Ambush marketing
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- Limits of the protection
- Others remedies available to prohibiting ambush-marketing under French Law
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| AMBUSH MARKETING
French Report by Fabienne FAJGENBAUM and Thibault LACHACINSKI
Till now, ambush-marketing or "how to take advantage of a sports event without consideration" is still a concept in France, but not a legal reality as such. Ambush-marketing practices are not known as such in France. There are a lot of ambush-marketing actions, but the notion of ambush-marketing still remains obscure. Even though many American authors have written about ambush-marketing, thus it has only recently appeared in French law. In France this matter has not been subject to many articles and the expression "Ambush-marketing" has not even been translated into French. In this respect it is a telltale sign to notice that no French legal provision uses this expression. So, if "Ambush-marketing" tends to become an unquestionable juridical concept, it is not yet a legal one. As a consequence, France has not enacted any legislation to prohibit ambush-marketing. Further, French legislator has not planed to establish a law in this direction. To sum up, there is not and, to our knowledge, there will not be any specific provision sanctioning ambush-marketing in France. But it does not mean that no French legislation takes ambush-marketing into account. Many French legal provisions allow to seize the notion and to sanction the practises. Just, it is up to jurists and judges to find out or invent the contours of "Ambush-marketing" and to discover or adapt the legal ways to seize it. This report represents a great opportunity to present and study the French various legal means available to prevent ambush-marketing operations. It allows us to notice that the French current law offers an adapted answer to this issue, without having enacted any specific legislation. This heterogeneous legislative armory fulfils quite well the expectations and needs of the ambush-marketing victims. Prohibition of ambush-marketing practices may be based on several legal grounds (I), which cover the whole cases of ambush-marketing. Moreover, specific procedural provisions back up those anti ambush-marketing provisions, allowing a reinforced protection (II). Even though those remedies are not specific to the notion of ambush-marketing, they offer an effective protection against ambush-marketing practices (III).
France has at its disposal some efficient legal tools in order to make respect the intellectual property rights of a Sport event organizer and its business partners and consequently, to punish the passing off acts. Among them, the French "Law on Sports" of July 16th 1984, as modified by the Law of July 16th 2000, enjoys a special status (A). Furthermore, the French Intellectual Property Code sets forth a large range of provisions in order to protect intellectual property rights, such as trademarks, logos etc. Many provisions from the French Civil Code as well as from the French Consumer Code can also be applied to ban ambush-marketing acts (B).
As we said, France has not enacted any specific anti ambush-marketing provisions. To be more precise, France has not adopted a legislation as such specifically aimed at prohibiting such kind of practices. However a law was passed in order to grant the organizers of sporting events a strengthen protection, namely the law n°84-610 of July 16th 1984 (organizing and promoting sportive and physical activities). This law provides in article 18-1 that: "Les fédérations sportives, ainsi que les organisateurs de manifestations sportives (…) sont propriétaires du droit d'exploitation des manifestations ou compétitions sportives qu'ils organisent" (The Sports Federations as well as the organizers of the sports events are the owners of the exploitation rights of the Sports events or competitions that they organize). The French "Law on Sports" is a general legislation which purposes to protect the organizers of sports events. As "Ambush-marketing" can be defined as the whole of the behaviors whereby an economic agent is attempting to take advantage of commercial consequences of a sporting event without sponsoring it, the provisions of the Sport law are obviously concerned. In a sense, this statute also aims to the prohibition of ambush-marketing. So, even if this law does not explicitly mention ambush-marketing operations, it is a first legal basis to prevent economic agents from taking advantage of the sporting events.
