Miguel Portela is Legal Counsel - Intellectual Property at FIFA.

Tell us about your background and the path to your current position at FIFA.

I got into the sporting industry in 2004 during the European Championships in Portugal. That was my first attempt at brand protection or rights protection as we call it at FIFA. Then I moved on to the America’s Cup in Valencia.  I was also in Barcelona in a motor competition called Superleague Formula and then I eventually came to FIFA around two and a half years ago. I’m responsible for FIFA’s rights protection program, which is in the commercial legal department of FIFA. There are about 20 of us in a program just dedicated to protecting property rights, our sponsorship rights and our media rights.

What do you see as the major brand protection issues you face at FIFA?

FIFA always likes to think that we have the most popular event to sponsor worldwide, and we do generate a lot of interest across all territories. There are lots of different continents that are completely soccer mad, so we have a very wide geographical area to cover. This is challenging because we get cases reported from all over the world, and we need to have access to local councils all over the world who have the proper legislation and jurisdiction.

Also, like other big properties, we have companies who are not officially associated with us who try ambush marketing. That is a challenge in most countries because they are just clever marketing campaigns that manage to avoid trademarks but still create associations with FIFA or the World Cup.

Apart from that, social media has become a big concern. All of the sponsors want to activate those platforms, so they are becoming more demanding of us trying to protect them in those areas which is of course a challenge because it’s all quite complicated. We also have a lot of merchandise problems. The FIFA brand is very available in the host country and also around the world, and there’s a lot of interest in merchandise.

How are you protecting the FIFA brand during this month’s World Cup in South Africa?

It’s our duty towards the sponsors to protect our brand, the teams and our marketing rights. For South Africa, we did lots of training and education because it’s a young country without a lot of IP legislation or experience for an event like this within the authorities or in the business community. So we took it upon ourselves to actually invest in that area and leave a legacy behind.

We have organized lots of seminars, workshops, meetings with local businesses, local arts and crafts people, the businesses around the stadiums that will be affected, and we tried to help them learn as much as they could about our specific rules and put out this idea of brand and rights protection. The best strategy to avoid infringement is preventive work, which we never have enough time to do, but especially here in South Africa, we invested a lot early. We created a public information document early on and we tried to communicate as much as possible. And it was actually the first time we did this.

What is your strategy when brand infringement does occur?

We have local teams protecting the matches, rights protection on site teams because of the specific problem of ambush via intrusion. So in the cities, around the stadium, even in the stadium. We don’t want to let branded stuff get into the stands and get TV exposure worldwide. That’s the most terrible kind of ambush.

We’ve only had a couple of things [leading up to the event] that we’ve taken to court. We try to be positive and use a soft approach and contact the infringer, especially with small and local businesses. We may have to contact local counsel if they don’t comply.

Then with the big infringers, we take it more seriously, but we have to take it upon ourselves in South Africa to be extra careful and not to be too heavy handed. We want to avoid the situation where a clever infringer will actually use the media to get exposure for their brand, and then kids see us being heavy handed and bullying the local businesses around them. Obviously, [ambushing] can be a great tool. Free publicity and exposure in the media is exciting, so companies come out with the stories. But the big ambushes are from big companies who probably have very good legal advice about exactly where the lines are drawn.

But overall, I think we’ve had a lot of success [in South Africa] because the malls, businesses, shops, small companies—they’re all getting involved with the soccer promotion and campaigns, but they are complying with our rules. We’ve had less infringement in South Africa than we ever expected in these last months.

When brand infringement does occur, or if you do receive negative press regarding your brand protection initiatives, how does that affect the FIFA brand and its fan support?

In the end, I think that if the event is successful, if it was a good event and does well, these are all just side stories that the media picks up on and we have to address. But I don’t think it affects the value of the property that much. It’s going to happen—I don’t really see how we could avoid these stories coming up. But most of them are also really unfair with distorted facts. And hopefully, our media and communications department is always concerned and [prepared], and we can hopefully organize a media roundtable just to address the rights protection issues. And we also create a special rights protection brochure for the media explaining the steps we’re taking. But it really is unavoidable. There are always the cases that everybody [focuses on with] so much drama.

What is the relationship between FIFA and its sponsors? Whose responsibility is it to make sure those sponsors see a return on their investments?

It’s hard for sponsors because they invest a lot of money up front to be sponsors and then they don’t have the same sort of budget available to activate their sponsorship by advertising compared to the non-sponsors. So it has to be a joint effort, but sponsors do have to follow through with the activation of the sponsorship. If they don’t activate, if they don’t go up there and promote their sponsorship, nobody will know that they are sponsors.

They may feel frustrated because non-sponsoring companies manage to find ambush marketing campaigns that create an association in the minds of consumers. There’s only so much we can do from the rights protection side because not all ambush is forbidden. Even in South Africa, where we have a specific legal tool against ambush marketing, it’s not always illegal.

An excerpt from "Balance of rights—Getting it right, Part 1,” by Bill Cooper, published in the Journal of Sponsorship in November 2008.

