Mega-Event Rights Protection and Intellectual Property Laws

Louw, Andre M.

doi:10.1007/978-90-6704-864-4_5

Mega-Event Rights Protection and Intellectual Property Laws

Andre M. Louw²

Chapter
First Online: 01 January 2012

2046 Accesses

Part of the book series: ASSER International Sports Law Series ((ASSER))

Abstract

This is the first of three chapters which will each focus on a specific aspect of the impact of special legal protection of commercial rights to events. This chapter will critically examine the ways in which such special laws not only supplement but often significantly alter the fundamental precepts, characteristics and working of intellectual property laws. IP rights are, of course, important in the context of event sponsorships and also of ambush marketing. The chapter will examine, however, the recent trend of phenomenal expansion of IP laws and of IP rights and the protection which they provide to event organisers and their commercial partners by means of sui generis event legislation, from a critical perspective. The conclusion is that this expansion is illegitimate and unjustifiable in this context, and provides a major cause for concern regarding the legitimacy of special event protection laws.

This is a preview of subscription content, log in via an institution.

Chapter: USD 29.95; Price excludes VAT (USA)

eBook: USD 89.00; Price excludes VAT (USA)

Softcover Book: USD 119.99; Price excludes VAT (USA)

Hardcover Book: USD 169.99; Price excludes VAT (USA)

