Contents Abstract Page 3 Introduction Page 4 Business and Branding Page 5 Functions: Origins & Quality Page 8 Advertising Function Page 12 Trademark Developments



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Richard TEMPEST-MITCHELL

Trademarks in Sport

Intellectual Property Law: LW 556

2002/2003
Supervisor: Alan Story


Contents

Abstract Page 3
Introduction Page 4
Business and Branding Page 5
Functions: Origins & Quality Page 8
Advertising Function Page 12
Trademark Developments in Sport Page 13


Bibliography

Books Page 20


Articles Page 21
Internet resources Page 23
Miscellaneous Sources Page 25

Trademarks in Sport
Abstract.
The concept of words and signs as trademarks in sport has been developed to protect the growing phenomenon of marketing and merchandising. Trademarks in the form of club names, nicknames and emblems are utilized to signify ‘brands’ that are the sports, clubs, teams, players and merchandise. This phenomenon has developed along with the growth of the media in sport supposedly utilizing the accepted functions, said to attach to trademarks1, those of origin, quality and advertising. However it is clear that these functions of trademarks in sport, benefit the consumer little and the owners of such marks immensely. Of theses functions, the only one pertinent in sport, is that of advertising.
The origin function of trademarks, in regard to the manufacturer of club merchandise is unimportant to most consumers as they give little information. The quality function is negligible, as more specific consumer protection law leaves trademarks superfluous in this regard.2 The advertising function of sports trademarks is the main function as trademark proprietors use their trademarks to cash in on the consumer’s allegiance to the sport, club or team, and ultimately the trademark. The use of trademarks to market sport has brought great developments and many benefits for sports and supporters.

Many of the signs privatised as trademarks have are and have become part of our culture. The registration of these marks has given sports and sports clubs absolute ownership of those words and signs. Supporters of clubs and local residents are excluded by trademark law, from any true form of ownership of these parts of their culture. Sports trademark owners seek grow control of any signs capable of ownership in order to quench their thirst for corporate and as well sporting success.



Introduction
With the growth of the popular media over the past thirty years, has come the inevitable movement from sports for sports sake, to sport as a business. Sport is not only part of our culture but is now big business. Sports businesses, clubs and administrations have become involved not only in the organisation and playing of sport, but also in the big business that has developed around them. Sports-men and women are only a small part of the business, which has drastically changed not only the sports, but our sporting culture also.
In this essay I will attempt to show how the sports business has used trademarks in its advertising function to market and develop the business of sport and has used them as valuable property that can be manipulated to bring the maximum income. The formulation and registration of marks in the form of nicknames, names, and emblems have allowed sport to take charge of it’s financial future, by excluding all claims of ownership of those signs. The manipulation of our sporting heritage as a marketing tool has changed the sporting arena immensely and has serious implications for our sporting and cultural outlook.
In order to analyse these developments I will examine them in relation to those sports most covered by the popular media, as it is within those are sports that the developments are most pronounced.

Business and Branding

The world of sport has developed immensely over the past twenty years or so, not least due to the rise in the popular media and the advertising revenue that this phenomenon has brought. Riding on this wave, sport has sought to capitalise on it’s newfound popularity. One manner in which sport has developed is in the field of branding and the use of signs, emblems and words, as trademarks to protect particular brands. Individual sports and clubs in the UK have seen the success branding has had in the United States and Australia where sport is big business and have sought to develop along the same lines. In the United States brands and trademark has been prevalent for many decades in the guise of sports leagues3 team names4. Even the Olympics have been affected by these developments, with the word Olympics being protected quite forcefully as a brand, by use of trademark law.5 In Australia and New Zealand we have seen similar developments in the main sports such as Rugby League6 and Rugby Union7 respectively. Each of these sports and clubs has developed brands, the majority of which have been protected by trademarks registration.


In the UK, sports have developed marketing strategies based around the idea of the brand, protected by trademark registration, registered with the UK Patent Office.8 In football we have The Premiership9, within that brand we have clubs such as Arsenal10 Manchester United11, and Tottenham12, all of whom market themselves using their trademarks. We have seen the growth of the use of the brand in Rugby13, Cricket14 and Golf15. Each sport seeks to exploit their trademarks to the full, in order to make ever-increasing profits. The developments in branding and marketing have caused a great change in the way in which we see sports, gone are the dour cloth cap images of some sports which are now media friendly, colourful, and entertaining spectacles. Nowadays sports, clubs and players are household names as much as any other “brand” and one would find it difficult to find many people who did not know who was near the top of each sport. In this respect, the development of the brand and the use of brands as trademarks, has enhanced the profile of most sports. This, for supposed benefit of all, but these developments have their drawbacks; there is a price to pay and the community and supporters are the ones who pay it.

The trademark has become a means by which the sports businesses use particular aspects of our culture i.e. words, emblems and sign and imbue them with the appropriate “mythical”16 qualities, in an attempt to signify a certain culture in and around that sport. The public are drawn to such signs as they grows to represent their club or sport and in so doing allows them to feel they are part of that organisation when wearing their club’s trademarked sign. As Rosemary Coombe put it;


The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. Whatever the means employed, the aim is the same--to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appear 17
The sign is no longer just a sign, it is manipulated and given a broader cultural meaning by its use in marketing; designed in a manner to sell both the sign and product and consequently the sport to the consumer.

