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This article was first published in the March 2017 edition of Global Sports Law & Taxation Reports (Vol 8, No. 1)

Building sports brands in the social media age

There is no doubt that social media’s prominence has exploded over the past decade or so.  Facebook’s number of monthly active users has grown from 1 million in 2004[1], to 1.86 billion by the end of 2016[2].

How the various social media platforms are consumed has evolved at great pace too, and the use of them is now firmly embedded in our social culture.  It is probably fair to say that almost all businesses have been impacted by social media in some way or another.  Barack Obama is currently[3] the third most followed Twitter account and the effect of Donald Trump’s Twitter campaign has undoubtedly shaped the future of American, if not world, politics.  Whether you see social media as good or bad, are an incessant user or attempt to steer clear of it at all costs, you cannot deny the worldwide, cultural impact it has had.

If we look at businesses shaped by social media, the sports industry is no exception.  Almost every team, sports person, league and sports federation has a Facebook page, YouTube channel or Twitter profile and they are hugely popular.  The tweets of Cristiano Ronaldo, Neymar Jr and Kaka are all in the Twitter top 50[4], attempting to challenge the likes of Justin Bieber and the members of One Direction at the top spots; whilst the NBA, Real Madrid and the NFL are all found above Google in terms of number of Twitter followers.

This is not really surprising.  Sport is inherently social and it lends itself to discussion via social media – sports organisations and athletes use it as a tool to communicate with fans and several social media platforms are used at once by organisations to market their teams.  Manchester City has collaborated with the multimedia messaging app Snapchat to create the world’s first live story, that takes fans behind-the-scenes at a football club.  Facebook provides information, posts pictures, videos and promotes upcoming events.  YouTube has been used to share exclusive video content with fans.  Twitter, in particular, requires very little effort and so is the perfect medium to break a story and keep consumers aware of and connected to a brand.

Athletes: names, catchphrases and celebrations

Sports brands, whether teams, events and athletes, are some of the most valuable brands in the world.  In 2016, Forbes valued the New York Yankees brand at $660 million; the Superbowl at $630 million; and Roger Federer at $36 million.  With figures like these, it is not surprising that athletes look to the law to protect their brand value.

Lebron James, one of the NBA’s star basketball players, is world renowned.  In order to leverage the brand, this recognition, according to Forbes, is currently worth $34 million in monetary terms)[5], he has registered several filings with the United States Patent and Trademark Office for the word mark “Lebron”, as well as others internationally.

In the UK, sports stars have looked at trade mark protection for their brands too.  Trade marks are protected in two main ways:

  • Under The Trade Mark Act 1994, which offers statutory protection for registered trade marks. Action can be brought against someone using the same or similar mark in relation to the same or similar types of goods or services for which the mark is registered.
  • By the common law tort of ‘passing off’ which protects trade marks, or more precisely the good will associated with the business conducted under them. It must be proved that: a) the claimant’s goods or services have goodwill; b) there has been some misrepresentation that has led consumers to think that goods or services came from the claimant; and c) that misrepresentation caused or is likely to cause damage[6].

One of the issues with ‘passing off’, is that it does require you to prove that you own the goodwill in the business conducted under the mark.  With registration, by contrast, there is a presumption that this is owned by the registered trade mark owner.

Whilst there are differing motivations for athletes to protect their names and brand marks -some will hold their trade mark portfolios in specially created vehicles (limited liability companies and even overseas corporations), often influenced by tax planning objectives -there has been a significant rise in athletes seeking registered protection.  Whilst attempts to register the names of people as trade marks typically fails the distinctiveness test, and so, therefore, cannot be registered as a trade mark in the UK, certain well-known sports stars, such as David Beckham, have managed it in certain classes[7].

Where names are not distinctive enough, we have seen nicknames or catchphrases make their way onto the European trade mark register: “LE0 MESS1” was registered by FC Barcelona’s Lionel Messi and Real Madrid’s Cristiano Ronaldo registered “CR7” with the European Union Intellectual Property Office.  In 2013, Gareth Bale took things a step further, registering his goal celebration, known as the “eleven of hearts”[8].

Registering trade marks does not mean there will not be a fight to protect them.  The NFL star Robert Griffin III, commonly “RG3”, filed an application to register the mark in Class 25 (clothing, footwear and headgear) in January 2012.  In January 2013, Research Group Three Inc. filed an application in the same class but claimed prior use from 1999 and opposed Robert Griffin’s application in June 2013.  The company argues that Griffin’s unrestricted use and registration of the mark is likely to cause “reverse confusion…or deceive the trade and purchasing public”.[9]

Sports Events

It is not just individuals looking to rely on trade mark protection to build and preserve their brands.  Sports Events organisers, such as FIFA and the IOC, implement specific legislation to protect event marks (with protection of official sponsors and discouraging ‘ambush marketing’ as clear drivers).  Each Olympic Games host country has to enact legislation designed to ensure the IOC’s IP is protected.  This seeks to ensure that the recognition of the Olympic brand and the goodwill attached to it, built up over a number of years, remains as valuable and profitable as possible.  An exclusive sponsor is not happy when their competitors are getting airtime – remember Linford Christie’s contact lenses at an Atlanta Games press conference when Reebok was the Games’ official sponsor?

