Memo offers view to licensing’s early days
“We have an extremely serious problem in dealing with the many persons who are infringing on the rights of Wimbledon throughout the world … not only are we injured by unauthorized uses the fact that there are unauthorized uses tends to wreak havoc with our sales program (“Why should we pay if the others don’t”).
This is the opening sentence of an IMG executive’s memo to company founder Mark McCormack dated Jan. 18, 1979 (Re: Wimbledon – The Problem of Infringers) recently found within the McCormack archives housed in the W.E.B. Du Bois Library at the University of Massachusetts Amherst.
The four-page memo details IMG’s initial challenges in policing and defending its newly secured licensing and marketing rights to the All England Lawn Tennis Club and included the following caveat: “We must bear in mind, of course, that it is not every use of the word ‘Wimbledon’ that infringes, it is only such a use which connects the word ‘Wimbledon’ to the Wimbledon Tennis Tournament.”
The document provides insight, six months in advance of the 1979 Wimbledon tournament, into IMG’s thought process with respect to companies whose activities were considered to be potentially infringing Wimbledon marks.
Nike (at the time an 8-year-old brand), as noted in the memo, was advertising a “Wimbledon” model tennis shoe (although as noted in the memo, the Wimbledon mark was not a label on the shoe itself). The memo stated: “We have carried on an extensive, albeit civilized, correspondence with BRS, Inc., the company which manufactures Nike Shoes. The result of this correspondence has been that they refuse to discontinue the use of the word ‘Wimbledon’ in the sale of their tennis shoes.” [BRS is Blue Ribbon Sports, the original name of the company].
While acknowledging the “expense of litigation,” the memo proffered this solution: “Commence litigation against BRS, Inc., preferably in New York State … we have got to stop ‘twiddling our thumbs’ in the area of activities which we consider to constitute infringements.” Particularly intriguing is the concluding comment on this infringement challenge: “The other problem with this solution is that Nike is a good customer of ours.”
Ironically, what we may have found here is one of the first tangible consequences of the conflict of interests accusations against companies like IMG that represented multiple sides of the sport management and marketing equation.
The memo closed with what to do about Adidas Europe, which posed admittedly knotty issues for IMG with respect to European trademark law. The author of the memo concluded: “It is my understanding that Adidas sells tennis shoes in connection with the ‘Wimbledon’ name in Europe. It seems to be just exactly like the Nike situation. Adidas has been contacted … but exhibits no inclination to discontinue its use of the name. … [I]t seems illogical to me that a company could be permitted to sell a ‘Wimbledon tennis shoe’ without securing the consent of The All England Club.” The author recommended that IMG secure counsel who best understood the nuances of European trademark law.
This document, like so many from the McCormack archives, provides a quaint glimpse into IMG’s initial creation of Wimbledon’s licensing program that helped spur the exponential growth of the sports licensing business.
Steve McKelvey is associate department chair for external relations, and associate professor of sport management at the Isenberg School of Management at the University of Massachusetts Amherst.