Financial investment in the development of sporting events is getting always more important. Nowadays, sporting manifestations require an enormous pool and important facilities. Heavy investments are at stake on technical as well as financial level. Providing such amounts of money is not at everybody's level. Nobody but them could have consented to such a huge financial support. In fact there is a simple equation: no organizer, no sporting event! And no subsequent economic repercussions for the national economy… Because of the numerous hazards around the profitability of the sporting events, organizers take big risks in financing their events. They are not at all sure to recover their capital outlay. But once the sporting events are notorious, a real industry of sports entertainment comes up. In the meantime, parasitism actions are constantly increasing. Sporting events are victim of their great success. Their notoriety makes them the object of other economic agents' desire. Benefiting of a special attractive force, those manifestations are always the target of hostile operations, and competitors are trying to create confusion in the mind of the public and to misappropriate its notoriety. This guilty behaviour necessarily harms the organizers of the sporting events and must be sued. So, control of marketing is essential for the proper running of the sport events. Indeed, the organiser will not find financial supports for the organisation of the manifestation anymore should the partners no longer be interested in sponsoring it. French legislator was totally aware of this. As their protection through copyright was ineffective or impossible, French legislator has created for organizers a specific Intellectual Property right. So, French sport law was enacted in order to reward the sporting events organizers, as they have consented big investments for making such events possible. For this reason, the law on Sports acknowledges and grants organizers rights on their creation and notably the right to get the incomes of their investments. The durability of the sporting events totally depends on it. These provisions are based on the principle of "reward". French legislator intended to encourage them to create new sporting events and secure them, if the sporting events become profitable, that they will be the only ones taking advantage of it. In a way, this is a kind of fair situation:
This way, organizers are allowed to bring a legal action against all companies making an unauthorized exploitation of the sporting manifestation. After all, it is very logical that the organizers collect the fruits of their efforts. Having created the Sporting event alone, it is normal that they solely take advantage of it, without having to share the benefits made with other economic agents. The ownership of those rights is closely bound to the organizer quality. As a result, the right of exploitation of the sporting manifestation constitutes a real intellectual property right. According to French doctrine, this right belongs to the category of "droits voisins" (neighbour rights of copyright). These include all the intellectual property rights, which are not copyrights, but which participate to the process of creation. Indeed, legislator intends to reward the "auxiliaires de la création" (creation auxiliaries), whose activity participates to the creation process. Consequently, the organizers of sporting manifestations are owner of real privative rights on their creation. This monopoly only can ensure the survival of sports competitions in a free economy.
Beyond their classical intellectual property rights, the sports event organizers are also the owners of all the rights associated to their organization according to the 1984 French sport law, as modified in 2000. Those organizers are allowed to prohibit all behaviors constituting an infringement of their rights. The main difficulty is to determine the contours of this reinforced protection. The aforesaid article 18-1 only mentions "droit d'exploitation des manifestations sportives et compétitions sportives" (rights on the sports activities and the sport competitions), without any further precision. In the relative silence of the law, we do not really know the scope of this still provision. So, we can only base our analysis on the teachings of French doctrine and case-law.
Audiovisual rights A part of the doctrine considers that the rights conferred by the French law on sports are limited to audiovisual rights. They base their restrictive interpretation on the fact that the second paragraph of article 18-2 as well as articles 18-3 and subsequent2 only deal with the terms of assignments of audiovisual rights. No other right is mentioned there. As a consequence, this doctrine denies the sporting events organizers every other specific rights. Rights of exploitation But above all, it seems essential to keep in mind that the rights conferred by 1984 Law were thought as "reward-rights". These rights tend to show a kind of goodwill of legislator in favour of sports organizers. In our opinion, restricting them to the only audiovisual rights does not take into account the spirit of the legislator, at the time he enacted the law on Sports. It obviously corresponds to the sense of the law to consider that the owner of a sporting competition gets the largest rights in order to exploit it just as he wants. So, both the historical and the teleological interpretations lead to adopt a large interpretation of the text3. Moreover, the commercial court of Nanterre (Tribunal de Commerce de Nanterre) has decided as follows4 : "L'article 18-1 de la loi du 16 juillet 1984 ne limite nullement les droits d'exploitation aux seuls droits audiovisuels" (Article 18-1 of the law of July 16th 1984 do not limit the rights of exploitation to the only audiovisual rights). So, even though this legislation does not indicate what those rights are made of, French case-law tends to have an extensive