Prohibited Marketing Strategies and Freedom of Expression: The Use of Competing Marks in a Corporate Sponsored Event Prohibited Marketing

 

In 2010 FIFA World Cup in Johannesburg, 36 women, all Dutch supporters, were ejected from the stadium by the World Cup Officials midway through the second half of the match between Netherlands and Denmark. The reason for ejection: they were all wearing orange.[1] FIFA claimed that the orange dresses were part of a gift pack which was sold during the World Cup by Bavaria, a Dutch brewery. As an official sponsor, Budweiser was the only beer company allowed to advertise in the World Cup. Allowing other brands to advertise whether directly or indirectly during the World Cup would be a breach of FIFA guidelines.

The idea of getting kicked out of a major sporting event because of what one wears may sound absurd to some. Bavaria spokesperson even called the claims of the FIFA organizers as ridiculous as “they do not own the rights to the color orange”.[2] But this is actually one of the major problems faced by organizers of major sporting events such as FIFA and the Olympics. Companies would pay billions of dollars in order to get a sponsorship to the event. Their sponsorship allows them to advertise their own brand during the event. On the other hand, those companies who did not pay are not allowed to associate their brands to these events. These non-sponsors, however, employs what is now known as ambush marketing to get free publicity in these events. To combat this, various preventive mechanisms were put in place. In the 2012 London Olympics, brand police were seen patrolling the different event venues to ensure that there would be no violations of their advertising guidelines.

Brand Protection

Event organizers of sporting events all over the world have placed measures to prevent devaluation of sponsorship. Many of these events are highly dependent upon the sponsorship of companies, who are willing to pay for the opportunity to advertise in these events. To illustrate how these international organizations protect the branding of their sponsors, let us look at the methods and models employed by FIFA World Cup for brand protection. Fédération Internationale de Football Association (FIFA) is an international governing body of association football, footsal and beach soccer. For the 2014 FIFA World Cup, the organization identified three focus areas for their brand protection: intellectual property, ambush marketing and counterfeit products. For purposes of this blog, only the first two will be discussed.

 

Ambush Marketing

The International Olympic Committee defines ambush marketing as “… any attempt by an individual or entity to create an unauthorized or false association (whether or not commercial) with the Olympic Games, the Olympic Movement, the IOC, the National Olympic Committee of the Host Country or the Organizing Committee of the Olympic Games (OCOG) thereby interfering with the legitimate contractual rights of official marketing partners of the Olympic Games.”[3]

FIFA further classifies this into either direct or indirect association. A direct association “is established when a brand tries to link itself directly to the event, be it through advertising or promotions such as ticket giveaways, use of tournament designations, etc.”[4] In the 2008 Beijing Olympics, it was reported that Coca-Cola spent $400 Million in marketing, $85 Million of which was spent to be a sponsor of the said event.[5] Meanwhile, Coca-Cola’s biggest rival, Pepsi, launched a contest ranking mugshots sent in by fans, where the winning entries will be printed on cans cheering on team China. In Sydney, Qantas Airways got endorsements from Olympic athletes even if Ansette Airlines was the official carrier for the games.

On the other hand, an indirect association is one which “aims to achieve an association with the event without making a direct link, often implementing creative campaigns aimed at achieving a link to the event.” [6] In 2010, budget airline Kulula launched an ad which claimed that it was the “Unofficial National Carrier of You-Know-what” during the FIFA World Cup in Johannesburg.

Intellectual Property and Trademarks

For the 2014 World Cup in Brazil, FIFA released a Public Guidelines For Use of FIFA’s Official Marks. The guideline enumerates the following as protected terms[7]:

  • 2014 FIFA World Cup Brazil
  • 2014 FIFA World Cup
  • FIFA World Cup
  • FIFA
  • World Cup
  • 2014 World Cup
  • World Cup 2014
  • Brazil 2014
  • 2014 Brazil
  • Football World Cup
  • Soccer World Cup
  • Copa 2014
  • Copa do Mundo
  • Mundial 2014
  • Mundial de Futebol Brasil 2014
  • Copa do Mundo 2014
  • Host City Names + 2014 for each of the host cities.

The guideline also provides common examples of unauthorized commercial associations with the 2014 World Cup, as well as those activities which are considered legitimate[8]. The use of merchandising items with general football terms or Brazil-related terms or national flags do not create an infringement of FIFA’s rights, provided that it is not used in conjunction with any of the protected terms[9]. The use of an Official Mark on any merchandising item however creates an unauthorized association[10].

