The Perversion Of Trademarks: Jose Mourinho Can't Coach Man-U Yet Because Former Club Trademarked His Name

from the great dept

Usually when we talk about professional or college sports participants running into trademark issues, it has to do with the nicknames they have taken on and either attempted to trademark for themselves, or prohibit others from using. But the case of soccer coach Jose Mourinho is different in that respect: at issue is his own, natural name. And, to truly see how trademark has been perverted from its original purpose, one can simply watch Mourinho, who was supposed to take the helm of Manchester United, have his hiring delayed because another team he formerly coached holds the trademark for his name.

It has emerged that Chelsea still own his name as a trademark and could demand a six-figure sum from United before any deal is concluded. However, the issue will not scupper his appointment at Old Trafford. Chelsea registered 'Jose Mourinho' and his signature as a European trademark in 2005, which means they can use it to sell merchandise such as toiletries, technology, clothing and jewellery.

Sports lawyer Carol Couse told BBC Sport it was "really unusual" for an individual not to own the trademark to their own name.

"If United had a brand of Mourinho clothing, it would be in breach of the trademark Chelsea currently own," said Couse, of law firm Mills & Reeve.

And, when leaned upon the original purpose of trademark law, that's bullshit. When considering the use of a mark as a source identifier, the idea that someone might think that a Manchester United jersey emblazoned with that team's coach's name might instead have come from a team he'd first coached over a decade ago is plainly ludicrous. And, as the post notes, nobody thinks that this trademark issue is in any way going to sink Mourinho's hiring. In fact, he's already coached other teams after he left Chelsea.

Couse pointed out that Mourinho has managed Inter Milan and Real Madrid since the trademark was registered, suggesting the Italian and Spanish clubs both found a way around the sticky issue.

"They have either acquired the rights from Chelsea or managed the use of his name," she said.

If it's the former, then we can congratulate Chelsea on its shrewd business dealings in holding a man's name hostage for the purposes of sweet, cold, hard cash. But we can also ding the team for taking trademark beyond its purpose and instead wielding it as a weaponized profit-maker. Couse says she believes Man-U will simply pay a six-figure sum to license its own coach's name because it will be worth it to sell merchandise. Which is probably true, except that avoids the question of what any of this has to do with consumer confusion in the first place.

Because the answer is nothing. Yet this is what trademark has become in entirely too many circles: a hostage negotiation with any concern for the public good entirely ignored.


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  • identicon
    Anonymous coward (R), 2 Jun 2016 @ 11:38pm

    No problem! From now on he'll just go as The coach formerly known as Jose Mourinho.

    Or did some trademark that to?

    *Looks up at the sky*

    reply to this | link to this | view in chronology ]

    • icon
      JoeCool (profile), 3 Jun 2016 @ 7:26am

      Re:

      Silly AC! Everyone knows that no matter how long the phrase, a single trademarked word will prevent you from using it. In fact, in the US just a couple letters are needed, not even a whole word.

      reply to this | link to this | view in chronology ]

    • icon
      Ninja (profile), 3 Jun 2016 @ 8:46am

      Re:

      The-Coach-That-Shall-Not-Be-Named.

      Then again, Rowling may have a thing or two to say about that term.

      AC, Almighty Coach.

      Unless Techdirt has some trademark on AC (Anonymous Coward).

      Damn, there's no escape from (ominous drums) TRADEMARK.

      reply to this | link to this | view in chronology ]

  • icon
    Whatever (profile), 2 Jun 2016 @ 11:51pm

    Worse late than never on this story... whole thing was resolved shortly thereafter and the new coach announced - LAST WEEK. Hello Techdirt, did your time machine break down?

    reply to this | link to this | view in chronology ]

    • icon
      Ninja (profile), 3 Jun 2016 @ 10:31am

      Re:

      Hello dumb troll, the fact that it was resolved does not mean the point isn't suited for discussion and possibly fixing, did your brain break down?

      reply to this | link to this | view in chronology ]

      • icon
        Whatever (profile), 3 Jun 2016 @ 8:49pm

        Re: Re:

        It's a non-issue. It's long resolved, and it's a common thing done to trademark / register names as trademarks to avoid problems. Now, normally it would be done by the individual and contracted to the team, but if the guy had not done it himself, the team was probably right to do it.

        A small sum (6 figures is small in the premiere league) resolves the issue and everyone is happy. It's only a subject of discussion because the British press is hungry for any story, and any even minor hiccup in replacing the much hated Louis Van Gaal was big news.

        As a trademark discussion, it's also a non-issue really. It's a normal thing to do. Most major players and name personalities register their names (and often nicknames) as trademarks so they have better control over how their name is used in commercial products.