The symbol becomes “congenial” precisely because the marketing informs it with a set of values and beliefs congenial to the targeted consumers and does so by placing the mark within the context of whatever mythical unit has been chosen for it.’18
The concept of trademark registration of club names and emblems, and the functions of trademarks have been manipulated in a manner, which runs contrary to generally accepted functions, those of the origin, quality and advertising.19 As Aoki points out:
The Transformation of trademark law from a body of law sensitive to avoiding consumer confusion into law a body of law focussed on expanding the trademark owner’s exclusive rights by protecting a mark’s integrity has occurred against the rise of a sprawling electronic mass media in the late twentieth century.20
Hutchison works himself into a more metaphorical position in regard to the phenomenon of marketing and the consumer world we now live in.21
It is incumbent on us therefore to ask why and for whose benefit these trademarks are registered and protected. Is it for the benefit of the consumer to guarantee origin and quality of the product, or is it for the benefit of the trademark “proprietors” who for the purposes of advertising, claim absolute ownership and exclude all others from unauthorised use? As Rosemary Coombe noted: 22
Traditional trademark theory protected rights in the sign only insofar as it was necessary to protect consumers from deception confusion. Increasingly, however, holders of trademark rights are enabled to prevent "misappropriation" even when there is no competition between the goods and the trademark use is unlikely to cause public confusion.

Functions

In analysing these developments it is necessary to consider three generally accepted functions of trademarks in order to see how things have changed. As mentioned they are, those of origin, quality and advertising. Of these functions of trademarks, it is said by Cornish:


Origin function: marks deserve protection so that they may operate as indicators of the trade source from which goods or services come, or are in some way connected.

Quality or guarantee function: marks deserve protection because they symbolise qualities associated by customers with certain goods or services and symbolize that the goods or services meet up with expectations. 23
In regard to sports trademarks, the emphasis on the origin and quality of products is questionable. As regards the main product of a sports clubs, namely the team and the sport itself, the trademark is not indicative of any origin or quality in the same manner as with tangible good. The origin of players and quality of their play, speak for them themselves.
In relation to the merchandise marketed and sold within sport, trademarks guarantee little in respect to the origin of those goods. Merchandise is often manufactured in far off lands and hardly ever by the trademark owner. The fact that goods might have the trademark ‘Manchester United’ written on them does not mean that club manufactures them. Often, in fact, official and unofficial goods will be manufactured in the same factory and so the trademark guarantees nothing. It is arguable that consumers of sports goods are unaware and uninterested in where the goods are manufactured, ‘modern customers rarely have that personal knowledge of suppliers which is the hallmark of a village economy’24. In today’s global economy true origin is not the consumers worry. ‘Even so, their interest in source of supply has not in essence changed. Information about origin is only a means towards an end; their main concern is the quality of what they are buying.’25 . I would suggest that the quality the consumers are looking for is not necessarily that of the physical qualities of the merchandise itself, i.e. a shirt or scarf, but the quality of the trademark thereon, in the form of the name or emblem. The consumer wants a shirt with the name or emblem of his team or favourite player. The presence of that name does not automatically guarantee any origin or quality of the shirt and the consumer is unlikely to care.
Sports and clubs have sought to imbue their brands and trademarks with certain ‘mythical qualities’26, in order to spread the word of their respective product. In this regard some commentators have noted that ‘the trademark itself is the product [that is] being sold27 and in sport that would almost certainly seem to be the case.
In the recent case Arsenal FC Plc v. Matthew Reed28, the London football club Arsenal sued the defendant Reed for trademark infringement, on grounds that he had been selling football merchandise bearing trademarks registered by Arsenal, outside their Highbury Stadium. His stalls and products were always advertised as unofficial, by a notice, which clearly disassociated them from official Arsenal merchandise.29.
In 1989 Arsenal registered both the words ‘Arsenal’ and ‘Gunners’30 as trademarks, for use on a wide range of sports goods, which it had designed for sale by the club.
In the High Court Judge Laddie decided on the trademark infringement and held that the goods sold by Mr. Reed were not perceived by consumers as originating from Arsenal and that the logo’s attached to his merchandise were ‘perceived by the public as badges of support, loyalty and affiliation.31 Judge Laddie referred two questions to the European Court of Justice (ECJ) for interpretation of the European Trade Marks Directive32, regarding whether a third party had a defence when indicating that there was no connection with the trademark owners goods.
In the opinion of Advocate General Ruiz-Jarabo33, where a third party is using a sign which is identical to a registered trademark on goods identical for which it is registered (in this case sports merchandise) then the proprietor of the trade mark may prevent such use regardless of the perception of consumers. In his opinion the essential function of a trademark is to guarantee to consumers the true origin and therefore quality of goods, by enabling them to distinguish them without the possibility of confusion. The fact that in the Arsenal case, Mr. Reed had a clear disclaimer on his stalls, and supporters had continued to buy his goods was not sufficient to negate any such confusion.
The Advocate General stated that the Directive gave absolute protection in the case of identical signs and merchandise, and that there was a presumption of the likelihood of confusion, irrespective of whether it actually occurs. Where there is identity, ‘the use a third party makes of a trademark, is trademark use,’34. In reply to Judge Laddie’s decision that use expressing “support, loyalty, or affiliation” to the proprietor of the trademark was simply that.35 In other words use of trademark in these circumstances was infringing trademark use, per se.
The decisive factor as far as the Advocate General was concerned in determining use as a trademark was not the feelings which the consumer buying the goods represented by the mark, or even the third parties using it harbour towards the registered proprietor, but the fact that they are acquired because, by bearing the sign, the goods identified the product with the trademark, irrespective of what the consumer thinks of the mark.36
In seems that in the eyes of the law, it matters not what the consumer understands or believes of the product or the mark; use by a third party of a particular sign or mark on an identical product, is trademark use and so infringement, per se. Trademark law gives a trademark owner absolute ownership to a word such as ‘Arsenal.’ and ignores the consumers right of choice. By manipulating the origin and quality functions of the mark it gives trademark proprietors monopoly in usage. This runs contrary to the original functions of trademarks, i.e. that of benefiting the consumer in making choices regarding origin and quality.
It would seem that although trademark law does recognize the importance of the origin and quality function, it is prepared to sidestep it’s focus from the benefit of the consumer to the power of the trademark owner.

