Fair Play to use FIFA trade marks on social media?

Fair Play to use FIFA trade marks on social media?

This weekend, together with millions of others around the world, I watched Iceland make its World Cup debut against Argentina. Iceland, the smallest nation to ever qualify for the World Cup, is a special country for me, not least because my husband and were married there! Especially as my home country failed to qualify for this year’s tournament (sigh) it comes as no surprise that I’m supporting the Iceland’s national football team, or Íslenska karlalandsliðið í knattspyrnu.

I recently came across an article which said fans should beware of using World Cup logos in social media profile pictures. The article explained that although “many fans will be using social media to show their support by uploading images of their country’s flags and the World Cup logo as their profile pictures, by uploading the World Cup logo in your pictures you could be infringing intellectual property rights owned by the Fédération Internationale de Football Association (FIFA).”

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So, what’s the deal? Does my newly updated Facebook photo, which features FIFA’s official emblem, unlawfully infringe upon FIFA’s trade mark? The answer is below…

Intellectual Property is football’s star player.
The World Cup is the largest single sporting event on Earth, with nearly half the world’s population tuning in. The tournament, which runs from June 14 to July 15 is being hosted in Russia for the first time, at an official cost of 683 billion rubles or £8.4 billion (Reuters).

As reported on its finances page, around 95% of FIFA’s revenues come from the sale of television broadcasting, marketing, and licensing rights related to the FIFA World Cup. In exchange for funding, FIFA grants exclusive rights to use its official marks to certain companies, which this year include addidas, Coca Cola, Gazprom, Budweiser, and Visa (rights holders).

In its 30-plus pages of official guidance on brand protection, FIFA claims that if anyone could use the official marks for free, the power of the marks would dilute and there would be no reason for companies to pay for sponsorship. Without lucrative corporate partnerships FIFA would lack the revenue required to organise the World Cup.

From the 2014 World Cup in Brazil, FIFA hauled in $4.8 billion in revenue, which turned a $2.6 billion profit for the association (which is then re-invested into development projects). Broadcast revenue topped $2.43 billion, while sponsorship fees brought in $1.6 billion and ticket sales earned $527 million. In other words, it’s not ticket sales that pay the bills: it’s intellectual property.

To date, FIFA’s intellectual property portfolio contains 14,000 trade mark registrations, about 300 registered designs, and 150 copyright registrations covering 157 jurisdictions overall (Official marks). Official marks include the flag, logo, hymn, and motto of FIFA, mascots, emblems, posters, and identification symbols.

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the official emblem and the official mascot, which is a Eurasian wolf named Zabivaka. According to the FIFA website, Zabivaka – which means “goal scorer” in Russian – “radiates fun, charm and confidence.”

The words “FIFA”, “2018 FIFA World Cup”, “World Cup Russia”, “FIFA World Cup”, “Football World Cup”, and “Soccer World Cup” are also protected, as are “Russia 2018” and “Moscow 2018.” Simply writing “Russia 2018” on a t-shirt could land you in trouble, as doing so may lead consumers to establish an unlawful association with FIFA’s tournament.

Trade marks as broad as these are generally not enforceable. One wonders if these trade marks would have been approved in the first place, were it not for the massive size and power of FIFA. However, it’s also important to note that, without the co-operation of local officials, FIFA lacks both adequate legitimacy and capability to effectively police and protect their official marks.

Russian law.
Domestic law provides FIFA with the additional teeth needed to enforce its intellectual property rights. In March of 2013, Russia passed the Federal Law No 108-FZ On preparation for and the staging of the 2018 FIFA World Cup (“World Cup Law”). There are provisions aimed at protecting FIFA’s commercial rights, including a specific procedure for the registration of FIFA’s trademarks. Under Article 19, pre-existing Russian trademarks that are identical or similar to FIFA’s are prohibited for use until 2019.

Compliance is supervised by the Russian Federal Service for Surveillance of Consumer Rights Protection and Human Wellbeing (Rospotrebnadzor) and the Federal Service for Supervision of Communications, Information Technology and Mass Media (Roskomnadzor).

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FIFA poster in front of the Kremlin, Moscow

On November 2017, Rospotrebnadzor adopted an agenda to prepare for the World Cup, including the key priority of supervising the use of FIFA’s official marks. In March, the Roskomnadzor announced that it had placed 858 websites selling counterfeit products on the so-called “Russian Internet Blacklist“, the Unified Register of Prohibited Information.

