Happy 'IP and Sports' World IP Day!

To all IPKat readers, happy World Intellectual Property Day! As WIPO’s theme this year is Reach for Gold: IP and Sports, Katfriend Andrea Rossi has thought of some examples that show the level of protection that IP provides in the sports sector. As readers know, athletes are not the only protagonists. Patents, trade marks and licensing agreements (among other things) also play an important role.

Here's Andrea's sport potpourri:

Techno-trainers - Nike has recently succeeded in registering the trade mark FOOTWARE before the USPTO for computer software, computer hardware, cloud computing, etc. (see application here). This protection was sought and came along with a new line of highly technological trainers (such as the Self-Lacing Adapt BB) with the mark resulting from the contraction between the terms “footwear” and “software” (see further here, here and here). Even if this trade mark was accepted by the USPTO, it is not immediate that this mark will appear inherently distinctive before the EUIPO for software as the sign indicates software for footwear. Nike filed an application before EUIPO in March (see here) and this has not yet been accepted. Let’s hope that this application will not end up like the basketball player Zion Williamson’s Nike shoe! 

Bats and football - Turning to football, an old dispute between Valencia Club de Fútbol and DC Comics has been revived. Back in 2012 the Valencia CF filed a registration for a figurative mark depicting a bat (see here). This was opposed by DC Comics, which holds similar marks for its Batman character, on grounds that there would be likelihood of confusion (see earlier IPKat post here). The Valencia FC, after a 4-year dispute before the EUIPO, eventually withdrew its application. Nevertheless, recently the football club applied for a new mark depicting a bat and, as it was foreseeable, DC Comics opposed the registration (see here). Who will win the bat fight this time? Stay tuned!

New Valencia FC’s logo

Getting ready for the 2022 World Cup - While some old disputes go on, others are preparing well ahead for future events, namely, the 2022 FIFA World Cup. As all the football lovers surely know, in 2022 Qatar will host the FIFA World Cup and, along with the realisation of the stadium (check it here!), the Supreme Committee for Delivery & Legacy registered at the EU level the event’s logo and filed for the registration of the slogans “See you in 2022” and “Road to 2022”. The Office rejected both word marks as they consist of a mere slogan. The applicant, therefore, applied for a more stylised version of the “See you in 2022” slogan, that was again rejected on the same grounds. The Committee finally succeeded in registering the phrase along with an additional logo providing the sufficient level of figurativeness (see here). This shows that even a descriptive term or a mere slogan can reach the sufficient level of distinctiveness if conjoined with effective figurative elements. Does this mean that now the former slogan can function as an effective trade mark? The readers are invited to express their opinion. 

Not sufficiently stylised
(non-registrable mark)

Sufficiently stylised (registrable mark)

Stadium chants as trade marks - In the football world not only (figurative) slogans are registered as trade marks, but also stadium chants. One example is the Paris Saint Germain’s stadium chant “Ici c’est Paris” that was recently registered before the EUIPO (hear here) for, among others, sport activities. It could be argued that trade mark protection is being excessively widened, but it must be kept in mind that a trade mark exists whenever a sign enables consumers (or supporters) to recognise the economic origin of the goods and services. It seems likely that PSG’s fans will use and recognise the chant (slogan) strictly in connection with the team. Nevertheless, it remains doubtful how a stadium chant could be commercially exploited, but this has no relevance for registration purposes in Europe.

CR7 troubles - The football world, however, is not only fun and games, especially for the Juventus FC recent acquisition Cristiano Ronaldo. In 2018 Forbes estimated Ronaldo to be the second-highest-paid soccer player with USD 47 million in endorsement, appearances and licensing revenues with almost 163 million followers on Instagram. In 2019, after being sentenced to pay €18.8m to the Spanish State for tax evasion and being involved in the recent rape allegations by Kathryn Mayorga (full story here), the soccer player’s media “likeness” dropped in the scale of 70,000 followers in the last month. This resulted in the removal of Cristiano Ronaldo from the FIFA 19 videogame menu, even if EA Sport justified the changes due to the fact that Juventus lost in the UEFA Champions League (see here). These recent events make wonder on the current Cristiano Ronaldo’s image value and whether he could claim any kind of image right to maintain his predominant position in the videogame. It seems likely that EA Sports has, within its licensing agreement with Ronaldo, the right to remove him from the game’s menu. However, the soccer player could argue a misuse of his image exceeding his licensing agreement as this would further decrease his public likeness. This kind of “misunderstanding” is not unlikely in the video game industry in relation to football players, like in the Maradona v Konami case (see here and here), a case that was eventually settled. 

Episodes like the Cristiano Ronaldo or Zion Williamson’s ones show the high level of interests at issue in the sport industry, where a legal proceeding, or a faulty shoe can damage the image of an athlete or the name of a brand (for the Zion and Nike story see here). It is for this reason that, in the world of professional sport, intellectual property maintains the delicate balance between athletes’ rights and the sponsors’ need of advertisement in the constant fight to appeal to the public, leaving sometimes aside the athletic factor. On a brighter side, this same balance allows talented athletes to rise and technology to advance. This leads to the conclusion that intellectual property is the necessary tool to enable equilibrium and development in such market, as for many others.

Cheerleaders - This guest contributor, being a great cheerleading fan, would like to conclude this post reminding that in these days the Orlando Disney World park is hosting the USAFS Cheerleading Worlds. Last year the English national (Team England) won placing first in the Coed level 6 (watch the routine here!). Who will step on the highest step of the podium this year? Follow the event on line stream or downloading the ICU WCC app. In the meantime, happy World International Intellectual Property Day!