In respect to sport this decision underlines the fact that the law views the use of trademarks has little in connection with the sport itself or its supporters and more to do with the business of sport. 37


This can be seen in the Advocate General’s opinion:

[T]he great clubs such as Arsenal are not mere sporting associations whose aim is the playing of football, and who register trademarks only with a view to garnering support for the team. Rather they are genuine “emporia” which with the object of playing professional football to pursue economic activity.
More importantly however, what the Advocate General ignores are the rights of the supporters and inhabitants of the area of identify themselves with the area and the club how they wish. By removing Mr. Reed’s rights to sell his merchandise, the law removes the rights of the citizens and supporters of Arsenal to express themselves as they wish. Since the law has given businesses (trademark proprietors), ‘proprietorship’38 of such symbols, the citizens and supporters of Arsenal, have lost their right of choice. This control on the part of the trademark proprietors negates the argument of the benefits of the origin and quality functions of trademarks and the benefits received are those of the proprietors in the guise of advertising.
A situation is created wherein the more thoroughly an advertised trademark permeates our private individual and public cultural spaces, the more propertized, propertizable and valuable, such a trademarked symbol becomes. Under trademark law these highly “publicized” and socially created “facts” paradoxically become a trademark owner’s “private” property. 39

It is seen here that where the supposed benefits of identifying origin and guaranteeing quality are minimal in respect to sports merchandise. The ‘ownership’ of marks given to proprietors’ guarantees only one thing, that the owner can manipulate and control the mark how he wishes in order to further his own interests, not those of his customers.



Investment or Advertising function:

Cornish has describe this function:


Marks are ciphers around which investment in the promotion of a product is built and that investment is a value, which deserves protection as such, even when there is no abuse arising from misrepresentations either about origin or quality.40
In recent years the growth in the popular media and sports coverage have given clubs an insight into the possibilities of the business of sport. Sport has developed into big business amounting to many billions of pounds or dollars in consumer spending in connection with sport. In year 2000 sports consumers spending, in the United Kingdom amounted to £15.2billion or 3 per cent41 of GDP and 2.5 per cent of total world trade.42
Individual sports, clubs and other advertisers are keen to cash in on this financial interest.43 It is here where the advertising function of registered trademarks can be seen to be clear and present44. Even though consumers such as the Arsenal fans mentioned above are not necessarily purchasing a shirt or a scarf, they are more interested in the trademarked sign or emblem thereon. Clubs rely on the goodwill of their trademarks to advertise their team and with success, come more sales.
Sport clubs and organisations clubs use trademarks to advertise both the club and the fame and success of their team. They rely on this to give those trademarks more value. The more successful the team, the more valuable their brand. The more valuable the brand, the higher the income and spending power45, and the more overall success they have. It is not coincidence that the more successful clubs have the most protected signs. In the case of clubs like Arsenal and Manchester United, their financial pulling power is immense, so much so that Manchester United’s recent licensed deal for merchandise with NIKE is worth £303m over 13 years, with a share of the profits on top46. Now they employ six full time staff to ‘police’ use of their marks by third parties. To maximise the income from their trademark status Manchester United removed the words “Football Club” from the club crest and now ‘own’ the words Manchester United and Man Utd for any marketing purpose. “This aids enforcement of the trademark and maximises the financial return for genuine merchandise bearing the mark47.
It can be seen therefore that the advertising function of trademarks is most certainly present and aids trademarks proprietors immensely. It does little for the supporters and consumers, other than advertising that they ‘belong’ to a particular club.
Another manner in which trademark advertising in sport can be seen to grow is the idea of brand advertising using sports teams and players. Again Arsenal and Manchester United, and their players seem to have cornered the market in this regard and can be seen advertising everything from mobile phones,48 to Coca Cola and even on occasion sports goods.49. This use of trademarks in advertising has become big business and now most clubs depend on advertising and sponsorship revenue. Without it many clubs would go to the wall and supporters would have to move elsewhere. Something that can be seen in the recent ITV football fiasco involving the Nationwide league. In the lower divisions of most sports, advertising revenue is low and trademark registration is hardly thought of or would have little intrinsic value. These sports and clubs will need to climb on the bandwagon and indeed some already have in order to compete in the big business of sport.

Trademark Developments in Sport

Climbing onto the trademark and marketing bandwagon, some sports have completely reinvented themselves in order to cash in on trademark value and advertising. In Rugby League the concept of Super League50 was invented in conjunction with Rupert Murdoch’s Sky Sports, the ultimate owner of the ‘Super League’ trademark. In 1996 the sport changed from winter to summer rugby to aid it’s marketing as a fast and dynamic sport played at a lightening pace on hot summer evenings and the brand Super League was introduced51. Most clubs have developed marketing strategies based around a change of name, during and most of them being names giving a fast or aggressive image52. They have developed an image of community involvement; family orientated marketing and an enhanced entertainment strategy, both at games and during the off-season. Arguably the most successful of this re-branding has been Bradford Bulls53, formerly known as Bradford Northern. This club54 changed the team name to Bradford Bulls, which was registered as a trademark along with a team emblem very similar to that of the Chicago Bulls emblem55, an already tested, successful trademarked brand. ‘The Bulls’ as they are nick named have been at the forefront of this marketing phenomenon. Other clubs such as Wigan Warriors, Leeds Rhino’s Hull Sharks and London Broncos have followed. It is in this regard the advertising function of trademarks can be seen with growth in crowd numbers, financial turnover and advertising revenue. This particular sport, with the aid of extensive media coverage has used the media to market itself and with its marketing tools protected by trademark law. The sport has turned itself from a dour northern minority sport, seen by only a few, to a thriving entertainment spectacular played and watched by many thousands up and down the country. Most clubs have more than doubled their attendances since the inception of Super League56.