Tax calculation will be finalised at checkout

Purchases are for personal use only

Learn about institutional subscriptions

Notes

1.
Longdin 2009, p. 728.
2.
Brown 1948, p. 1206.
3.
See, e.g., Johnson 2007, Chaps. 2 and 3 (a second and updated edition of which has just been published as Johnson, P Ambush Marketing and Brand Protection: Law and Practice Oxford University Press (November 2011)); Scaria 2008, Chap. 3; see also Lewis and Taylor 2007, chapter D1 (especially D1.36–D1.132; Gardiner et al. 2006, Chaps. 10 and 11.
4.
Kobel does well to sum this up in the context of the use of trademarks:
‘A commonly held view is that trademark law is simply irrelevant because ambush marketers carefully avoid referring to trademarks. Court practice however shows that users of ambush marketing technique are not always subtle and often refer to protected trademarks. The situation may be relatively clear and does not require long developments when ambush marketers are referring to competitors’ trademarks. In such cases, the likelihood of confusion is obvious and protection is straightforward…In reality, ambush marketers refer to the event itself, possibly to the name of the event organiser. In these cases claiming protection under trademark law is less obvious.’ Kobel 2007, p. 20
5.
See the report by Frontier Economics 2007, p. 14 (referring to Townley et al. 1998, p. 335).
6.
Longdin 2009, p. 731.
7.
See, for example, Bollier 2005; Lessig 2004; Vaidhyanathan 2003; see also Spinello and Bottis 2009, Chaps. 1 and 4.
8.
William W Fischer III ‘The growth of intellectual property: A history of the ownership of ideas in the United States’ (at 10–11), Harvard University, paper available online at the time of writing at http://cyber.law.harvard.edu/people/tfisher/iphistory.pdf.
9.
Digital Economy Act 2010 c. 24 (Royal Assent 8 April 2010).
10.
Compare the following observation by David Vaver, Reuters professor of Intellectual Property and Information Technology Law, Oxford University, in a public address at the Victoria University of Wellington, 30 August 2000—available online at the time of writing at http://kirra.austlii.edu.au/nz/journals/VUWLawRw/2001/2.html:
‘The recent expansion of intellectual property has come to be more an end in itself than a means to the end of stimulating desirable innovation. The question whether existing protections should be scaled back or re-contoured, because the activities that they supposedly foster would occur anyway and would be more widely distributed throughout society, is hardly asked any more. If intellectual property were seen as a form of subsidy—a willingness by society at large to provide economic benefits to one sector in return for the prospect of larger benefits to all—then few would question the need to keep intellectual property under constant review to ensure the scheme was working well. It would not be enough to say that intellectual property as a whole was returning social benefits that outweighed its costs as a whole. As with any other subsidy, each element within the scheme would need to be examined to see if it passes its own A level—and with distinction. A strong case for such systematic reviews must surely exist.’
11.
Mattel Inc v. MCA Records Inc. 296 F.3d 894 (9th Cir. 2002).
12.
See, for example, the discussion Tawfik 2008, p. 267 et seq.
13.
Carrier 2004, p. 9.
14.
Das 2000, pp. 1074–1075.
15.
17 U.S.C. § 102(a)(6).
16.
See Hylton, J G ‘The over-protection of intellectual property rights in sport’ (Marquette University Law School/National Sports Law Institute)—undated paper available online at the time of writing at http://shiac.com/files/arablexsportiva-presentations/004003.pdf
17.
Real estate developer DLF Group won the title sponsorship of the IPL for a 5-year period after its successful bid of over USD 50 million for the rights.
18.
See the report in the Hindustan Times of 12 April 2010, available online at the time of writing at http://www.hindustantimes.com/News-Feed/cricketnews/Stop-treading-on-India-Sports-Ministry-tells-IPL/Article1-529045.aspx
19.
Another example is found in sports ‘image rights’ of athletes in the various jurisdictions. Although ‘publicity rights’ enjoy varying degrees of recognition in the United States at state and federal levels, UK law (for example) recognises no such right, but ‘image rights’ are accepted in practise (apparently as a form of quasi-IP right) even though there is little theoretical basis for its existence.
20.
From a round-table interview with the four major professional league commissioners in the American Bar Association’s publication, Vol. 14 No. 2 Antitrust (Spring 2000) at 10 (available online at the time of writing at http://www.americanbar.org/content/dam/aba/publishing/antitrust_magazine/antitrust_14-2_full.authcheckdam.pdf).
21.
With reference to Kunstadt et al. 1996, c1; Phelps ‘Can Copyright Move in Mysterious Ways?’ (1996) 63 Copyright World 17. See also Kukkonen, C A ‘Be a Good Sport and Refrain from Using my Patented Putt: Intellectual Property Protection for Sports Related Movements’ 80 J. Pat. & Trademark Off. Soc'y 808 (1998); Das 2000; Weber, L J ‘Something in the Way She Moves: The Case for Applying Copyright Protection to Sports Moves’ 23 Colum.-VLA J.L. & Arts 317 (1999–2000).
22.
From an address presented by Professor Vaver at the Victoria University of Wellington, 30 August 2000—available online at the time of writing at http://kirra.austlii.edu.au/nz/journals/VUWLawRw/2001/2.html.
23.
Gardiner et al. 2006, p. 415
24.
Kunstadt et al. 1996.
25.
US Patent no. US4911443 (A) (published 27 March 1990). The patent expired on 30 September 2007. The abstract of the patent contained the following:
‘A new game is disclosed, involving substantially the same rules as American football (e.g., NFL or NCAA) except that kicks or passes into the end zone may be deflected back onto the playing field as a playable ball by a rebounding assembly that surrounds the goalposts. Upon an attempted field goal, an errant kick will result in the ball hitting the rebounding assembly instead of passing between the vertical uprights of the goalpost. The reflected ball can be caught before it hits the ground by only players of the team defending the goal. Once caught, the defending team may advance the ball toward the opposite goal in accordance with the normal rules of American football. If the ball reflected off of the rebounding assembly hits the ground before it is caught by a player of the team defending the goal, the ball is free for players of either team to advance. In order to ensure that an errant kick results in the rebounding of the ball back into the playing field, the rebounding assembly is comprised of resilient material that returns much of the kinetic energy to the ball after it impacts the rebounding assembly. The rebound assembly for playing the game is comprised of a goal post substantially similar to that used in American football, with the exception that the instant goal is provided with a ball rebound net extending outwards from each side of the goal post, along the extremity of the end zone to substantially the entire width of the playing field.’ See http://v3.espacenet.com/publicationDetails/biblio?CC=US&NR=4911443&KC=&FT=E.
26.
Das 2000.
27.
Wilf 1999.
28.
Johnson 2008, p. 29.
29.
‘The world of FIFA's Marketing Assets and Programmes is manifold. For the most part it includes the creation and marketing of all FIFA Marks, of which the Event Marks for the various FIFA tournaments are developed in cooperation with the respective Local Organising Committee. In particular, these are the Official Trophies, Official Mascots, Official Emblems, Official Posters and related programmes (e.g. Fan Fest, Trophy Tours).’—at http://www.fifa.com/aboutfifa/marketing/marketing/fifaassets/index.html
The England and Wales Cricket Board (EWCB), who devised the modern ‘Twenty20’ format of cricket and the name, registered the name as a trademark, although deciding (apparently for reasons of financial constraint), to limit their rights to the European Union. They therefore only filed a U.K. trademark application and a CTM application for the trademark Twenty20. As one observer commented tongue-in-cheek (in light of cricket’s level of popularity in Europe): ‘No doubt, when the French version of the game takes off in France and the Bulgarian version is the talk of Sofia, the royalties will begin to roll in’—see http://www.jenkins.eu/mym-autumn-2008/snippets.asp.
30.
Fezer 2003, 2007. My discussion of Fezer’s writing in the text relies on discussion of it by Lundgren 2010.
31.
See Blackshaw 2010.
32.
Trautmann, K ‘Die eventmarke—Markenschutz von sponsoring und merchandising’ Hartung-Gorre Verlag, Konstanz (2008) 85—as quoted by Lundgren 2010, p. 42.
33.
See Lundgren 2010, pp. 41–42.
34.
Fezer as discussed by Lundgren 2010, pp. 42–43.
35.
Lundgren 2010, p. 43.
36.
Ibid.
37.
Praktiker Bau-und Heimwerkermarkte AG v Deutsches Patent und Markenamt C418/02 (7 July 2005).
38.
Lundgren 2010, p. 44.
39.
Lundgren 2010, p. 50 et seq.
40.
As observed in the Trade-Mark Cases 100 U.S. 82, 93–94 (1879), quoted in Merges et al. 2003, p. 530.
41.
Ibid.
42.
McCarthy, J Thomas McCarthy on Trademarks and Unfair Competition § 2:10 (2d ed.) 1984 at 104 (as referred to by Lundgren 2010, p. 44).
43.
Section 45 of the Lanham Act provides as follows:
‘The term "trademark" includes any word, name, symbol, or device, or any combination thereof
1. (1)
  used by a person, or
2. (2)
  which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act;
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.’
44.
Although recent developments in American trademark law such as the enactment of the Trademark Law Revision Act, 1988 and the Federal Trademark Dilution Act, 1995 illustrate the trademark law's struggle with making necessary adjustments, and accepting a deviation from the consumer confusion model—see Rayle 2000.
45.
Lundgren 2010, p. 45.
46.
First Council Directive 89/104/EEC, of 21 December 1988.
47.
Lundgren 2010, pp. 46–47.
48.
Ibid.
49.
In the Dior case (ECJ, Rs. C-337/95, Slg. 1997, I-6013, GRUR Int. 1998, 140—Dior/Evora) and the BMW case (ECJ. Rs. C-63/97, Slg. 1999, I-0905, GRUR Int. 1999, 438—BMW).
50.
Lundgren 2010, pp. 47–48.
51.
Lemley 1999, pp. 1706–1707.
52.
Ibid. 1707–1708.
53.
See Article 7 of the Council Regulation (EC) No. 207/2009 (26 February 2009).
54.
Lundgren 2010, pp. 50–51
55.
Kur 2008, p. 204—as referred to by Lundgren 2010, p. 51.
56.
See Article 8(2) Item 2, which prohibits the registration of ‘trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of the rendering of the services, or to designate other characteristics of the goods or services.’
57.
See Article 7(1)(c) of the provisions on the Community Trademark. In the ‘Baby-Dry’ case of Procter & Gamble Co. v OHIM Case 393/99 the ECJ examined the importance of individual words or aspects of a trademark in determining whether it is descriptive, and found that what was important was the overall effect of the mark and not the components of its make-up. The court held that the words Baby and Dry in that case were a ‘lexical invention bestowing distinctive power on the mark so formed’.
58.
Section 2(e) of the Lanham Act (15 U.S.C. §1052) allows for the refusal of registration of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 4, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
59.
Lundgren 2010, p. 52.
60.
See the views of Advocate General Ruiz-Jarabo Colomer as expressed in his opinion in C-102/07 Adidas AG, Adidas Benelux BV v. Marca Mode CV, C&A Nederland CV, H&M Hennes & Mauritz Netherlands BV and Vendex KBB Nederland BV (delivered on 16 January 2008) at 33–45.
61.
