Burger King marketing campaign for FIFA 21 exposure raises questions of image rights

Burger King has a brilliant marketing campaign which puts its logo on the shirt worn by football stars such as Ronaldo, Messi, Neymar, Mohamed Salah and Kylian Mbappé. You may think that these players all play for different teams, but when Burger King became the front-of-shirt sponsor for League Two side Stevenage in 2018 it meant that the logo would appear in FIFA 21, the EA Sports football video game.

With this sponsorship, which Burger King has said was mainly in order to be featured on the game, Burger King have created “The Stevenage Challenge”. This involves gamers choosing Stevenage for career mode, signing the best players and (hopefully) winning competitions. For every goal shared on twitter, the gamers are given rewards and since the challenge was brought in, Stevenage has since become the most used team in career mode on the game. The result? An award winning marketing campaign, Stevenage being the most used team in career mode and the real Stevenage jerseys being sold out for the first time in history!

This is an interesting example of a real life trade mark being used effectively in a virtual environment and generating incredible value for money. But it also raises questions about the image rights for the players as it is arguable that Burger King is benefiting from the association with famous players with whom it does not have a commercial relationship. For a long time FIFA has had a licence to use official club and competition names along with various image rights for players, past and present. This licence is exclusive with most clubs and other games have had to use other, unofficial names of players, clubs and stadiums. Through shirt sponsorship, Burger King has cleverly benefitted from the realism that the game seeks to present in accurately representing the teams and players.

Trade Marks in games

Issues related to trade marks reproduced virtually in video games have come up recently and as games become more and more realistic this is likely to increase. In March 2020, a New York Court held that it was not trade mark infringement when a depiction of the military Humvee vehicles appeared in Call of Duty. This was decided on the basis that the vehicles were included on the basis of recreating realism. Separately, Manchester United is currently suing the producers of the Football Manager game for using its name in the game without a licence.

Players are not afraid to tackle the issues raised in a virtual environment and Diego Maradona announced, via his Facebook page in 2017 that he was taking action against Pro Evolution Soccer’s publishers, Konami, on the basis of the unauthorised use of his image and name in the 2017 version of the game. In response, Konami stated that it had a 3 year licence from 2016 with FC Barcelona which allowed Konami to use the images of former and current players. This case in particular highlights the importance of the licences that may be relied upon by clubs and players alike.

Licence agreements

In 2013 EA Sports and FIFA extended their licensing agreement until 2022. Under the terms of the agreement, EA Sports maintains exclusive rights to release FIFA-branded action and management video games, along with an official FIFA World Cup video game. EA also has exclusive licences with UEFA.

FIFA does not have licences with every team however, and Serie A side AS Roma has been named Roma FC and plays in the Stadion Olympik (rather than the Stadio Olimpico). EA were in a similar situation with Juventus for FIFA 20 as the owners of Pro Evolution Soccer held exclusive rights to the team.

EA did recently confirm that AC Milan and FC Internazionale Milano both entered into multi-year exclusive licensing agreements with the company. Both previously had exclusive deals with Konami. As FIFA considers the licensing for the next game, these agreements between clubs and games providers may be significant as it is in the interest of FIFA for the game to be realistic.

Player endorsements

Even though gamers choose to play with players who do not endorse Burger King, the fast-food chain is likely to avoid breaching any provisions in sponsorship agreements. A fast-food competitor could raise the argument that Burger King is deceiving players of the game into thinking that it has an endorsement deal with the football stars. A legal claim would be under the tort of passing off. To be successful in such a claim, it would have to be shown that that there was a misrepresentation that led to confusion which caused loss. In this instance, due the low likelihood that gamers would actually think that players were endorsing the products on their shirts, it is unlikely that the first essential element of passing off would be realised.

The relevant English law case to establish whether there is passing off when using a celebrity image is Fenty & Ors v Arcadia Group in which Rhianna sued Topshop to stop Topshop from selling t-shirts with her face on the front. Rhianna was successful in her claim in part because it was held that consumers would likely think that Rhianna had endorsed the t-shirt and had a commercial relationship with TopShop. This finding was based in part on previous commercial relationships and the fact that the photo was of Rhianna taken during a shoot for her latest album that was released at a similar time. It also didn’t involve a video game.

Because the images of the players are on the computer game, consumers are unlikely to be confused into thinking that they endorse Burger King, partly because most relevant consumers will know that the worlds most famous players do not play for Stevenage and will also know that club sponsorship deals do not equate to player endorsements.

Future of trade marks online

As the gaming and online experience become more and more realistic, trade marks will continue to grow in value and brands would be wise to recognise the opportunities available in the digital environment. The flip side of the coin is that because the marks are not being used to create or maintain a market for products or services, but are instead being used to increase realism, it might be harder to claim trade mark infringement for use in a digital environment.

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