06/10/2023
EA Sports has just released the latest edition of its iconic football video game. However, this time around it has a new name. The series that has for the past 30 years been called FIFA is now FC 24.
It marks the first version produced without a licence from FIFA (The International Association Football Federation) in the history of the franchise. This brought a close to a symbiotic partnership that began with FIFA International Soccer for the Sega Mega Drive in 1993 and which had proved lucrative for both sides.
An Outgrown Relationship?
The end of the licence deal between FIFA and EA was announced in May 2022. The primary motivation appears to have been financial, with FIFA demanding to increase the licence fee to $1 billion every four years. This is a substantial increase on the $150m that FIFA reportedly earned for the use of their name in 2022.
Another factor is the terms of the licence itself. According to the New York Times, FIFA sought to restrict EA’s ability to monetise “highlights of actual games, arena video game tournaments and digital products like NFTs”. Meanwhile, in an interview with the Athletic, EA has spoken of initiatives that seek to extend “the game’s influence beyond the virtual world”, which may not have been possible while still operating under the new FIFA brand.
It’s certainly the case that over the lifetime of the agreement the dynamic between the two organisations, and arguably their usefulness to each other, has significantly shifted. Back in 1993, EA was an early adopter in an emerging market and benefitted hugely from the association with the governing body’s name. On the other hand, the popularity of the video game was one of the few public relations successes throughout a protracted period of scandals.
Establishing a New Identity
EA can no longer use the FIFA title for its video games and must find ways of marketing it to existing fans of the series under a new name.
In this it will be helped by the fact that the FIFA deal was separate to the other 300 agreements it holds with partners such as the Premier League, UEFA and La Liga. It touts a collection of licences covering more than 19,000 footballers, 700 teams and 30 leagues, meaning details including kits, logos, names, likenesses and branding will retain that authentic feel.
The FC 24 game will no doubt be successful, though the challenge of getting people to refer to it colloquially as anything other than FIFA should not be underestimated. EA’s Senior Marketing Director James Salmon acknowledged this in the Athletic, admitting “It isn’t easy, and it won’t happen overnight.” He might take solace from the continuing success of the Football Manager series after it was forced to change its name from Championship Manager after Sports Interactive split with Eidos. But this is on a significantly greater scale.
For its part, FIFA has committed to launching new football video games with third-party studios and publishers. FIFA’s President Gianni Infantino was bullish in his comments that “The FIFA name is the only global, original title. FIFA 23, FIFA 24, FIFA 25 and FIFA 26, and so on – the constant is in the FIFA name and it will remain forever and remain THE BEST”. Yet, at the time of writing, it appears there will not be a FIFA 24 and no announcement has been made concerning FIFA 25.
As I’ll outline below, FIFA may soon have to take some proactive action to retain its intellectual property registrations. Especially since EA has removed downloadable versions of FIFA 23 and other editions of the games that were produced under its licence from FIFA from multiple digital storefronts, making it more difficult for consumers to purchase them.
Brand Protection Considerations
The more time that progresses since the latest instalment in the video game franchise, the greater the risk of legal challenges to FIFA to prove the use of its trade mark registrations for video games.
In the UK and Europe, registrations become vulnerable to non-use cancellation actions five years after the registration date, after which proprietors must show that their mark has been used by them or their licence holders.
If FIFA do not produce or licence a new game under the mark within the next five years, defending a cancellation action may become difficult. As mentioned above, downloadable copies of the older licensed games have been removed from digital storefronts. FIFA also does not control the second-hand sales market for their licensed games, and thus they cannot rely on those sales of the older editions.
FIFA’s preparatory work before a new game is launched, including marketing and advertising campaigns, could be relied upon as genuine use but this may be difficult to prove. We await FIFA’s next move with interest.
Meanwhile, EA has its own trade mark registrations for EA Sports FC, including the word mark and the series’ new logo, across more than 20 trade mark offices. The first of these applications was filed in October 2021 in the UK. The groundwork has been done to protect its new brand EA continues its efforts to establish the rebrand in the marketplace.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