Case C-329/02 P: SAT.1 SatellitenFernsehen GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) Judgment of the Court (Second Chamber), 16 September 2004.
62.
Kur 2008, p. 201.
63.
Lundgren 2010, p. 54.
64.
Ibid.
65.
BGH, Beschluss v. 27.04.2006—I ZB 96/05—FUSSBALL WM 2006. MarkenR 2006, 395.
66.
Lemley 1999, pp. 1696–1697.
67.
Ibid. 1708.
68.
Reichmann and Franklin 1999, pp. 890–891.
69.
See, e.g., McKelvey 2006, p. 119.
70.
Ellis et al. 2011, p. 305.
71.
Lopes, T C & Lima, E L ‘Ambush marketing in times of World Cup and Olympic Games’ IP Frontline 21 December 2010—available online at the time of writing at http://www.ipfrontline.com/depts/article.aspx?id=24693&deptid=3#.
72.
Port 2008, p. 4.
73.
An unnamed FIFA source as quoted in a report in World Intellectual Property Review January/February 2010 at 10.
74.
Federation Internationale de Football Associations (FIFA) v Executive African Trading (EAT) CC Case No. 52308/07, Gauteng North High Court.
75.
The National Hockey League v Pepsi-Cola Canada case, discussed elsewhere.
76.
See the ICC Development v Phillips & Arvee case, discussed elsewhere.
77.
See the New Zealand Telecom case, discussed elsewhere.
78.
Haman and Marriott 2010, p. 77.
79.
See the report entitled ‘Sporting Chance’, available on the web site of the International Bar Association at http://www.ibanet.org/Article/Detail.aspx?ArticleUid=1a43e1e6-e207-4aa7-a21f-6d0435bba7e7
80.
See, generally, Schatte 2009.
81.
Johnson 2007, p. 15.
82.
Schwab 2006, p. 8.
83.
Kobel 2007, pp. 21–22 refers to the fact that the community trademark ‘Olympic Games’ has been registered in the 42 existing classes and ‘London 2012’ was registered in the UK and as a Community trademark in every single class.
84.
The German Bundesgerichtshof held (in its decisions of April 27, 2006, I ZB 96/05 and I ZB 97/05) that registration of ‘WM 2006’ and ‘Fussball WM 2006’ for 850 products or services was not in bad faith and valid, as it was not made to damage a third party but with a view to protect the trademark in relation to all listed products and services.
85.
Lundgren 2010, p. 19.
86.
Case GRUR-RR 2004, 362, where the court found that there was a likelihood of confusion with FIFA’s registered mark ‘WORLD CUP 2006 GERMANY’. Although the court did not comment on the validity of FIFA’s mark, it cautioned that such a phrase might, in some cases, be considered descriptive and therefore not eligible for trademark protection—see Schwab, F ‘FIFA’s trademark tactics’ September/October 2006 World Trademark Review 6 at 8.
87.
BGH, Beschluss v. 27.04.2006—I ZB 96/05—FUSSBALL WM 2006. MarkenR 2006, 395.
88.
At the time of writing I was unable to obtain an English language copy of the relevant judgments discussed here. My sincere thanks to Felipe Dannemann Lundgren for permission to reproduce relevant sections from the text of his LL.M thesis as referred to previously.
89.
Lundgren 2010, pp. 20–23.
90.
BGH, Beschluss v. 27.04.2006—I ZB 97/05—WM 2006.
91.
Lundgren 2010, pp. 23–24
92.
Johnson 2007, p. 23.
93.
Relying on the authority of Case C329/02 SAT.1 SatellitenFernsehen GmbH; and Linde AG v Deutsches Patent-und Markenamt (C53/01).
94.
Particularly in the case of Erpo Mobelwerk (C63/02).
95.
UK Application No. 2433070, registered 7 November 2007.
96.
Schwab 2006, p. 9.
97.
Decisions of the Cancellation Division of 28 October 2005—No. 972C 002152817 and No. 969C 002155521.
98.
See the decisions of the OHIM Cancellation Division referred to; Johnson 2007, p. 22.
99.
OHIM Board of Appeals—Cases R 1466/2005-1, R 1467/2005-1, R 1468/2005-1, R 1469/2005-1 and R 1470/2005-1 (20 June 2008).
100.
Cases T-445/08; T-446/08 and T-447/08 (action brought on 29 September 2008).
101.
Of 20 December 1993.
102.
Joined cases T-444/08 to T-448/08.
103.
According to Articles 77–78 of the Rules of Procedure of the Court of Justice the President of the Court shall order the case to be removed from the register in the event of a settlement. Article 77 provides that if, before the Court has given its decision, the parties reach a settlement of their dispute and intimate to the Court the abandonment of their claims, the President shall order the case to be removed from the register and shall give a decision as to costs in accordance with Article 69(5), having regard to any proposals made by the parties on the matter. Article 78 provides that if the applicant informs the Court in writing that he wishes to discontinue the proceedings, the President shall order the case to be removed from the register and shall give a decision as to costs in accordance with Article 69(5).
104.
Writing on the weblog of the Journal of Intellectual Property Law and Practice, 8 January 2010—available online at the time of writing at http://jiplp.blogspot.com/2010/01/world-cup-trade-mark-dispute-1-0-says.html.
105.
In respect of the reference to the protection of ‘work titles’ under German law and their potential relevance to sports events, see also the AIPPI Q210 Germany country report (at 12)—available online at https://www.aippi.org/download/commitees/210/GR210germany_en.pdf.
106.
Reinholz, F ‘No legal grounds for FIFA’s objection to football stickers in chocolate bars’, 2 December 2009—available online at the time of writing at http://www.haerting.de/de/suche/index.php?we_objectID=1494.
107.
See the online report available at http://www.travelretaildubai.com/confectionery/ferrero-s-fifa-promotions-prove-a-big-hit-with-soccer-fans-1.685553.
108.
See the snippet from the Autumn 2008 edition of the Make Your Mark trademark newsletter available online at http://www.jenkins.eu/mym-autumn-2008/snippets.asp.
109.
Johnson 2008.
110.
Compare the ‘London 2012 Olympics Association Right’ (discussed in Sect. 4.4.3 of Chap. 4) created in terms of the London Olympic Games and Paralympic Games Act, 2006, which the legal advisor to a number of 2012 Olympics sponsors has characterised as a new ‘IP right’—see David Stone ‘The Olympic Games cannot survive without sponsors and those sponsors need legal protection’ The Lawyer, 16 January 2006. I will examine such association rights in more detail in Chap. 8.
111.
The Trade Practices Amendment Act 26 of 2001 inserted section 9(d) in the Trade Practices Act, 76 of 1976, which provision prohibits a person from making, publishing or displaying false or misleading statements, communications or advertisements which suggest or imply a contractual or other connection with a sponsored event or the person sponsoring such event. See the discussion in Sect. 4.4.5 of Chap. 4.
112.
Johnson 2008, p. 26.
113.
For other legislative provisions that outlaw ‘association ambushes’ in South Africa, see Section 29 of the Consumer Protection Act, 68 of 2008, which is found in Part E of the Act (which deals with consumers’ “right to fair and responsible marketing”) and contains provisions regarding the marketing of goods or services. This section also prohibits ambush marketing by association with an event, and provides as follows:
‘S29. A producer, importer, distributor, retailer or service provider must not market any goods or services
1. (a)
  in a manner that is reasonably likely to imply a false or misleading representation concerning those goods or services …; or
2. (b)
  in a manner that is misleading, fraudulent or deceptive in any way, including in respect of … the sponsoring of any event.’
Section 41 of the Act (dealing with ‘False, misleading or deceptive representations’) contains the following:
‘S 41(3). … [I]t is a false, misleading or deceptive representation to falsely state or imply, or fail to correct an apparent misapprehension on the part of a consumer to the effect, that
(a) the supplier of any goods or services has any particular status, affiliation, connection, sponsorship or approval that they do not have.’
114.
Mouritz 2008 (see discussion in the text below).
115.
Compare the discussion on the event-specific legislation that was prepared for the Sydney 2000 Olympic Games in Curthoys and Kendall 2001; see also Frontier Economics 2007, p. 17:
‘[M]any legally-savvy companies are unlikely to be … explicit in their ambush marketing tactics. Much concern about ambush marketing instead relates to far more subtle practices for which: (1) the application of existing law is uncertain or highly fact-dependent; or (2) there is no contravention of any law at all. The breadth of conduct that falls within this category demonstrates the creativity of marketers in finding ways to leverage off an event, either without infringing any law, or where legal uncertainty (combined with the time and cost of litigation) dissuades any enforcement action by the event organiser.’
116.
In the form of the Ted Stevens Act (see the discussion in Sect. 4.4.10 in Chap. 4). Compare the view expressed in San Francisco Arts and Athletics, Inc. v. United States Olympic Comm., 483 U.S. 522, 531 (1987), in terms of which, unlike traditional claims under the Lanham Act, under the Ted Stevens Act ‘the USOC need not prove that a contested use [of its registered marks] is likely to cause confusion, and an unauthorised user of the [marks] does not have available the normal statutory defences.’
117.
The ‘Vancouver Act’, discussed in Sect. 4.4.7 of Chap. 4.
118.
Storey 2010, p. 50.
119.
See Frontier Economics 2007, p. 17.
120.
See the guidelines of the Working Committee, Project Q210 (‘The protection of major sports events and associated commercial activities through trademarks and other IPR’; in a call for reports compiled for purposes of a draft resolution to be submitted to the AIPPI Exco meeting in Buenos Aires, October 2009)—available online at the time of writing at https://www.aippi.org/download/commitees/210/WG210English.pdf.
121.
See discussion in the text in Sect. 5.3.1.2 heading (iv) below.
122.
See discussion in the text in Sect. 5.3.1.2 heading (iii) below.
123.
Johnson 2007, pp. 15–16.
124.
For example, Johnson 2007, which discusses the specific requirements relating to trademarks (in Chap. 2) and copyright and designs (in Chap. 3).
125.
CCH Canadian Ltd v Law Society of Upper Canada [2002] FCA 187 (14 May 2002) par. 18.
126.
Which requirement, of course, might not apply depending on the nature of the relevant work (e.g. South African copyright law does not require this in respect of two distinct classes of ‘works’ recognised in the Copyright Act 98 of 1978, namely broadcasts and programme-carrying signals).
127.
Which are further examined in Chap. 8.
128.
Namely a trademark filing in terms of the Madrid Protocol of 1989 (Protocol relating to the Madrid Agreement concerning the International Registration of Marks—a filing treaty and not a substantive harmonsation treaty)—for more information, see http://www.uspto.gov/trademarks/law/madrid/index.jsp)—or the filing of a Community trademark in the EU. It should be noted also that a number of ‘event marks’ may qualify for protection as famous marks although unregistered in various jurisdictions in terms of Article 6bis of the Paris Convention or in terms of Article 16 of the TRIPS agreement, although discussion of this issue is beyond the scope of this chapter.
129.
Compare the provisions of section 3 of the UK Trademarks Act, 1994.
130.
The Merchandise Marks Act, 1941 (as amended)—see the discussion in Sect. 4.4.5 in Chap. 4.
131.
The Major Events Management Act, 2007—see the discussion in Sect. 4.4.4 in Chap. 4.
132.
MEMA section 7(3)(c)(ii).
133.
Longdin 2009, p. 731.
134.
Ibid. 732, referencing HD Parker, Vol. 637 Hansard 7494 (20 February 2007).
135.
Government Notice 787 of 2007, Government Gazette 30001 (21 June 2007).
136.
Kelbrick 2008, p. 332.
137.