interpretation of it. In this way, in a ruling dated March 28th 2001 the Court of Appeal of Paris has decided : "la société du Tour de France (...) a réalisé des investissements financiers et humains particulièrement importants pour organiser la manifestation sportive du Tour de France et lui donner ce retentissement international et cette popularité qui en font l'un des événements sportifs de l'année les plus connus et le plus suivis par le public. Elle détient sur l'épreuve elle-même un droit d'exploitation, en dehors du droit à l'information, qui l'autorise légitimement, en raison de l'importance des investissements réalisés, à recueillir les fruits des efforts qu'elle consacre à cette manifestation. (...) Ces fruits lui permettent au surplus d'assurer la pérennité de la manifestation"5 (The Company of Tour de France has realized very important financial and human investments to organize the sporting event of Tour de France and to give it this international repercussion and this popularity, which make it the most well-known and most appreciated by the public sporting event of the year. It holds on the event itself a right of exploitation, apart from the right to information, which legitimately authorizes it, because of the importance of the investments realized, to collect the fruits of the efforts devoted to this demonstration. (...) These fruits enable him to ensure the pereniality of the event). Further, the rights of article 18-1 notably include the right of exploiting the image of the sports manifestations6. The French Court of cassation (Supreme Court) noted in its ruling of March 17th 2004: "l'organisateur d'une manifestation sportive est propriétaire des droits d'exploitation de l'image de cette manifestation notamment par diffusion de clichés photographiques réalisés à cette occasion" (The organizer of a sport manifestation has rights on the image of this manifestation notably by broadcasting the pictures taken on that occasion). In another decision, the judges have considered that the rights of exploitation also cover the right for the organizers to publish a book about the sporting manifestation7. Last but not least, the Tribunal de Grande Instance of Paris (First Instance Court, March 30th 2005) has estimated that "En proposant un jeu concours, entièrement consacré au Tour de France, doté de prix importants, avec des sponsors, la société VOISIN DESCLAUX a dépassé la fonction d'information, de réflexion ou de divertissement propre à la presse, pour se livrer à l'exploitation commerciale d'une épreuve sportive en contravention avec les dispositions (de l'article 18-1 de la loi du 16 juillet 1984)" (By proposing a game contest, entirely devoted to the Tour de France, offering important prizes, with sponsors, the company exceeded the function of information, of reflection or entertainment relating to press, to carry out the commercial exploitation of a sporting event in violation of the provisions of article 18-1 of the law of July 16th 1984). Making no mention of the articles 1382 and subsequent of the French civil code, this decision could give to understand that the law on Sports constitutes an autonomous legal ground of civil liability, i.e. independent of the common law. Then the law of July 16th 1984 appears as a real legal remedy available to prevent ambush-marketing. If such applications of the sports law are still rare, they could multiply in the future. Otherwise, article 18-1 can still be invoked in combination with the articles 1382 and subsequent.
The exclusive rights granted by the law on Sports do not go without limitations. First of all, only the organizers and the Sports Federations can invoke them. Even though organizers are a priori allowed to oppose each unauthorized exploitation of their competition, notably the pictures, this right has to be reconciled with a divergent interest, namely the public interest i.e. the right of public access to information. Whatever the intellectual property right involved (Copyright, trademark...), there is no way to prevent the public from being informed of the news. Fortunately, we would say. Article 10 of the European Convention for the Protection of Human Rights and Fundamental Freedoms constitutes the main conventional ground, on which this fundamental right is based9. Furthermore, article 18-2 of the French Sports Law of July 16th 1984 provides a specific exception for audiovisual rights. Indeed, this article sets forth : "La cession du droit d'exploitation d'une manifestation ou d'une compétition sportive à un service de communication au public par voie électronique ne peut faire obstacle à l'information du public par les autres services de communication au public par voie électronique" (The assignment of the rights on a manifestation or a sporting event to a service of electronic communication can not hinder the other services of electronic communication from informing the public)10. The law further enunciates : "Le vendeur ou l'acquéreur de ce droit ne peut s'opposer à la diffusion, par d'autres services de communication au public par voie électronique, de brefs extraits prélevés à titre gratuit parmi les images du ou des services cessionnaires librement choisis par le service non cessionnaire du droit d'exploitation qui les diffuse. Ces extraits sont diffusés gratuitement au cours des émission d'information" (The seller or buyer of this right can not prevent other services of electronic communication from free broadcasting brief extracts taken among the images of the transfer and freely chosen (...). Those extracts are free broadcasted by news program). Consequently, extracts can be free broadcasted by other services of electronic communication provided that:
