On 9 November, at a ceremony in Sri Lanka, Glasgow was awarded the honour of hosting the 2014 Commonwealth Games. Behind the pride in receiving this result was an enormous satisfaction from all who had worked to bring the Games to Scotland.
Among those, as ever lawyers had their role to play. A large number of legal issues had to be considered and resolved – from compliance with the detailed bid manuals (running to several thousand pages), to protecting the intellectual property surrounding the bid, to ensuring that the venues were secured and ready.
The legal work for Glasgow’s successful bid was carried out by a team from Glasgow City Council (GCC) led by Carole Forrest, and supported by DLA Piper. In this article, we will look at the key legal issues, the challenges to be overcome, and the solutions adopted.
Sponsorship: underpinning success
Such is the interest generated by sport, that even at the bid stage, organisations were keen to be associated in some way with the Games. The ability to attract sponsorship was an important factor in the success of the bid. Not only was this a route to obtain funding for some of the bid costs: it also ensured maximum publicity for the bid through the advertising and marketing efforts of the sponsors, or “supporters” in the parlance of the Commonwealth Games.
Six large companies were willing to pay for the right to be designated as “Major Supporters” of Glasgow’s bid for the 2014 Games, that being the “tier 1” category which afforded the greatest rights and maximum exposure.
O2, Highland Spring, Clydesdale Bank, First Group Travel, Diageo and BBC Scotland all concluded agreements with GCC on behalf of the bid team for the right to be associated with the bid. As these companies were sponsoring only the bid, the rights granted were automatically terminated on 9 November 2007, regardless of the result, so it was important for the supporters to be able to maximise their return over a relatively short space of time.
In the case of the bid, the rights held by Glasgow were the Glasgow bid logo and the words “Glasgow 2014”, and the major supporters were given the ability to carry out marketing, branding, advertising and hospitality using these marks in conjunction with their own. Examples of branding were seen throughout Glasgow and Scotland, including at railway stations, on public transport, on buildings and on a range of products and services.
One of the main legal issues was to ensure that, with there being a number of tier 1 sponsors, each of them was given sufficient usage rights without running the risk of overlap. Generally in sponsorship agreements different sponsors will negotiate exclusivity within their market sector. Determining exactly what falls within a particular company’s market sector can be the subject of some detailed negotiation, and can be more complicated when dealing with companies that have a presence in numerous markets.
In this instance, whilst GCC agreed that it would not appoint “competitors” in the market sector of each major supporter of the bid, it had to ensure that this did not conflict with the desire to have the active support of local businesses in Scotland, and so the restrictions did not apply to posters and stickers in shop windows around Scotland.
Ambush marketing is the name given to the practice where a company seeks to claim or take advantage of an implied association with an event, without being an official sponsor. Over the last decade or so, ambush marketing has been a significantproblem for sporting events. A few memorable examples include:
- Linford Christie’s Puma logo contact lenses at the 1996 Atlanta Olympics (Reebok was an official sponsor);
- American Express’s advertising campaign during the 1994 Winter Olympics in Lillehammer which stated “If you are travelling to Lillehammer you will need passport, but you won’t need a Visa” (Visa was a sponsor); and
- Dutch fans being told to take off their orange lederhosen displaying the name of Dutch brewery Bavaria before entering the stadium in Stuttgart for their team’s World Cup match against Ivory Coast. Some of the Dutch fans ended up watchingthe game in their underwear (Budweiser was the official beer sponsor of the 2006 FIFA World Cup in Germany).
Given a legacy of these sorts of problems, a proactive approach has been taken to ambush marketing in recent years, with the introduction of specific legislation which attempts to prescribe the consequences of ambush marketing. Such legislation goes beyond the traditional protections offered to rights holders by statutes dealing with areas such as trade marks and passing off. This was the approach taken in relation to London 2012, where the Olympics Bill sets out strict rules to combat use of London 2012-related words and images by non-official advertisers.
The Glasgow bid also followed this approach, and in June of this year issued for consultation the Glasgow Commonwealth Games Bill. A summary of the key provisions relating to ambush marketing is set out in the panel on p 11.
