The UK’s national governing body for gymnastics, British Gymnastics, was successful this summer in its trade mark infringement and passing off claims against a breakaway rival company under the brand ‘UK Gymnastics’. We explore this case and the broader topic of IP protection available to sports and e-sports rightsholders below.
The judge in British Gymnastics did not consider the ‘UK Gymnastics’ marks to be visually or aurally similar to those owned by British Gymnastics, but held that there was a “likelihood of confusion” due to the similarity between the services on offer. The judge went on to describe the marks as being “conceptually” similar due to the geographical areas in question and the use of ‘UK’ and ‘British’ signifying formal or official status, as well as there being a “serious risk” that the use by UK Gymnastics of its marks would be detrimental to the distinctive character and reputation acquired by the marks of British Gymnastics.
While this was a successful outcome for British Gymnastics, which said it took action to “protect the future integrity of the sport”, the dispute has highlighted a wider challenge for sports rightsholders, namely how to protect sports properties.
There are limited IP protections available for sports rightsholders. Despite recognising that sporting events have a unique and original character, the European Court of Justice has previously confirmed in Premier League that sporting events cannot be protected under EU copyright law, as an event cannot be regarded as an intellectual creation under the Copyright Directive when the rules of the game leave no room for creative expressive freedom.
In a world where new formats such as T20 cricket and Rugby X are being introduced to cater to audiences demanding high drama and concentrated entertainment, sports rightsholders need to take a creative approach to protecting aspects of their format through a combination of IP rights including trade marks, design rights and goodwill, and through control of domain names and social media accounts. Sports rightsholders need to think about IP protections and branding strategy early on to avoid the pitfalls.
There are lessons to be learnt, some recent examples include:
- At the end of Roger Federer’s long-standing sponsorship deal with Nike in 2018, and perhaps at some surprise to Roger Federer, Nike asserted ownership of the ‘RF’ logo which had become synonymous with Federer’s brand and featured on Federer-Nike merchandise. As a result, Federer was not able to use the ‘RF’ logo in his new partnership with Uniqlo. Nike has not used the ‘RF’ logo on merchandise since the split (other than on shoes still worn by the tennis player) during a two-year stalemate which recently ended with Nike assigning the mark to Federer’s company as part of an undisclosed settlement. It was an emotive issue for Federer, who described the logo as “something that was very important for me, for the fans really... They are my initials. They are mine”.
- The Washington Football Team (formerly the ‘Washington Redskins’) ran into issues in its move to rebrand this summer. Under mounting pressure from fans and sponsors, the franchise owner dropped the team’s controversial name and logo. The snap announcement to rebrand without a new brand to transition to allowed one speculating IP entrepreneur to file trade mark applications for most of the leading candidates for the new name. While it is not clear whether those applications will stand, the Washington franchise will face added costs and delays in securing trade mark protection for its new brand.
- Inter Milan has disputed the use of ‘Inter’ in the name of Major League Soccer’s latest Floridian club, David Beckham’s Inter Miami CF. In 2018, MLS sought to register ‘Inter Miami CF’ as a US trade mark and, at the same time, filed an opposition to Inter Milan’s 2014 application for exclusive US rights in the word ‘Inter’. The US Patent and Trademark Office held that one of MLS’ arguments – that, given the widespread use of ‘Inter’ in other clubs’ names, the trade mark of ‘Inter’ would likely cause confusion among the public – was inadmissible. The dispute rumbles on but success for Inter Milan could see MLS forced to rebrand Inter Miami CF – likely to be a costly exercise given its recent launch.
Other sports rightsholders have started to think about IP protection for new formats earlier in the process. The England and Wales Cricket Board has filed applications to register UK and international trade marks for its new 100-ball cricket format, ‘The Hundred’, well in advance of the first tournament taking place. Although the ECB’s trade mark applications will not protect the format of the game, the marks will (if accepted) bolster the ECB’s ability to protect the ‘The Hundred’ brand from unauthorised use by competitors or those looking to produce unofficial merchandise.
What about e-sports?
While traditional sports franchises have faced an uphill battle to secure and protect IP rights for their sporting events and brands, it’s a different ball game for e-sports rightsholders and competitive video gaming franchises.
Generally speaking, unlike the rules or structure of a traditional sport, the code, storyline and audio-visual content that make up a video game are capable of being protected under copyright law. This means that the owners of the copyright (typically the developers and/or publishers) can wield significant control over those who want to play or create derivative content. This was perhaps best illustrated in 2015 when, in a dispute between Twitch and Azubu (two well-known e-sports streaming services), regarding the broadcasting rights of a player’s gameplay, the publisher of the video game, Riot Games, weighed in to say that the claim had no legal standing because it, and not the claimant Azubu, was the proper owner of all gameplay content and relevant broadcasting rights. Despite this clarity on IP ownership of video games, the complexity of IP ownership and licensing when it comes to derivative content (e.g. content created from gameplay) may well bring its own challenges for e-sport stakeholders.
The global e-sports industry is forecast to exceed $1 billion this year and rise to $1.6 billion in 2023. Whilst those figures are not yet comparable to the value of the global traditional sports industry, when bolstered by the additional IP protections on offer to e-sports rightsholders, we may yet see certain e-sports proving just as lucrative as, and possibly better protected than, their traditional counterparts.
The weight of the evidence leads me to conclude that it is more likely than not that the use of the [UK Gymnastics] Signs by the Defendants is intended to, and does, take unfair advantage of the distinctive character and repute of the [British Gymnastics] Trade Marks...