This article gave rise to important case-law activity last years as it is not specified how wide the right of public access to information is. In the absence of any legal definition of the "brefs extraits", it is up to judges to determinate its contours, with respect to the principle of strict interpretation of any exception. But, each decision was justified by the particular case in question12 and no generalization can be deduced from it. Partly influenced by an agreement entered into between the main French TV channels which has codified the rules of proper conduct and customs13, judges now consider that communication services are allowed to show (free) brief extracts of a sporting event for a limited length of time between 20 to 30 seconds per match of football (or 40 to 90 seconds a competition day)14. However, the notion of "brefs extraits" must be adapted to the "Multidiffusion" practice that consists for non stop information channels in broadcasting repeatedly the same pictures. This practice, that the French legislator had not expected, involves a kind of "appropriation des investissements d'autrui"15 (misappropriation of others' investments), as the viewers have a continuous access to the most interesting pictures of the competitions. Consequently, those pictures depreciate involving a fall of the advertisement expenses, as the communication services are not inclined to pay an exorbitant price for pictures, which can be free and massively used by other communication services. Such kind of use of the pictures obviously exceeds the right of public access to information and constitutes as such a commercial unauthorized exploitation of the sporting event. In order to prevent an abuse of the right, the recent case-law considers that the same pictures can not be diffused more than each 30 minutes in a period of 24 hours16. Furthermore, the "brefs extraits" have to be in a limited number and only focus on the most essential periods of the competition17. To summarize, the existence of the right of public access to information can not be questioned. But it must not be invoked as a way to circumvent the law on sports. Every excessive use of the right of public access to information must be punished as such, as it endangers the existence of the rights granted by the 1984 law. If we keep in mind the oversaid definition of ambush-marketing18, operations like multiplications of extracts or "Multidiffusions" unquestionably fall into the category of parasitical practices, as the aim of the diffusion is no more an informative one but a purely mercenary one. So the right of public access to information is necessary but must be maintained within certain limits. Beyond this line, we have to deal with ambush-marketing acts. Conclusion: As their protection through copyright is ineffective or impossible, French legislator has created for organizers a specific Intellectual Property right. This exclusive right of exploitation of the sporting competitions is expressly mentioned in the French Law on sports n°84-610, dated July 16th 1984 as modified by the law n°92-652 of July 13th 1992. Now it is not questionnable that organizers or sporting federations have an exclusive right on the sports manifestation, even if their protection seems "only" possible on the ground of the common civil liability (article 1382 of the French Civil Code) This law presents a general principle but does not regulate in detail all the issues raised by ambush-marketing operations. The scope and application domain of the provisions of the Sport's Law still remain too obscure to offer an effective protection. Consequently, it is up to French judges to discover what kind of behaviours is covered and to adapt the french law to the situations they have to deal with. The French law on Sports could offer unexpected possibilities, and already constitutes an effective basis in order to struggle ambush-marketing operations. The history of these provisions is still to be written...
The French Law on Sports could be an effective basis to fight the ambush-marketing operations, as it intrinsically contains the necessary provisions to prohibit it. But its scope is still indeterminate, and it belongs to case-law to teach us, what kind of behaviours is involved. Till then, sporting events organizers have to deal with a variety of legal basis, each having its own particularities. From a strictly legal point of view, activities of ambush-marketing take many forms but generally fall into two distinct groups:
Ambush-marketing can consist in counterfeiting intellectual property rights. As an example, a company reproduces or imitates a trademark or a logo, that belongs to the sporting event organizer or to the official sponsors. The ambushers are therefore trying to misappropriate these trademarks that are distinctive, attractive and strong evocative symbols. This expression also designates the fact for a company to propose entry tickets without having been authorized by the organizers to have a commercial use of those tickets. As it is a matter of protecting the exclusives rights granted to the official partners, the intellectual property rights are still the most effective means of protection against ambush-marketing. This protection is thus a strategic issue for the organisation of sports event. The point here is not to give lessons about trademarks and other IP rights, which has been deeply harmonized throughout the world, notably on the basis of the TRIPS Agreement (Trade-related aspects of intellectual property rights). Only IP rights aspects in regard to ambush-marketing actions will be matter of our study. France has at its disposal a specific legislation which permits a very effective protection on the French territory of the whole intellectual property rights against counterfeiting acts. This legislation is incorporated in the French Intellectual Property Code which gathers all the provisions related to Copyrights, in the one hand, and to Industrial Property in the other hand.
The seventh book of the French Intellectual Property Code is dedicated to registration and protection of the trademarks and service marks. It sets forth a large range of provisions in order to protect them.