In Super League clubs have profited from the enhanced public interest in their teams both from attendances at the games and sales of merchandise. These developments have been made a great change in popular culture in the Super League towns over the past few years as more and more people become drawn in to the success.57. Sports organisations and clubs have become professional and produce a well-organized and entertaining product. Consumers enjoy excellent facilities at improved venues brought about by greater profits from merchandise bearing club trademarks. The trademarks are chosen to reflect the are fast, violent and more entertaining sport. Supporters enjoy the fruits of these developments and seek to join in the success of their team by purchasing more merchandise. They do so to enhance the experience of supporting ‘their’ team. On first sight theses developments seem to be for the benefit of both sport and consumer but is this wholly correct?
The benefits to consumers are somewhat superficial. As Judge Laddie in the Arsenal case58 alluded to, the trademarks on club merchandise are most likely ‘perceived by the public as badges of support, loyalty and affiliation.’59. Supporters, who purchase club merchandise, do so, not to validate the registered trademarks or profit the club, they do so to join in the experience of being a team fan and as such to be part of the club. Being part of the club is part of their lives and culture. The majority of supporters who regularly attend games will be from the area in which the team is based60 and will likely think of themselves as being part of the club. The clubs encourage this thought process both to enhance the supporter’s experience and to advance the sales of game tickets and merchandise. As a classic example of this, Bradford Bulls market themselves as ‘The Peoples Team61, seemingly to encourage supporters to think of themselves as part of the club and so guarantee their support. The reality is however is that these supporters and others like them are far from being part of the club in a legal sense. The fans are excluded from any true ownership of the words and signs that make up part of the history and culture of the club and area. This growing phenomenon of the privatisation of our culture causes concern in many ways, not least in how far can it go; how much of our culture can organisations seek to exclude us from?
In a recent trademark registration dispute a street trader we may have an insight into the future. A street trader whose father started a business selling ‘Tottenham’ merchandise over thirty years ago, had an appeal to the Trade Marks Registry dismissed when had tried to block Tottenham Hotspurs’s registration of the brand name TOTTENHAM62. The ruling gives the football club exclusive rights to use the word in connection with football and they can now exclude anyone else from using it in that regard. This, notwithstanding the fact that Tottenham is actually a district of London in the Borough of Harringey.63. The implications of this decision are that now other clubs and organisations may seek to ‘privatise’ place names to cash in on the words as a brand. What have been previously inalienable64 concepts are now commodified under the proviso in s.3 (1) Trademark Act 199465 in regard to acquired distinctiveness.
This development is almost certain to lead to many others attempting to gain control of certain place names and the like. Such names as Chelsea, Twickenham and Wembley and many others outside of the capital could be next. In fact in 2002 Wimbledon Lawn Tennis Club (WLTC)66 were refused the right to register the word Wimbledon as a trademark, as it was said the name did not uniquely refer to tennis. It now seems almost certain that this decision will be appealed. If the WLTC were granted proprietary rights in the word, where would this leave the residents of Wimbledon, the supporters of the well-known football team ‘Wimbledon’67 and indeed the Wombles? Their rights to use this part of their daily lives, i.e. the place where they live, could be seriously effected.
Considering the recent assault case68 involving Leeds United football players Lee Boyer69 and Jonathan Woodgate70 and the link made to the football club’s allegedly racist past. If Leeds United could control the use of the club’s name in media reporting of the situation, there would be a danger of us being unable to discuss and critique such circumstances or any other organisation in response to such incidents. If we cannot use certain words and signs in every day dialogue, society could be held to ransom by the owners of such signs. This potential for control of a place names or commonly used cultural signs, could signal the end of dialogue involving these ‘cultural symbols’71. Cultural dialogue could be influenced more and more by an era of “Big Brother”. As Rosemary Coombe points out:
Dialogue involves reciprocity in communication--the ability to respond to a sign with signs. What meaning does dialogue have when we are bombarded with messages to which we cannot respond, signs and images whose significations cannot be challenged, and connotations we cannot contest.72
The developments of trademarks in sport in allowing near absolute ownership in the concept of place names and signs, leaves citizens and spectators, wide open to control by the large and powerful corporate bodies within sport.
Already, to some extent, the business of sport has overtaken the activity itself and sport has been reduced to an advertising billboard for the trademarks of powerful business. These organisations use sport to further their interests, with little consideration of the sporting and cultural implications. This can be seen in the recent furore involving the sports company Adidas, the New Zealand Rugby Football Union (NZRFU) and their use of a particular Maori “haka” composed for a Maori tribe. The Maori “haka” and Rugby Union are part of New Zealand culture and the incursion of business into this cultural sphere is disturbing.
