Thread by @esmeraldo99

The feature for #IPSERIES this week is the case of Dolce & Gabbana v Diego Maradona. This case talks about the relationship between Sports and Intellectual Property. For football fans, sports lovers and athletes this case should be of interest to us all.

Summary :
In 2016 at the fashion show held in Naples, Dolce & Gabanna sent a model as shown in the picture wearing a blue and white jersey with Maradona’s name and famous number 10 on a runway. Diego Maradona sued Dolce & Gabanna for €1 million 😱

for using his name and number during a fashion show without his permission. Such act may mislead fans into purchasing the jersey and believing Maradona endorsed & gave his permission to Dolce & Gabanna.

The ruling given by the Milan Court ordered Dolce & Gabanna to pay €70,000 plus €13,000 in attorneys fees😁. Judge Paola. Gandolfi wrote in her ruling that Maradona’d name is synonymous with football excellence and 3rd parties have no right using it without

the consent of the owner. Dolce & Gabanna’s defence was that “it was paying tribute to the star who is still a hero to many in the Southern Italian city😏.
Sly right ?🤔
So what can we (athletes, sports lovers and stakeholders learn from this case?

How can athletes commercialise and exploits their intellectual property rights (IPRs) especially here in Nigeria?
Athletes and other stakeholders can key into IP as an intangible asset through sponsorship deals, merchandising deals, broadcasting rights & media deals.

This year’s #WorldIPDay theme was on “Reach for Gold: IP & Sports” which was celebrated all over the world on the 26th of April. According to the DG @WIPO Francis Gurry he made emphasis on the role that IP plays in encouraging sports while enrich lives in many ways

He further stated that IPRs underlie and empower the financial model of all sporting events world wide.

Sport as we know is regarded as a competitive activity bringing persons or team against one another for good, health reasons;

as a career, remuneration and to entertain the fans and supporters.

In Nigeria, When sports is been mentioned or discussed the most popular of them all is the Ball sports next to Track, Field and Endurance Sports and lastly Strength and Combat sports.

Team Nigeria has been privy to participate actively in the following: athletics (track and field), Badminton, Baseball, Basketball, Boxing, Chess, Cricket, Cycling, Football, Gymnastics, Golf, Handball, Hockey, Judo, Tennis, Rowing, Shooting, Squash rackets, Swimming,

Table tennis, Taekwondo, Volleyball, Power-lifting, Wrestling, Traditional Sports and Para-sports for disabled persons.

According to WIPO the following are stakeholders in the Dports Industry:

1) Athletes, Teams and their trainers
2) Sports Federation

3) Broadcasters and other media platforms
4) Organizers of sports events
5) Corporate Sponsors
6) Manufacturers of sports equipment
7) Sports fans

So how can these stakeholders explore the fusion of sports and IP?

Presently, in Nigeria, Intellectual Property (IP) is still in its infancy stage, with practitioners, innovators, creators and the government still trying to understand the usefulness & role of IP in the various industry.
Not to mention the fact that our outdated laws are yet to

be amended to address digital age, disruption and divergence.
Currently, the majority of IP issues are settled on social media through calling out of the alleged offender online, this now transcends to a viral story for just a couple of hours or a week.

This approach is not effective because rather than athletes and stakeholders asserting their rights in courts or settling out of court through alternative dispute resolution mechanisms such as mediation, arbitration, conciliation and negotiation they take a route that sets

no precedent.
First, we need to understand what intellectual property rights (IPRs) are. Secondly, understand the fusion of IP and sports. Thirdly, how to make money from sports through IPRs.

“IPRs are legal rights that protect creations and/or inventions resulting from intellectual activity in the industrial, scientific, literary or artistic fields.
The most common IPRs include patents, copyrights, marks and trade secrets.”

In order for us to understand the fusion of sports and IP, we need to know the role IP plays in sports and the relevant IPs athletes and other stakeholders needs to take note.