See also section 32(3) of the UK Act, which requires a declaration during the application for registration of a trademark to the effect that ‘the trademark is being used, by the applicant or with his consent, in relation to those goods or services, or that he has a bona fide intention that it should be so used.’
138.
Compare the provisions of section 46 of the UK Trademarks Act, 1994.
139.
See, for example, the provisions of section 46(1)(a) of the UK Trademarks Act in respect of its reference to the consent of the proprietor.
140.
Federation Internationale de Football Association (FIFA) v Executive African Trading CC & Another Case No. 52308/07 North Gauteng High Court, Pretoria (which case was subsequently withdrawn in June 2011—see the discussion in Sect. 4.4.5 in Chap. 4).
141.
Affidavit by David Murray, who had left FIFA’s employ by the time of the scheduled hearing of the case in March 2011.
142.
At par. 27.1 of Murray’s affidavit.
143.
In par. 54 of Portela’s relying affidavit.
144.
Johnson 2007, p. 26.
145.
See the report dated 2 June 2010 available online at the time of writing at http://www.v-brazil.com/world-cup/2014/cbf-files-lawsuits-for-ambush-marketing/.
146.
See, more generally, the discussion in Chap. 8.
147.
See the discussion in Chap. 7.
148.
See, for example, on this debate in South African law and with reference to case law from other jurisdictions, Alberts, W ‘Origin of the species: Trademark infringement after the Bergkelder case’, undated paper available online at the time of writing at http://www.bowman.co.za/LawArticles/Publications/Trademark%20Article.pdf.
149.
Act 194 of 1993; section 34(1)(c).
150.
Laugh It Off Promotions CC v South African Breweries International (Finance) t/a Sabmark International 2005 (2) SA 46 (SCA) par. 13.
151.
Laugh It Off Promotions CC v South African Breweries International (Finance) t/a Sabmark International 2005 (8) BCLR 743 (CC) par. 40; see Alberts (note 148 above).
152.
Compare section 1(1) of the UK Trademarks Act, 1994, which requires that a mark should be ‘capable of distinguishing goods or services of one undertaking from those of other undertakings’.
153.
A trademark must distinguish the proprietor’s goods or services from those of other traders. By signifying the origin of goods or services a trademark also fulfils this function, by distinguishing the goods and services of the originator from goods and services of others.
154.
Mars GB Ltd v Cadbury Ltd [1987] RPC 377 402, as quoted by Alberts (note 148 above).
155.
Beebe 2005, 2021.
156.
Baird 1993, p. 772.
157.
Heymann 2011, p. 388.
158.
Ibid. 393.
159.
Ibid.
160.
See the discussion in Chap. 8.
161.
Alberts (note 148 above) refers to other functions of trademarks, including the use of a mark to fulfil an advertising, psychological or guarantee function, or as a communication tool (with reference to Elleni Holding BV v Sigla SA [2005] ETMR 51 par. 40), or to make a lifestyle statement (with reference to Phillips Trade Marks: A Practical Anatomy (2003) 27).
162.
See, generally on American law in this regard, Merges et al. 2003, p. 546 et seq.; see also Article 15(1) of the TRIPS agreement.
163.
Major Events Management Act, 2007 section 8 and the Schedule to the Act.
164.
Olympic and Paralympic Marks Act (Bill C-47); Schedule 3 (‘Generic Olympic Terms’) and section 3.
165.
London Olympic Games and Paralympic Games Act, 2006; Schedule 4 par. 3 (the ‘listed expressions’).
166.
Source: The website of the World Intellectual property Organisation (WIPO), at http://www.wipo.int/classifications/nice/en/about_the_ncl/preface.html.
167.
Richard Buchel, former intellectual property counsel to Adidas and counsel for FIFA and other international sports federations in respect of their global rights protection programmes.
168.
AIPPI Forum, 23–25 September 2005, Berlin.
169.
From a summary of the presentations at the AIPPI Forum event, available at https://www.aippi.org/download/berlin2005/f1_cover.pdf.
170.
From the Sweden country report, available online at the time of writing at https://www.aippi.org/download/commitees/210/GR210sweden.pdf.
171.
From the Singapore country report, available online at the time of writing at https://www.aippi.org/download/commitees/210/GR210singapore.pdf.
172.
From the Switzerland country report, available online at the time of writing at https://www.aippi.org/download/commitees/210/GR210switzerland.pdf.
173.
Including, in the UK, the Culture, Media and Sport committee of the House of Commons, which included the following in its conclusions/recommendations on the White Paper on Sport:
‘Intellectual property rights represent a large and increasing proportion of the income generated by sport. We share the view that it is disappointing that the White Paper does not give greater recognition to this, and we believe that it is therefore essential that sport has a seat at the table in all consultations and policy-making relating to intellectual property.’ [See the report of the Culture, Media and Sport committee, 7th Report of Session 2007–2008 (2008), available online at the time of writing at http://www.parliament.the-stationery-office.co.uk/pa/cm200708/cmselect/cmcumeds/347/347.pdf].
174.
Major Events Management Act, 2007 section 8 and the Schedule to the Act.
175.
Olympic and Paralympic Marks Act (Bill C-47); Schedule 3 (‘Generic Olympic Terms’) and section 3.
176.
London Olympic Games and Paralympic Games Act, 2006; Schedule 4 par. 3 (the ‘listed expressions’).
177.
See section 10.
178.
See section 3.
179.
Merchandise Marks Act, 2002—see discussion in Sect. 4.4.5 of Chap. 4.
180.
See the report by Alberts, W and Parker, L to the Working Committee, Project Q210 (‘The protection of major sports events and associated commercial activities through trademarks and other IPR’; reports compiled for purposes of a draft resolution to be submitted to the AIPPI Exco meeting in Buenos Aires, October 2009)—available online at the time of writing at https://www.aippi.org/download/commitees/210/GR210south-africa.pdf
181.
See Kelbrick 2008, pp. 331–332.
182.
United States Steel Corp. v Vasco Metals Corp. 394 F.2d 1009 (1968).
183.
Brookman 2003, pp. 5–49
184.
See Title 15: Commerce and Trade of the US Code, 15 U.S.C. §1056, which provides as follows:
1. (a)
  The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. An applicant may voluntarily disclaim a component of a mark sought to be registered.
2. (b)
  No disclaimer, including those made under subsection (e) of section 7 of this Act, shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter, or his right of registration on another application if the disclaimed matter be or shall have become distinctive of his goods or services.
185.
Sprague Electric Co. v. Erie Resistor Corp. 101 USPQ 486, 486–487 (Comm’r Pats. 1954).
186.
Council Regulation (EC) No 207/2009 (26 February 2009); Article 37(2), which provides as follows:
‘Where the trade mark contains an element which is not distinctive, and where the inclusion of that element in the trade mark could give rise to doubts as to the scope of protection of the trademark, the Office may request, as a condition for registration of said trade mark, that the applicant state that he disclaims any exclusive right to such element. Any disclaimer shall be published together with the application or the registration of the Community trade mark, as the case may be.’
187.
Even in the absence of a disclaimer a trademark may not monopolise elements which should not be capable of exclusive use. The European Court of Justice found (in the Chiemsee case—joined cases C-108/97 and C-109/97, judgment of 4 May 1999) in principle that there were public interests why a particular sign should not be reserved to one undertaking alone as a trademark. This applied both to the sign on its own as well as in combination with other elements. Signs which may not be reserved to one undertaking alone include descriptive indications or non-distinctive elements, but also to sign elements in which there are other public interests, for example, national emblems or of indications of geographical origin.
188.
See discussion of the FIFA v Bartlett case in Sect. 3.3.5 in Chap. 3.
189.
Kelbrick 2008, pp. 331–332.
190.
As per Notice 787 of 2007—Government Gazette 30001, 21 June 2007.
191.
Notice 1791 of 2007—Government Gazette No. 30595, 14 December 2007.
192.
Which included ‘2010 FIFA WORLD CUP SOUTH AFRICA’, ‘WORLD CUP 2010’, ‘RSA 2010’, ‘FOOTBALL WORLD CUP’, ‘FIFA WORLD CUP’, ‘SOUTH AFRICA 2010’, ‘SA 2010’, 2010 FIFA WORLD CUP’, ‘AFRICA 2010’, ‘SOCCER WORLD CUP’, WORLD CUP’, ‘SOUTH AFRICA WORLD CUP’, ‘WORLD CUP SOUTH AFRICA’, ‘2010’, ‘TWENTY TEN’, ‘CAPE TOWN 2010’, ‘BLOEMFONTEIN 2010’, ‘MANGAUNG 2010’, ‘DURBAN 2010’, ‘JOHANNESBURG 2010’, ‘NELSPRUIT 2010’, ‘MBOMBELA 2010’, ‘POLOKWANE 2010’, ‘PIETERSBURG 2010’, ‘PORT ELIZABETH 2010’, ‘NELSON MANDELA BAY 2010’, ‘PRETORIA 2010’, ‘TSHWANE 2010’, ‘RUSTENBURG 2010’, ‘CONFEDERATIONS CUP’, ‘WIN IN AFRICA FOR AFRICA’, and ‘FOOTBALL FOR A BETTER WORLD’.
193.
Kelbrick 2008, pp. 331–332.
194.
Ibid.
195.
Kelbrick 2008, p. 332.
196.
Cooper Dreyfuss 1996, pp. 150–151.
197.
Karol, P ‘Resisting the trademark disclaimer temptation’, 28 February 2011, available online at the time of writing at http://sunsteinlaw.blogspot.com/2011/02/resisting-trademark-disclaimer.html.
198.
See the discussion in Sect. 5.2.2 earlier in this chapter.
199.
Cockburn, I ‘Two apples, a football tournament and a bunch of trademarks’, undated, available online at the time of writing at http://www.wipo.int/sme/en/documents/trademarks.htm.
200.
Port 2008, pp. 5–7.
201.
For a more detailed discussion, see Fisher 1988.
202.
Campbell v Acuff-Rose Music, Inc. 510 U.S. 578 (1994).
203.
Folsom v. Marsh 9 F.Cas. 342 (1841).
204.
Compare section 12(1) of South Africa’s Copyright Act 98 of 1978; section 29 of the UK’s Copyright, Designs and Patents Act, 1988.
205.
See, generally, Ewelukwa 2006, p. 109 et seq.
206.
Compare Zatarain’s, Inc v Oak Grove Smokehouse, Inc 698 F.2d 786 (5th Cir. 1983).
207.
15 U.S.C. § 1115(b)(4) (section 33(b)(4) of the Lanham Act).
208.
See Merges et al. 2003, p. 550
209.
See New Kids on the Block v News America Publishing, Inc 971 F.2d 302 (9th Cir. 1992).
210.
See L.L. Bean, Inc V Drake Publishers, Inc 811 F.2d 26 (1st Cir. 1987).
211.
KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. 543 U.S. 111 (2004).
212.
See section 11 of the Trademarks Act, 1994.
213.
See section 12 of the European Council Regulation (EC) No. 40/94.
214.
See Ewelukwa 2006, p. 134 et seq.
215.
London Olympic Games and Paralympic Games Act, 2006 (see the discussion in Sect. 4.4.3 of Chap. 4).
216.
Which deals with limitation of the effects of a Community trademark, and provides as follows:
‘A Community trademark shall not entitle the proprietor to prohibit a third party from using in the course of trade:
(a) his own name or address;
(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(c) the trademark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, provided he uses them in accordance with honest practises in industrial or commercial matters.’
217.
European Council Regulation (EC) No. 40/94 (20 December 1993), as codified by Council Regulation (EC) No 207/2009 (26 February 2009).
218.
Olympic and Paralympic Marks Act (Bill C-47), 2007—see the discussion in Sect. 4.4.7 of Chap. 4.
219.
Compare section 12(d)(iii) of MEMA, which exempts a representation in accordance with honest practises in industrial or commercial matters, which is ‘for the purposes of reporting news, information, criticism, or a review (including promoting that news, information, criticism, or review) in a newspaper or magazine, or by means of television, radio, film, the Internet, or other means of reporting’.
220.