In 1997 The New Zealand Rugby Football Union and Adidas the global sports company signed a deal a sponsorship deal worth some $120million, which involved an advertising campaign featuring a New Zealand All Blacks ‘haka’ commercial. Although there are numerous tribal ‘hakas’, this particular ‘haka’ known as the Ka Mate Haka was originally composed by a famous chief, Te Rauparaha, of the Maori Ngati Toa Tribe in the 1820’s.73. The ‘haka’, as a tribal dance has deep cultural meaning for the Maori tribes of New Zealand74. Rugby Union also is an important aspect of Maori and New Zealand life. Until recently the Maoris people have put up with the All Black’s use of the haka performed by them in front of rugby crowds since 1888 as Maori’s have been extraordinarily represented in the teams. However when the French sports firm Adidas bought into the NZRFU, with a large sponsorship deal, the Maori population objected to this ‘popularized, if bastardised, appropriation within sport’’75 of the ‘haka’ and their culture by a foreign sports company and the ‘Pakeha’76 NZRFU All Blacks organisation. The concerns of the Maori community culminated in a claim $1.5m in compensation as:
“ ‘there are immense concerns out there among Maori people’77. In part these concerns center on some Maori believing they ‘deserved a large slice of the $120 million Adidas sponsorship of New Zealand Rugby, because the sportswear giant uses Maori imagery in its branding’ ” 78.
The litigation surrounding this dispute is ongoing and although the ‘haka’ is seen as a part of Maori culture within New Zealand, ownership is subject to ‘Pakeha’ intellectual property law79 and therefore fails to fulfil the criteria of being capable of graphical representation. It will be unlikely that the Maori can claim legal ownership by trademark registration, and can either stop it’s use or claim a share of the proceeds.
This ability of intellectual property law to protect the concept of the sign by attaching ownership rights, for the benefit of our commercial capitalist culture, is turned around when the boot80 is on the on the other foot. The law will almost certainly find ways to deny such rights, when the people who foster indigenous or contemporary culture, attempt to protect their cultural signs and customs from such ownership.81. Similar problems are seen in American sports’ use of native American names, signs and symbols to market their teams and merchandise82 and in the manner in which ‘franchises’ who ‘own’ cultural signs and symbols have the power to assign (the law’s way of saying ‘sell’) them to the highest bidder. In these cases not only do they (mis) appropriate the sign from its cultural sphere, but also move the sign in the form a sports ‘brand’ from one city to another. Again confirming their rights of ‘proprietorship’ against any claimant.83
Here again we see that the true function of trademarks that of advertising and the protection given are not for the benefit of the consumer or even the true ‘owners’84 of the particular cultural sign. It seems the benefits of trademark protection are for the rich and powerful only, in the form of big business. These organisations use intellectual property law to take control of all possible aspects of culture. As Jackson states quoting Goldman and Papson85 , ‘They assert that as advertisers seek new signs and excavate fresh cultural territory “no meaning system is sacred, because the realm of culture has been turned into a giant mine.”’.86.
Not only is the realm of culture being turned into a mine, once mined it is strongly protected by these organisations, and on occasion somewhat arbitrarily, in a manner which brings further doubt on the legitimacy of trademark protection and intellectual property law in general.
In the well-known United States case of San Francisco Arts & Athletics v. United States Olympic Committee 87 it was decided symbol of worldwide sport (the Olympic sign) was within the US, the property of the USOC88. The SFAA wished to use the name ‘Gay Olympic Games’ for a sports event designed to foster acceptance and understanding of the gay community. The court held under the auspices of The Lanham Act Trademark Act that on grounds that it may ‘confused’ the public and so was an infringement of the USOC’s rights under the Act. The fact that there was no evidence that the use of the mark did in fact confuse the public as the to the ‘origin’ of the SFAA’s ‘Gay Olympics’ did not stop the court from giving the USOC absolute discretion in respect of third party use of the Olympic signs. In reality the word ‘Olympic’ can be seen to be used by numerous other organisations such as International Police Olympics, the Olympics of Ballet, the Olympics of the Mind, Junior, and Senior Olympics89, but was not deemed to be appropriate for the ‘Gay Olympics’.90 .
The court used Trademark Law to allow the USOC to differentiate between acceptable users and unacceptable users of this worldwide and seemingly ‘inalienable’ sign. However it seems that the Olympic sign is not ‘inalienable’ and in this case was used to show the USOC’s and the Court’s disapproval of the gay community.91 .
This and other court decisions involving the Olympic symbols are indicative of the attitude of the courts in respect of this subject matter. However similar attitudes are ever growing toward protection of other signs, which until the last twenty years have been cultural signs not owned by sports organisations, but shared by all.

