Brand protection, trademarks, and the event that shall not be named: Event-specific legislation and the Olympic Games - Part 3 of 3Leonard Glickman, Evan Eliasona
In part 3 of this Trademark in Sports trilogy, Len Glickman and Evan Eliason examine efforts by the International Olympic Committee and FIFA to implement event specific trademark legislation to protect event marks and sponsors and discourage ambush marketing.
For any country fortunate enough to be awarded the opportunity to host the Olympic Games, the international platform associated with the Games provides the host country with a rare chance to showcase its talents and achievements to the rest of the world on a global stage. Successfully staging an event of this magnitude requires organizers to routinely tackle complex logistical issues often riddled with uncertainty. Yet for all of the challenges surrounding things like infrastructure development, transportation logistics, and security operations, one thing remains certain: hosting the Olympic Games is big business.
Just how big? To provide some perspective, the 2012 Olympic Games in London reportedly cost approximately £8.92 billion, and expects to deliver £16.5 billion in GDP to the UK from 2005-2017.1 However, prior to awarding a host country the Games, the International Olympic Committee ("IOC") requires each bidding country to commit to enacting intellectual property legislation granting special trademark protection to the IOC, host country Olympic committees, and official Olympic sponsors. The legislation must protect several Olympic marks and restrict the ambush marketing activities of businesses who are not official sponsors of the Games. A look back at the commercial development of the Olympic Games provides the backdrop of why such legislative measures are deemed necessary by the IOC.
Ambush marketers and the commercial development of the olympic games
The Olympic Games have become increasingly commercialized in recent years, evolving into one of the most recognizable sporting events on the planet. Throughout this development, the Olympic brand has amassed considerable value and goodwill, and has gained significant international regard and recognition. A number of companies have spent substantial sums of money to become Olympic sponsors and leverage the goodwill associated with the Olympic brand. As the Olympic Sponsorship program has grown, so has the number of ambush marketers, or third parties attempting to associate themselves with the Olympics without incurring the investment of being an official Olympic sponsor. These ambush marketers do so in hopes of increasing their corporate profile and profitability, generally at the expense of one of their competitors who has paid a steep price for the right to be an official sponsor of the Games.
At the 1996 Olympic Games in Atlanta, UK sprinter Linford Christie infamously arrived to his press conference with more than just a twinkle in his eye. Christie took the podium sporting contact lenses that featured the logo of his corporate sponsor, Puma.2 This undoubtedly infuriated executives at Reebok (a direct competitor to Puma) who were an official sponsor of the Atlanta Games.3 While the rest of the world was left with an enduring image of a Puma leaping across the pupils of Linford Christie, executives at Reebok were left seeing red.
For the IOC, this incident and a host of similar situations represented a troubling trend for an event that relies heavily on sponsorship and other private sector sources for funding. If exclusive rights could not be guaranteed to these entities, it would be difficult to justify the significant sponsorship fees required to offset the cost of the Games. This problem was further complicated by the fact that the IOC operates in many jurisdictions with differing intellectual property regimes.
Since the 2000 Olympics in Sydney, Australia, the IOC has required host countries to enact intellectual property legislation designed to protect the Olympic brand and the rights of official sponsors. This legislation is intended to supplement existing legislation which does not contain specific ambush marketing provisions and serve as a deterrent to ambush marketers who are eager to gain publicity and enhance profitability, all while associating themselves with a worldwide sporting event brand synonymous with quality and excellence. The legislation is also intended to maintain the integrity of the Olympic Games, and ensure Olympic committees are able to secure the requisite sponsorship funding needed to satisfy the demands of an Olympic budget.
Similar legislative reforms have been extended to other major sporting events such as the World Cup. The Fédération Internationale de Football Association ("FIFA"), which serves as the governing body for the sport of football worldwide, was forced to explore similar protective measures following an abundance of ambush marketing at the 1998 World Cup in France. FIFA has since implemented an extensive rights protection programme, including the registration of its key logos, emblems, mascots and other official marks in a number of jurisdictions.4 In addition, FIFA now requires host nations to pass legislation prior to the World Cup to provide additional protection to relevant World Cup marks. The Brazilian government has enacted Law nr. 12.663, or the "General Law of the World Cup", in advance of the 2014 World Cup in Brazil, while similar legislation has also been enacted by the Russian government in advance of the 2018 World Cup.