Olympic Trade Mark Legislation in the UK

In the UK, there is legislation designed to protect the Olympic marks.  The Olympic Symbols etc. (Protection) Act of 1995 provides protection to the Olympic rings, as well as the phrase “Citius, Altius, Fortius” (“Faster, Higher, Stronger”), and several words associated with the Olympic Games.  In 2006, this list of words was expanded in advance of the 2012 London Olympics and also to extend protection to words and symbols associated with the Paralympics.  The 2006 amendment[10] also included some ‘ambush marketing’ provisions, which were designed to prevent anyone, who was not authorised to do so, suggesting to the public that there is an association between them, their goods or services and the London Olympics.  When the total sponsorship raised for London 2012 was reportedly somewhere in the region of £1.4 billion[11], with “tier one” partners, such as Adidas, BT and BMW, each paying around £40m, the importance of protection is plain to see.

Whilst the IOC intended to all but eliminate ‘ambush marketing’ at the Games, marketers have continued to employ innovative tactics to gain access to the Olympic Games, where they are prohibited from mentioning the brand.  Oddbins, a wine and alcohol retail chain, included in advertising copy the phrases “we can’t mention the event, we can’t mention the city, we can’t even mention the year”. Paddy Power, an Irish bookmaker, who is no stranger to investigations from the Advertising Standards Authority, took out billboards near Olympic venues saying: “Official sponsor of the largest athletics event in London this year! There you go, we said it”. They then go on to reveal that the sponsorship is of an egg and spoon race to be held in the town of London in France.

But whilst the statutory protections were designed to protect sponsors’ investments in big events, what does this mean for general discussion about sporting events via social media?  Could you get into trouble for using the hashtag #Rio2016?  In 2013, the first US applications to trade mark hashtags started being submitted. Whilst this did not stop ordinary people talking about the event online using registered hashtags, indeed over 187 million tweets were sent about the Rio 2016 Olympic Games[12], for companies, this was a different matter.  Whilst preventing companies who have not paid for Olympic rights from slyly associating themselves with the Games seems fair, given the breadth of the hashtags the United States Olympic Committee (USOC) had registered as trade marks, this meant that companies were, in essence, prevented from wishing Team USA good luck.  According to the sports TV network ESPN, the USOC sent letters out to several companies in advance of the Rio Olympics “warning them that their online accounts should not reference any Olympic results, share or re-tweet anything from the official Olympic account, or use official hashtags including #Rio2016 and #TeamUSA.”[13].  Whilst the IOC might argue that such practices protect the integrity of the Olympic symbols and the investments of the official partners, without the revenue and support of whom the Olympic Games would not happen, others might consider it unfair or even bullying.

Athletes’ personal social media accounts

Just as social media creates ways for event organisers and official sponsors to promote their brands, sports stars also wish to interact with their fans via their official social media accounts.  As Usain Bolt ran 9.86sec to win his third successive 100m Olympic title at the Rio Olympics, he was just a quick to tweet his fans, dedicating his win to his fellow countrymen: “Jamaica Stand Up!!! This for you my people”.  But Bolt would not have been free to tweet about just anything.  The International Olympic Committee publish guidelines applicable to athletes, coaches, officials members of the media and other accredited persons, restricting the posting of video or audio of Olympic events, and disallow  use of the Olympic symbol on social and digital media[14].  The word “Olympic” and other Olympic-related words can only be used as a factual reference, and provided that these words are not associated with any third party or any third party’s products or services, which is exactly what Bolt’s commercial partners, Puma, for example, would want him to do to increase their brand value. The guidelines also make clear that video taken from within the Olympic Village must only be for personal use; an imaginable hurdle for Universal Pictures to overcome in their making of the film ‘I am Bolt’ which contains location footage from the Games.

Negative press

Just as it can aid to increase it, brand value can be severely depleted by negative comments made on social media.  In the UK, 2011 saw the English Premier League warn players about social media use for the first time.  At this time, the number of active Twitter users in the UK was less than 10million and the FA rarely had to deal with Twitter related incidents.  However, former Liverpool attacker Ryan Babbel’s comments on referee Ryan Webb, kick-started a wave of fines from the FA in connection with Premier League players’ social media comments.

Players, fans and clubs realised that Twitter commentary was in the public domain as the FA warned: “Comments made on social network sites may be considered public comment, any comments that are deemed improper, bring the game into disrepute, or are threatening, abusive, indecent or insulting may lead to disciplinary action….Participants are required to act in the best interests of the game at all times and should be aware of this when using social networking websites.”[15].

