From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Monday, 9 June 2014

FIFA's unfair catenaccio on World Cup's IP

Is it?
With less than three days to go before the FIFA World Cup’s kick-off [the first match, Brazil v Croatia, is due on 12 June; the final, England v Italy, is surprisingly scheduled only two days later -- the complete calendar can be found here], a focus on the IP-related aspects of the event is in order. To help businesses and common people to deal with the issue, the Fédération Internationale of Football Association (FIFA) has published an IP Manual, of which the latest version is downloadable here. Admittedly, the Manual cannot be regarded as the most balanced piece of IP literature -- and the reason, explains FIFA, is for the sake of global football:

“The FIFA Rights Holders will only invest in the 2014 FIFA World Cup™ if they are provided with this exclusivity for the use of the Official Marks … Thus, any unauthorised use of the Official Marks not only undermines the integrity of the FIFA World Cup™ and its marketing programme, but also puts the interests of the worldwide football community at stake”.

The Manual starts by defining FIFA’s trade mark portfolio and declaring full-scale war on those who dare to sail too close to the World Cup’s wind:

“The Official Marks are protected in Brazil and territories around the world by trade mark registration and/or copyright laws and/or other laws of intellectual property such as unfair competition or passing off . Such laws collectively protect FIFA against the unauthorised use of both identical reproductions of the Official Marks and also confusingly similar variations and modifications”.

FIFA’s portfolio includes most classic word marks identifying the event and FIFA itself, such as “FIFA”, “2014 FIFA World Cup Brazil”,  “2014 FIFA World Cup”, “FIFA World Cup”, “Football World Cup”, “Soccer World Cup” and “Mundial de Futebol Brasil 2014”. Further, FIFA claims exclusive rights on a number of device signs, such as the World Cup logos, posters, and the World Cup’s Cup:

Exclusive rights also extend to the World Cup’s slogan, “ALL IN ONE RHYTHM” -- which pretty much sounds like Shakira’s version of the EU’s “United in diversity”:

Also protected is the event’s mascot, the nice aardvark platypus minotaur pokemon animal on the right. His name is Fuleco -- a portmanteau of the words "Futebol" ("Football") and "Ecologia" ("Ecology") [shouldn’t it be FuTeco, asks Merpel?].

If the trade mark rights claimed above sound more than reasonable, it’s hard to say the same for a bunch of further signs mentioned in the Manual, on the distinctiveness of which this Kat would not bet any more than on the next World Cup taking place in QatarTake, for instance, Fuleco’s natural habitat (left), which FIFA refers to as the World Cup’s “official look element”. It certainly looks fancy and creative enough to access copyright protection, but could it really play a distinctive role in connection with goods and services?

Similar concerns might also arise regarding other word marks that FIFA proudly declares to be its own property. The IPKat is referring to expressions like “World Cup”, “World Cup 2014”, “Copa do Mundo” [“world cup” in Portuguese], “Mundial 2014” and “Copa 2014” [“Cup 2014]”. A monopoly on such descriptive and generic expressions may be unfair, and this is even more true if one thinks that this very year the World Cup/Copa do Mundo/Mundial takes place for a number of secondary other sports such as basketball,  alpine skiing, bouldering and diving -- the winners of which would likely be awarded with a Copa in the year 2014. 

Another chapter of FIFA’s trade mark claims concerns geographical venues of the event. As per the IP Manual, FIFA’s exclusive rights include expressions such as “Brazil 2014” and, in general, any sign constituted by the “name of one of the cities hosting the tournament + the number 2014” -- eg “Rio 2014”, “Sao Paolo 2014”, “Fortaleza 2014”, etc. [see all World Cup host cities here].

They actually mean it. In Europe, for instance, FIFA has managed to register a Community “Brazil 2014” trade mark in connection with a wide number of classes, not even remotely related to the World Cup goods and services. Due to trade marks like that, eg, the Brasil 2014 Green Energy and Biogas Exposition could run into troubles should they decide to provide “refining of oil; services for the treatment of oil and used lubricants; generation of gas and electricity” in class 42, also covered by a FIFA Community trade mark. This doesn't look much like fair play.
Does it ring a bell?

