IP rights in football: Avoiding an own-goal

Football (or soccer) is a pervasive phenomenon, and even more so when the World Cup rolls around. According to Deloitte, despite the Covid-related absence of fans for the vast majority of the 2020/21 season, the size of the European football market grew by 10% to €27.6 billion in revenue.¹ Protection of Intellectual Property Rights (IPRs) is now more crucial than ever for those involved in the game, as these rights are essential to their commercial success.

The different IPRs are of varying importance in football:

• Trade marks – provide protection for badges of origin to prevent consumer confusion.
• Copyright – protects original works, typically artistic, literary, dramatic or musical works.  By originality, we generally mean the test of “author’s own intellectual creation”.  
• Database rights – a distinct right protecting investment in the obtaining, verifying and presentation of contents in a database. Arises automatically upon creation.  
• Patents – protect new products or processes typically for 20 years following an application and examination process (subject to certain criteria – new, inventive, capable of industrial application, not excluded).

Trade marks

Trade mark protection

A trade mark provides protection for badges of origin. Football commentary often talks about how particular players have "trade mark" moves or skills. These skills are not actually protected by a legal trade mark. Trade marks must be capable of differentiating your goods or services from other goods or services. A particular football skill, for example the famous Cruyff Turn, can be performed by any footballer and therefore it cannot act as a guarantee of origin.

Instead, in the footballing world, these badges of origins include:

• distinctive identifiers such as a name or a football badge; and
• more abstract trade marks such as a footballer’s nickname eg Jesse Lingard's "JLingz" mark and Cristiano Ronaldo’s famous "CR7" mark.

Manchester United was the first English football club to register a trade mark in 1970 and, as of 2022, it holds one of the largest trade mark portfolios of any club in the sport with 686 marks globally.

Subject to much press coverage, Liverpool FC’s efforts to climb the trade mark premier league table took a blow in 2019 when they failed to trade mark the word Liverpool for certain products and services primarily due to its "geographical significance" in comparison to place names that have been trademarked by other football clubs in the UK.²Chelsea, named after a smaller geographical area in London, managed to score a win and trade mark their name in 2016.

Trade mark infringement

Trade mark infringement is also a hot topic. Examples include:

• Merchandising - Arsenal Football Club v Reed concerned the sale of unlicensed Arsenal Football Club merchandise. Mr Reed had been selling football merchandise near Arsenal's stadium with disclaimers, stating that the products were not official. Arsenal managed to secure a win against Mr Reed despite the disclaimer in place. Suppliers of unofficial merchandise beware: disclaimers will not prevent a finding of trade mark infringement/passing off if the merchandise incorporates signs that affect the ability of the trade mark to guarantee the origin of goods.
• Badges, kits and club names - long-running disputes between two clubs on the field are common but less so off the pitch. One of the most prolonged trade mark disputes involved a Romanian club, CSA Steaua, and the privatised successor FC Steaua Bucharest. The dispute concerned which club was the true successor to the original Steaua București football team (founded in 1947). FC Steaua lost rights in the "Steaua" trade mark and couldn’t play in their team’s colours and crest. FC Steaua București ended up changing their name to "FC FCSB". This dispute may have been avoided if the privatisation agreement had considered trade marks and other IPRs.
• NFTs – football's relationship with crypto and block-chain has led to significant derision from critics. Earlier this year, the IP world also weighed in on this relationship. A crypto platform was offering NFTs for sale that featured Juventus FC's trade marks and the Rome court granted a preliminary injunction, ruling that there was evidence that the NFTs were infringing Juventus' trade marks. With the addition of NFTs to the 12th Edition of the Nice Classifications, a system of classifying goods and services for the purpose of registering trade marks, these kind of matchups will likely continue.

Patents

A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. To register a patent, technical information about the invention must be disclosed to the public in a patent application.