Different rights protect different types of IP such as
a. inventions -patents,
b. brands -trademarks,

c. designs (industrial design rights or design patents), and
d. creative works, such as sports programs and other sports-related creative outputs, and certain sports broadcasts (copyright and related rights).”

For example, in 2018 Rwanda went into a sleeve sponsorship deal with @Arsenal and made $88.3 million in tourism 🤭😱 I know see what Nigeria is missing out on 🤫🤐
Rwanda also went into sponsorship deal with PSG’s Le Pare des Princes Stadiumto sell their tea and Cofee for 3 yrs

Let’s bring it back home
Has any Nigerian sports person/stakeholder ever considered IP or even commercialising and exploiting their name, brand, logo etc?

However, a few have clinched endorsement and they are as follows:
Osaze Odemwingie endorsement with Pepsi

Victor Moses – Pepsi , Samsung and Globacom
Mikel Obi – Amstel Malta
Kanu Nwankwu – a goodwill ambassador for UNICEF, a brand ambassador for Sports Bet and Startimes. He has a nickname called “Papilo which could have been trademarked

but he never exploited the IP aspect of using his name to make money, however he has a studio that specializes in photography, painting and sound production called Papilo studios but there are no known or existing trademark.
Alexander Chuka Iwobi – endorsement deals with Nike, LG

Electronics, Multichoice
Jay Jay Okocha has an endorsement deal as a brand ambassador for BetKing second most popular Sports betting company in Nigeria

What the above listed persons have done is exploit the image and in IP this is known as “Image rights” which relates to an athlete’s persona or brand

A grant of right clause defines “Image right as -Access to the services of the personality for the purpose of filming, television (both live and recorded), broadcasting (both live and recorded), audio recording; motion pictures, video and electronic pictures (including but

not limited to the production of computer-generated images; still photographs; personal appearances; product endorsement and advertising in all media; as well as the right to use the personality’s name, likeness, autograph, story and accomplishments (including copyright and other

intellectual property rights), for promotional or commercial purposes including, but without limitation, the personality’s actual or simulated likeness, voice, photograph, performances, personal characteristics and other personal identification.”
(Gotten from WIPO’s website)

In the U.K. this is known as - image rights; EU- Personality tights and in the US it is known as Publicity right.
See the case of Michael Jordan v Dominick where Michael Jordan sued the supermarket chain for using his name and jersey number with his permission.

He sued for $10 million but was awarded $8.9 million in damages 😱😨 cool right. Jordan claims that the case was “never about the money,” but protecting his brand he has built over a period of 30 something years and that he wasn’t going to let someone take that from him.

That was in 2015 🤓 don’t kill the messenger .
Moving on another clause that is important is the morality clause 👇🏾👇🏾👇🏾

Trademark and sports

Foreign players who have exploited and commercialized their IPs are as follows:
1. Jesse Lingard who registered his nickname “Jlingz” and image of his goal celebration (exhibited in England’s win over Panama) in class 25, also his celebration imagery for

clothing, footwear and headgear but not the performance itself,
2. Messi owns one of the largest trademark portfolios with over 76 registered marks primarily for his name, logo and signature.,
3. Neymar Jr has over 50 registrations covering his name and logo and

4. Cristiano Ronaldo has his clothing line under his CR7 trademark.

Host cities for sports events also key into trademarking their trademarks at the early stage of preparation for the big events so as to avoid cybersqutters etc

“Innovation in the sports industry figures revealed at this years #WorldIPDay showed that Nike a U. S Sports giant is the top filet of sports related international patent applications 👇🏾👇🏾👇🏾

IP Protection is essential in making sure that stakeholders continue to generate revenues which are then redistributed for the benefits of sports & athletes.
I believe the stakeholders in Nigeria can do better by not only promoting sports but keying strongly into IP and producing

A Sport Policy, do more sensitisation and create awareness on issues in the sports industry.

