Tennis in 2018: Did intellectual property hold serve?

Sporting events frequently give rise to a wide array of IP-related issues. Kat friend (and tennis aficionado) John Shaw offers his views on the most notable IP issues that arose during the 2018 tennis season.

Kats, so what was the major development in the tennis world in 2018? Roger Federer defying his years to win the Australian Open, Caroline Wozniacki collecting her maiden slam, or Novak Djokovic reclaiming his number one ranking? Nope, none of these for IP-oriented tennis buffs. The real IP action was the design right in Serena Williams’ French Open outfit, the sponsorship implications for re-naming the grass court tournament at Queens Club and the trade mark issue of Roger Federer’s “RF” logo. So here we go—"serve, IPKat."

The unregistered design right of Serena Williams’ catsuit

The French Open saw Serena Williams play in a super-hero style catsuit. The skin-tight piece that was designed for function rather than fashion so as to reduce the likelihood of blood clots was comparable to the costumes worn in the Marvel movies. It didn’t please everyone though and the tournament stated that as of next year there will be a dress code policy. This means that we will not see another player in similar attire on the red clay in Paris any time soon.

But, was it necessary for the tournament to prevent other players from wearing the catsuit through a dress code policy? Could Serena Williams have prevented another player from wearing a similar catsuit by relying on an IP right?

Unregistered community design rights, for which the protection arises automatically, are commonly relied upon in the fashion industry due to the rapid introduction of new styles through the seasons. For a catsuit to qualify for protection as a Community design, the outfit must be new and have “individual character”. The “individual character” is based on someone who has some knowledge of design in the field in question.As a result, it is certainly reasonable that the catsuit would pass muster, because even an individual with good knowledge in tennis fashion is unlikely to recall the only similar outfit which was worn when Pam Shriver played Anne White at Wimbledon in 1985.

The design right would be infringed, if another player were to use a similar catsuit that “did not produce a different overall impression on the informed user”. However, before anyone expects a law suit (sorry for the double entendre) to be filed under appropriate circumstances, keep in mind that sports clothes manufacturers do not seem to be averse to producing similar outfits for their players, such as the black and white-striped outfit worn by Federer and Serena Williams at the Australian Open in 2017 being arguably similar to the zebra-striped outfits worn by Adidas players at the French Open the same year.

Fever-Tree Championship

A change of sponsorship can alter the overall brand image of an individual or a tournament. Fever-Tree becoming the tournament sponsor for Queens Club (the West London grass court tournament that precedes Wimbledon) is a good reason to consider how this might play out. As a general rule, for a sponsor to protect its rights as a sponsor, it will have to rely on contractual and intellectual property rights. Fever-Tree has clearly succeeded in doing this as it managed to secure the naming rights for the title of the sponsored event. Long gone are the days of “Winning at Queens Club”, instead Marin Cilic won “The Fever-Tree Championship”. This is of note to potential event sponsors as it neatly sidesteps a potential IP issue – the need to create a tournament logo which incorporates the marks of the organiser and sponsor. Think “Rolex Monte-Carlo Masters” and you get the idea.

By always renaming the tournament, Queens Club have avoided the need to establish the ownership rights and associated goodwill of a joint trade mark. Sponsors should aim for this solution as it guarantees that their brand is associated with the event. This is desirable for the event organiser too as it makes it easier for the event to introduce new sponsors in the future.

One important IP issue remains however and that is the ownership of the special edition “Championship Gin & Tonic” which is served at the event. The recipe, provided it has been written down or recorded in some way, may attract copyright protection as a literary work. Joint ownership of the copyright is possible provided both parties have made a “significant and original contribution” to the creation of the work. Let’s just hope that they were both in the mix when it was created.

Roger Federer and the “RF” trade mark

The absence of the “RF” logo from Roger Federer’s tennis clothing was noticed at Wimbledon. One big question for next year is will we see it on the new kit? The registered trade mark belongs to Nike in multiple jurisdictions and Federer no longer endorses Nike. However, given the close association of the “RF” logo with Federer and the fact that Federer previously endorsed Nike, could Nike be stopped from using their own registered trade mark? The answer is quite possibly yes.

Applying the decision in Fenty and other v Arcadia Group Brands Ltd and Others, Federer could be in a position to bring an action in passing off, should Nike use the registered mark, on the basis that the impression is given that the goods are endorsed by Federer when in fact the association has finished. Although the Court of Appeal noted that the Fenty case was close to the borderline of sustainability, the relevant facts might just be there for Federer to obtain a similar judgement, should one be required.

Nike have continued to sell “Roger Federer” shirts, which were designed and produced when the endorsement deal was operative. As well, Federer has continued to use Nike trainers so both parties have an interest in maintaining an amicable relationship.

This should serve as a cautionary tale to those with endorsement deals and it highlights the importance of IP ownership. Federer is currently missing out on the benefit of IP to which he has added so much goodwill. By not registering the trade mark himself (as Andy Murray did for his logo), he made an unforced error in his brand management.

Photo on middle left by Benjamin Liebald and is licensed under the Creative Commons Attribution-Share Alike 3.0 Unported license.

Photo on lower right by Esther Lim and is licensed under the Creative Commons Attribution-Share Alike 2.0 Generic license.