The declared enforcement approach does not seem less pretentious. Irrespective of a trade mark’s distinctive function, for instance, the IP Manual alleges that simply writing “Brazil 2014” with a standard font and with no device element on a t-shirt would be the subject of legal proceedings as leading consumers to establish an unlawful association with FIFA’s tournament.

In-store decorations
FIFA applies the same principle to uses of its trade marks as in-store “decorations”, even though decorations are per se ornamental, and ornamental uses are neither distinctive nor normally preventable under trade mark law -- trying to grab too much can often end up with spectacular own goals.

Additionally, a significant part of the IP Manual deals with uses of FIFA’s IP on the internet.

The world is moving, and some global players have started adopting IP strategies based on sharing instead of hopeless enforcement as a way of creating value [one famous example was recently reported on this weblog here]. Needless to say, this is not an option for FIFA, whose IP Manual solemnly declares that “FIFA’s official logos, symbols and other graphic trade marks may not be used on any social media platform”. This Kat senses that busy times are coming for FIFA’s IT lawyers all around the world.

As to URLs, FIFA takes the view that its trade marks may be legitimately used only inasmuch as they come after the main domain name – eg, <> would be fine, while FIFA would consider <> infringing.

In FIFA’s opinion, World Cup trade marks “may not be used as hyperlinks or shortcuts on the Internet”. This sounds quite extreme too. Even if it is true that reproducing original device signs on a website might amount to copyright infringement, non-original expressions like “Football World Cup” could hardly access the same protection -- and, in any case, how could trade mark law prevent non-distinctive uses of FIFA’s marks in a website, whether or not they serve as hyperlinks? Finally, special rules govern the use of the FIFA.COM logo (right), which “may only be used on a website as a hyperlink to the homepage of the official website”, and only subject to specific PRIOR approval by FIFA, the IP Manual explains.

Catenaccio” [“the bolt”, in English], is the name of a tactical system that the Italian team Triestina first adopted in 1947, when it was coached by the visionary manager Nereo Rocco. Those who confuse football with entertainment are used to perceive catenaccio as a basic, silly and purely defensive strategy consisting of putting all the team’s effort into depriving the opponent of any chance to score and renouncing all of the magic, movement and poetry that football can offer. On the contrary, catenaccio is the noble art of football par excellence. It requires an effective organisation of backline defence and much creative imagination in designing light, quick, and futuristic counter-attacks. Catenaccio is about adapting oneself to a world that can’t always be as we want. Life is a metaphor of football. FIFA should know.

A hearty katpat goes to the football passionate Revital Cohen for alerting this Kat to FIFA’s psychedelic manual.

Common people here

Catenaccio and parking the bus here
Total unnecessary production here.


Anonymous said...

Indeed, what FIFA is doing isn't "catenaccio", but rather what football fans despectively refer to as "parking the bus", and presumably it will work about as well for them as it did for José Mourinho and Chelsea FC in this year's Champions' League semi-finals...

Alberto Bellan said...

Indeed Anonymous, I included a link suggesting that PTB fits better at the end of the post, just for professional readers. By the way, I love the Setubal philosopher, despite that semifinal -- he has been the one to have managed to win with Inter Milan, a team whose last winning before Mou occurred before the second World War. Quite special.

Thomas said...

Thanks for this great article.
Unfortunately, FIFA is just a terrible (presumably corrupted) organisation. John Olivier recently explained to the Americans what was the FIFA all about; and it's not rosy at all... Video link:

Alberto Bellan said...

Dear Thomas, thank you for this! This hasn't much to do with IP, but I think that the very core of a sane system is change. The bad news is that King Blatter's realm has been lasting for almost 16 years now. The good one is that football is a joyous thing and will survive to Sepp's era. I truly hope our Brazilian friends can make the best out of this mess.

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