        If Techdirt had put the story out when it was "hot" and relevant for 20 minutes, it might have been a discussion. But really, it was more of a media made issue that anything, a minor contractual issue that might have delayed a signing by 24 hours waiting for lawyers to sort out the nitty gritty of it all. After that, the story died everywhere except on Techdirt, where the past lives, I guess.

        (oh, and my comment was posted early but the Techdirt minions have once again decided I need to be censored and delayed so that my comments are less a part of the discussion. It's endlessly funny to watch champions of free speech using censorship to control the content of their site. Why doesn't anyone call them out for it?)

        reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 3 Jun 2016 @ 12:36am

    Solved a week ago

    reply to this | link to this | view in chronology ]

  • identicon
    Beech, 3 Jun 2016 @ 2:03am

    Shouldn't the trademark be cancelled because Chelsea is no longer using it in commerce? Or are they still selling jerseys with the name of a guy who hasn't worked there a couple of years on them? I think they'd have a strong case for abandonment here, if that's a thing that exists in EU law.

    reply to this | link to this | view in chronology ]

    • identicon
      David, 3 Jun 2016 @ 2:46am

      Re:

      Shouldn't the trademark be cancelled because Chelsea is no longer using it in commerce? Or are they still selling jerseys with the name of a guy who hasn't worked there a couple of years on them?

      They are probably blocked by trademark or consumer laws from selling any New Jersey. "$15? That's a steal. Manhattan alone went for $24."

      reply to this | link to this | view in chronology ]

  • identicon
    iddaa, 3 Jun 2016 @ 5:06am

    Football & Money

    Football has become second name of money. Sad but true.. No more an innocent game for ordinary men in the street.

    reply to this | link to this | view in chronology ]

    • identicon
      David, 3 Jun 2016 @ 6:06am

      Re: Football & Money

      If it weren't a game for ordinary men in the street, there would be a whole lot less money in it. And innocent it never was. But then it's less harmful than less controlled forms of crowd aggression.

      reply to this | link to this | view in chronology ]

  • identicon
    oliver, 3 Jun 2016 @ 5:26am

    Headline: Jose Mourinho Can't Coach Man-U Yet
    From story: However, the issue will not scupper his appointment at Old Trafford

    So, apparently, he can coach Man-U

    reply to this | link to this | view in chronology ]

    • icon
      Richard (profile), 3 Jun 2016 @ 6:25am

      Re:

      He can't coach Man U until the deal is concluded. Presumably Man U want some of these rights as part of the deal and are trying to sort it out. However they have decided that they will go ahead anyway if it doesn't work out.

      reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 3 Jun 2016 @ 6:40am

    How about if Jose Mourinho legally changes his surname to something else and relinquishes the name of Mourinho. Surely there will be no trademark problems as he will be with a new surname for Man. United unless there was something written in his contract with Chelsea that he couldn't change his name to something else.

    reply to this | link to this | view in chronology ]

  • icon
    Mason Wheeler (profile), 3 Jun 2016 @ 7:19am

    When considering the use of a mark as a source identifier, the idea that someone might think that a Manchester United jersey emblazoned with that team's coach's name might instead have come from a team he'd first coached over a decade ago is plainly ludicrous.

    One might even call it patently absurd.

    reply to this | link to this | view in chronology ]

  • icon
    JonC (profile), 3 Jun 2016 @ 9:07am

    It's sick that people's names can be trademarked. What about all the other Jose Mourinho's out there?

    reply to this | link to this | view in chronology ]

  • identicon
    tonylurker, 3 Jun 2016 @ 9:13am

    Why not just change his name to Jose Cheleasucks, Trademark it and sell the merchandise far and wide. I think fans would go for a shirt with his first name in small print and the new last name in nice large bold letters. (with his new trademarked signature below)

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 3 Jun 2016 @ 10:21am

    So Chelsea should sell toilet paper with the guy's name on it.

    Or will that be too crappy of a move.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 3 Jun 2016 @ 10:37am

    Why would anyone want to buy anything with the coach's name on it anyway? This whole thing is pointless.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 3 Jun 2016 @ 1:46pm

    They are essentially claiming they own him and his likeness, even though he hasn't died.

    Sounds like they want to become slave holders instead of the sports field they are in.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 3 Jun 2016 @ 3:22pm

    Saint Peter don't you call me
    Cause I can't go
    I owe my soul
    To the merchandise store

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 3 Jun 2016 @ 4:25pm

    *José

    *Man. United / Manchester United

    reply to this | link to this | view in chronology ]


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