Publications
European IP Bulletin, Issue 9, February -
Intellectual Property
Intellectual Property
1. INTELLECTUAL PROPERTY RIGHTS IN SPORT: VICTORIES FOR COLE AND BEDFORD
On 12 January 2004 the WIPO Arbitration and Mediation Center gave its
judgement in the case of Joe Cole v Dave Skipper D2003-0843, while on 1
February 2004 the Ofcom Content Board gave its decision in David Bedford v
The Number, both cases relate to protection sought by sports personalities
against unauthorised use of their names and images.
Joe Cole, who currently plays for Chelsea in the Premiership, filed a
complaint with the WIPO Arbitration and Mediation Center alleging that the
respondent Mr Dave Skipper had registered a domain name ‘joecole.com’ which
is identical or confusingly similar to his registered trade mark. He further
submitted that his name has acquired a secondary meaning, in the sense that
it signifies distinctive features of his activities, and that the general
public associates his services as a footballer with his name. This general
association entitles him to common law protection. The WIPO Center
transferred the domain name back to Joe accepting both his pleas.
David Bedford approached the Ofcom Content Board (the “Board”) with a
complaint that The Number’s “118 118” runners TV advertisement breached his
image rights by falsely representing that he had endorsed the service. The
Number denied the allegation. The Board found that there was a comically
exaggerated representation of David Bedford in the advertisement, and held
The Number to be in breach of the ITC Advertising Standards Code.
Though these two cases were disputed in different arenas and under different
legislation, both illustrate that sports personalities are ready and willing
to assert their rights, and will seek legal protection to prevent
unauthorised commercial use and exploitation of their images and celebrity
status. This is increasingly becoming necessary due to the huge royalties
involved in brand endorsements by sports personalities.
In the absence of statutory image or statutory personality rights in the UK,
the only recourse open to individuals is seeking protection under the law of
trade marks, passing off or copyright. The recent case of the ex-Formula One
driver Eddie Irvine set the precedent for such an approach, where Laddie J
recognised the commercial value of a sports person’s celebrity status, and
held that a false endorsement deal does come within the scope of passing
off. In Joe Cole’s case the WIPO Center accepted the concept of passing off
in justifying the domain name transfer. However, the Board did not have an
opportunity to examine this issue as its proceedings were limited to the
question of whether or not the advertisement indeed made a caricature
representation of David Bedford.
If David Bedford chooses to pursue his case, it will be interesting to see
whether the English court will recognise a new separate image
right/personality right, as exists in the US and other parts of Europe, or
whether it will treat it as a case of passing off. Whatever happens in the
future, at present intellectual property law seems poised to be a referee
for the protection of the legitimate interests of our sports stars.
Click here to return to the Summary page, or on any of the headings below to see the full case notes
for that topic:
COPYRIGHTS | PATENTS | TRADE MARKS
