Fara Sunderji, a partner in Dorsey & Whitney LLP, reviews the legal goal posts for marketing around the tournament
With World Cup fever starting up this week, brands around the world are hoping to get in on the action, but it makes sense to review a few important goal posts, namely trademarks, copyrights and rights of publicity (yes, our goals have three posts) before you get caught offside.
You’ve probably heard it before in connection with the Olympics, the Super Bowl and other major sporting events: Stay away from any advertising or promotional ideas that suggest authorization, sponsorship or an official connection to the World Cup, if your brand did not pay for the privilege of being an official sponsor. Brands pay a lot of money to sign on to be official sponsors, who have the right to use FIFA’s trademarks. In comparison to the International Olympic Committee, FIFA appears to be a bit softer in its enforcement style. In football speak, that means you’ll probably get a yellow card before they issue any red cards. In particular, FIFA has stated that its “approach to brand protection focuses on education and guidance, rather than enforcement by means of legal threats and sanctions.” To this end, FIFA created a list of do’s and don’ts, which include not using FIFA’s trademarks to brand your company’s promotions or the images of the official emblems, trophies or Zabivaka, the Official Mascot, in advertising.
FIFA also implores unauthorized brands to stay away from World Cup ticket promotions. While I’ve not been able to get my hands on any World Cup tickets this year, tickets to sporting events are usually licenses to enter the stadium that can be revoked at any time and most are non-transferrable. Imagine all the negative publicity your brand would earn from running a World Cup ticket giveaway if the winners couldn’t even attend the World Cup? Their absence from the tournament might be almost as painful as the U.S. men’s national team’s absence from Russia this year.
Did you know that FIFA created an official typeface for the 2018 World Cup? It is called DUSHA and it is protected by copyright. Here’s what it looks like:
While FIFA’s guidelines recommend that brands use “generic football or country related images,” it also recommends that companies seek independent legal advice to ensure that any promotional activities are not infringing of FIFA’s or anyone else’s rights. This includes the copyrights of photographers. While Google Image searches are a great source for ideas, the vast majority of hits are protected by copyright and brands need permission to use those photos in advertising. Under U.S. law, certain types of fair use are allowed, but it is unlikely that a photograph taken from a Google Images search and pushed out to your millions of Instagram followers qualifies under fair use.
Rights of Publicity
The right of publicity is a person right that encompasses the right to control the commercial use of one’s likeness, identity, name and/or indicia of persona. These rights are also often called personality rights. Like intellectual property rights, these rights are different in each country. In the U.S., the right of publicity is governed by state law and differs from state to state on key issues, including whether post-mortem rights exist –which they do in the great State of Tennessee thanks to Elvis Presley. As more and more celebrities, sports personalities and influencers seek to make money off their personas through sponsorship dollars, brands have to be careful of rights of publicity, especially on the international stage and that means, Twitter, Instagram and Facebook too.
Fara Sunderji is a partner in the New York office of Dorsey & Whitney LLP. She is the co-manager of the firm’s IP Blog, The TMCA, which focuses on legal developments in the world of trademarks, copyrights and advertising.