Conclusion
In this paper I have given an outline of the development of trademarks in sport, both in the United Kingdom and elsewhere. I have shown how the generally accepted functions of trademarks (origin, quality and advertising) have been manipulated by big business and the Courts to favour those businesses. By giving examples of this manipulation I have shown that the main function of trademarks in sport is marketing and advertising. This marketing phenomenon has had positive effects on some sports, in terms of entertainment value and the bringing of a community together in supporting ‘their’ team. Some sports have come on leaps and bounds since the introduction of ‘branding’ protected by Trademark law and this seems to benefit the supporters and the residents of those towns.
These developments, in the use and enforcement of trademark law are a disturbing phenomenon, which affect the public on a sporting level but also on more serious cultural level. The taking and privatisation of place names and cultural symbols for capitalist gain can effect us all at some level, and if not checked could allow serious abuses of culture and the law, by the business that seek to squeeze every penny out of every playing field and avenue of life.




Bibliography

Books
W.R. Cornish ‘Intellectual Property: Patents, Copyrights, Trade Marks and Allied Rights’, (London: Sweet & Maxwell, 3rd edition, 1999) 527
Jennifer Davis: Intellectual Property Law, Butterfield Core Text Series, Butterworths London 2001
Andrew Christie & Stephen Gare: Statutes on Intellectual Property La, 5th Edition Blackstone’s Press Ltd, London 2001
R Annand, H Norman: ‘Blackstone’s Guide to the Trade Marks Act 1994’ London: Blackstone, 1994
D Vaver ‘Intellectual Property Law: Copyright, Patents, Trade Marks’

Concord: Irvin Law, 1997



Articles

Robert N. Kravitzt Trademarks, Speech, and The Gay Olympics Case. Boston University Law Review [Vol. 69 131] January 1989


Thomas D. Drescher; The Transformation and Evolution of Trademarks-From Signal to Symbols to Myth:. The Trademark reporter. Vol 82 May-June 1992
Rosemary Coombe: Beyond Critique: Law, Culture, and the Politics of Form: OBJECTS OF PROPERTY AND SUBJECTS OF POLITICS: INTELLECTUAL PROPERTY LAWS AND DEMOCRATIC DIALOGUE. Texas Law Review 1991.
Keith Aoki ‘Authors, Inventors and Trademark Owners: Private Intellectual Property and the Public Domain’ 18 Columbia VLA Journal of Law and the Arts 1994 191,
Allan C. Hutchinson; Talking the Good Life; From Free Speech to Democratic Dialogue 1 YALE J.L. & Lib 17 27-28 (1989
Chris McLeod McDermott: Infringement and Trademark Use – Article 5(1) of The Trademarks Directive 2002 ; Trademarks World Sept’ 2002
Ian Blackshaw, ‘Regulating World Sport’: New Law Journal (Sports Law) 28 April 2000 Butterworth & Co (Publishers) Ltd
Tottenham Now it’s a Brand, Not a Borough’, The Business, February 2003
Steve Jackson: Sport, Tribes and Technology. The New Zealand all Blacks Haka and the Politics of Identity: Journal of Sport and Social Issues, 26 (1), 125-139, 2002
R. Goldman & S. Papson: Sign Wars: The Cluttered Landscape Of Advertising. Guildford. New York. 1996
Robert N. Kravitzt: Trademarks, Speech, and The Gay Olympics Case. Boston University Law Review [Vol. 69 131] January 1989
Steven N. Geise; A Whole New Ball Game: The Application of Trademark Law To Sports Mark Litigation. Seton Hall Journal of Sport Law. 1995 553;
Jennifer E. McGarry: A Team With No Name, A City With No Name.: Trademark Issues Relating To Sports Franchise Relocation. University of Baltimore Intellectual Property Law Journal. Fall . 73-85.1997
Phillipa Gannon: Sporting Glory?. New Law Journal Vol 146 No 6755: Butterworth & Co (Publishers Ltd) 2 August 1996
Jason Harbrow: The Making of a Mascot; Sports & Character Licensing 20(7) November 2001. Informa Ltd 2001
Ian Blackshaw: Regulating Sport Globally; New Law Journal, Vol 150 No 6933, Sports Law, 28 April 2000. Butterworth & Co Ltd 2000
Anne Harrison: Do Trademarks Operate to The benefit or Detriment of The Consumer; Intellectual Property Law LW 556. Dissertation 2002.
Nicholas Economides: The Economics of Trademarks. The Trademark Review Vol 78

Tom Thomas: Soccer Teams Must Not Take their Eye Off The Ball In Protecting Brand Value. Scotland on Sunday. Newspaper. December 15 2002.

Guy Veysey: It’s Just Not Cricket; New Law Journal 1391 2002.


Internet Resources

NBA National Basketball Association website,



http://www.nba.com/

accessed 20.3.2003;


NFL, National Football League, website:

http://www.nfl.com

accessed 20.3.2003


MLB, Major league Baseball. website:

http://mlb.mlb.com

accessed 20.3.2003


Dallas Cowboys website,

http://www.dallascowboys.com

accessed 20.3.03


Washington Redskins website,

http://www.redskins.com

accessed 20.3.2003


NRL National Rugby League website:

http://www.nrl.com.au/fanzone/bigleague.cfm

accessed 20.3.2003


Super 12’s competition website,

http://www.super12rugby.com/

accessed 20.3.2003.


Bradford Bulls website

http://www.bradfordbulls.co.uk/bb_experience_full.asp?experienceid=11

accessed 10.3.2003


UK Patents Office

http://webdb4.patent.gov.uk/tm/

Accessed 20.3.2003


‘The Premiership’ TM# 2277054 date. 3.8.2001 Patent Office website http://webdb4.patent.gov.uk/tm/number?detailsrequested=C&trademark=2277054 accessed 20.3.2003
thepremierleague.com. http://www.premierleague.com/fapl.rac?command=forwardOnly&nextPage=homepage_tue&today=3

accessed15.3.2003


Patent Office Website,

http://webdb4.patent.gov.uk/tm/adp?propnum=0527641001

accessed 20.3.2003


Norwich Union English Sunday League website, http://uk.cricinfo.com/link_to_database/NATIONAL/ENG/SUNLG/

accessed 20.3.2003


Ryder Cup, website

http://uk.cricinfo.com/linkto_database/NATIONAL/ENG/SUNLG/

accessed 20.3.2003


The Guardian Article story. Monday 17 December 2001

http://www.guardian.co.uk/racism/Story/0,2763,619844,00.html

accessed 25.3.2003


Sky Sports website

http://msn.skysports/com/skysports/article/0,,11130-1001857,00.html

accessed 23.3.2003


Miscellaneous

Chris Gratton:. Sports Industry Research Centre Sheffield. Hallam University 2002

Coen J.R. (March 1995) ‘The Advertising trends up to 2020’. Papers presented at 2002 conference. New York.