Additionally, the Federal Antimonopoly Service (FAS) can also hold parties accountable for illegal use of official marks. By way of example, Bavaria Brewing House Group Ltd and Agrofirma FAT Ltd raffled tickets for the World Cup final on their website and on social media. They also used FIFA trade marks in their promotional campaign and to mark their “Bavaria” beer. As neither Bavaria Brewing House nor Agrofirma FAT were licensed rights holders, the FAS issued an injunction against the companies to stop the violations.

What this means for fans.
FIFA engages in active surveillance and brand protection, which includes court proceedings to halt an infringing situation and seek financial compensation for any damages suffered.

It’s important to note that sports bars, restaurants, clothing brands and other companies are welcome to use generic football or country related images, provided they do not include any of FIFA’s official marks. The key here is avoiding reference to the World Cup that could suggest your company has an official relationship with FIFA.

But should individuals be worried about changing their profile pics on Facebook, if those photos include official marks? Not really. This is because sharing official content belonging to FIFA by fans without any commercial benefit is expressly permitted. This includes sharing on Facebook, Twitter, or even here on KelseyFarish.com, as blogs without commercial content are likewise exempted. Provided that you don’t attempt to make money by unlawfully using FIFA’s official marks, go on and enjoy the beautiful game!

Ricciardo’s ritual returns at Monaco Grand Prix

Ricciardo’s ritual returns at Monaco Grand Prix

Australian Formula One driver Daniel Ricciardo has an interesting celebratory ritual: he drinks champagne from his sweaty racing shoe. Keen to capitalise on the popularity of the stunt, Formula One has recently trademarked the name of this quirky act, known as a “shoey.”

Drinking champagne from a lady’s slipper was once a symbol of decadence in the early 1900s. According to drinks and culture website VinePair, sipping booze from shoes is said to be of Russian origin, dating back to the late 19th century. At the Bolshoi Ballet in Moscow, fans may have drunk vodka from their favourite ballerinas’ satin slippers!

Image result for drinking champagne from a shoe

The shoey celebration has found itself popular once again, at least in Australia. Dean and Shaun Harrington of the The Mad Hueys surfing brand are said to have reintroduced this strange practice – and the name “shoey” – back in 2002. As The Mad Hueys gained in popularity, more celebs in the shoey.

However, the shoey only really hit the global stage after Red Bull racing champ Daniel Ricciardo adopted the tradition to celebrate his racing victories. During a press conference in 2016, Ricciardo admitted that it “basically comes from a few Aussies called the Mad Hueys. I just thought I’d keep the Australian tradition going!” Cognizant as ever of the branding and merchandising potential behind their biggest stars, Formula One Licensing B.V. has now trademarked shoey.

When asked at the Spanish Grand Prix about F1 trademarking his so-called trademark, Ricciardo said, “I don’t know what that means. Can I still do it or are they going to fine me every time?”

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Daniel Ricciardo (Australia, racing for Red Bull) does a “shoey” on the podium, while Lewis Hamilton (UK, racing for Mercedes) who came in third, looks on.

Hopefully by now, his team will have explained that the trademark protection only extends to the use of the word on certain products. F1 won’t be able to stop Daniel, or anyone else for that matter, from celebrating in this way.

Now registered in 25 countries, the shoey trademark is protected in the United States, Germany, Italy, France and the United Kingdom (you can see the UK’s Intellectual Property Office record here).

It’s important to note that trademarks are categorised according to the products or services to which they relate. When making an application for trademark protection, the applicant must choose from one of the classifications under the Nice Agreement (1957). Registering a trademark in one particular class cannot prevent someone from registering the same trademark in a different class.

F1’s shoey registration is for use on items in Class 21, which covers household goods such as glasses, bottles, mugs, sculptures and figurines. Accordingly, we might see shoe-shaped beer steins with shoey written on them for sale at the F1 shop. In addition – or perhaps alternatively – trademarking shoey could be a defensive move by F1, to keep someone else out of the market.

F1 previously attempted to register shoey in Class 25, which would have protected the use of shoey on clothing, hats, and some types of shoes. However, this was cancelled due to an earlier registration by the Harringtons. This is why the Mad Hueys are able to use shoey on their line of clothing, but wouldn’t be able to use it on glasses or mugs without stepping on F1’s toes (or tyres, I suppose).

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Trademark battle: The Mad Hueys website explains: “Passed down from our ancestors, the Shoey ritual runs deep within The Hueys family. The Shoey is ours and its here to stay! This limited edition collection asserts our position as the true kings of the Shoey!”