship revenue remains high. The Act recognises the significance of sponsorship to the success of major events. With FIFA Partners reportedly spending a combined total of $730 million in 2014 for the broadest global soccer sponsorship rights, sponsorship revenue is certainly something worth protecting.