Collinson S: Bradford Bulls Year Book Bradford Bulls. 2003



1 W.R. Cornish ‘Intellectual Property: Patents, Copyrights, Trade Marks and Allied Rights’, (London: Sweet &

Maxwell, 3rd edition, 1999) 527



2 Sales of Goods Act 1979 & Sale of Goods and Services Act 1982.

3 NBA National Basketball Association website, http://www.nba.com/ accessed 20.3.2003; NFL, National Football League, website: http://www.nfl.com accessed 20/3/2003 and MLB, Major league Baseball. Website: http://mlb.mlb.com accessed 20/3/2003

4 Such as Dallas Cowboys website, http://www.dallascowboys.com accessed 20.3.2003

and Washington Redskins. Website, http://www.redskins.com/ accessed 20.3.2003



5 San Francisco Arts & Athletics v. United States Olympic Committee 107 S..Ct. 2971 (1987) (No 86-270) and Robert N. Kravitzt Trademarks, Speech, and The Gay Olympics Case. Boston University Law Review [Vol. 69 131] January 1989

6 NRL National Rugby League with team such as The Cowboys, Broncho’s, Bulldogs and Dragons. web site: http://www.nrl.com.au/fanzone/bigleague.cfm access 20.3.2003

7 New Zealand Rugby Football Union and the Super 12’s competition which includes team such as the Crusaders, Highlanders, Bulls and Cats.. website, http://www.super12rugby.com/ accessed 20.3.2003.

8 http://webdb4.patent.gov.uk/tm/

9 “The Premiership” TM# 2277054 date. 3.8.2001 Patent Office website http://webdb4.patent.gov.uk/tm/number?detailsrequested=C&trademark=2277054 accessed 20.3.2003

10 Arsenal and The Gunners TM# 1383343. dated 9.5.89 Patent Office website, http://webdb4.patent.gov.uk/tm/adp?propnum=0635872001 accessed 20.3.2003

11 Manchester United, who have forty trademarks registered for use with numerous items. Patent Office website, http://webdb4.patent.gov.uk/tm/adp?propnum=0674274001 accessed 20.3.2003

12 Tottenham Hotspur who have twenty registered trademarks including the word “Tottenham”. Patent Office Website, http://webdb4.patent.gov.uk/tm/adp?propnum=0527641001 accessed 20.3.2003

13 “Super League” as the sport’s brand, Patent Office website accessed 20.3.2003 http://webdb4.patent.gov.uk/tm/number?detailsrequested=C&trademark=2029440A

Bradford Bulls, who have ten registered trademarks including the words “Wakefield Bulls”, (a rugby union club which they ‘bought’ and renamed/ rebranded in 2000 with the intention of moving to Bradford in 2003.), Patent Office website, http://webdb4.patent.gov.uk/tm/adp?propnum=0766896001 accessed 20.3.2003



Wigan Warriors, Leeds Rhino’s and Castleford Tigers ( who play at “The Jungle”) within that brand. In Rugby Union, there are Leicester Tigers, Leeds Tykes and Sale Sharks and more.

14 Yorkshire Phoenix, Kent Spitfires and Warwickshire bears and Glamorgan Dragons. The league being sponsored by Norwich Union website, http://uk.cricinfo.com/link_to_database/NATIONAL/ENG/SUNLG/

15 Ryder Cup, as the brand of the main international competition, TM 2015305 http://uk.cricinfo.com/link_to_database/NATIONAL/ENG/SUNLG/

16 Thomas D. Drescher; The Transformation and Evolution of Trademarks-From Signal to Symbols to Myth:. The Trademark reporter. Vol 82 May-June 1992 p.328.

17 Rosemary Coombe Beyond Critique: Law, Culture, and the Politics of Form: OBJECTS OF PROPERTY AND SUBJECTS OF POLITICS: INTELLECTUAL PROPERTY LAWS AND DEMOCRATIC DIALOGUE. Texas Law Review 1991.p.1853 quoting Judge Frankfurter in Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 205 (1942).

18 As n.16 above at 329

19 see n.1 above.

20 Keith Aoki ‘Authors, Inventors and Trademark Owners: Private Intellectual Property and the Public Domain’ 18 Columbia VLA Journal of Law and the Arts 1994 191, 245.

21 ‘Whilst the world of the sixteenth century may have been a stage/ And all the men and women merely players’, all the world of the late twentieth century is an advertisement and all the men and women merely consumers in the sprawling market place; life mimics advertisements’: Allan C. Hutchinson; Talking the Good Life; From Free Speech to Democratic Dialogue 1 YALE J.L. & Lib 17 27-28 (1989

22 As n.17 above. at 1870

23 as n. 1 at p. 527

24 ibid

25 ibid

26 as n. 20 above 240

27 ibid

28 Arsenal Football Club Plc v. Matthew Reed [2001] 2 C.M.L.R. 23

29 Mr. Reed had been selling unofficial merchandise on stalls outside the ground for over thirty years.

30 Also representations of the club crest and a cannon,

31 ibid at p 491

32 Trade Marks Directive Article 5(1)(a). Whether in the case of identical goods, the third part had a defence to infringement on the grounds that the use complained of did not indicate trade origin, i.e. a connection in the course of a trade between the goods and the trademark proprietor; and

(b) If he did (have such a defence) whether the fact that the use in question would be perceived as the badge of support, loyalty or affiliation to the trademark proprietor was sufficient connection.



The Trade Mark Act 1994 implemented the Trade Mark Directive (Directive 89/104) into UK law.

33 Arsenal Football Club v. Matthew Reed. [2002] EWHC 2695 (Ch), [2003] 1 All ER 137: Case C-206/01, Opinion of Advocate General Ruiz-Jarabo Colomer, 13 June 2002

34 Chris McLeod McDermott: Infringement and Trademark Use – Article 5(1) of The Trademarks Directive 2002 ; Trademarks World Sept’ 2002.