An overview of Olympic trademark legislation in recent Olympic Games
After Beijing was awarded the 2008 Olympic Games, the Chinese government passed more than 10 national regulations titled the Regulations on the Protection of Olympic Symbols (the "Regulations").5 The Regulations protected a wide range of Olympic-related intellectual property rights, and restricted both the commercial and non-commercial use of Olympic symbols by unofficial sponsors.6 In addition, the Beijing Organizing Committee for the Games of the XXIX Olympiad ("BOCOG"), created a Legal Affairs Department and a Brand Protection Department to enforce the intellectual property rights protected under the Regulations. The Regulations were heavily enforced by BOCOG during the Olympics, an especially difficult task considering China's reputation as a haven for intellectual property infringers.
Similarly, in advance of the 2010 Vancouver Winter Olympics, the Canadian government passed legislation designed to protect the interests of the IOC and official Olympic sponsors. Receiving Royal Assent on June 22, 2007, the Olympic and Paralympic Marks Act (the "OPMA") created a separate legal framework for Olympic trademarks in Canada.7 Specifically, the OPMA afforded both the Vancouver Organizing Committee ("VANOC") and official sponsors of the Games additional rights beyond those included in Canada's traditional trademark regime. The OPMA also provided protection to certain images, words and phrases associated with the Olympics (see Schedule "A"), and the 2010 Games in Vancouver (see Schedule "B").8
Specifically, the OPMA restricts ambush marketing tactics by businesses and individuals who, while acting in an unofficial capacity, attempt to derive benefits by demonstrating an affiliation with the Games. Section 4(1) of the OPMA prohibits any person from misleading or attempting to mislead the public into believing that their business is in some way authorized or endorsed by an Olympic committee, or that a business association exists between the business and the Olympic Games.9
Before the OPMA was brought into law, the Canadian Trade-marks Act was the statutory authority for protecting all marks, including Olympic marks, in Canada.10 The Trade-marks Act provides protection to official marks held by "public authorities", such as the Canadian Olympic Committee ("COC"), and provides relief where infringing marks are proven to be confusing with the official marks. Although this legislation covers Olympic marks held by the COC as a public authority, and was used frequently by the COC to enforce its rights prior to the implementation of the OPMA, it is clear that Olympic organizers sought additional protective legislative measures for the 2010 Vancouver Games.11
The passing of the OPMA allowed the governing bodies of the Vancouver Olympics to more readily enforce their intellectual property rights than they could have under the Trade-marks Act. Section 3(1) of the OPMA merely requires that an infringing mark be 'mistaken for' a protected mark in order for relief to be granted.12 In addition, the OPMA removed a notable evidentiary burden from applicants seeking an interim or interlocutory injunction against infringing third parties. Section 6 of the OPMA provides that applicants in such circumstances are not required to prove that they will suffer irreparable harm but only that the conduct of the third party has infringed their legislative rights.13 This allowed the IOC, VANOC, and the official sponsors of the Games to receive expedient judicial relief to stop unauthorized promotional activity by infringing third parties.
The United States passed similar legislation protecting Olympic and Paralympic marks, words, and phrases. The Amateur Sports Act of 1978 (the "Sports Act"), later amended in 1998 by the Ted Stevens Olympic and Amateur Sports Act, grants the exclusive domestic commercial rights to the Olympic Games to the United States Olympic Committee ("USOC").14 The Sports Act grants USOC the authority to prevent any person from using various symbols, emblems, trademarks, trade names, words, and phrases for the purposes of trade, to induce the sale of any goods or services, or to promote any theatrical exhibition, athletic performance, or competition associated with the Olympics.
