The second richest football club in Europe recently declared war on seven online betting sites. All were threatened with litigation over alleged unauthorised website use of the La Liga club’s badge, name and images of its players. But would this breach UK law?
Who: Real Madrid, Ladbrokes, William Hill, Victor Chandler, Sporting Get and Sporting Exchange
When: February 2005
Spanish soccer club Real Madrid announced it had retained the services of Jean-Luis Dupont, the lawyer who won the Bosman case that handed greater contractual power to soccer players, to take action against seven online bookmakers. The cause of the problem was the bookmakers' alleged liberal use of the Real Madrid name and club emblem, as well as the names and images of its players, in advertising on websites and billboards for its betting services.
Real Madrid's Sporting Director said that the club and five of its biggest star players, Ronaldo, Beckham, Raul, Zinedine Zidane and Luis Figo were taking action to protect their intellectual property rights.
"It has been proven", Real Madrid's supporting director Emilio Butragueno was quoted as saying portentously "that these online betting companies are using the name of Real Madrid and that of the majority of its players without any type of authorisation, including on numerous occasions using photographs and illustrations of these players with the shirt and badge of Real Madrid".
As part of its contract with its players, including the five who are joining with it in taking action, Real is entitled to all proceeds from commercial activity undertaken by the players in the name of the club. In order to realise the benefits of this policy, however, the club needs to protect its trademarks, hence its threatened action.
So far the bookmakers have not given the claims much credence, and have questioned precisely what unauthorised usage the club is complaining about. It appears that the club is serious, however, and it has already apparently initiated proceedings in France, Belgium and Germany.
Why this matters:
Assuming the practice complained of has occurred in respect of betting websites accessible in the UK, a question arises as to whether UK proceedings issued by Real Madrid and its players would have any chance of success.
The three potential causes of action would be passing off, copyright infringement and trademark infringement.
So far as passing off is concerned, the claimants would have to show that punters would believe the club to be officially endorsing the betting services featured on the website in question. Given the descriptive use of the images and names in this context, this seems a bit of an ask.
As regards copyright infringement, there will be copyright in the Real Madrid badge as long as it is not more than 70 years since the end of the year in which the artist who created it died. The reproduction of that badge in any of the images appearing on the websites would be a copyright infringement and recent case law shows that an "incidental" or "fair dealing" defence will have no prospect of success to speak of.
Finally there is trademark infringement. Real Madrid is not registered for betting services, but the name and logo is registered for "leisure activities and entertainment, sporting and cultural activities." So there may still be a prima-facie cause of action if it can be shown that betting services and the registered services are "similar" and there is a likelihood of confusion, although as already indicated in the context of passing off, this looks difficult for the club to run.
Alternatively, even if the court will not buy a Real Madrid argument that the services are "similar", the club might still make a trade mark infringement claim stick, if it can establish that their various items of registered branding have a "reputation" in the UK and that the alleged use of the brands by the betting websites is detrimental to the distinctive character of the Real Madrid trade marks or takes unfair advantage of them.
If the claimants get over these hurdles, the next obstacle the claimants may have to overcome is a defence to a trademark infringement claim which arises where there is a use in good faith of a registered brand to indicate the "kind," "intended purpose" or "other characteristics" of the services being advertised. This use must not be contrary to honest commercial practices.
This defence has not been sorely tested in the UK courts up until now, but marketinglaw's current feeling on this is that this is very much a 50/50 scenario.
We will look out with interest for further reports of any proceedings.