Contents
AbstractPage 3
Introduction Page 4
Business and BrandingPage 5
Functions: Origins & QualityPage 8
Advertising FunctionPage 12
Trademark Developments in SportPage 13
Bibliography
BooksPage 20
Articles Page 21
Internet resources Page 23
Miscellaneous SourcesPage 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 trademarks[1], 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 leagues[3] team names[4]. 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 League[6] and Rugby Union[7] 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 Premiership[9], within that brand we have clubs such as Arsenal[10] Manchester United[11], and Tottenham[12], all of whom market themselves using their trademarks. We have seen the growth of the use of the brand in Rugby[13], Cricket[14] and Golf[15]. 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 sold’[27] and in sport that would almost certainly seem to be the case.
In the recent case Arsenal FC Plc v. Matthew Reed[28], 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 Directive[32], 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-Jarabo[33], 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.