Usually, it is the technological developments that occur in the game that can be patented. Examples are:

• Balls – in 2020, Adidas patented US10850165B2 "Non-inflatable sports balls". The patent claims a monopoly in technology that means a football need not be re-inflated.
• Boots – in 1887 Harry Howe was granted a patent for a textured surface to the toe of the shoe to improve a player's kicking ability. Similarly, in 1996, Laszlo Oroszi registered a patent in Hungary claiming an invention for a striped zone at the tip of the shoe that permits football players to shoot more accurately. In 2000, the Adidas Predator Precision was released. The boot allegedly incorporated Oroszi’s patent without his authorisation. Eventually, in 2014, the Hungarian patent court ruled that Adidas had infringed on Oroszi's patent. Adidas could have avoided these costly proceedings by incorporating Oroszi's patent by way of a licence or purchase agreement.
• Video Assistant Referee (VAR) – VAR's introduction to football has been significant. One of the downsides to VAR, which is based partly on Hawk-Eye Innovations’ patent WO 2001/041884 A1, is the significant delays it can lead to in decision making. In light of this, FIFA has implemented in this year's World Cup a system that uses artificial intelligence to assist with "semi-automated offside systems". Within three minutes of the World Cup kicking off, this technology ruled out Ecuador's opening goal for offside. Part of this technology will be assisted by the match ball which contains patented tracking technology from KINEXON. For example US11150321B2 discloses a system for estimating the orientation of an object from radio measurements. The technology was also able to show that Cristiano Ronaldo had made no contact on the ball for the opening goal in the match between Portugal and Uruguay, and instead the goal was awarded to his teammate Bruno Fernandes.
• Stadiums – in the lead up to the World Cup, there has been much talk about Qatar's "stadium air conditioning". However, this array of techniques and/or technologies are not patented, a choice made by the inventor "to serve the scientific community."

Copyright

Copyright is also a significant IP right in the footballing world. For example:

• Club crests - in 2002, Arsenal unveiled a new club crest and stated that the principal reason behind the rebrand was that the old crest "incorporated many separate elements, which had been introduced over a number of years and there [was] uncertainty surrounding its exact origination." As a consequence of this, Arsenal was unable to claim copyright in the old crest and decided to rebrand.
• Broadcasts - in Football Association Premier League C-403/08 and C-429/08, it was concluded that sports events such as football matches do not qualify as protected subject matter under EU copyright law. As the CJEU stated, football matches cannot be classified as works as they are subject to rules of the game which leave no room for creative expressive freedom. Instead, the protected "works" are those contained within the broadcasts such as opening video sequences, anthems, and pre-recorded films showing highlights of recent matches.
• Injunctions - the protection of these filming and broadcasting rights are crucial for the proprietors of these IPRs, particularly with the ease of accessing streaming websites and highlights on social media. In 2017, the UK’s first live blocking injunction was granted in a case brought by the Premier League (FAPL v BT [2017] EWHC 480 (Ch)). A live blocking injunction compels the Internet Service Provider (ISP) to block a website that broadcasts every time a live broadcast is in progress. In this case the order targeted streaming servers that were delivering infringing live streams of match footage to UK consumers.

Database rights

In the words of the football magazine The Athletic, the genie is well and truly out of the bottle when it comes to data in football.³From clubs using football video game databases to find new players, to using dedicated football databases to analyse players, data is now an important component in the world of football.

Protection for football databases was first established in Football Dataco Ltd v Sportradar GmbH [2013] EWCA Civ 27; [2013] Bus. L.R. 837. Football Dataco paid analysts to attend matches and pass information to processors who entered it into a database of live data about football matches. It was held that this live data had been obtained, verified and presented in such a way that protection did exist.

However, in Football Dataco Ltd v Yahoo! UK Ltd (C-604/10) it was held that football fixture lists were not protected by database rights because the investment in devising them amounted to creating the data so was not covered by database right. It was not "obtaining, verification or presentation" of data that already existed.

Data protection

Project Red Card involves a group of current and former professional footballers who have threatened legal action against various companies, under GDPR, arguing that their performance data should be deemed personal data and therefore only be subject to processing after consent is acquired. This is currently in the pre-litigation stages but, if a decision is made in favour of the players, it has the potential to change the football data industry significantly.

Football database proprietors should therefore ensure any collection and processing of data is compliant with data protection laws.

Conclusion

In conclusion, IPRs are an important aspect of the footballing world. With the increasing commercialisation of football, it is crucial for those involved in football to properly register and manage their intellectual property rights to monitor and prevent infringement. By investing in these forms of protection, clubs, players, leagues and inventors can safeguard their brand and innovations, secure their financial success in the industry and avoid any potential offsides or fouls.

Footnotes

<sub>1. 2022 Annual review of Football Finance
2. https://www.liverpoolfc.com/news/announcements/366323-liverpool-fc-statement-on-trademark-application 
3. https://theathletic.com/3209373/2022/03/26/the-genie-is-well-and-truly-out-of-the-bottle-when-it-comes-to-data-in-football/</sub>