Brand Games: how not to get sued

Last year, the SJA got a “yellow card” from London 2012 for having their logo on our website to link to London 2012’s website. Not allowed, apparently. But a countdown ticker showing the number of days until the London Games is fine. Apparently.
And when a photographer member recently received a similar warning because his website includes images he has taken at past Olympics, which he has labelled “Olympic”, the lawyers at Canary Wharf were on to him, too. So we asked top sports law firm Max Bitel Greene for advice, provided for us by ZANE SHIHAB

“The Olympic Games are for the world and all nations must be admitted to them” – Baron Pierre de Coubertin

When the good Baron uttered these words in the late 19th century he could not have imagined the worldwide appetite for tickets, merchandising and news about the Olympic Games in the 21st century. There is no doubt that today, apart from the few thousand athletes taking part in the event, the only way in which the world is admitted to the Games is through the pens and lenses of the media.

It is therefore slightly ironic that the drive to commercialise the Games which has demanded ever better protection for the Olympic brands could be a barrier to the fair reporting of the Games.

Scarred at Atlanta 1996, the International Olympic Committee now legally requires every host city to prevent ambush marketing. However, the laws protecting the 2012 London Olympics are probably the most restrictive to date. Indeed when the Bill was being discussed, the Institute of Practioners in Advertising said, “This sort of legislation is insulting. It is specific and unprecedented protection for a small group of internationally based, predominantly non-UK companies to the detriment of all other businesses.”

The drive to protect the rights of the IOC and LOCOG has already resulted in a number of actions against infringers, with the frequency of such actions expected to rise as summer 2012 draws closer and more businesses attempt to seize a degree of Olympic cachet.

The Law
A variety of Olympic related marks (such as the controversial 2012 Olympic Games emblem) and words (eg “London 2012”) are protected either as registered trademarks, registered designs and/or by common law.

In union with such intellectual property rights, further protection is derived from the Olympic Symbol etc. (Protection) Act 1995 as amended by the London Olympic Games and Paralympic Games Act 2006 which created the Olympic Association Right (OAR) and The London Olympic Association Right (LOAR), which grants the appropriate proprietor the exclusive right to be associated with the 2012 Games.

Infringement occurs if, in the course of trade, a person uses a representation of any kind (including written, verbal and symbolic) that creates in the public mind an association with the 2012 Games without the consent of the proprietor. The phrase “in the course of trade” bears its ordinary meaning and it is likely that it will not be adjudged to be in the course of trade if activities relating to the Games are undertaken on a not-for-profit basis (for example, non-commercial websites).

A popular misconception held is the belief that the use of certain words (or combinations of words) listed in the 2006 Act (“Listed Expressions”) will automatically mean that infringement has occurred. However, that is not the case and the court simply takes this into account when considering whether an association has been made although there is a presumption that it has.
The law will presume an infringement of LOARS where the words from Category 1 and Category 2 below are used together.
Category 1.“Games”, “2012”, “twenty twelve”, “two thousand and twelve”;
Category 2.“London”, “summer”, “sponsor”, “medals”, “Gold”, “Silver”, “Bronze”.
Moreover, an infringement may be caused by a person who does not use any of the Listed Expressions (an example of this is where imagery is used to suggest the Olympics and London).

Defences to the Acts
Both Acts permit editorial or journalistic use or incidental use of representations in literary or artistic works. This therefore allows a newspaper, magazine or website, to publish a report about the Olympics containing any or all of the Listed Expressions without breaching the Acts. The use of the logo with this article, for instance, is for an editorial purpose.

However, this defence expressly states that it does not permit advertising material which is published or broadcast at the same time as, or in connection with, such a report. Consequently, advertisement features (also known as “advertorials”) or other similar materials that are presented as a report or information on the Games will be treated in the same way as normal adverts and will not benefit from this defence.

The Acts also grant an exception that allows for honest statements of fact to be made, provided this is in accordance with honest commercial practices and not made gratuitously solely for marketing purposes.

In Practice
SJA members should recognise that although purely editorial use will be permitted, a publication focusing solely on the Games or London 2012 which is not purely editorial may need prior approval to avoid the various criminal and/or civil remedies available to the proprietors (which include fines of up to £20,000, injunctions, damages, delivery-up of infringing goods and account of profits).

This may seem surprising but some of the examples given by LOCOG of what it considers* would be a breach are certainly at the margins of what might have been thought to be protected.

An unlawful association can be created without use of any of the Listed Expressions and contravention ultimately depends on whether an impression of an association with London 2012 has been formed. For example, a journalist using the headline “X wins Gold at the 2012 London Games” (where four Listed Expressions have been used) will not have breached the legislation as you would not reasonably believe that the journalist has a contractual or commercial relationship with the London Olympics.

It follows that editors will not be permitted to construct websites or micro-sites about the Games with, for example, new Olympic or 2012 domain names. However, you would be permitted to create supplementary pages within your existing websites provided that they contain a caveat stating that any information supplied, advice given or opinion expressed are those of the authors only and is not official London 2012 content.

A real concern for sports journalists arises where companies attempt to piggy-back on bona fide Olympic-related publications. Editors should be mindful not to permit the sponsorship of Olympic-themed broadcasts or publication as it will allow the third party sponsor to create an association with the Olympic Games, thus infringing the OAR and LOAR. Consider a practical example: a daily radio bulletin labelled the “Olympic Games Round-up” would be permitted but it is likely that one entitled the “Olympic Game Round-up in association with Y Ltd” would create an unofficial, and therefore illegitimate, association between “Y Ltd” and the Games.

There is a genuine apprehension that the unprecedented monopolistic protection for the official sponsors, a relatively small group of multi-national companies (who some would consider perfectly capable of protecting their own brands), to the detriment of other businesses, has impacted negatively on commercial expression and freedom of speech.

Whilst professional sports journalists will benefit from the defences of editorial and incidental use in literary or artistic works, they will need to be commercially cautious so as not to infringe the restrictive provisions imposed by the OAR and LOAR.

* For the LOCOG view on its rights, see the full guide by clicking here.

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