If I sell unofficial merchandise outside sporting grounds what rights will I be infringing?
The selling of merchandise outside sporting grounds is big business as many people will wish to purchase something to remember the day and will not wish to pay the prices which are charged by the official outlets.
This is particularly common when attending football matches within the UK as often the roads leading to the stadiums are covered with stalls selling merchandise with the clubs name on it but which has nothing to do with the official brand of the club.
What kind of merchandise is commonly sold outside football grounds?
Often the merchandise sold outside football grounds consists of such things as team scarves, team pin badges, t shirts with the clubs badge etc on, t shirts showing the image of a particular player who plays for that club to name but a few.
If merchandise such as this is sold then there is likely to be infringements in relation to the following things:
- The use of the official club badge
- The use of the official club name
- The use of a club nickname
- The use of a name of a player or signature
- The use of a picture of a group of players
- The use of a picture of an individual player
Official Club Badge
It is often the case that the official badge of a football club is protected by a trademark. Most of the Premier League club’s will have registered their official club badges as a trademark in order to exploit the use of it on official merchandise and to limit the use of it on unofficial merchandise. For example the FA Premier League club Fulham even changed their badge as the previous one contained the London borough council in which the club is situated and was therefore held to be too common to attract trademark protection. Their new badge has thus been registered as a trademark.
Official Club Name
Often football clubs will register the name of their club as a trademark. As many of the club names will contain a place name they can only attract trademark protection in the entire name. For example Manchester United may be able to be registered as a trademark whereas Manchester will not.
Many football clubs have nicknames, for example Manchester United are also called the Red Devils. It is also likely that a club will seek to protect the official use of the club’s nickname by registering it as a trademark.
The use of an individual player’s name or his signature
Many individual football players will seek to protect themselves and their own brand by registering their name and their signature as trademarks. In order for a name to be registered as a trademark it is required to be distinctive and not commonplace so not every footballer is able to register his name. The use of a footballers name on a product may therefore infringe a trademark in that name if that particular player was able to register his name.
Certain famous sportsmen are also able to register their signature as a trademark so any t-shirts or posters containing their signature could infringe the players rights. Certain sportsmen such as Tiger Woods are rumored to refuse to sign autographs as they feel it will decrease the value in their registered trademark.
Is simply using the trademark enough for an infringement?
In order to prove a trademark infringement the use of that trademark must be shown to create a likelihood of confusion on the part of the public. This means that a member of the general public must be led to be mistaken in their belief that use of the trade mark identifies the goods or services of another trader.
For example if the use of the club’s badge would lead a member of the general public to believe that the goods were official club goods then a trademark infringement would be established.
Group of Players
Often posters of the entire team squad lining up for the season photograph will be sold outside the ground. If posters such as this are sold it is likely to infringe the copyright held in the actual photograph. Copyright is an automatic right which is in existing as soon as the photograph is taken and is owned by the person who took the photo. A photograph such as this of the entire team will have the copyright owned by the particular club. If you reproduce a photo such as this you will be liable for copyright infringement regardless of whether a member of the public believes it to be official or not.
If you use a picture of an individual player either as a poster or on a t-shirt you may also be found to have breached certain rights. A photograph of an individual player is the same situation as a team photograph and will be protected by copyright. Often these pictures will be owned by the club but in some cases they will be owned by a licensing body such as Getty Images.
If you use a picture of an individual player on a t-shirt you will not automatically infringe that players image rights as no such right currently exists under UK law. You may however be liable to an action for passing off.
In order for passing off to be proven the following elements must be established:
- That at the time of the acts complained of the player had a significant reputation or goodwill
- That the actions of the person selling the merchandise gave rise to a false message which would be understood by a not insignificant section of the general public that his goods have been endorsed, recommended or approved by the claimant (in this case the footballer)
If the t-shirt or similar merchandise containing the image of that player would be thought by members of the public to be endorsed by the player appearing on the front then passing off will become actionable.
This, however, is difficult to prove when the t-shirt or other merchandise is just to show the fans love for a particular player, as is the case with many football related merchandise, and is not intended to use that image to endorse a product.