Intellectual property rights
The Glasgow bid commissioned the design of certain branding to be used on all publicity, marketing and campaign materials connected to the bid. The ownership and protection of the intellectual property rights (IPR) in the branding was of crucial importance to the bid team, both commercially (ability to generate sponsorship interest and protect against infringement) and to ensure compliance with the Commonwealth Games Federation (CGF) rules on IPR protection.
The strategy developed by the bid team covered registered trade marks, designs and domain names.Trade marks: UK and overseas
The CGF required protection of IPR in certain key overseas territories as well as the UK.
In general, two trade marks were applied for in these territories: the word mark “Glasgow 2014” and the device mark comprising the now familiar bid logo.
The major decisions which had to be made were about the classes of goods and services in which to apply for protection, and the priority of territories. Applying for too many classes or territories ran the risk of bogging the process down in objections, whereas too few and the protection would not be complete. The panel to the right summarises the position reached.
The bid team then worked to deal with a series of objections raised by examiners in the various territories on both absolute and relative grounds. In the UK, GCC was ultimately successful in registering the marks in all 45 classes. The applications abroad are continuing and are expected to be successful in due course.Designs: additional protection
The bid team also applied for UK registered design protection for the bid logo and the bid tartan design used on branding.
The reason for this was twofold. First, the procedure for registration of designs in the UK is generally quicker and cheaper than that for trade marks. Secondly, registered designs can provide additional protection to complement that afforded by other forms of IPR, as the owner of a registered design has the exclusive right to make any article incorporating the design and can sue for infringement even where there has not been copying (which is in contrast to the more limited protection offered by copyright).Domain names: get in quick
Early consideration was given to obtaining registration of variants (both generic and country code top level variants) of the chosen domain – glasgow2014.com – for the official bid website, to prevent bogus sites appearing at similar domains. Even at that early stage, certain domains had already been registered by individuals and organisations unconnected with the bid.
While there is a system for recovering domain names which have been registered by those with no obvious connection to the name, it is necessary to show bad faith to be successful. In certain cases, it was possible to obtain transfer of the registration of the domain name. In others, the use of “Glasgow2014” domain names will be monitored to ensure no unfair or improper association with the Games takes place.
Venue use agreements
It was crucial to Glasgow’s bid to demonstrate to the CGF that many of the venues to be used were already in existence. This was a particular strength of Glasgow, as it avoided the concern around late running building projects which is often associated with major sporting tournaments. Glasgow chose to maximise this strength by signing up the venues concerned in advance, rather than waiting until the bid decision had been announced.
Glasgow’s bid strategy therefore involved concluding venue use agreements with the key third party venues prior to submission of the Candidate City file in May 2007. These venues were Celtic Park, Ibrox, Hampden, SECC, Strathclyde Park and the Royal Commonwealth Pool (The panel opposite indicates how these will be used). Negotiations took place over a relatively short period with the venue owners to enable the bid team to secure commitments for use of the venues in the event that the bid was successful. A pragmatic approach was needed to ensure a balance was achieved between compliance with CGF requirements and concerns of venue owners.
The key issues which arose were:
- Periods of use. Although the Games are seven years away, dates for specific events have been decided and are contained in the Candidate City file. In the ordinary course of things, venues do not plan bookings that far in advance, nor are prices set for 2014, so it was necessary to come up with a solution to pricing which included a formula which would take into account revenues closer to the time.
- Alterations for Games overlay. The key venues chosen are of a standard that can host international events and are well used to doing so. Nonetheless, certain alterations and additions will be required due to the particular requirements of the Games.
Detailed provisions relating to periods of access (and conditions attached) were drafted into the venue use agreement to address these issues.
- Clean venues. Many of the venues to be used have existing sponsorship agreements in place. However, the CGF requires “clean venues”, i.e. each venue must be stripped of all sponsorship to allow sponsors of the 2014 Games to display their branding. The clean venue requirements also stretch to the surrounding areas of the venues, because these areas have in the past been used for ambush marketing. The CGF clean venue requirements are very broad, and range from the right to name the venue to smaller details like covering logos on TVs at venues and on any big screens or scoreboards in hospitality suites.
