IP wrangling (briefly) delays Mourinho's anointment as new Manchester United manager

This Kat was busy obtaining his daily fix of sports news on the BBC website when he spotted an unusual headline - 'Jose Mourinho Image Rights Hold Up Manchester United Deal.' 

Jose Mourinho and his agent (driving a
hard bargain).

The story broke on Wednesday and has been widely reported (see articles by the Daily Telegraph, ESPN, The Independent, The Guardian and many more).

This Kat's favourite response came from satirical website NewsThump, which suggested that Jose Mourinho might have no choice but to wear a balaclava next season in order to remain on the right side of the law. So, what happened?

Mourinho on the touchline next year? 

Image Rights (courtesy of Guest Kat Emma Perot)

The delay in negotiations was partly down to Mourinho’s personal endorsement deals with rival companies of Man United’s sponsors. (Mourinho has deals with Jaguar, Swiss watch company Hublot & South Korean casino operator Paradise Co, while United is sponsored by Chevrolet, American watch company Bulova, and Asian casino and leisure resort, Donaco International).

‘Image rights’ is the popular term in the UK for these types of endorsement deals. These ‘rights’ are created by contract as they do not exist in the UK. However, they do exist in the countries of the companies which Mourinho has deals with. In the US, in the absence of federal law, states have developed statutory publicity rights or use the proprietary tort of appropriation of name or likeness, both of which have an economic focus. In Korea, the right of publicity was first recognised in the 1997 case of Marcus D. Winslow Jr. v. Good People Inc., et al., (94Gahab13831) (Seoul Western Branch Ct., Aug. 29, 1997). 'Personality rights' are also protected under the Swiss Constitution.

Regardless of the terminology used, these rights generally allow the individual to control the commercialisation of personal attributes. The consequence of Mourinho’s move to United is that the club will want to control his ‘image rights’ in a way that satisfies their sponsors. As such, they will likely seek an exclusive license for use of Mourinho’s attributes in the watch, car and casino industries.

It is unlikely that Mourinho will assign his rights altogether, as he may want to continue pursuing valuable personal endorsement deals. However, Mourinho will have to terminate his existing relationships which conflict with Man United’s sponsors. If United’s sponsors were to use Mourinho’s ‘image’ before he terminated his existing arrangements, they would potentially be liable for infringement of exclusive licences in countries where ‘image rights’ have a proprietary basis.

Trade Marks

Another common thread picked up in the press and on social media was that Chelsea (who Mourinho has managed in two separate spells) still own a trade mark for 'Jose Mourinho.'

Bottom of the class for IP reporting is ESPN, which comments that 'Chelsea still own the copyright to the Portuguese's name.' Top marks, however, to Mark Critchley at The Independent for citing the EUTM registration in his piece. It shows that Chelsea filed an application to register the Mourinho mark in 2005, covering a range of different goods.

Twitter had fun with this: 'gonna kick back in my Mourinho lingerie, crack a few nuts and stick Mourinho on the gramophone' quipped one user.  It's not as silly as it sounds! The registered specification covers a wide range of goods; however, it's unlikely that Chelsea ever actually marketed underwear, nutcrackers or gramophones bearing the Mourinho name.

Chelsea Football Club Limited owns a number of active trade mark registrations associated with their former manager, including:

 - A registered EUTM for his signature.
 - Registered UK, Australian and Norwegian marks for his name

So, how did United and Chelsea resolve the trade mark issue? One option for United would have been to obtain a licence to use the marks. Another would have been for United (or Mourinho himself) to make an offer to Chelsea for a full assignment of the trade marks. It's rather surprising that Mourinho doesn't own the 'Jose Mourinho' mark himself - that would give him an option to licence the rights to his employers (which for a successful manager change rather frequently...)

Whatever it is that held up that deal here (it's not exactly clear), congratulations to the IP lawyers who burned the midnight oil to hasten The Special One's arrival at the Theatre of Dreams.