Article L 711-1 defines the mark as a "sign capable of graphic representation which serves to distinguish the goods or services of a natural or legal person". Such a sign could be:
The property of the mark shall be acquired by registration before the National Institute for Industrial Property. The effects of the registration begin on the filling date of the application for a term of ten years that may be renewed any number of times. The registration of a mark may be cancelled for nullity or for non-use. Indeed, the owner of the prior right may act before the courts in order to have the mark declared null and void. Nevertheless, such proceedings shall not be admissible if the mark has been registered in good faith and if its owner has acquiesced to its use during a period of five years. Any concerned person could as well require before a court, that the mark of an owner, who has not put his mark to genuine use in connection with the goods or services referred to in the registration during an uninterrupted period of five years, without good reason, shall be liable to revocation of his rights. The sign constituting the revoked mark is then susceptible of registration by any other person. The registration confers to its titular, a property right on this mark, for the goods and services he has designated. As a consequence, this property right may be subject to a license or an assignment. On the ground of this property right, article L 713-2 forbids, unless authorized by the owner: a) "The reproduction, use or affixing of a mark, even with the addition of words such as: “formula, manner, system, imitation, type, method,” or the use of a reproduced mark for goods or services that are identical to those designated in the registration; b) The suppression or modification of a duly affixed mark".
Moreover, are also forbidden, on the ground of article L 713-3 of the Intellectual Property Code, unless authorized by the owner "if there is a likelihood of confusion in the mind of the public: a) The reproduction, use or affixing of a mark or use of a reproduced mark for goods or services that are similar to those designated in the registration; b) The imitation of a mark and the use of an imitated mark for goods or services that are identical or similar to those designated in the registration". So, the French Intellectual Property Code enables the sport events organizer to control, punish and prevent any counterfeiting and infringement acts on their rights. Our legal scheme allows us to act quickly (seizure of counterfeited items, retaining in customs, procedure of emergency proceedings etc.) and effectively (civil penalties, cessation of the litigious act in dispute, destruction of seized counterfeiting products, damages, judicial publication, and also penal sanctions). The judges of civil courts may also, in case of emergency, render summary decision in order to stop the unlawful use. This type of procedure can be used once an action on the substance has been brought.
French law on trademarks is governed by the principle of speciality. That means that a trademark is only protected when it is applied to products and services that are identical to the ones described at registration. Because of their particular nature, certain trademarks enjoy a specific aura and a superior attractivity for the public. Their distinctiveness is getting reinforced, as the final consumers automatically associate those trademarks to a specific category of products or services. Indeed, because of the fame of the trade mark, any use is likely to be considered by a consumer paying an average degree of attention as coming from the owner of the trade mark or an entity authorized under contract, and this is all the more so in that companies tend nowadays to diversify their activities in the most various domains. As a consequence, many competitors are tempted to take advantage of this exceptional attractive power, independent of the services or products covered by the registration, by creating a risk of confusion in the mind of the public. Therefore, such trademarks require a reinforced protection, in order to prevent their holders from parasitic practices and allow them to protect effectively their exclusive rights over the sign. As a result, the exclusives rights granted by the registration of the trademark are exceptionally extended beyond the strict definition of the principle of speciality. So, trademarks holders are also protected for products or services different from the ones designated in the registration application. Indeed, according to article L.713-5 of the French Intellectual Property Code: "Any person who uses a mark enjoying repute for goods or services that are not similar to those designated in the registration shall be liable under civil law if such use is likely to cause a prejudice to the owner of the mark or if such use constitutes unjustified exploitation of the mark. The foregoing paragraph shall apply to the use of a mark that is well known within the meaning of article 6bis of the Paris Convention for the Protection of Industrial Property referred to above". This provision provides that the party using the well-known trade mark for products or services not similar to those it designates may be legally liable for this unauthorized use. This is a special tort. It confers protection not only to registered trademarks, but also to unregistered trademarks, known as "use trademarks", when they benefit from certain renown. Two conditions must be fulfilled:
It is therefore acknowledged in respect of the owner of a well known registered trademark or a use trademark that the latter may be granted from Courts a ruling prohibiting the use of the trademark by a third party who attempts to exploit its fame or to cause the owner damage. The sporting trademarks, ie the trademarks of sporting events, are purposed to be notorious, as the sports manifestation they designate draw the attention of audiovisual media. Those are the subject of numerous TV shows and are even integrated in TV news as current events in the same way as politic. Consequently, they often benefit the protection of well-know trademarks19.