The United Kingdom also has trademark legislation protecting Olympic marks. The Olympic Symbols etc. (Protection) Act (the "OSPA") of 1995 provides protection to the Olympic rings, as well as the phrase "Citius, Altius, Fortius" (Faster, Higher, Stronger), and the words Olympiad, Olympiads, Olympian, Olympians and Olympics.15 The OSPA was amended in 2006 by the London Olympic Games and Paralympic Games Act, to expand the list of protected words and expressions in advance of the 2012 London Olympics. The amended statute also extends protection to words and symbols associated with the Paralympics, and prevents any unauthorized person from doing anything that is likely to suggest to the public that there is an association between the London Olympics and that person or the goods and services provided by that person. Similar ambush marketing provisions can be found in the Glasgow Commonwealth Games Act 2008 which was passed in connection with the Commonwealth Games to be held in Glasgow in the summer of 2014.
Intellectual property legislation and agreements have also been enacted for the next three Olympiads in Sochi (Russia), Rio de Janeiro (Brazil), and PyeongChang (South Korea). The Russian government passed Federal Law No 310, otherwise known as the "Olympic Law", to establish a list and usage procedures for Olympic and Paralympic marks of the 2014 Games. The Olympic Law grants the Sochi 2014 Organizing Committee, and official representatives of the IOC, the exclusive rights to the protected marks.16 Similarly, the Brazilian government enacted the Olympic Act, Law 12,035/09, shortly after the IOC awarded Rio de Janeiro the 2016 Olympic Games. The Olympic Act grants the exclusive rights to protected Olympic and Paralympic marks to the Rio 2016 Olympic and Paralympic Games Organising Committee, the IOC, and official Olympic sponsors. In early 2013, the organizing committee for the 2018 Winter Olympics in PyeongChang, South Korea, reached an agreement with the IOC regarding the implementation of a marketing program for the 2018 Games17. The agreement grants the Olympic organizing committee exclusive access to all protected Olympic marks for the 2018 Games, and charges the organizing committee with the responsibility of initiating fundraising and marketing activities for the Games.18 While no formal trademark legislation has been passed to date, it is expected to be passed in advance of the 2018 Games.
Judicial enforcement of Olympic trademarks
In addition to the legislative framework mandated by the IOC, Olympic trademarks have received judicial enforcement by international courts. In advance of the 2006 Winter Olympics in Torino, Italy, Benetton Group (an Italian clothing manufacturer) initiated proceedings against the IOC seeking expungement of a number of the IOC's Italian trademarks, including the trademark "OLYMPIC."19 Benetton Group sought a judgment that their use of the word on clothing they had manufactured was not an infringement of the trademark registrations held by the IOC. They argued that the word Olympic was commonly used in expressions and was inherently descriptive, and therefore could not be owned and exploited solely by the IOC. In addition, Benetton argued that their use of the word Olympic would operate only in a decorative capacity on its clothing, and should therefore be permitted. The Italian court disagreed, rejecting the claimants' submissions and holding that the Olympic trademarks held by the IOC had unique value. In rendering its decision, the Court of Venice prohibited Benetton Group from using these marks on their clothing collection and delivered a clear, multi-jurisdictional message that Olympic trademarks are to be protected.
Where there's a will, there's a way – renewed efforts by ambush marketers
Although the IOC intended to all but eliminate ambush marketing at the Games, marketers have continued to employ innovative tactics to gain access to the Olympic Games.
Lululemon Athletica, a Vancouver clothing retailer that was not an official sponsor of the 2010 Vancouver Games, released a product line entitled the "Cool Sporting Event That Takes Place in British Columbia Between 2009 & 2011 Edition." The clothing items were put on sale a mere two months before the Games began and were available in the national colours of countries deemed likely to be well represented at the Games. While the marketing tactic was deliberately constructed to circumvent the OPMA and generate publicity, it triggered a stern response from VANOC who were clearly less than amused.