Protecting the event brand while still allowing the community to engage

Before Vancouver could even be considered as a potential host for the 2010 Olympic and Paralympic Winter Games, the bid committee together with its core planning and funding partners (Canada, British Columbia, the City of Vancouver and the Resort Municipality of Whistler) had to agree to some very significant brand protection commitments. They needed to secure new Federal legislation to protect the Olympic and Paralympic brands from ambush marketing, secure control of all outdoor advertising on the thoroughfares to and from venues during Games time and collectively commit to preventing ambush marketing by any of their respective partners, stakeholders and constituents, to name but a few. At the same time, VANOC and its core planning and funding partners made an ethical and enthusiastic commitment to the residents of Whistler, Vancouver, BC and Canada that these would be Canada’s Games and an opportunity for all to engage on the world’s largest stage.

Education leads to market clarity which leads to rights management efficiency

Successful management of commercial rights assets in this kind of environment is heavily reliant on two key ingredients. First and foremost, the rights holder must proactively educate the marketplace as to what they believe is fair and unfair alignment with their rights. With this threshold well published, the advertising and communications industry is less likely to cross the line in its messaging. The rights holder is also better positioned to legally defend their rights if they are able to show evidence of an infringer choosing to trade on a marketing property’s rights unfairly despite a concerted educational effort on the part of the rights holder. Secondly, the rights holder must ensure their sponsor base is also well educated as to these thresholds. This will have the double benefit of accurately setting the sponsors’ expectations as to how close their competitors can come in their respective advertising, but also, and perhaps more importantly, will ensure they are clear and confident as to what story they have bought the rights to tell. Only with this clarity and confidence will sponsors effectively activate and leverage around the story that has been sold to them and thereby differentiate themselves from their competitors.

Setting a meaningful core objective

When VANOC embarked on building its brand and engaging marketing partners (sponsors) for the Games, the team very quickly realized the need for a structured and logical approach to meeting the main objective for its brand management strategy. Without this approach, there was the risk of gross inefficiencies in terms of determining appropriate responses to cases and managing unrealistic expectations among marketing partners. In the beginning, VANOC found itself regularly in circular and emotional debates as to whether cases at hand constituted fair or unfair marketing tactics. In short, the team members needed to be able to easily, confidently and efficiently remind themselves of what they were protecting against when they appraised each case. This required an approach which took into account the balance of protecting the brand and marketing partners’ rights while, at the same time, encouraging community engagement.

By housing the commercial rights team in the revenue, marketing and communications division, VANOC ensured from the outset that the core objective would be to maintain the spirit of the founding sponsorship deals. This arrangement helped the committee to remain in touch with its marketing partners’ expectations. Of course, the need for sound legal logic required heavy reliance on and cooperation with the internal legal department, but strategically VANOC was driven from a revenue, marketing and communications perspective.

VANOC then made commercial rights part of its regular updates to marketing partners so that it remained constantly aware of the sponsors’ concerns and priorities in terms of their rights retaining value. Next, sport partners were canvassed to ensure that the protection of the rights deemed essential to staging the Games did not come at the expense of sport-specific or athlete rights. In this stakeholder group again the need was identified for regular temperature checks in order to keep attuned to the sport community’s level of healthy engagement with the Games.

Finally, an extensive and ongoing public education program was embarked upon wherein the thresholds were laid out for fair and unfair alignment with the brand. Such education gave the market clarity and concurrently allowed VANOC to enjoy the benefit of regular market feedback as to whether the community felt that it could freely and fairly engage with Canada’s Games. This process continuously tested the core objective and thereby allowed the committee to work towards meeting it with confidence. Such confidence in the brand management objective was essential on two fronts:

• VANOC was regularly called upon to realign marketing partners’ expectations and stand firm on not following up on cases which were deemed to be not running outside of its thresholds (to do this in the face of a concerned client obviously required confidence in the system).
• VANOC was regularly called upon to persuade a member of the community to alter their advertising tactics against their will, which again required a confident interpretation of the core objective and thresholds.

Realistic thresholds and efficient use of brand protection resources

VANOC simply did not have the resources or wherewithal to follow up on all cases that cut close to its sponsors’ rights. Similarly, sponsors’ rights are simply too valuable and the importance of exclusivity too great to agree to the many forms of alignment with the brand that the community can at times argue to be reasonable. Herein lies the great importance of striking the right balance. As a rights holder, reasonable thresholds allow one to confidently manage client expectations and/or community feedback as the case requires. This program development process brought VANOC to the mission and core objective that largely kept a wide array of partners confident and the community satisfied with the permissible levels of public engagement around the 2010 Olympic and Paralympic Winter Games.

Conclusion—The commitments, the balance and the resulting solution

The concurrent commitments made by VANOC and its core planning partners to the International Olympic and Paralympic Committees to protect the brand and sponsor rights while, at the same time, inviting all of Canada to engage with Canada’s Games were indeed significant and at first glance seemingly mutually exclusive. The resulting balancing act required a rights protection program that protected the largest investments ever made in Canadian sport while under the microscope of a public that was promised and deserved meaningful community engagement. A good starting point had to be logical, consistent, well-publicized and sensitive criteria to determine what constituted fair and unfair use of the Olympic and Paralympic brand by rights holders and community supporters alike. The learning acquired from the setting and applying of these criteria could only help in the mapping out of sustainable commercial relationships for amateur sport in Canada and beyond. For any rights holder managing limited resources, moreover, the author suspects that insight into a tool designed to help cut down on case evaluation time and better manage client expectations from a property that experiences such a high occurrence of unauthorized brand use should prove helpful.