See the piece by Guy Berger ‘FIFA should embrace coverage, not curb it’, Mail & Guardian, 20 May 2010, available online at the time of writing at http://mg.co.za/article/2010-05-20-fifa-should-embrace-coverage-not-curb-it; Menary, S ‘South African media concerned over FIFA press accreditation rules’, 29 January 2010, available online at http://www.playthegame.org/news/detailed/south-african-media-concerned-over-fifa-press-accreditation-rules-4645.html?type=98&cHash=c9506774c256cf7a569efc3a4e1fc363; da Silva, I S ‘FIFA accused of “bullying”, dictatorial tactics’, 1 February 2010, available online at http://www.bizcommunity.com/Article/196/147/44260.html.
221.
Corbett and Van Roy 2010, p. 352.
222.
See, generally, Schedule 4 to the Act (and, specifically, para 7 of Schedule 4).
223.
For example a representation can be of any kind (including a verbal representation), as long as it is made ‘in a manner likely to suggest to the public that there is an association’.
224.
The representation must objectively create the association.
225.
Johnson 2007, p. 131.
226.
Ibid. 130.
227.
In the meaning of para 7(b) of Schedule 4 to the Act.
228.
Paragraph 3(1) of Schedule 4.
229.
Compare the provisions dealing with advertising regulations in section 19 et seq., and the provisions dealing with street trading as found in sections 25–31 of the London Olympic Games and Paralympic Games Act, 2006.
230.
Compare the following from the resolution adopted by the committee calling on the Board of Directors of the International Trademark Association (INTA) to issue guidelines regarding ambush marketing legislation, dated 10 November 2010, available on the INTA web site at the time of writing at http://www.inta.org/Advocacy/Pages/AmbushMarketingLegislation.aspx—see Appendix A at the end of this book:
‘[P]roperty owners and others are often forced to breach existing agreements and incur associated expenses for which there is no compensation. Such signs and advertisements that predate the special event are clearly not attempts by the owner or advertiser to interfere with the rights of the sponsors to a particular event and should not be considered “ambush marketing.” Ambush marketing legislation should make reasonable accommodation for these pre-existing rights.’
231.
More will be said in Chap. 8 about the role (or lack thereof) of consumer confusion in respect of association rights to mega-events as created in the sui generis event legislation.
232.
Merges et al. 2003, pp. 531–532.
233.
Even if there is no likelihood of confusion (i.e. no trademark infringement), one may still be liable for using another's trademark if you are blurring or tarnishing their mark under the state and/or federal dilution laws.
234.
See Merges et al. 2003, p. 615 et seq.; AMF Inc. V Sleekcraft Boats 599 F.2d 341 (9th Cir. 1979).
235.
Compare also the 11th recital of the EU’s Community Trademark Regulations (CTMR), Council Regulation (EC) No 207/2009 (26 February 2009), which provides as follows:
‘A Community trade mark is to be regarded as an object of property which exists separately from the undertakings whose goods or services are designated by it. Accordingly, it should be capable of being transferred, subject to the overriding need to prevent the public being misled as a result of the transfer.’
236.
UK Trademarks Act, 1994 c. 26; section 10(2).
237.
Council Regulation (EC) No 207/2009; Article 7(1)(g) (‘Absolute grounds for refusal’).
238.
Ibid. Article 9(1)(b).
239.
Trademarks Act 194 of 1993.
240.
Section 34(1)(a), which provides that infringement would include ‘the unauthorised use in the course of trade in relation to goods or services in respect of which the trademark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion’.
241.
See also Article 16(1) of the TRIPS agreement.
242.
OCH-ZIFF Management Europe Ltd v OCH Capital LLP [2010] EWHC 2599 (Ch) (20 October 2010).
243.
At par. 87 of the OCH-ZIFF judgment. The court (by way of Arnold J, in par. 81) provided a well-known hypothetical example of initial interest confusion which was discussed in the judgment of Circuit Judge O'Scannlain in Brookfield Communications, Inc v West Coast Entertainment Corp 174 F. 3rd 1036 (9th Cir., 1999) at 1064, involving two video rental stores:
‘Suppose West Coast's competitor (let's call it 'Blockbuster') puts up a billboard on a highway reading 'West Coast Video: 2 miles ahead at Exit 7' where West Coast is really located at Exit 8 but Blockbuster is located at Exit 7. Customers looking for West Coast's store will pull off at Exit 7 and drive around looking for it. Unable to locate West Coast, but seeing the Blockbuster store right by the highway entrance, they may simply rent there. Even consumers who prefer West Coast may find it not worth the trouble to continue searching for West Coast since there is a Blockbuster right there. Customers are not confused in the narrow sense: they are fully aware that they are purchasing from Blockbuster and they have no reason to believe that Blockbuster is related to, or in any way sponsored by, West Coast. Nevertheless, the fact that there is only initial consumer confusion does not alter the fact that Blockbuster would be misappropriating West Coast's acquired goodwill.’
244.
OCH-Ziff supra at par. 101.
245.
Shwetashree Majumder & Harsimran Kalra ‘The ambush marketing debate’, on the web site Managing Intellectual Property, 1 September 2010 (available online at the time of writing at http://www.managingip.com/Article/2665113/The-ambush-marketing-debate.html?ArticleId=2665113&p=2).
246.
See Luepke 2008, p. 794.
247.
Lanham Act, Title 15, chapter 22 of the US Code. See the meaning of source in respect of ‘related companies in section 5 of the Lanham Act; see section 43(a) of the Act; see Lemley and McKenna 2010, p. 413.
248.
Lemley and McKenna 2010, pp. 427–428.
249.
Ibid. 428.
250.
Schedule 4, par. 1(1) of the Act.
251.
Schedule 4, par. 1(2).
252.
Public Act 35 of 2007, discussed in Chap. 4.
253.
In Article 2.
254.
In Article 9.
255.
Federal Law No. 310-FZ (approved by the Federation Council on 23 November 2007).
256.
Which provides as follows:
‘Any advertising which contains false information concerning the association of an advertiser with the Olympic Games and the Paralympic Games, including in the capacity of a sponsor, or concerning the approval of consumer properties of advertised goods (works, services) by the International Olympic Committee, the International Paralympic Committee, the Olympic Committee of Russia, the Paralympic Committee of Russia, the Organising Committee “Sochi 2014”, shall be deemed to be misleading.’
257.
In fairness, it should be noted here that some are of the view that trademark law has moved away from its traditional consumer protection rationale. Catherine Ng argues, rather convincingly, that developments in both the use of trademarks and in trademark laws have served to sideline the traditional requirement of consumer confusion as to the source of goods or services. These developments include the role of company law (i.e. modern corporate structures are often opaque and corporate management unknown to the public, which serves to ‘alienate’ the source of trademarked goods or services), the law’s acceptance of trademark licensing (which, by definition, permits co-existence of multiple sources for one trademark) and franchising. She observes the following in arguing for a reassessment of the rationales for trademark law and a re-rationalisation of the boundaries for protection:
‘Without a secure consumer protection rationale which presumes that consumer demand is trained more on the desirability of the goods than the desirability of their marks, the rationale [of trademark law] for advancing efficient distribution of economic resources… needs to be reconsidered. Where a mark is desired by and its goods incidental to the consumer, the consumer’s economic votes may favour promoting the marks more than producing the goods which fulfil material needs.’
See Ng 2008, pp. 223–237.
258.
Lemley and McKenna 2010, p. 414.
259.
The London Organising Committee of the Olympic Games and Paralympic Games Limited v. H&S Media Ltd Case No. D2010-0415 (the Administrative Panel decision dated 29 April 2010)—report available online at the time of writing at http://www.wipo.int/amc/en/domains/decisions/text/2010/d2010-0415.html. See also the discussion earlier in this chapter, which makes the point that the wording of the exceptions to infringement of association rights and provisions regarding restrictions on the use of event symbols and words, as found in the sui generis event legislation, often closely mirrors the wording of statutory trademark fair use provisions.
260.
Lemley and McKenna 2010, pp. 438–439 state:
‘[S]tudies suggest that any harm to producers [or event organisers in this context] from confusion about sponsorship or affiliation is quite attenuated: producers suffer no lost sales, and they are unlikely to suffer any reputational consequences absent additional information suggesting control over the partner. If a mall cookie vendor advertises that its cookies contain M&Ms, for example, consumers might or might not assume that Mars had entered into a deal with the cookie company, but whether they do or not they are unlikely to blame Mars if they don’t like the cookies. The only sense, then, in which a mark owner is harmed by third-party uses that suggest sponsorship or affiliation is that third-party uses might interfere with the mark owner’s own ability to develop and derive value from such relationships. In other words, the only likely loss to trademark owners from affiliation confusion is the loss of revenue the trademark owner could have made by licensing the mark to the putative affiliate. This is a claim to market control, not a claim of harm resulting from confusion or even an injury to consumers at all. We think this circular claim to licensing revenue is insufficient to justify trademark protection, particularly in light of the significant costs such protection entails… Our point is not that consumers can never be harmed by confusion regarding non-quality-related relationships. Rather, the point is that the sort of attenuated confusion at issue in sponsorship and affiliation cases does not necessarily or even often harm consumers or the market for quality products. The benefits of expanding confusion law to this class of cases are correspondingly smaller.’ [Emphasis added].
261.
See Kobel 2007, pp. 7–8.
262.
Trademarks Act, 2002.
263.
Corbett and Van Roy 2010, p. 351.
264.
Pelanda, B L ‘Ambush marketing: Dissecting the discourse’, undated 2011 paper available online at the time of writing at http://works.bepress.com/brian_pelanda/. The author refers to the opinion of American courts regarding the function of trademark law: Two Pesos v. Taco Cabana, 505 U.S. 763, 767–768 (1992) (The Lanham Act was intended to make “actionable the deceptive and misleading use of marks” and “to protect persons engaged in… commerce against unfair competition” (citing § 45, 15 U.S.C. § 1127)); Mattel Inc. v. MCA Records Inc., 296 F.3d 894, 904 (9th Cir. 2002) (“trademark law grants relief only against uses that are likely to confuse”).
265.
In Chaps. 8 and 9.
266.
Seguin and O’Reilly 2008, p. 62.
267.
I will not be discussing the issue of proof of harm in cases of trademark dilution (and in respect of famous or well-known marks) here.
268.
Merges et al. 2003, p. 726.
269.
Faiveley Transp. Malmo AB v. Wabtec Corp. 559 F.3d 110 (2d Cir. 2009) 118.
270.
Stoll-DeBell et al. 2009, pp. 119–120.
271.
Ross 2000, par. 11.01.
272.
eBay, Inc. v. MercExchange, L.L.C. 126 S. Ct. 1837 (U.S. 2006). This is reminiscent of the 9th Circuit’s similar refusal to uphold a presumption of irreparable harm for purposes of an injunction in a copyright case, in Sun Microsystems, Inc v Microsoft, Inc 188 F.3d 1115 (9th Cir. 1999).