No official guidance came from the English Premier League until July 2012, following a series of events of real consequence; players tweeting the inside track on new signings[16] and injury woes[17] and then the racist attack Fabrice Muamba suffered from a Swansea University student[18]. However, the guidelines, which recognised the ability for players using social media to commit offences, did not stop Rio Ferdinand from being fined £45,000[19] for a tweet to Ashley Cole; nor did it stop Cole himself from making disparaging remarks about the FA on Twitter, following doubts cast on Cole’s evidence in connection with John Terry’s racial abuse trial. For this, he was fined £90,000[20].

Whilst some managers have openly discussed their distain for sites like Twitter, some players have stayed Twitter free and some leagues enforce blackout periods during which social media posts are prohibited, there is still a drive and an expectation for social media activity around sports stars. Some teams and leagues ensure that employees and players sign up to social media policies or even reduce the risk of negative press, by managing athletes’ social media accounts.

Other issues

Copyright infringement

It is not just the sports star in the public eye that can make an error of judgement using social media and end up on the wrong side of the law. Uploading unofficial goal videos on social media has become more popular, with users filming footage from matches (aided by pause and rewind functions on linear television services) and uploading them within moments.  However the English Premier League was quick to remind that tweeting copyrighted material is illegal[21].  Whilst many supporters do not realise that, by sharing the videos on websites like Twitter, they are breaking copyright laws, the Premier League and other rights holders are under an contractual obligations to protect their official broadcast partners, who pay huge sums of money for the rights to show the content on television and/or online.

Inadvertent infringement

In February 2013, Under Armour brought Nike to court to sue them for trade mark infringement, trade mark dilution, and unfair competition under the US Lanham Act. Under Armour alleged that Nike had infringed Under Armour’s trade marks through the use of the phrase I WILL in various digital marketing campaigns promoting Nike sporting apparel and footwear.  Whilst we will never know the legal outcome of the dispute, the case confidentially settled in February 2014, and whilst it is accepted that the two brands are competitors vying for market share in the same space, this case highlights that no one can be too careful when using seemingly innocuous phrases in their social media campaigns.

Conclusion

The current social media landscape is extensive. Facebook, Twitter and YouTube remain as some of the most popular[22] and, for sports’ personalities, these accounts remain integral to building their brands.

Whilst social media can turn a sports personality into a celebrity overnight; it can also do irreparable damage to his or her reputation.  As social media use increases, the opportunity to damage an individual’s reputation, that of their club or team also increases.  An increased level of awareness and/or monitoring is needed to ensure that nothing unacceptable is shared.

Exactly what is unacceptable is a moveable feast; the obvious contenders range from racist remarks and team tactics, but also extend to copyrighted content (whether inadvertent or not) and the use of trade marks.

So, whilst the benefits of social media for trade mark owners and rights holders, creating brand awareness and developing goodwill as well as creating data from which to assess the positive and negative impact of their brands, are undeniable, to embark on a social media campaign for any brand, is not issue free as this article has demonstrated.

[1] https://www.theguardian.com/news/datablog/2014/feb/04/facebook-in-numbers-statistics

[2] http://newsroom.fb.com/company-info/

[3] http://friendorfollow.com/twitter/most-followers/

[4] ibid.

[5] https://www.forbes.com/pictures/mlm45gelhg/forbes-fab-40-the-world/#e771eee416b9

[6] Reckitt & Coleman Ltd v Borden Inc. [1990] 1 All E.R 873

[7] https://www.ipo.gov.uk/tmcase/Results/4/EU001796721

[8] https://www.ipo.gov.uk/tmcase/Results/1/UK00002657917

[9] Research Group Three, Inc. v Thr3escompany, LLC (2013), Notice of opposition ESTTA 544822

[10] The London Olympic Games and Paralympic Games Act 2006 (c 12)

[11] https://www.theguardian.com/sport/datablog/2012/jul/19/london-2012-olympic-sponsors-list

[12] https://blog.twitter.com/2016/the-rio2016-twitter-data-recap

[13] http://www.espn.co.uk/olympics/story/_/id/17120510/united-states-olympic-committee-battle-athletes-companies-sponsor-not-olympics

[14] IOC Social and Digital Media Guidelines for persons accredited to the Games of the XXXI Olympiad Rio 2016 (October 2015)

[15] The FA, February 2011.

[16] https://www.theguardian.com/football/2011/jul/25/mick-mccarthy-wolverhampton-tweet

[17] http://www.bbc.co.uk/sport/football/14188973

[18] http://www.telegraph.co.uk/education/educationnews/9282801/Liam-Stacey-Twitter-Fabrice-Muamba-attacker-banned-from-university.html

[19] http://www.telegraph.co.uk/sport/football/teams/manchester-united/9482601/Rio-Ferdinand-fined-45000-by-FA-over-choc-ice-tweet.html

[20] http://www.telegraph.co.uk/sport/football/teams/chelsea/9617706/Ashley-Cole-fined-90000-for-Twitter-outburst-directed-at-Football-Association.html

[21]https://www.theguardian.com/media/2014/aug/15/premier-league-warns-fans-vine-videos-goals

[22] https://social-media.co.uk/list-popular-social-networking-websites