This is Diego Maradona’s reaction to the recent ruling. See picture below 👇🏾😀

Legal remedy available for infringement in the sports industry includes: damages, interim and final injunction
Parties can also opt for Alternative Dispute Resolution Mechanism such as Mediation, Arbitration, Negotiations or Hybrid mechanism.
I think Nigeria needs to work on

having it’s own Sports Tribunal/ Court😎.

Copyright protection: the type of work that has a relationship has to do with broadcasting as every sport event would need to be covered and transmitted to various mediums like TV, radio etc so as to engage the fans all over the world

and also attract future sponsors and investors. “The sale of broadcasting and media rights is now one of the largest sources of revenue for most sports organization which in turn is used for financing major sports events, refurbishing stadiums and also contributes to the

grass-roots development of sports”. Royalties can be earned from the sale of broadcasting rights to various media outlets, how can our local leagues and sports organizers key into commercializing their broadcasting rights?

Forbes has estimated $3.5 billion as the television broadcasting rights revenue for FIFA between 2015-2018 cycle so one can see how lucrative it is for sports event organizers to key into every medium to generate funds.

Sponsorship agreement and deals: Sport teams, athletes or player, and organizers can get funds through this means whereby all parties involved go into a signed agreement where one party receives funds for more exposure and the other is more or less an investor hoping to make

more profit.
Exclusive and non exclusive license: brand and IP owners can explore means of commercializing their IP by going into an exclusive or non exclusive licensing agreement with the licensee (that us the person who wishes to make use of the product with their permission

and consent for a fixed duration and for a fee also known as royalty. Licenses grants rights without transferring ownership of an IP to the licensee, it also gives the licensor “enormous strategic, marketing and earning potential“.

Merchandising: This is defined as the “commercial exploitation of the name, logo, emblem, symbols, or other trademarks associated with a particular team or sport event”. This is another mode of generating funds for the teams by taking advantage of making attractive and stylish

sports apparel. The fans, loyalist and consumers are willing and ready to splurge on certain items like jerseys, scarf’s, hats etc just to supports their most loved teams, players and athletes.
Endorsement deals is a combination of sponsorship and merchandising but in this case

the athletes would use his personality by being a brand ambassador who promotes the brand he will go into contract with in order to generate funds for the company and earn a fee.

This also builds trust for the brand with its consumers who are likely to take the word of the athletes that the brand is certified, tasted and can be trusted.

Examples of issues faced in the sports industry as a result of the digital era includes but not limited to:

i. In venue streaming and broadcasting (illegal streaming): one of the issues posed by the digital age is the ability to share stuffs online and

depending on the jurisdiction; the law may or may not find it difficult to clamp down on illegal sites and venues used to streaming sports events.
Digital piracy is on the rise everyday with the rise of digital media technologies, digital divergence and disruption;

How does this affect cross-border laws? This is a very tight and complicated issue that one needs to tread light so as not to interfere with international laws.
Take note if you stream or watch live match/sports from illegal site you are guilty of illegal streaming for instance

The recent Anthony Joshua v Ruiz fight 🤓🤐 you know yourself 🙃

According to Kanchana Kariyawasam & Mattew Tsai the unauthorized retransmission of live sports telecast over the internet has become one of the main concerns in sports media, where broadcasters have lost billions

of dollars worth of sports broadcasting contracts and sponsorship deals.
This seems very scary with no solution in sight, let’s bring this back home (Nigeria) the major broadcasting football station is held by Multichoice/DSTV and GoTv on its Supersport channels with

its exclusive broadcasting right can make it difficult for other competition or more affordable cable TV to compete with the South African company.
One of the disadvantages is that it stifles growth and healthy competition.

ii. Ambush marketing: takes the approach of passing off which tries to benefit from the goodwill of another goods, services or brand of a rival competitor.
In this situation what happens is that the business tries to bypass paying sponsorship fees by attaching itself to a major

sports event for free. The side effect for this act is that it “damages investment made by genuine sponsors and risks the organizers the ability to fund the event.
This act can also be called Guerrilla or Parasitic marketing”. In this digital era of social media this poses a lot

of problems and difficulty in tracking activities of infringers/marketers who try to incorporate some aspects of these sporting event by using their trademarks in any viral trend at that point in time through hashtags associated with these events.