273.
Compare, also, Amoco Prod. Co. v Village of Gambell 480 U.S. 531 (1987) at 545 (not a trademark case).
274.
North American Medical Corp. v. Axiom Worldwide 2008 U.S. App. LEXIS 7370.
275.
Salinger v Colting 2010 WL 1729126 (2d Cir. April 30, 2010) (a copyright case involving J D Salinger’s Catcher in the Rye).
276.
See Stoll-DeBell et al. 2009, pp. 121–125; see also Williams 2009, p. 571.
277.
Farley 2006, p. 1184.
278.
Which I will examine in more detail in Chap. 8.
279.
Of course, the more arbitrary and unusual the use of the relevant word the more likely it might be capable of registration as a trademark (e.g. ‘Diesel’ for clothing goods, or ‘Apple’ for computers). The more a mark describes the good or service that it labels, the less strong the trademark protection it will receive, and the more freedom others have to use the same word for other purposes.
280.
Firms such as Google and Xerox have taken active steps in recent years to educate consumers (and e.g. the compilers of online dictionaries) as to the fact that their trademarks and brands are not for generic use, in order to prevent future claims of genericide—see Stim 2010, p. 428
281.
Anti-Monopoly, Inc v General Mills Fun Group, Inc 684 (F.2d) 1316 (9th Cir. 1982).
282.
Although the issue has come to the fore in recent years in various jurisdictions, specifically in the context of database rights.
283.
Claims of the propertization of IP law relate to developments in recent years which have expanded the duration and scope of initial IP rights to approach unlimited dimensions (for example, in the American context)—see Carrier 2004. I use the term here to denote the (purported) creation of a veritable right of ownership to language and words.
284.
Franklyn 2001, p. 1251.
285.
Compare the words of Sir Herbert Cozens-Hardy MR:
‘Wealthy traders are habitually eager to enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the enclosure.’ In re Joseph Crosfield & Sons, Ltd. (“Perfection”), [1910] 1 Ch. 130, 141 (A.C. 1909), cited in British Sugar P.L.C. v. James Robertson & Sons, Ltd., [1996] R.P.C. 281, 284 (Ch.).
286.
The phrasing of Boyle 2008, p. 181 (expressed in the context of copyright law).
287.
See http://wondering-mind.blogspot.com/2007/12/masterclass-self-publishing-olympic.html.
288.
Edgar, D ‘You can’t use the “O-word’”, The Guardian, 8 October 2007 (available online at the time of writing at http://www.guardian.co.uk/commentisfree/2007/oct/08/comment.olympics2012).
289.
Cooper Dreyfuss 1996, p. 136.
290.
Volokh 2003, p. 698.
291.
In Chap. 7.
292.
See Chap. 8.
293.
In para A.1.3 of this submission document, which is available online at the time of writing at http://www.adassoc.org.uk/aa/index.cfm?LinkServID=5737B08E−19B9-F84A-0C664664F83A91B0&showMeta=0.
294.
MEMA section 31.
295.
Section 30 provides as follows:
‘Section 28 does not apply to the display, exhibition, or use of any emblem or word if
1. (a)
  the display, exhibition, or use is expressly authorised by or under any Act or by the Governor-General by Order in Council; or
2. (b)
  immediately before 18 December 1998, either
  1. (i)
    that display, exhibition, or use was expressly authorised by any consent, permission, approval, or authority given by a person lawfully entitled to give it; or
  2. (ii)
    the emblem or word was registered under any statutory authority; or
3. (c)
  the emblem or word is part of the description of any sporting or recreational facilities operated by a local authority or community organisation; or
4. (d)
  the display, exhibition, or use is for the purposes of, or associated with, the reporting of news or criticism or a review in a newspaper or magazine, or by means of television, radio, film, the Internet, or by other means of reporting by a person who ordinarily engages in the business of such reporting; or
5. (e)
  the display, exhibition, or use is for the purposes of, or associated with, a radio or television programme, an Internet website, or a film, book, or article for publication in a newspaper or magazine, relating to a person who was a member or official of the New Zealand team that competed at an Olympic Games or Commonwealth Games; or
6. (f)
  in the case of a word, the word comprises the whole or part of the proper name of any town or road or other place in New Zealand; or
7. (g)
  in the case of a word, the word is the surname or initials (not being used for the purpose of defeating the intention of this section) of a foundation member of the body or of the person engaging in the business, trade, or occupation.’
296.
Corbett and Van Roy 2010, p. 354.
297.
Wilf 1999, pp. 1–2.
298.
From the guidelines of the Working Committee of the AIPPI, Project Q210 (‘The protection of major sports events and associated commercial activities through trademarks and other IPR’; in a call for reports compiled for purposes of a draft resolution to be submitted to the AIPPI Exco meeting in Buenos Aires, October 2009), at 3—available online at the time of writing at https://www.aippi.org/download/commitees/210/WG210English.pdf
299.
San Francisco Arts & Athletics, Inc. v USOC 789 F.2d 1320–1323. For more on this case, see the discussion in Sect. 4.4.10 of Chap. 4.
300.
See discussion in Sect. 4.4.10 in Chap. 4.
301.
Siegel 1994, p. 37.
302.
(2003) VII AD (Del) 405—see the discussion in Sect. 4.4.2 of Chap. 4.
303.
At par. 18 of the court’s order (by Agarwal J, dated 1 January 2003).
304.
1994 (4) SA 722 (T)—as discussed elsewhere in Sect. 3.3.5 of Chap. 3.
305.
Act 62 of 1963.
306.
At 742E of the judgment.
307.
Kelbrick 2008, p. 329.
308.
Kelbrick 2008, p. 329. It is interesting to note Swiss-based FIFA’s view on its ‘rights’ to the term ‘World Cup’ in light of the following view expressed by the country reporters for Switzerland in the AIPP working committee (Q210—see discussion elsewhere in this chapter) process, when asked whether major sports events require less stringent trademark registration requirements in respect of the distinctiveness of marks:
‘It is a fundamental function of a trademark to distinguish the goods and services of one enterprise from the goods and services of other enterprises (cf. art. 1 par. 1 Swiss Trademark Act). A non-distinctive trademark cannot distinguish the goods of one enterprise from those of another enterprise. Further, European and World Championships take place in numerous sports every year. It is not obvious at all why e.g. only the governing bodies of football should be allowed to use terms like "European Championship" and/or the corresponding abbreviations. Further, in some sports there is not even just one governing body, but many competing organisations (e.g. boxing). Thus, it is not justified to narrow the requirement of distinctiveness for marks which relate to Major Sports Events. In any event, it would disturb the proper balance of and contravene the rationale of trademark law to allow the monopolsation of descriptive terms as such. Such terms belong in the public domain. Inadequacies (if any) in particular situations may be remedied by the laws against unfair competition, if the third party behaviour should contravene the principle of good faith. Finally, separate trademark rules for certain right holders may not easily be justified and will result in other interest groups asking for similar benefits.’ [The Swiss country report at 8–9—available online at the time of writing at https://www.aippi.org/download/commitees/210/GR210switzerland.pdf].
309.
Which will be further examined in Chap. 7.
310.
From the International Trademark Association (INTA) resolution on ambush marketing legislation (November 2010), which is included as Annexure A at the end of this book.
311.
Mouritz 2008.
312.
Bill C-47; the Bill received Royal Assent on 22 June 2007, and entered into force on 17 December 2007.
313.
Michael Geist, Canada Research Chair in Internet and E-commerce Law at the University of Ottawa, Faculty of Law, writing on his free speech blog (‘Special interest law undermines the Olympic spirit’, 19 March 2007—available online at the time of writing at http://www.michaelgeist.ca/index.php?option=com_topics&task=view&id=10041&Itemid=75&startmonth=&startyear=&endmonth=&endyear=&intersect=0&topic%5B%5D=10041&limit=10&limitstart=50).
314.
Mouritz 2008, p. 10.
315.
Similar concerns were expressed about the London 2012 Olympic Bill at the time of its passing, when Peers from all three major parties in the House of Lords attacked aspects of the Bill designed to stamp out ambush marketing, calling it a ‘draconian constraint’ and an ‘interference with editorial freedom of expression’—from the report entitled ‘London 2012 Olympic Bill called “draconian”’, 16 January 2006, available at the time of writing on the web site of www.GamesBids.com at http://www.gamesbids.com/eng/other_news/1137514053.html.
316.
Geist (note 313 above).
317.
These are covered by section 3 of the Act, which provides as follows:
‘No person shall adopt or use, in connection with a business, as a trademark or otherwise, an Olympic Trademark, or a translation thereof, or a mark that so nearly resembles an Olympic Trademark as to be likely to be mistaken for it.’
318.
This last in schedule 3 of the Act. Use of these terms is covered in section 4 of the Act, which provides as follows:
‘No person shall, in association with an Olympic Trademark or other mark, promote or otherwise direct public attention to their business, wares or services in a manner that misleads or is likely to mislead the public into believing that (a) the person’s business, wares or services are approved, authorised or endorsed by VANOC [the local organising committee] or any other Olympic body or, (b) there is a business association between the person’s business and the Olympic Games, the Paralympic Games, VANOC or any other Olympic body.’
319.
Johnson 2007, pp. 129–130.
320.
Mouritz 2008 observes that the Vancouver Act, in its section 4 appears to have created a similar association right to the London Olympics association right.
321.
Johnson 2007, pp. 131–132. Johnson does, however, point out that these two phrases would not likely be found to offend the association right and that a court is not obliged to take the specified combinations into account.
322.
Contrast the apparent lack of non-commercial use exceptions in the Vancouver Act as discussed by Mouritz 2008.
323.
Johnson 2007, p. 131.
324.
The London Act schedule 4 par. 7.
325.
Ibid. schedule 4 par. 10.
326.
Section 8 provides as follows:
1. ‘8 (1)
  The Governor-General may, by Order in Council made on the recommendation of the Economic Development Minister, declare any or all of the following:
  1. (a)
    an emblem to be a major event emblem;
  2. (b)
    a word, words if combined with other words, or a combination of words to be a major event word or major event words.
2. (2)
  The Economic Development Minister may only make a recommendation after consultation with
  1. (a)
    the Commerce Minister; and
  2. (b)
    the major event organiser; and
  3. (c)
    persons the Minister considers are likely to be substantially affected by the recommendation.
3. (3)
  Before making a recommendation, the Economic Development Minister must take into account the extent to which, in relation to the major event, emblems and words require protection in order to
  1. (a)
    obtain maximum benefits for New Zealanders;
  2. (b)
    prevent unauthorised commercial exploitation at the expense of either a major event organiser or a major event sponsor.’
327.
Section 11 provides as follows:
1. ‘S 11 (1)
  The court may presume that a representation is in breach of section 10 if it includes any of the following:
  1. (a)
    a major event emblem; or
  2. (b)
    a major event word or major event words; or
  3. (c)
    a representation that so closely resembles a major event emblem, a major event word, or major event words as to be likely to deceive or confuse a reasonable person.
2. (2)
  Subsection (1) applies even if the representation is qualified by words like “unauthorised” or “unofficial”, or other words that are intended to defeat the purpose of section 10.’
328.
This section provides as follows:
‘[Sections 10 and 11 do not apply if] in accordance with honest practises in industrial or commercial matters, the representation
(i) is necessary to indicate the intended purpose of goods or services; or
(ii) is made by an existing organisation continuing to carry out its ordinary activities; or
(iii) is for the purposes of reporting news, information, criticism, or a review (including promoting that news, information, criticism, or review) in a newspaper or magazine, or by means of television, radio, film, the Internet, or other means of reporting; or
(iv) in the case of a word or emblem (provided that the word or emblem is not being used in combination with other words or emblems with the intention of suggesting an association that breaches section 10), comprises the whole or part of
(A) the proper name of any town or road or other place in New Zealand; or
(B) the legal or trade name (not being used for the purpose of defeating the intention of this subpart) of the person making the representation; or
(C) an existing registered trademark.’
329.
MEMA s 13.
330.
SR 2008/250, an Order in Council issued 11 August 2008 (which came into force on 11 September 2008).
331.
By means of the Major Events Management (Rugby World Cup 2011) Order 2007.
332.
‘Be careful in New Zealand, free speech is no more, don’t mention the World Cup’, 14 August 2010, available online at the time of writing at http://rorybaust.wordpress.com/.
333.
Including Exxon Corp. V Exxon Insurance Consultants International Ltd [1982] Ch. 119, and Francis Day & Hunter Ltd v Twentieth Century Fox Corp. [1940] AC 112.
334.
Longdin 2009, p. 732 fn 45.
335.
In respect of the infringement provisions of the Trademarks Act, 194 of 1993, see section 34(1)(a).
336.
Ibid.; section 34(1)(a); section 34(1)(b).
337.
Ibid.; section 34(1)(c).
338.
See the Copyright Act 98 of 1978.
339.
See the discussion in Sect. 4.4.5 of Chap. 4.
340.
Federation Internationale de Football Association (FIFA) v Metcash Trading Africa (Pty) Ltd [2009] ZAGPPHC 123 Gauteng North High Court—Respondent’s Heads of Argument par. 33–34.
341.
Ibid. par. 7–8.
342.
From the report by Frontier Economics 2007, p. 24.
343.
These protected expressions are defined in s 24 of the Act as the words ‘Olympic’, ‘Olympics’, ‘Olympic Games’, ‘Olympiad’, ‘Olympiads’, and any other expression ‘so closely resembling’ any of those terms ‘as to be likely to be mistaken, by a reasonable person, for such a protected Olympic expression’.
344.
From Frontier Economics 2007, p. 29, with reference to the cases of Australian Olympic Committee v Baxter & Co Pty Ltd (1996) 36 IPR 621 (decided under the Sydney 2000 Games (Indicia and Images) Protection Act) and Australian Olympic Committee v ERI Bancaire Luxembourg SA (2006) 69 IPR 135 (decided under the OIP Act).
345.
See Bond, P ‘FIFA forbids free speech at World Cup Fan Fest’, 11 July 2010, available online at the time of writing at http://www.counterpunch.org/bond07092010.html.
346.
MEMA section 11(1).
347.
In terms of section 2 of this Act, which provides as follows:
‘If the Minister of Trade and Industry declares the 2010 FIFA World Cup South Africa a protected event in terms of section 15A (1) of the Merchandise Marks Act, 1941 … he or she may, notwithstanding section 15A (1) (a) (ii) of that Act, stipulate by notice in the Gazette a date later than one month but not later than six months after the completion or termination of the final competition as the date on which the protection afforded by such a declaration ends.’
348.
The 2010 FIFA World Cup was scheduled to be played from 11 June to 11 July 2010.
349.
MEMA s 9.
350.
Landes and Posner 1987, p. 265.
351.
Spinello and Bottis 2009, pp. 4–5.
352.
Sumpter 2006, p. xi.
353.
Merges et al. 2003, p. 2.
354.
See the discussion in the text below.
355.
Elhauge and Geradin 2007, p. 192.
356.
Ibid.
357.
Richard M Stallman, software developer and software freedom activist who established the Free Software Foundation, writing on the web at http://www.gnu.org/philosophy/not-ipr.html.
358.
Fisher 2001.
359.
Ibid.
360.
Ibid.
361.
Ibid.; see also Gordon 1993; Waldron 1979; Becker 1993.
362.
Fisher 2001 describes this theory as follows:
‘The premise of the third approach—derived loosely from the writings of Kant and Hegel—is that private property rights are crucial to the satisfaction of some fundamental human needs; policymakers should thus strive to create and allocate entitlements to resources in the fashion that best enables people to fulfil those needs. From this standpoint, intellectual property rights may be justified either on the ground that they shield from appropriation or modification artifacts through which authors and artists have expressed their "wills" (an activity thought central to “personhood”) or on the ground that they create social and economic conditions conducive to creative intellectual activity, which in turn is important to human flourishing.’ The personality theory has enjoyed specific support in European systems, which have tended to emphasise reputation and non-economic aspects of intellectual property (which has facilitated the wide-spread support for moral rights in copyright law).
363.
Fisher 2001 explains that this last theory is less well-established and ‘does not even have a commonly accepted label’, but ‘is rooted in the proposition that property rights in general—and intellectual-property rights in particular—can and should be shaped so as to help foster the achievement of a just and attractive culture.
364.
Harper & Row v. Nation Enterprises 471 U.S. 539 (1985).
365.
Ibid. At 545–546.
366.
Compare the finding of the German Federal Supreme Court (Bundesgerichtshof Case number I ZR 183/07 (‘WM-Marken’), 12 November 2009) that the name of FIFA’s World Cup event does not qualify for ‘work title’ protection in terms of German trademark law. ‘Work titles’ (Werktitel) are any distinctive designation of an intangible result of work, such as the title of a book, and are protected under the German Trademark Act, mainly under the same terms as trade names and other business identifiers. In contrast to trademarks, work titles are protected without registration as soon as they are used in trade, subject only to the condition that they are inherently distinctive (Clark, B ‘World Cup trademark dispute: 1-0 says the German Federal Supreme Court’ 8 January 2010, Journal of Intellectual Property Law & Practice—available online at the time of writing at http://jiplp.blogspot.com/2010/01/world-cup-trade-mark-dispute-1-0-says.html).The following was observed (an accurate prediction, it turned out) in this regard in the earlier Germany country report submitted to the AIPPI working group Q210:
‘It is also questionable whether titles of events are protected as titles of work. The German Trademark Act acknowledges titles of work for printed publications, cinematographic works, acoustical works, stage plays or the “other comparable works”. Only works which represent an “intellectual work result” deserve protection as other comparable titles of work. Although the Federal Court of Justice has confirmed that titles of work are protectable also in the area of software and games with “intellectual content”, it has to be assumed that it would deny such “intellectual content” and thus the character of a work for titles of major sports events.’
367.
United States Constitution, Article 1, clause 8.
368.
See Mazer v Stein 347 U.S. 201 (1954).
369.
Lemley, M A ‘Ex Ante Versus Ex Post Justifications for Intellectual Property’ University of California—Berkeley Public Law and Legal Theory Research Paper Series Paper No. 144 (available online at the time of writing at http://levine.sscnet.ucla.edu/archive/refs4122247000000000492.pdf).
370.
Ibid.
371.
Sumpter 2006, p. xi.
372.
Lemley 1999, pp. 1693–1694.
373.
Ibid. 1694.
374.
Tan 2008, pp. 934–935.
375.
Grady et al. 2010, p. 151.
376.
Ibid.
377.
Séguin et al. 2008, pp. 99–101.
378.
Ibid.
379.
Grady et al. 2010, p. 152.
380.
Available online at the time of writing at http://www.fifa.com/mm/document/affederation/administration/01/39/20/45/web_fifa_fr2010_eng[1].pdf.
381.
From the FIFA 2010 Financial Report (available online), supra.
382.
Cooper Dreyfuss 1996, p. 142.
383.
Cooper Dreyfuss 1996, p. 143.
384.
See the discussion in Sect. 4.4.7 of Chap. 4.
385.
Mouritz 2008, p. 14
386.
See Mouritz 2008; Marcus 2010, p. 32.
387.
See Lemley 1999.
388.
Johannesburg attorney Ron Wheeldon, writing in a roundtable discussion on South African IP law (‘Staying ahead in the rainbow nation’ May/June 2007 World Trademark Review 38 at 42).
389.
Wheeldon, supra, commenting regarding the future of IP protection in South Africa, more generally.
390.
Wheeldon supra 42.
391.
William W Fischer III ‘The growth of intellectual property: A history of the ownership of ideas in the United States’ (at 18), Harvard University, paper available online at the time of writing at http://cyber.law.harvard.edu/people/tfisher/iphistory.pdf.
392.
See Corbett and Van Roy 2010, p. 355.
393.
Corbett and van Roy 2010, p. 357.
394.
de Oliveira Ascencao 1990.
395.
Cases C-403/08 and C-429/08 (judgment delivered on 4 October 2011). The court observed as follows (at par. 96–99 of the judgment):
‘[The Football Association Premier League] cannot claim copyright in the Premier League matches themselves, as they cannot be classified as works. To be so classified, the subject-matter concerned would have to be original in the sense that it is its author’s own intellectual creation… However, sporting events cannot be regarded as intellectual creations classifiable as works within the meaning of the Copyright Directive. That applies in particular to football matches, which are subject to rules of the game, leaving no room for creative freedom for the purposes of copyright. Accordingly, those events cannot be protected under copyright. It is, moreover, undisputed that European Union law does not protect them on any other basis in the field of intellectual property.’
396.
The court observed as follows at par. 100–102 of the judgment:
‘None the less, sporting events, as such, have a unique and, to that extent, original character which can transform them into subject-matter that is worthy of protection comparable to the protection of works, and that protection can be granted, where appropriate, by the various domestic legal orders. In this regard, it is to be noted that, under the second subparagraph of Article 165(1) TFEU, the European Union is to contribute to the promotion of European sporting issues, while taking account of the specific nature of sport, its structures based on voluntary activity and its social and educational function. Accordingly, it is permissible for a Member State to protect sporting events, where appropriate by virtue of protection of intellectual property, by putting in place specific national legislation, or by recognising, in compliance with European Union law, protection conferred upon those events by agreements concluded between the persons having the right to make the audiovisual content of the events available to the public and the persons who wish to broadcast that content to the public of their choice.’