In a similar vein, in connection with the London Olympics, Oddbins, a UK-based wine and alcohol retail chain, created an ad that underscored the fact that Olympic brands can't be mentioned by non-sponsors. Included in the copy of the ad are the phrases "we can't mention the event, we can't mention the city, we can't even mention the year". To further express its dissatisfaction with the restrictions on Olympic advertising, Oddbins offered discounts to customers using the brands of official sponsor competitors during the Olympic games. Other ambush marketers during the London Games included Beats Electronics and Paddy Power, which took out billboards near Olympic venues saying "Official sponsor of the largest athletics event in London this year! There you go, we said it". The event sponsored by Paddy Power was, in fact, an egg in spoon race held in London, France, not London, England.
Similarly, Pepsi Canada used innovative tactics in an attempt to gain a presence at the 2010 Vancouver Games.20 Using the World Junior Hockey Championships a few months before the Games to execute the strategy, Pepsi tried to implement a new Team Canada hockey cheer that they hoped would be used at the Vancouver Games just weeks later. While the cheer ultimately fell flat like an old can of soda, Pepsi nonetheless gained tremendous publicity while its competitor, Coca-Cola, had invested heavily to be an official sponsor at the Games.
Although Olympic legislation is specifically crafted to cast a wide statutory net, it is clear that companies will continue to find ways to leverage the Games while avoiding legal consequences. For many, there is simply too much economic opportunity at the Games not to do so.
Similar ambush marketing strategies have also been observed at the World Cup, such as when German airliner Lufthansa painted 50 aircraft nosecones to resemble footballs for the duration of the 2006 World Cup in Germany.21 In addition to giving their aircraft a fresh paint job, Lufthansa also assumed transportation responsibilities for the 32 participating teams of the 2006 World Cup as Emirates, the official airline of the tournament, had limited landing privileges on German soil.22 Lufthansa also presented itself as "Germany's Football Airline" and featured pictures of its newly outfitted planes in various online and print advertisements.23 Employing this strategy, Lufthansa was able to project an unmistakable association with the World Cup while avoiding any direct reference to the tournament.
An essential protection or an unnecessary restriction? The court of public opinion remains divided
The use of event-specific legislation for the Olympic Games continues to remain a source of great controversy for the IOC. Those opposed to such legislation argue that it is excessively restrictive, and undermines the interests of local business owners who are largely prohibited from deriving any material benefit from playing host to the Games. They argue that the legislative interests instead operate in favour of large, multi-national corporations who have considerable leverage over smaller businesses in bidding for lucrative marketing rights. In addition, they maintain that the restrictive nature of the legislation drives up sponsorship fees and detracts from the spirit of athletic competition that was originally intended for the Olympic Games.
Supporters of such legislation argue that host countries must have continued access to sponsorship capital in order to satisfy the tremendous financial requirements associated with staging the Games. For this to be possible, sponsors demand the exclusive right to market under the Olympic umbrella. As such, sponsors expect protective safeguards to be implemented that hold ambush marketers accountable. Removing these legislative measures would encourage the return of the wild west of ambush marketing that largely characterized the Games of the late 1980s and 1990s. It would also deter sponsorship funding and would have a materially adverse effect on host countries' ability to finance the Olympic Games.
Regardless of the merits of both arguments, it appears Olympic legislation is here to stay. Countries bidding on the Games are unlikely to refuse compliance with this legislative requirement mandated by the IOC given the many benefits of hosting the Olympics. The IOC is also unlikely abandon this requirement given the added protection afforded to the Olympics and official sponsors, as well as its enforcement by the courts. The only thing left to do is sit back, relax, and see what other innovative strategies unofficial sponsors have formulated for a "cool sporting event" scheduled to take place in Russia between 2013 and 2015.
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- Tags: Athletics | Europe | Event Management | Intellectual Property | Olympic Games | Trade Mark | United States of America (USA)
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About the Author
Evan Eliason is a member of the 2013 summer student class at Cassels Brock.
Evan is currently completing the J.D. program at Osgoode Hall Law School. At Osgoode, Evan is an active member of the Entertainment and Sports Law Association (ESLA) and has provided written submissions on prevalent legal issues in sports to the club blog. He looks forward to serving in his capacity as Sports Law Director on ESLA during the upcoming school year.