The majority of the negotiations in this area centered around ensuring that a fair balance was struck between the obligations under existing sponsorship agreements, and the rights needed to satisfy the CGF clean venue requirements.
- Condition of venue for handover and return.Venue inspections will be carried out to document the condition in of the venues at the point of handover and return.
Venue owners were, on the other hand, understandably concerned that the staging of the Games would not have lasting damaging effects. In particular, football stadia owners were focused on ensuring that there would not be damage to the football pitches. Apart from anything else, competitive football matches will likely be played on the pitches very shortly after the Games, and pitches will need to be of a certain standard. A solution therefore was reached to ensure that the venues were handed back in an acceptable condition following the conclusion of the Games.
It is undoubtedly the case that Glasgow’s bid was the stronger because the legal issues had been handled properly, and confidence given to the CGF that the chances of unexpected legal hiccups arising were minimised. There will be much more work and many more challenges (legal and otherwise) to come, but these can now be tackled with the knowledge and certainty that Glasgow will be on the world stage in 2014.
John MacKinley is a partner and Stephanie Daniel a solicitor in the Technology, Media and Commercial Team DLA Piper Scotland LLP
THE COMMONWEALTH AND THE GAMES
The size of the Commonwealth will surprise many. Commonwealth countries represent over 2 billion people – approximately one third of the world’s population – covering the Americas, Europe, Asia, Africa and Oceania. The standard of competition is consequently very high, with world class athletes competing across a range of sports.
The first Games were held in Hamilton, Canada in 1930. 11 countries participated, with 400 athletes playing only six sports. An indication of how things have changed is that at the last Games, held in Melbourne in Australia, there were 71 participating countries, 16 sports, 245 events and 4,049 athletes.
Glasgow beat off a fierce challenge from Abuja (the capital of Nigeria), which was a strong contender, not least because the Games had never gone to Africa before. In the end, Glasgow won the vote by 47 votes to 24.
AMBUSHING THE AMBUSHERS: THE GLASGOW COMMONWEALTH GAMES BILL
The bill contains a number of measures to combat ambush marketing.
The bill makes it an offence to advertise in the vicinity of a Games event at a prohibited time.
Ministers may by regulations exempt types of advertising from the advertising offence, and make such further provision as they think fit in relation to advertising in the vicinity of Games events.
An activity is to be treated as advertising if it is a communication to the public (or to a section of the public) for the purpose of promoting an item, service, trade, business or other concern.
The advertising regulations may prescribe circumstances in which the Organising Committee may authorise persons to advertise in a way which would otherwise constitute an advertising offence.
It is for the Organising Committee to issue guidance about advertising in the vicinity of Games events.
Enforcement of Games offences
Games offences are to be enforced in accordance with the Act and with any regulations made by ministers which make further provision about the enforcement of Games offences (the “enforcement regulations”).
“Enforcement officers” are individuals designated as such by the Organising Committee.
An enforcement officer may take such reasonable steps as the officer considers appropriate to enforce a Games offence.
Such steps may include seizing, concealing or destroying anything which the officer reasonably believes to be an infringing article.
Advertising offences will incur liability on summary conviction to a fine not exceeding £20,000, and on indictment to a fine.
Trade mark applications filed
Word mark and device mark All 45 classes of goods and services
Australia, New Zealand and India
Word mark and device mark Classes 16, 25 and 35
USA and Canada
Device mark Classes 16, 25 and 35
In this issue
- Discounting justice
- Common sense prevails
- Common sense prevails (1)
- Shaping the future
- Working in a one-stop shop
- Christmas lesson
- Games City
- OFT-related FAQs
- Sea change around the globe
- Covering the money gap
- Pre-trial priorities
- Personal touch
- Keeping money clean
- The lions sleep tonight
- Conversion course
- Family law risk management
- Too well known to challenge
- Temp sheriffs immune after all
- Camels and common sense
- Tough at the TUPE
- Are bloggers fair game?
- "This ain't tiddlywinks, mate"
- Scottish Solicitors' Discipline Tribunal
- Website reviews
- Book reviews
- Defining moment
- Clear view
- Joint conference success