The Philippine Setting

Not much is written about these prohibited marketing strategies in the Philippines, be it in the context of a sporting event, or on any other event for that matter. There is in fact no specific provision in the law prohibiting the use of a competitor’s mark is a corporate sponsored event. However, persons or companies who have been victims of these prohibited marketing strategies are not without recourse. Philippine laws grants indemnity for damages in cases where there is abuse of rights, even when the act is not illicit. Those whose rights were violated may invoke articles 19 – 21 of the Civil Code governing human relations. The exercise of a right which does not conform to the standards set by Article 19, that right, though legal in itself “may nevertheless become the source of some illegality”[11]

But when can such act be considered a prohibited form of marketing? The use of competing marks, if so deliberately done, may be understood to constitute prohibited marketing and such person may be civilly liable. But what if the use of such mark is not deliberate? Say, for example, you watched a basketball game sponsored by Adidas. You decided to sit at the ringside section, shelling out a huge sum of money so that you can enjoy the game. Midway through the game, you were asked to step out of the venue, as you are wearing a shirt with the words “NIKE” printed across. Whose rights are then violated, yours as a spectator, or Adidas’, being the sponsor of the event? I am of the opinion that in the absence of bad faith, the answer should be that of the former’s.

Need for Legislative Measures

To safeguard the right to freedom of expression of every citizen, as well as the rights of these companies from unscrupulous illegal marketing, a balanced legislation should be made. It should provide protection to both parties.  On November 2010, the International Trademark Association, a non-profit association of trademark owners and professionals “dedicated to supporting trademarks and related intellectual property in order to protect consumers and to promote fair and effective commerce”[12] issued a board resolution which recommends that the following principles and guidelines as the basis of such legislation:

a. A reasonable balance should be struck between the interests of the organizers, sponsors, local businesses and property owners, the local community in which the event will be held, and trademark owners.

b. Prior to adopting ambush marketing legislation for the protection of a major event, event emblem or word, there should be consultation with potentially affected parties.

c. The special protections granted to organizers and sponsors of a protected event should be limited in time so that they are in effect only for a certain amount of time leading up to the event and for a reasonable amount of time following the event.

d. Restricted “ambush marketing” activities should be limited in scope and clearly defined so that only commercial activities that create or are likely to create a false implication of sponsorship or association for the non-sponsor or confusion among the public as to sponsorship are prohibited.

e. Remedies in ambush marketing legislation should minimize the risk of sponsors using overreaching rights of action to the detriment of bona fide trademark owners.

f. Special protection should not be granted to any single non-distinctive term or symbol and such terms and symbols should remain available for use by all traders, so long as use of such single term or symbol does not create a false impression of sponsorship of the event.

g. The validity of pre-existing rights, whether intellectual property rights, tangible property rights, contract rights, and others, should be recognized and reasonably accommodated, especially when establishing such restrictions as “clean zones” and “clean transport zones.”

h. The effect of ambush marketing legislation on trademark applications, particularly for symbols, should be taken into account. For example, it may be appropriate to provide that a conflicting application remains in limbo pending expiry of a special protection period.

i. Ambush marketing legislation should make it clear that the organizers and/or sponsors of the event are the only entities responsible for bringing, or entitled to bring, civil actions to enforce the legislation.

j. Express exceptions to violation of ambush marketing legislation could include ongoing activities by existing organizations, registered trademarks and trade names. The categories of exceptions should be appropriately and carefully defined – for example the manner in which a registered trademark category is defined may also need to include device marks and “brand extensions.” Pre-existing unregistered trademarks and trade names should be taken into account and descriptive and other permissible fair uses should also be excepted, so long as they do not create a false impression of sponsorship.

k. In the interests of appropriately balancing the respective parties’ rights it would be preferable for ambush marketing legislation to avoid presumptions of violations and rather make the inclusion of protected emblems or words a factor to be considered in assessing whether a violation has occurred.

l. Ambush marketing legislation might provide for civil remedies as are available in other types of intellectual property matters, such as injunctions, damages, seizure of counterfeit goods, and corrective advertising, but should not provide for criminal penalties, such as criminal fines and imprisonment.[13]

Freedom of Expression

The Universal Declaration of Human Rights, of which the Philippines is a signatory, provides that “Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.”[14] This right of expression includes the freedom to choose what to wear. The choice of which clothes to wear In the Philippines, the right of expression in guaranteed by Article III, section 4 of the 1987 Constitution, which provides:

No law shall be passed abridging the freedom of speech, of expression, or of the press, or the right of the people peaceably to assemble and petition the Government of redress of grievances”

The right of freedom of expression is guaranteed by no less than the Constitution. The freedom to choose what to wear is part of that freedom. Should a legislation be passed governing rules prohibiting illegal marketing activities, the government would have to make sure that such legislation would not infringe upon the freedom of expression of the citizens. Otherwise, the legislation would have no force and effect as it would be unconstitutional.

The freedom of expression has two elements, to wit: (1) freedom from previous restraint or censorship; and (2) freedom from subsequent punishment.