References

All internet-based sources referred to, were last visited in or before December 2011.

Baird SR (1993) Moral Intervention in the Trademark Arena: Banning the Registration of Scandalous and Immoral Trademarks. Trademark Rep 83:661
Google Scholar
Becker LC (1993) Deserving to own intellectual property. Chicago-Kent Law Rev 68:609
Google Scholar
Beebe B (2005) Search and persuasion in trademark law. Mich Law Rev 103:2020
Google Scholar
Blackshaw I (2010) Protecting major sporting events with particular reference to the 2012 London Olympic Games. Entertain Sports Law J 7(2). http://www2.warwick.ac.uk/fac/soc/law/elj/eslj/issues/volume7/number2/blackshaw/blackshaw.pdf
Bollier D (2005) Brand name bullies: the quest to own and control culture. Wiley, New Jersey
Google Scholar
Boyle J (2008) The public domain: enclosing the commons of the mind. Yale University Press, New Haven
Google Scholar
Brookman AL (2003) Trademark law: protection, enforcement and licensing. Aspen Publishing, New York
Google Scholar
Brown RS (1948) Advertising and the public interest: legal protection of trade symbols. Yale Law J 57:1165
Google Scholar
Carrier MA (2004) Cabining intellectual property through a property paradigm. Duke Law J 54:1
Google Scholar
Cooper Dreyfuss R (1996) We are symbols and inhabit symbols, so should we be paying rent? Deconstructing the Lanham Act and rights of publicity. Columbia VLA J Law Arts 20:123
Google Scholar
Corbett S, Van Roy Y (2010) Events management in New Zealand: one law to rule them all? J Bus Law 4:338–362
Google Scholar
Curthoys J, Kendall CN (2001) Ambush marketing and the Sydney 2000 games (indicia and images) protection act: a retrospective. Murdoch Univ Electron J Law 8(2)
Google Scholar
Das PK (2000) Offensive protection: the potential application of intellectual property laws to scripted sports plays. Indiana Law J 75:1073
Google Scholar
de Oliveira Ascencao J (1990) The right over an entertainment or event. Copyr Bull 24(2):3–13
Google Scholar
Elhauge E, Geradin D (2007) Global competition and economics. Hart Publishing, Oxford
Google Scholar
Ellis D, Scassa T, Seguin B (2011) Framing ambush marketing as a legal issue: an Olympic perspective. Sport Manag Rev 14(3):297–308
Google Scholar
Ewelukwa UU (2006) Comparative trademark law: fair use defense in the United States and Europe—the changing face of trademark law. Widener Law Rev 13:97
Google Scholar
Farley CH (2006) Why we are confused about the trademark dilution law. Fordham IP Media Ent LJ 16:1175
Google Scholar
Fezer K-H (2003) Die Eventmarke. Festschrift für Winfried Tilmann 321. (as referred to in Lundgren FD 2010)
Google Scholar
Fezer K-H (2007) Kennzeichenschutz des Sponsoring—Der Weg nach WM 2006, Zur Eintragungsfähigkeit von Veralstaltungsdienstleistungsmarken und Veranstaltungswarenmarken. Mitteilungen der deutschen Patentanwälte 5/2007, 193. (as referred to in Lundgren FD 2010)
Google Scholar
Fisher WW (1988) Reconstructing the fair use doctrine. Harvard Law Rev 101:1659
Google Scholar
Fisher WW (2001) Theories of intellectual property law. In: Munzer S (ed) New essays in the legal and political theory of property. Cambridge University Press, Cambridge
Google Scholar
Franklyn DJ (2001) Owning words in cyberspace: the accidental trademark regime. Wis Law Rev 5:1251
Google Scholar
Frontier Economics Pty Ltd, Melbourne (2007) Ambush marketing legislation review, a report prepared for IP Australia and the Australian government’s department of communications. Information technology and the arts (October 2007)
Google Scholar
Gardiner et al (2006) Sports Law, 3rd edn. Cavendish Publishing, London
Google Scholar
Gordon WJ (1993) A property right in self-expression: equality and individualism in the natural law of intellectual property. Yale Law J 102:1533
Google Scholar
Grady J, McKelvey S, Bernthal MJ (2012) From Beijing 2008 to London 2012: examining event-specific Olympic legislation vis à vis the rights and interests of stakeholders. J Spons 3(2):144–156
Google Scholar
Haman M, Marriott D (2010) The 2010 World Cup—practical lessons in brand protection. World Trademark Rev 72–77
Google Scholar
Heymann LA (2011) Naming, identity and trademark law. Indiana Law J 86:381
Google Scholar
Johnson P (2007) Ambush marketing: a practical guide to protecting the brand of a sporting event. Sweet & Maxwell, London
Google Scholar
Johnson P (2008) Look out! it’s an ambush. Int Sports Law Rev 2/3:24–29
Google Scholar
Kelbrick R (2008) The W***D C*P of 2*1*: FIFA’s intellectual property rights in South Africa. J Intellect Prop Law Pract 3(5):327
Google Scholar
Kobel P (2007) International report on question B: ambush marketing too smart to be good? Should certain ambush marketing practises be declared illegal and if yes, which ones and under what conditions? International report to the international league of competition law. Catania Congress 2007
Google Scholar
Kunstadt RM, Kieff FS, Kramer RG (1996) Are sports moves next in IP law? Natl Law J c1
Google Scholar
Kur A (2008) Strategic branding: Does trademark law provide for sufficient self help and self healing forces? In: Govaere I, Ulrich H (eds) Intellectual property, market power and the public interest P.I.E. Peter Lang, Brussels
Google Scholar
Landes W, Posner R (1987) Trademark law: an economic perspective. J Law Econ 30:265
Google Scholar
Lemley MA (1999) The modern Lanham Act and the death of common sense. Yale Law J 108:1687
Google Scholar
Lemley MA, McKenna M (2010) Irrelevant confusion. Stanf Law Rev 62(2):444–446
Google Scholar
Lessig L (2004) Free culture: the nature and future of creativity. Penguin Books, New York
Google Scholar
Lewis A, Taylor J (2007) Sport: law and practice. Tottel Publishing, Haywards Heath
Google Scholar
Longdin L (2009) Public law solutions to private law problems: major event regulation subverts IP’s internal balance. J Intellect Prop Law Pract 4(10):726–742
Google Scholar
Luepke MHH (2008) Taking unfair advantage or diluting a famous mark—A 20/20 perspective on the blurred differences between US and EU dilution law. Trademark Report 98(3):789
Google Scholar
Lundgren FD (2010) Event marks: a necessary form of protection against ambush marketing? Thesis submitted to the Munich Intellectual Property Law Centre, 13 September 2010. http://oami.europa.eu/ows/rw/resource/documents/QPLUS/network/universities/felipe_danneman_lundgren_miplc.pdf
Marcus JT (2010) Ambush marketing: an analysis of its threat to sports rights holders and the efficacy of past, present and proposed anti-infringement programmes. Sport Law J 18(1):25
Google Scholar
McKelvey SM (2006) Coca-Cola vs. PepsiCo: a “super” battleground for the Cola wars? Sports Mark Q 15(2):114–123
Google Scholar
Merges RP, Menell PS, Lemley MA (2003) Intellectual property in the new technological age, 3rd edn. Aspen Publishers, New York
Google Scholar
Mouritz A (2008) Challenging the legal enforceability of the Vancouver 2010 Olympic Games’ anti-ambush marketing provisions. Sport Law J Issue 1(16):10–19
Google Scholar
Ng CW (2008) The irrational lightness of trade marks. In: Bently L, Davis J, Ginsburg JC (eds) Trade marks and brands: an interdisciplinary critique. Cambridge University Press, Cambridge
Google Scholar
Port KL (2008) Trademark extortion: the end of trademark law. Wash Lee Law Rev 65:585
Google Scholar
Rayle R (2000) The trend towards enhancing trademark owners’ rights—a comparative study of US and German trademark law. J Intellect Prop Law 7:227
Google Scholar
Reichmann JH, Franklin JA (1999) Privately legislated intellectual property rights: reconciling freedom of contract with public good uses of information. Univ Pa Law Rev 147:875
Google Scholar
Ross TP (2000) Intellectual property law: damages and remedies. Law Journal Press, New York
Google Scholar
Scaria AG (2008) Ambush marketing: game within a game. Oxford University Press, Oxford
Google Scholar
Schatte H (2009) Strategic branding—the difficulty of the term and trade mark ‘Fussball WM 2006’. GRIN Verlag, Munich
Google Scholar
Schwab F (2006) FIFA’s trademark tactics. World Trademark Rev 3:6
Google Scholar
Seguin B, O’Reilly NJ (2008) The Olympic brand, ambush marketing and clutter. Int J Sport Manag Mark 4(1):62
Google Scholar
Séguin B, Ellis D, Scassa T, Parent M (2008) Who’s ambushing whom? An examination of anti-ambush marketing legislation in Canada: the case of the 2010 Olympic and Paralympic Winter Games. In: Proceedings of the 16th European association for sport management conference, 10–13th September 2008, Heidelberg, Germany
Google Scholar
Siegel P (1994) On the owning of words: reflections on San Francisco Arts and Athletics vs. United States Olympic Committee. In: Ringer RJ (ed) Queer words, queer images. New York University Press, New York
Google Scholar
Spinello RA, Bottis M (2009) A defense of intellectual property rights. Edward Elgar Publishing Ltd, Cheltenham
Google Scholar
Stim R (2010) Patent, copyright and trademark. Nolo Publishers, Berkeley
Google Scholar
Stoll-DeBell K, Dempsey N, Dempsey B (2009) Injunctive relief: temporary restraining orders and preliminary injunctions. American Bar Association, Chicago
Google Scholar
Storey S (2010) Pilfering, piracy and prevention: developments in combating ambush marketing. Sport Law J 18(1)40–54
Google Scholar
Sumpter P (2006) Intellectual property law: principles in practice. CCH Ltd, New Zealand
Google Scholar
Tan D (2008) Beyond trademark law: what the right of publicity can learn from cultural studies. Cardozo Arts Entertain Law J 25(3):913
Google Scholar
Tawfik M (2008) When intellectual property rights converge: tracing the contours and mapping the fault lines ‘case by case’ and ‘law by law’. In: Gendreau Y (ed) An emerging intellectual property paradigm: perspectives from Canada. Edward Elgar Publishing, London, p 267
Google Scholar
Townley S, Harrington D, Couchman N (1998) The legal and practical prevention of ambush marketing in sports. Psychol Mark 15(4):333–348
Article Google Scholar
Vaidhyanathan S (2003) Copyrights and copywrongs: the rise of intellectual property and how it threatens creativity. New York University Press, New York
Google Scholar
Volokh E (2003) Freedom of speech and intellectual property: some thoughts after Eldred, 44 Liquormart, and Bartnicki’. Houst Law Rev 40(3):697
Google Scholar
Waldron J (1979) Enough and as good left for others. Philos Q 29:319
Google Scholar
Wilf S (1999) Who authors trademarks? Cardozo Arts Entertain Law J 17:1
Google Scholar
Williams TM (2009) Winter v. NRDC: A Stricter Standard for Irreparable Harm in Trademark Cases? 91J Pat Trademark Off Soc’y 571
Google Scholar

Download references

Author information

Authors and Affiliations

School of Law, Howard College Campus, University of KwaZulu-Natal, King George V Avenue, Durban, 4041, South Africa
Andre M. Louw

Authors

Andre M. Louw
View author publications
You can also search for this author in PubMed Google Scholar

Corresponding author

Correspondence to Andre M. Louw .

Rights and permissions

Reprints and permissions

Copyright information

About this chapter

Cite this chapter

Louw, A.M. (2012). Mega-Event Rights Protection and Intellectual Property Laws. In: Ambush Marketing & the Mega-Event Monopoly. ASSER International Sports Law Series. T.M.C. Asser Press, The Hague, The Netherlands. https://doi.org/10.1007/978-90-6704-864-4_5

Download citation

DOI: https://doi.org/10.1007/978-90-6704-864-4_5
Published: 06 June 2012
Publisher Name: T.M.C. Asser Press, The Hague, The Netherlands
Print ISBN: 978-90-6704-863-7
Online ISBN: 978-90-6704-864-4
eBook Packages: Humanities, Social Sciences and LawLaw and Criminology (R0)

Publish with us

Policies and ethics

Societies and partnerships

TMC Asser Press (opens in a new tab)