Trademark protection is an essential element in marketing. In certain circumstances, this trademark protection may be effectively completed by copyright or designs or models on the ground of the first and fifth books of the Intellectual Property Code. As copyright is likely to cover any original work which is sufficiently finalised, the following elements could be protected by copyright, subject to the requirement that they constitute an original work of the mind :
Under these circumstances, when an act of ambush-marketing constitutes counterfeiting, the copyright's holder may obtain from the competent courts suspension of the fraudulent use, allowance of damages and, in certain cases, legal publication of the decision. All these measures tend to dissuade the "Ambushers". The Sport event organizer could also be titular of many other rights, which are neighter exclusive rights nor appropriation rights. Nevertheless, the sport event organizer may be the victim of passing off and unfair competition acts while the sport event is taking place. Such practices can only be repressed on the ground of the unfair competition provisions...
The French Civil Code mainly offers an effective protection against unfair competition practices and parasitical acts (a). An action "in rem verso" may be another legal remedy available to prohibit ambush-marketing operations (b).
The provisions of the French Civil Code punish acts of unfair competition and parasitism. So, passing off, and other ambush-marketing practices are prohibited on the basis of the articles 1382 and subsequent. This article provides: "Any act whatever of man, which causes damage to another, obliges the one by whose fault it occurred, to compensate it". The civil liability for fault set forth by articles 1382 and 1383 of the Civil Code is a very flexible technique. Further, it presents an unparalleled facility for adaptation to unprecedented circumstances. It is therefore particularly likely to be adapted to punish ambush-marketing practices, under the two pertinent forms in the case in question, which are unfair competition and parasitism. The theory of unfair competition is both a doctrinal and a case law construction about around the notion of tort (civil liability). It aims to sanction behaviours which are contrary to the fairness of trade which must prevail among competitors. Based on the rules of civil liability, an action for unfair competition requires proving a fault, a damage and a causal link between the two of them21. The fault may be either intentional or unintentional. The intention to cause damage is not therefore necessary. The damage usually implies that there is competition between the parties that is assessed by the Courts. Action for unfair competition will therefore also be available to the partners themselves should third parties commit acts of pirate marketing at their prejudice. In addition to unfair competition, both doctrine and case law have also developed a theory of parasitism on the same legal basis. In our assumption, the parasitical fault consists specifically in drawing profit, in unjustified conditions, notably without paying a penny, from the efforts and investments of the organizers. Regarding ambush-marketing, the parasite tends not to destroy the competitive advantage of another but, on the contrary, to assimilate this competitive advantage. An abundant case-law sanctions as a fault engaging the civil liability of its author, the fact to take advantage, without financial counterpart, of the result of a work or investments made by others, of intellectual and financial efforts, or of the notoriety of somebody. Therefore, "quiconque, à titre lucratif et de façon injustifiée, s'inspire sensiblement ou copie une valeur économique d'autrui individualisé et procurant un avantage concurrentiel, fruit d'un savoir faire, d'un travail intellectuel et d'investissements commet un agissement parasitaire fautif car cet acte, contraire aux usages du commerce, notamment en ce qu'il rompt l'égalité entre divers intervenants, même non concurrents, fausse le jeu normal du marché et provoque ainsi un trouble commercial. Celui-ci est, en soi, un préjudice certain dont la victime peut demander en justice la cessation et la réparation, s'il ne dispose pas d'une autre action spécifique"22 (Whosoever, for lucrative purposes and unjustifiably, takes considerable inspiration from or copies something which is of a financial value to another and obtains a competitive advantage which is the result of know-how, intellectual work and investment commits a faulty and parasitical act, which is contrary to commercial practice, particularly because it disrupts the fair competition among the various players, even if they are not competitors, distorts the normal operation of the market and therefore disrupts trade. This is in itself a damage for which the victim can claim cessation and compensation through the courts if he has no other specific means of taking action). It is therefore possible to sanction a company which follows another company's wake in order to benefit from any kind of advantage without consideration, even if the victim is not a competitor of the author of the acts of parasitism. So, the theory of parasitism sanctions the unfair use of a service or a value not covered by a propriety right and it is therefore particularly pertinent to ambush-marketing both for the official partners and for sports events organizers. Further, French Courts do not limit the protection of the notoriety to a physical person or to a moral person, but also to the notoriety of sport event. As a consequence, it is not only the notoriety of the organizer of the sport event which is protected, but also the notoriety of the sport event itself. Thus, French Courts generally consider that the use of the notoriety of a sport event constitutes passing off acts and misappropriation, without any counterpart, of the investments of the organizer of the said sport event. Two conditions must be fulfilled:
Therefore, imitation of an advertisement may be sanctioned by way of a legal action based on parasitism, particularly if the themes and main ideas are similar as far as it is likely to create confusion in the mind of the public. The "ambushers" try specifically to create confusion in the mind of the public with respect to the true identity of the official sponsor by creating association with an event. French Courts use to protect also the marketing program of the sport event especially when there is a passing off act of the event, recognizing to the organizer an exclusive right of exploitation on its event. Therefore, a sports federation was able to prevent a company from using its logo without a licence and even from mentioning the event itself because this use exceeds the purpose of informing the public. By way of example, the French Tennis Federation obtained the cessation of the parasitical reference by a company to the International French Championships on each pages of its brochure23. The French National Olympic and Sports Committee took similar action against a company which used the Olympic symbols on the label of a wine bottle in a tendentious way24. The label reproduced neither the rings, nor the Olympic motto, nor any distinctive symbol in its protected form. Thus, the protection of trademark could not be invoked. However, it used the colours of the Olympic rings, and made implicit reference to the Olympic Games by using a flame, a medal and the neologism "olympisme". The Court took the view that these activities constituted acts of parasitism and that the defendant company had diverted, without consideration, the returns on investments which the CNOSF is entitled to expect from its efforts to preserve the image and fame of the Olympic Games : "Even if the Olympics' symbols are not used in their protected forms or in the way the CNOSF officially uses them, reproducing the colours of the Olympic rings, constitutes a tendentious presentation, and the combination of these colours with other Olympic symbols, flame and medal, will create confusion in the publics' mind. This is undeniably the purpose which the Henri Maire company intended to achieve by trying therefore to place itself in the furrow of the Olympic games/ Events, the historical importance of which is safeguarded by the promotional and financial efforts of the CNOSF, without which, the reference to the centenary of the Olympic Games and to the Olympic games, would have had less impact on the public. (…) The financing of its activity which is destined to promoting the sports in accordance with the principles of Pierre de Coubertin is in part assured by the licences granted in relation to these games. Therefore, by using the Olympic symbols in a tendentious way, for the purpose of profiting from the fame of an event, which is protected by the efforts of the CNOSF, the Henri Maire company has committed an act of parasitism and diverted, without consideration, the returns which the CNOSF is entitled to expect as a result of its effort to safeguard the image and fame of the Olympic Games"25. Civil liability for fault is a very suitable tool against ambush-marketing acts. Tort law, either based on unfair competition or plagiarism, is therefore an effective weapon against ambush-marketing operations. The plaintiff can seek damages either before the civil Courts or before the Commerce Court, according to the quality of the defendant. However, any proceedings involving both a matter of marks and a related matter of unfair competition shall be introduced before the First Instance Court. Finally, the plaintiff may also ask for provisional measures by way of summary interlocutory proceedings in case of urgency, to protect from an impending damage, or to abate a nuisance manifestly illegal.
It should also be noted that, when no other cause of action is available to the plaintiff, it may be possible in appropriate cases to resort to an action "in rem verso" (principle of unjust enrichment) although, to our knowledge, it has never been used for this purpose. This action is admitted where one person has been unduly rewarded at the expense of another person who does not have any cause of action under contract or quasi-contract law or under tort law. In certain cases of ambush-marketing, it could be claimed that an advantage is obtained from the victim as a result of financial support provided for the promotion and the organisation of the sport manifestation by an official partner which results in a loss for the latter through lost revenue and unduly enriches the ambusher through avoided expenses. The official partner pays in order to allow the event to take place whilst the Ambusher, although benefiting from the impact of the event, pays nothing. In practice, the official partner sees a diminution of the impact of his own marketing campaign even though he has paid for exclusivity, whilst the parasite, for his part, profits from the impact in terms of sales of his products whilst at the same time saving on sponsorship fees.