For example Olympics or FIFA Games
iii. Sports brand and tackling counterfeits goods: A typical example is the Nigeria’s Team Football kit for the 2018 Soccer which was voted as the best jersey at the world cup & sold out within hours of release on the Nike’s website.

Victoria Loughery, Assistant Counsel at the National Football League (USA) commented that it is important for sports brands to stay up to date with the latest technologies to help protect consumers from counterfeit goods.

In Nigeria, this is going to be a difficult task to achieve because most of our basic amenities and infrastructure are not up to international standard and may have not being in use for centuries.
But the future is bright right? 🧐

Some Nigerians would rather buy a fake jersey than splurge on an original jersey/kit which they consider would still achieve the same goal;
Secondly the agencies who should be responsible in checkmating counterfeit are rather not equipped or too focused on taking bribe.🤭

Sports brand owners need to be one step ahead of infringers and not the other way round. All hands needs to be on deck in order for this to work.

One IP not common within our jurisdiction is the Plant Variety Protection.
This type of IP also known as “a plant breeder’s right” is an independent sui generis form of protection, tailored to protect new plant varieties and has certain features in common with other IPRs.

These types of new plant must have the following characteristics:

It must have a higher quality or resistance to pests and diseases as its value increases and is marketable. Example is the Turf on sports pitches.
For a new plant variety to be protected it must be novel,

distinct, uniform & stable and must have a suitable denomination. If granted, it is valid for a duration of 25 years in the case of trees and 20 years for other crops under the 1991 Act of the Union for the Protection of New Varieties of Plant (UPOV) Convention.

Furthermore this Act is territorial in nature and is also applicable to members state of that organisation.

How do we deal with Privacy Issues in Sports? Still on the Dolce & Gabanna v Maradona case; do you think if they or D & G had approached Maradona he would have given them the go ahead to use his name and jersey number?
Think about with regards to privacy issues.

The right to the protection of personal data is enshrined in Section 37 of our 1999 Constitution which provides that “The privacy of citizens, their homes, correspondence, telephone conversation and telegraphic communications is hereby guaranteed and protected”

See also Article 12 of The Universal Declaration of Human Rights which provides for “Freedom from interference with Privacy, Family, Home and Correspondence”.
On the other side Maradona ended up getting €70,000 👀

The authors of “What IP Practitioners should know about GDPR & Personal Data Protection in Europe” Catherine Muyi & Marian Cavailer listed the GDPR obligations with specific interest that may cause conflict with IPRs as follows:

1. The right to access v Protection of IPRs

2. The right to Portability v Protection of IPRs
3. Data Protection requirements v Digital Management Rights and profiling
4. Privacy & Enforcement of IPRs

Can the above listed be said to be applicable in Nigeria?
To an extent, because the GDPR upon its effect and commencement became applicable worldwide and if we draw strength from the Nigerian Data Protection Regulation we can come to a conclusion that there’s a fusion between

IP and Data Protection (DP). How about Sports data?

Wrapping up 🙏🏽🤓

All IPs are based on territorial laws; while trademark, patent and designs requires registration as proof that you have legally protected rights and also monopoly protection,

copyright on the other hand does not require registration as protection is automatic as far as you have proof that you are the real and original owner with proper documentation and registration either Nigerian Copyright Commission.

Trainings can be held for the right authorizes and stakeholders in order to identify counterfeit and pirated goods.
Finally, always always seek permission and obtain written authorisation from IP owners so you don’t fall a victim and pay damages instead of collaborating

or going into partnerships and every goes home happy from the funds generated.
“Sports is a big business and worth more than 3% of the world trade”.

On this note, it’s good bye from my end till next #IPSERIES #IP #SportsBiz