Attack or defend? Lessons on ambush marketing from Paddy Power

Published 12 June 2014 | Authored by: Alex Kelham
Love them or loathe them, Paddy Power lead by example when it comes to ambush marketing. It pains me slightly that, by writing this piece, I'm adding fuel to their "no publicity is bad publicity" fire.
However, with the FIFA World Cup rapidly approaching, and lots of brands jumping on the bandwagon, Paddy Power’s recent campaign which involves the bookmaker giving away 'free lions' t-shirts provides an insightful case study.1

Ambush marketing and FIFA’s guidelines

Firstly, it should be said that there is no agreed definition of ‎ambush marketing. It is generally accepted though that there are two key forms of ambush: by association and by intrusion.
Ambush by intrusion is the practise of non-sponsor brands seeking to gain visibility at or around an event, normally with a view to gaining some broadcast exposure. Although  Paddy Power doesn’t shy away from this type of ambush either, the ‘free lions’ example is a case of ambush by association.
At its widest, ambush by association is considered any activity by a non-sponsor brand which calls to mind a ‘sponsored property’ - normally a major sports event. The principle can however apply equally to events such as the Oscars, to teams and individual celebrities: any thing/person that has goodwill and attracts sponsorship. At its narrowest, ambush by association would be limited to advertising which misleads consumers into the belief that the brand in question is an official sponsor of the property.
FIFA's guidelines on use of official marks for the 2014 FIFA World Cup suggests that its definition of ambush by association falls somewhere between the two.2 The guidance (which is not legally binding) expressly states that generic football and/or Brazilian themed campaigns will not create an unauthorised association with the World Cup.  FIFA has also said, however, that it considers campaigns will be illicit where they “do not pretend any direct connection with the event” but are nevertheless “orchestrated in such a way (through use of other imagery and/or textual references) that the consumer’s attention or subconscious consideration is drawn to the company’s brand and the Tournaments at the same time, allowing for intangible brand value transfer to take place …”.3
So some forms of ambush marketing, at least when using the wider definition, are fair game. Current campaigns such as  McCoy's crisps promotion which offers pubs the chance of being 'relocated' to Brazil for June or Pot Noodle's ad for its new Brazilian BBQ flavour product are, for example, unlikely to be objected to by FIFA.4 Whilst they contain clear references to Brazil, they do not go as far associating the brands with the tournament itself.
Many people take the view that ambush marketing is simply clever (and often entertaining) marketing that should not be stifled. There are moral and commercial arguments on both sides and again, the definition of ambush marketing which is adopted is crucial when having this debate. As a lawyer it is important to be alert to the opposing views, but our primary role is to advise on the law.


UK Protections

Although Brazil’s “World Cup Law” gives FIFA extensive protection against ambush marketing in the host country5, there is no special 'anti-ambush' legislation in the UK as there was for the London 2012 Olympic and Paralympic Games and is in place for the Glasgow 2014 Commonwealth Games.6 As such, FIFA and the FA have to rely on traditional legal rights to prevent ambush of the World Cup and England team in the UK. Copyright, trade marks, designs and passing off all present potential avenues for challenge against businesses creating unauthorised associations with the event and/or the national team. Creative ambushers, however, are able to gain a fairly high degree of association without crossing a clear legal line. I say "clear" because there is always an element of uncertainty as to how the courts may decide a case brought before them.
The tort of passing off is likely to give rights holders the widest scope to successfully argue that an ambush is unlawful, but I'm not aware of any courts considering passing off in the context of a classic ambush example. The Rihanna - Top Shop case (Fenty v Arcadia Group, 2013),7 which related to the use of an image of the pop star on a t-shirt sold by the high street chain, provides a useful precedent though.8 This case reiterated that passing off can be relied upon where a significant number of consumers are misled into believing that a celebrity endorses a supplier of goods or services. The requirement for there to be a misrepresentation that misleads or deceives the consumer is key: as such, it is perhaps unsurprising that we are seeing more examples of spoof or mocking adverts, which clearly reference or allude to the property but are unlikely to give rise to any confusion.
A good example of this is the spoof viral spot issued just before the 2013 Super Bowl in which Samsung advertising execs are shown in a meeting trying to come up with an ad concept but are shushed each time they start to mention the event or one of the teams.9 ‎Another example is Curry's current advert in which a husband suggests to his wife that they buy a TV "just in time for the Wo... that programme about Castles" and uses the end-line "Football, what football?”.10 Coral have gone to the extreme claiming to be Official Sponsors of Brazil (as in Alan Brazil, the commentator).11

Paddy Power's "Free Lions"

Which bring us to Paddy Power. The ever-irreverent bookmaker has promoted its “Free Lions” T-shirts off the back of the official Team England Nike shirts costing £90. In doing, so they have positioned themselves as the ‘saviour of the common man’.
Considering passing off first, given that Paddy Power is taking it usual anti-establishment stance, is should be asked whether a court be willing to accept that a sufficient number of people have been misled to believe there is endorsement by the England Team of Paddy Power? Certainly anyone seeing the campaign as a whole is unlikely to be misled, but perhaps the T-shirts when seen by themselves could be misinterpreted as a humorous act of an official sponsor. Given that Paddy Power do sponsor football teams (Arsenal) and are known to have a cheeky approach to advertising, this is not beyond the realm of the imagination. The fact that Paddy Power also gave the t-shirts away to fans on their way to Wembley Stadium for England’s friendly match against Peru, could also add to the sense of them being authorised by the FA.12
Trade mark law is also relevant in this case. The Paddy Power T-shirt itself bears three lions on the chest, in roughly the same position as the England crest on the official shirts, and the lions appear in a similar pose with their heads turned towards the observer. But Paddy Power's lions are cartoon drawings, with the lions respectively holding a remote control, a pizza and a beer.
So would the FA have a good trade mark claim against Paddy Power? The FA hold the trade mark for the words "Three Lions", and this is certainly similar to "Free Lions". However, to prove infringement under section 10(2) of the Trade Marks Act 1994, it would be necessary to show confusion.13 Similarly with the trade mark for the three lions crest, there are definite similarities, such as the lions being positioned in the same pose, but whether there would there be confusion remains the key question.
The FA could also assert infringement under section 10(3) of the Trade Marks Act on the basis that their trade marks are famous marks with a reputation, and that Paddy Power's use of their three cartoon lions rides off the coat tails of the goodwill in the FA's registered trade mark and is detrimental to them.14 A section 10(3) claim does not require confusion, so this could represent the strongest argument for infringement.
However, as is the case in many of these situations, the choice of whether to pursue a claim at all is not a simple one. Paddy Power would no doubt seek to ‎publicise any action against them in order to garner some more headlines. There is a risk that they'd seek to portray the rights holder as spoiling the fun of the regular football fan …a calculated strategy that Paddy Power is no doubt hoping to use to their advantage.
Beyond the Paddy Power example, both the FA and FIFA will inevitably face an uphill ‎battle in the fight against ambushers over the next couple of months. With the other challenges currently facing this year’s tournament in Brazil, a part of me hopes that this is the only challenge they face, although that may be wishful thinking.
At the end of the day, I'm sure the football will be great and I will be following England avidly. No doubt, however, the other game being played this summer by brands will also provide interesting entertainment.

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About the Author

Alex Kelham

Alex Kelham

Alex is the Head of Lewis Silkin’s Sport Business Group. Her work focuses on advising entities across the sports sector on a wide range of predominantly commercial and IP issues.

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