SBS claims that Crikey's use of a content tag "the world game" on articles about soccer is a breach of its property rights. Can an organisation really own such a common phrase?

Who owns the phrase “the world game”, and what exactly does it mean?

Crikey has received a legal threat from our No.2 public broadcaster, SBS, because it seems to think it owns the term:

In SBS’s view your use of “the world game” on your website is an infringement of SBS’s common law and registered rights. SBS requires that you cease to use the Mark by no later than Friday December 11 2009 and reserves its rights to take any legal action it deems necessary should this not occur.

Now, it is true that SBS has a site branded “The World Game” which, they will be glad to know, comes up top of the pops with the first two entries in Google when you do a search on the relevant phrase.

It is also true that Crikey uses the world game as a content tag on its website, a tag that when clicked builds a modest topic aggregation page that dares to use the same phrase in a distinctly plain-wrap heading. Needless to say, Crikey is nowhere to be seen on the first page of Google search results.

Other top search results for “the world game” phrase include computer gaming sites and the site of the Victorian Department of Planning and Community Development, which dares to use the phrase “strengthening the world game” to advertise a program of sporting grants.

So why is SBS getting so hot under the collar about Crikey’s use of the phrase? SBS spokeswoman Jane McMillan provided the following short statement this morning:

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It’s standard practice for an organisation to protect its trademarks and intellectual property. SBS has a long association with The World Game across its broadcasting, online and retail operations and owns the registered trademark. Crikey is using the trademark on a blog on its website and we have simply asked for it to be renamed.

So is Crikey in breach? Does SBS own the term “the world game”?

A lawyer specialising in trademarks spoke to me this morning. He doesn’t think so. First, most of the trademarks registered by SBS, including the plain word versions, are registered not for provision of media content, but for retailing of clothing, games, sports accessories and the like. One relates to the selling of radio air time.

Under trademark law there is only a breach if use is for trade and commerce and “deceptively similar” or “substantially identical” to the registered mark. The issue is whether the consumer is likely to be confused by the trademark. Crikey using the phrase for media content is hardly likely to be confused with a trademark for sporting equipment.

Only one of the trademarks registered by SBS — number 1245378 — includes use for media content. But, according to this expert, Crikey is still in the clear, because it is not using the phrase in trade or commerce. On this reading, Crikey is the brand. “The World Game is just a topic heading, and no more a breach than if a set of articles about Coca-Cola were tagged or headed with the word Coke.

As for the trademarks SBS claims to have applied for, these include plain-word versions, and might be a problem for Crikey if they are registered. But because the phrase is in common use, it is open to Crikey to oppose the registration.

But, as Crikey editor Sophie Black pointed out this morning, Crikey lacks the resources to do that kind of thing.

So could it be that the phrase “the world game” will be allowed to become the property of SBS? We’ll keep you abreast of developments.