35Ibid. i.e.use expressing “support, loyalty, or affiliation”

36 as n. 34 above

37. As at n.26 above.

38 As if ownership of such signs is somehow ‘proper’ and correct.

39 As n. 20. 245 .

40 As n. 1 above

41 Chris Gratton:. Sports Industry Research Centre Sheffield. Hallam University 2002. ‘In 1990, the comparative figure was £8.9 billion, so this market has increased by over 70%’ 90s

42 Ian Blackshaw, ‘Regulating World Sport’: New Law Journal (Sports Law) 28 April 2000 Butterworth & Co (Publishers) Ltd

43 It is estimated that global advertising will increased from $335 billion to $2 trillion dollars in 2020. Coen J.R. (March 1995) ‘The Advertising trends up to 2020’. Papers presented at 2020 conference. New York.

44 and probably as a “clear and present danger!”

45 On players and facilities.

46 ‘Tottenham Now it’s a Brand, Not a Borough’, The Business, February 2003.

47 ibid: Paddy Harverson. Manchester United Director of Communications.

48 O2 and Vodaphone respectively.

49 Nike sportswear.

50 As n.13 above: Proprietor has registered Super League (Australia), (United Kingdom), (France) and (New Zealand. This concept revolves around massive financial input from Rupert Murdoch’s Sky TV in Australia and the UK.

51 As n.13 above

52 see footnote n.13 above

53 ibid

54 developing ideas of a former American Football marketing executive,

55 Chicago Bulls basketball team in the United States NBA. This emblem is not registered in UK as a trademark.

56 Since the introduction of Super League the majority of the top club’s game attendances have more than doubled. Bradford Bulls average crowd figures have raised from 5,584 in 1990, 5,616 in 1995 the year before the re-branding from Bradford Northern to Bradford Bulls, and to 10, 346 in 1996, the first year of Super League. In the current season the average crowd figures are 17,000 thus far, after three home games. (Collinson 2003, Bradford Bulls Year Book) The amount of TV coverage risen from approximately 10 games per season on BBC to approximately sixty games on Sky Sports and BBC in 2002. Sky Sports website: http://msn.skysports/com/skysports/article/0,,11130-1001857,00.html

57 The current season is the eighth year of Super League.

58 as n. 15 above

59 as n. 16 above;

60 Perhaps with the exception of Manchester United which boasts more supporters that any other soccer club from this country and around the world. Estimated at 50million supporters. It has waiting list for season tickets of approximately seven years.

61 See Website Bradford Bulls http://www.bradfordbulls.co.uk accessed 10.3.2002

62 http://webdb4.patent.gov.uk/tm/number?detailsrequested=C&trademark=E1899327 Patent Office website accessed 20.3.2003. Regiestered for use on numerous categories of goods.

63 “Tottenham Now it’s a Brand, Not a Borough”, The Business, February 2003

64 On grounds of Absolute Grounds for Refusal. s. 3 (c), but allowed under the proviso in s. 3 (1)… as it has in fact acquired distinctive character as a result of the use made of it.

65 Trademark Act 1994 s. 3(1)

6638 Wimbledon Lawn Tennis club do in fact have a Community Trademark of the word ‘Wimbledon’. However the deatails regarding this ‘refusal’ are uncertain and at the time of writing cannot be obtained form the Patent Office database.

67 Who actually now play in Milton Keynes but retain the name ‘Wimbledon.’ See n.78 below

68The Guardian Articlestory. Monday 17 December 2001

http://www.guardian.co.uk/racism/Story/0,2763,619844,00.html accessed 25.3.2003

69 Now with West Ham United FC

70 Now with Newcastle United FC

71 as per n.17 above at 1860

72 ibid

73 Sport, Tribes and Technology. The New Zealand all Blacks Haka and the Politics of Identity; Steve Jackson: Journal of Sport and Social Issues, 26 (1), 125-139, 2002.

74 Jackson explains that the popular interpretation of the ‘haka’ is as a ‘war dance’ but this word is a generic term for all cultural dances or ‘ ceremonial performance that involve movement.

75 ibid at 128

76 White European New Zealander. Ibid at 127

77 ibid at 135 quoting a quote by a political leader in the Sunday News newspaper (New Zealand) article June 11th 2000, titled “$1.5m for haka” cited as Reid 2001 at p.1

78 ibid

79 A concept which does not fit well within Maori culture or indeed any indigenous culture.

80 Football, Rugby or otherwise.

81 The boot here, in the guise of intellectual property law, is used to kick the true owners of real culture in the teeth.

82 See n.83 below

83 See n. 13 above re Wakefield Bulls. See: Steven N. Geise; A Whole New Ball Game: The Application of Trademark Law To Sports Mark Litigation. Seton Hall Journal of Sport Law. 1995 553; Jennifer E. McGarry A Team With No Name, A City With No Name.: Trademark Issues Relating To Sports Franchise Relocation. University of Baltimore Intellectual Property Law Journal. Fall . 73-85.1997

84 if indeed there can be ‘owners’ of such symbols.

85 R. Goldman & S. Papson Sign Wars: The Cluttered Landscape Of Advertising. Guildford. New York. 1996

86 as n.66 above at 137

87 San Francisco Arts & Athletics v. United States Olympic Committee 107 S..Ct. 2971 (1987) (No 86-270)

88 United States Olympic Committee

89 See Robert N. Kravitzt Trademarks, Speech, and The Gay Olympics Case. Boston University Law Review [Vol. 69 131] January 1989.

90 The sign was even used by an exclusive all male, predominantly white gentleman’s club, to which the Judge in this case was a member.

91 It should be noted that the ‘Olympic’ Symbol is also protected in the UK by Trademarks Acts 19938& 1994 and also specifically by Olympic Association Right (Infringment Proceedings) Regulations 1995

Intellectual Property Dissertation / Richard Tempest-Mitchell

2002/2003 Trademarks in Sport




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