Censorship

Oxford Dictionaries define censorship as the examination by an official of a book, film, etc, and suppressing unacceptable parts of it. It “conditions the exercise of freedom of expression upon the prior approval of the government”[15]. It restricts all other ideas which are deemed not acceptable by the government. A legislation which would tend to prohibit an individual from wearing clothes which may contain marks of a competing brand in a corporate sponsored event, without bad faith on his part, would partake the nature of a government censorship. Such legislation would be an “anathema in a free society.[16]

Only civil liability, not criminal

As the use of prohibited marketing strategies are commercial in nature, violators should only be made civilly liable. Imposing criminal liability would be a harsh punishment. The Committee on Emerging Issues of the International Trademark Association resolved that “imposing criminal penalties such as imprisonment, for ambush marketing violations gives event organizers and sponsors an inordinate amount of leverage against potential violators, by threatening their very freedom. Criminal penalties for ambush marketing activities are disproportionate and inappropriate under these circumstances.”[17]

Conclusion

As a sponsor to an event, these companies have the right to exclude other companies from advertising from their events. The practice of companies free-riding on these events must not be tolerated. But we must also keep in mind that not all forms of ambush marketing is illegal per se. To determine whether an act should be considered as prohibited marketing is the “value of goodwill through signs that are distinctive to the claimant in the public mind, such as marks, logos, names, and other well associated imagery”.[18] The mere wearing of the color red in an event sponsored by a company which is associated with the color blue, does not of itself constitute an illegal marketing act.

Different international organizations are calling for legislations particularly dealing with the use of illegal marketing strategies. Should the Philippines decide to make such legislation, it should be geared towards the upholding and preserving the rights, as well as the protection of its citizens.


[2] Ibid

[3] The Chartered Institute of Marketing. Ambush Marketing and the Law. 2011

[7] Fédération Internationale de Football Association. FIFA Public Guidelines For Use of FIFA Official Marks (Issue No. 7). May, 2013.

[8] The following are NOT considered Unauthorized Association:

  • An advertisement using general football terms/imagery
  • any legitimate editorial, non- commercial use does NOT create an Unauthorised Association.
  • The editorial, non- commercial use of the match schedule by the news media does NOT create an Unauthorised Association.
  • A general football-related OR Brazil-related business name may NOT create an Unauthorised Association (provided it is not used together with FIFA World CupTM indicia, imagery or reference, or the name )
  • Merchandising items with general football terms OR Brazil-related terms OR national flags do NOT create an infringement of FIFA’s rights (provided it is not used together with FIFA World CupTM indicia, imagery or reference, or the name).
  • general football-related or Brazil- related in-store decoration does NOT create an Unauthorised Association.
  • The use of an Official Mark in an URL can be considered legitimate and descriptive use if it comes after the domain name.

The following are considered Unauthorized Association:

  • an advertisement using an Official Mark (such as emblems, words, slogans, event titles, etc.) or any other reference to the event creates an Unauthorised Association.
  • any type of ticket promotion (including on-line auctions and promotional competitions), unless organised by a FIFA Partner, creates an Unauthorised Association.
  • any type of contest, game or lottery using an Official Mark creates an Unauthorised Association.
  • there is no legitimate justification for the commercial use or presentation of editorial content by third parties using an Official Mark as this creates an Unauthorised Association.
  • The commercial use of the match schedule, specifically for advertising
  • The use of an Official Mark on a merchandising item creates an Unauthorised Association.
  • In general, Official Marks cannot be incorporated in domain names (or into a URL identification which comes before the domain name) for websites with commercial content.
  • Official Marks may not be used together with, or in proximity to, a company logo or commercial reference (such as ‘Brought to you by …’ or ‘Sponsored by …’, etc. or used on a stand- alone basis, in a fixed position or in a recurring way on a website including mobile optimised websites or applications, particularly repetitive use of the Marks in the corner of a special edition or on each successive web page of a special subsection of a website).
  • Official Marks may not be used as hyperlinks or shortcuts on the Internet
  • FIFA’s official logos, symbols and other graphic trade marks may not be used in SMS, MMS or similar mobile services. FIFA’s Protected Terms (e.g. the event titles) may not be used in such mobile services to create the impression that a service is officially associated with the 2014 FIFA World CupTM
  • Official Marks may not be used for specific applications on the 2014 FIFA World CupTM and no association may be created with FIFA and/or the 2014 FIFA World CupTM. The Protected Terms may not be incorporated in the name of any such application.
  • Official Marks may not be used as part of the “get up”, overall structure or design of a website (including background or wallpaper designs), or as a major constituent of a transitional introductory web page of a website.

[9] Fédération Internationale de Football Association. FIFA Public Guidelines For Use of FIFA Official Marks (Issue No. 7). May, 2013.

[10] Ibid.

[11] Rabuya, Elmer. Persons and Family Relations. Manila: Rex Publishing, Inc., 2006.

[14] Article 19, United Nations Universal Declaration of Human Rights

[15] Cruz, Isagani. Constitutional Law. Central Book Supply, Inc. Manila, 2007

[16] Ibid.

[18] The Chartered Institute of Marketing. Ambush Marketing and the Law. 2011

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About attywannabe

Oh yes, I am a law student.
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