The Rugby World Cup and IP Usage

Unusually here, the host nation, Japan, has declined to enact any specific legislation to combat ambush marketing or enlarge on the standard legal protections available to it.

In contrast, the UK enacted specific laws – London Olympic Games and Paralympic Games Act 2006 – to regulate all commercial exploitation of the London 2012 Summer Olympics. And both South Africa and New Zealand had similar legislation for the 2010 FIFA World Cup and 2011 Rugby World Cup.

Even without specific statutes, intellectual property rights are still potent – notably trade mark registrations, copyright protection and laws of ‘passing off’.

There are of course multiple registered trade marks for RWC 2019, including the new Rugby World Cup logo. These carry the usual rights for the proprietor (Rugby World Cup Ltd) to bring infringement proceedings against unauthorised users (potentially, including those conducting ambush marketing) if they are using the same or similar mark in advertising or products.

Where claims are brought based on similarity, there is a pre-condition of confusion – would the public at large (or indeed the relevant rugby-watching public) believe that an advertiser, alluding to the competition or indeed rugby in general, was somehow connected officially to the RWC 2019?

This can be a delicate judgement call where an advertiser is keen to show children getting their white shirts dirty playing rugby or scenes of rowdy national supporters in pubs, but without explicitly referencing the world cup.

Seeking to further entrench its intellectual property rights, Rugby World Cup have released ‘Media Guidelines’ which state that no entities (other than those authorised) are permitted to use the RWC 2019 event mark and/or trophy image for any commercial purposes. The media guidelines are not legally binding but indicate what they consider the boundaries of restricted usage to be. It’s important to note that, unlike with copyright, there are no ‘fair use’, parody or quotation allowances for usage of registered trade marks.

Copyright is also relevant: protection extends beyond words, slogans and brand-names (that would typically be registered as trade marks) to artwork, video footage and photographs. This means that the proprietors of such copyright materials could stop an ambitious (but unofficial) advertiser from any reproduction or communication to the public of such material even where there was no evidence of a confused public.

Also, there are the additional and overlapping rights of passing off – often enacted in other jurisdictions as unfair competition laws or, in France, also as ‘concurrence parasitair‘ (parasitic activity).  And the USA has federal remedies under its Lanham Act to prevent ‘false advertising’.

The UK law is available where one party attempts to pass off its goods and/or services as being the goods and/or services of another party. But this means more than badging a product wrongly as that of the brand owner. In the context of RWC 2019, injunctions for passing off and damages claims would be available where the tournament organisers (or the IP holding entity) could show that:

• There was reputation or goodwill established and that this was attached to the organiser;
• the (unauthorised) user had made a misrepresentation to the public that it was somehow connected with the RWC 2019 and this had led, or was likely to lead, the public to believe that the user was connected officially to the RWC 2019; and
• there was damage (or likelihood of damage) to the RWC 2019 and/or the organiser’s business, reputation or goodwill.

At heart, the test, in our view, is this: is your advertising, or branding of your products or services such that viewers or buyers would assume that you must have obtained an official license from RWC?

There is some complexity as to where these various rights sit. The trade marks are all registered in the name of an Irish company, Rugby World Cup Ltd; data collection is by ‘the Rugby World Cup 2019 Organising Committee’ in Japan, and the event itself is hosted and run by ‘Japan Rugby 2019’.

Given that there is generally a stranglehold over commercial usage using the value of such tournaments, people now are increasingly aware that there is probably a license in place, or should be. Paradoxically, where there is little commercial exploitation (e.g. creating figurines of the determinedly non-profit making Dalai Lama), then their rights are so much more limited in this area than compared to a vigorous and active merchandising operation from someone far more active commercially.

Breach of intellectual property rights can give rise to significant claims, including for surrender of profits made, and, for trade marks and copyright, potential criminal offences. Beyond this, there are consumer protection laws and also scrutiny by the Advertising Standards Authority. So, it’s a complex area with troubling consequences for those who overstep the mark.

The message then for advertisers is to be extremely cautious in using any rugby or UK sport references over the next few weeks.

(This article was written by Robin Fry and Andrew de Bernier in our Commercial, IP & Technology (CIPT) team.)