False or misleading advertising is a criminal offence punishable as such by the criminal courts. It may also be a cause of action for unfair competition and passing off in the civil courts. But ambush-marketing is above all a promotional manifestation and therefore an advertising activity. So, another juridical efficient tool against those practices may be found in the advertising provisions reproved by the French Consumer Code. As a consequence, advertising should comply with to certain legal standards.
In respect of television advertising, the European Broadcasting Union (EBU) set out the following rules and principles in its public notice of 25 May 2000: "No virtual advertising (insertion of electronic images, logos or other graphics on television pictures) may be inserted into the signal without the prior consent of the event organiser, and no advertising should breach the terms of any contracts entered into with the advertisers or sponsors of the event. This rule protects the contractual relations between the parties associated with the event and prevents in particular "ambush-marketing" activities". Furthermore, according to case-law, the provisions of unfair competition could also be invoked by the competitors in the case of misleading advertising, if it creates a likelihood of confusion26.
Most of legal actions that are to be introduced will certainly concern IP rights, especially trademark infringement, and / or unfair competition acts. Specific procedural provisions back up those anti ambush-marketing provisions. Indeed, French procedural law allows to introduce either urgent procedure or procedure on the merits, each of them having its own interest regarding the offence which has been committed.
Our legal arsenal allows us to act quickly (seizure of counterfeited items, retaining in Customs, procedure of emergency proceedings etc.) and effectively (civil penalties, cessation of the litigious act in dispute, destruction of seized counterfeiting products, damages, judicial publication, and also penal sanctions). The judges of civil courts may also, in case of evidence of emergency, render summary decisions in order to stop the unlawful use. This type of procedure can be used once an action on the substance has been brought. Dealing with trademarks, the following developments can be transposed, with some modifications, to the other intellectual property rights.
Proof of the infringement having to be brought by the plaintiff, the French Intellectual Property Code entitles him to proceed to a seizure-infringement. One first has to file a petition for a judge's order of the First Instance Court of the place where the seizure will be carried out. After the seizure has been authorized, it will be conducted by a bailiff chosen by the plaintiff. The bailiff may be joined by a police inspector or a police constable and by an expert. The seizure can allow to ascertain the origin, the consistence and the extent of the infringement by providing elements from accounting or commercial department. It then enables the plaintiff to obtain immediately proof of the infringement, but also to obtain commercial and financial informations that shall be very useful to evaluate the amount of the prejudice. From the seizure date, it is compulsory to lodge a petition before the First Instance Court within a fortnight, subject to the nullity of the seizure.
Regarding the proceedings which concern the merits of the case, only the First Instance Courts are competent. This is also true for proceedings involving both a matter of marks and a related matter of industrial designs or unfair competition. Even if such a procedure may last several months or a few years, it will entitle the plaintiff to ask the Court to obtain:
Finally, if the act of infringement were consisted in another trademark, the plaintiff may also ask for the revocation if this latter when its owner will not have put it to genuine use in connection with the goods or services referred to in the registration during an uninterrupted period of five years, without good reason. Moreover, he may institute invalidity proceedings against this trademark if it does not comply with the requirements of validity stated by the French Intellectual Property Code. The Court may then declare it null and void. Once the proceedings have been introduced, as the plaintiff shall not obtain a decision before at least several months, the French Intellectual Property Code entitles him to ask for a provisional prohibition of the allegedly infringing acts.
In order to obtain as soon as possible the prohibition of the infringement acts, it is possible to ask for a provisional prohibition. The request is made to the President of the First instance Court ruling on the case. Article L. 716-6 of the French Intellectual Property Code states that several requirements have to be met in order to obtain the prohibition of the infringement acts. Thus, such an action shall be admissible only if the case appears well-founded. Moreover, proceedings have to be instituted within a short time after the day on which the owner of the mark or the beneficiary of an exclusive right of exploitation has been aware of the facts on which they are based. This procedure enables then the plaintiff to request the president to prohibit provisionally a continuation of the allegedly infringing acts, subject to a daily fine, or to subject such continuation to the furnishing of securities for the purpose of ensuring compensation to the owner of the mark or to the beneficiary of an exclusive right of exploitation.
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