Many sports clubs will overlook intellectual property (“IP”) protection in the mistaken belief that such efforts are only required by large scale commercial companies. The central element of sport is unpredictability, and this ultimately correlates to higher levels of risk. Secure IP protection is not only crucial to help to counteract this risk by combating infringement but is also one of the most reliable ways of boosting a sports club’s revenue.
The types of IP in play
But precisely what IP should be protected by a sports club? Think of match day, for example, and several key visible IP elements can be identified:
- The merchandise on offer in the club store, including club jerseys, can be protected through trade mark and design law. Trade marks are one of the most common forms of IP used by sports clubs. The names or logos of the club, along with other names associated with the team, are capable of being exclusively protected by a trade mark. In addition, if one of the club designs has a special form or appearance, it might also be possible to secure exclusive design protection.
- The game itself has associated copyright and related rights which are the key drivers for generating revenue for prospective broadcasters. The screening of a sporting event encompasses certain rights which underpin the relationship between sport and television and other media.
- Advertisements from sponsors around the stadium are based on commercial sponsorship agreements which are founded upon IP rights. Sponsors in turn will seek protection against any potential ambush marketing (where advertisers try to connect their product with a particular event without paying for the privilege), with which sports clubs will need to be familiar in order to ensure vigilance in prevention.
- Fans watching the game will be checking the club website for information via the most appropriate domain name and website content (copyright). With the vast amount of club publicity disseminated through the internet, securing longevity in a strong domain name is crucial for business and marketing purposes.
How to secure protection
While there is no single law that exists to protect all such proprietary material, a range of IP protection applications can be made via various IP offices such as the Irish Patents Office (the “IPO”), where the registration of patents, trade marks and designs can be obtained. Note that this will only afford a domestic level of protection and consideration should be given as to whether an investment into wider European or international protection would be a prudent option. Registered IP assists the owner to bring a legal action to prevent unauthorised third parties from using the same, or a similar, mark, design or patent in the area or field within which it is registered.
The media rights created by the recording of sporting events will often be held by the governing body in question, therefore clubs should be mindful of any contractual commitments entered into in this regard which will often be built upon the rights held by the entity responsible for the sporting event.
Capitalising on your IP
Ownership of IP means that the brand can then be licenced, and this is where commercial exploitation and revenue generation becomes possible. Proprietorship of your IP will enhance:
- Sponsorship agreements – There is little doubt that sponsors will be more willing to invest when the club can refer to seasoned IP protection as part of its portfolio.
- Commercial partnerships – Registered rights provide partners with more confidence in the relationship.
- Investor interest – We have also been seeing recent trends whereby sports clubs are being purchased by overseas investors who have identified Irish sport, soccer in particular, as a potential area for fruitful return. One of the first areas of due diligence for a potential investor will be the IP rights of the target company.
Refereeing your IP
When comprehensive IP protection is in place, the club can more readily seek to obtain a clear remedy should any infringement occur. There can be much more complexity and cost for a club in enforcing unregistered brands when the brand or trade mark has not been registered and another organisation seeks to benefit financially by riding on the coattails of the brand or brand owner.
On the opposite end of the spectrum, strong knowledge of IP is critical when seeking to create new merchandise or develop new marketing strategies. Launching a new club product, for example, and receiving a subsequent complaint or opposition for IP infringement, can have significant financial and reputational consequences for something that could have easily been avoided. Recently Bohemian FC withdrew its Bob Marley adorned jersey, following contact by the late singer’s representative agency who, it transpired, had not granted a licence to the company which purported to give permission to Bohemians to use the image.
Conclusion
The growing number of commercial eyes being cast over the Irish sporting landscape means that this is an area of a club’s business that is simply too important to ignore. William Fry’s experienced IP and Sports teams have advised on a multitude of IP strategies for businesses and sporting organisations both large and small and across domestic and global scales. Clubs have already created their own IP; don’t wait until the off season to protect this.
Contributed by: Ruth Fahy
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