FIFA plays hard ball - the effect of advertising on the current South African climate

March 2010 saw a scuffle between Kulula and FIFA over Kulula making use of a combination of footballs, vuvuzelas, the South African flag and a sneaky reference to the "you know what" in an advert which no doubt brought a smile to the faces of the majority of South Africans. Although FIFA was successful in getting the first advert pulled, Kulula's response in the form of an amended advert was, in plain marketing terms, pure genius. The dispute brought to the fore the view of many South Africans that FIFA is exceedingly quick to resort to strong-arm tactics to enforce rights where, in reality, the enforceability of those rights is yet to be tested.

FIFA's reasoning for its attack on the initial ad was that it "created an unauthorised association with the 2010 FIFA World Cup" and Kulula was requested, albeit in rather strong terms, to "cease misrepresenting that Kulula have (sic) any connection in the course of trade with the 2010 FIFA World Cup". Rightly or not, there is a view in the minds of many that FIFA has been overly aggressive in enforcing its intellectual property rights. The popular political satirist, Zapiro, has captured this perception perfectly in a recent tongue-in-cheek cartoon (copied below).

Clearly, it is in the interests of the 2010 World Cup Sponsors that FIFA actively prevents blatant ambush marketing. The World Cup is after all commercially driven, so why would Kia, for arguments' sake, spend an inordinate amount of money for sponsorship rights when any other car manufacturer could cheekily jump on the band wagon for free? However, the Kulula matter is not so clear cut. Yes, the first advert was littered with football innuendo, but what it didn't contain was any of FIFA's protected rights (registered or pending trade marks, nor any copyright-protected material). FIFA does not own trade marks for a generic looking football, the South African Flag or the vuvuzela. So why then did FIFA get so upset? The answer is clearly stated by FIFA itself. FIFA has made it abundantly clear that it will take all steps necessary to ensure that any unauthorised associations with the 2010 World Cup will be stopped. However an unauthorised association does not necessarily translate directly into trade mark infringement (in terms of the Trade Marks Act) or ambush marketing (in terms of the Merchandise Marks Act).

Whether or not Kulula infringed on FIFA's rights, or was guilty of ambush marketing remains to be seen (although the specific facts of the Kulula case could lead one to be cynical of FIFA's chances of success). What is clear is that, regardless of the legal position, Kulula is the hands down winner in the eyes of the public. By kicking up such a fuss, FIFA has handed to Kulula the type of media coverage that many companies only dream about.

So how do would-be advertisers circumvent this legal conundrum? The easiest option is of course to make no reference whatsoever to football, South Africa or 2010 in your advertisements. However if you do want to benefit from the overall socio-economic impact of having the World Cup staged in our own back yard, you would do well to consult us about FIFA's Public Information Sheet containing Guidelines to FIFA's Official Marks for the 2010 FIFA World Cup South Africa™. FIFA has undoubtedly set out its stall when it comes to its protection of all things Word Cup-related. In the face of this unequivocal, "no-nonsense" approach, prospective advertisers are well-advised to take advice before risking the wrath of the FIFA juggernaut. Clients and colleagues are invited to contact us for further information

This article is intended to provide a brief sketch of certain principles. It is not intended to be a comprehensive statement of the law, nor does it constitute an opinion or guarantee of any kind, and should not be construed as such. It should not be relied upon as a substitute for specific advice regarding particular scenarios. Margo® Attorneys, Inc. cannot accept responsibility for the consequences of any person relying on the contents of this document for any other purpose. Margo® Attorneys, Inc. claims no credit for, not any rights in the cartoon that is reproduced on this web page. It has been reproduced here purely in recognition of the humorous and topical nature of its message. The views expressed in the above image is not necessarily shared by Margo® Attorneys, Inc.