If you buy football related computer game, you will want and expect that game to be as realistic as possible. There are two particular elements which can make a game more realistic:
- The use of football players’ names
- The use of football players’ images
However, there are intellectual property issues which need to be considered.
The use of players’ names
How can a player protect the use of their name?
Many football players, particularly the high profile players, protect their name as a trademark. This means that the use of it by anyone other than someone with authority (licence) to do so will be infringing that mark. However, not all footballers can register their name as a trademark, because to be able to register a trademark it must be shown that the mark is distinctive. Not every footballer’s name will be considered sufficiently distinctive to attract trademark protection.
If a footballer’s name is protected as a trademark, can he prevent it being used in a football computer game without permission?
If his name is being used without permission in a computer game, to show trademark infringement, the player will have to show firstly, that the mark was used in the course of trade or business; and secondly, that the use falls within one of the infringing acts specified by the Trade Marks Act 1994.
Those infringing acts are:
- The use of an identical mark on identical goods and services
- The use of identical or similar marks for identical or similar goods and services
- The conflict with a mark of repute
Is the use of a player’s name in a computer game infringing his trademark under the 1994 Act?
When a footballer registers his name as a trademark, this will generally be sufficient to stop the use of the name without permission, on the kinds of product and services that he might usually endorse. So the use of a player’s name in a computer game which falls within one of the above acts is likely to be a trademark infringement. This is why you do not generally see computer games using the official names of football players.
So why do some computer games use the official names, and others don’t?
The world governing body of football, FIFA, has a dominant stake in the computerised football game market as its produces the official FIFA computer and video games, along with a gaming company. These games include all of the official player names, having the appropriate licences in place to do so, unlike other competing games which are not permitted to use the official names.
The use of the players’ images
How can football players protect the use of their image?
Under the laws of England and Wales, there is no general protection against another’s use of a person’s image – there is no specific law concerning image rights. The best protection available is the tort of ‘passing off’.
What needs to be proved for a passing off claim?
To prove passing off in the case of computer games (etc), it must be shown that the use of an individual footballer’s image led to a misrepresentation that the individual himself was in fact endorsing the product.
If a picture of a high profile football player was used on the box of a computer game, but the use of the image was not authorised by the player, it is likely that a claim for passing off would succeed. This is because it would be reasonable to assume that the use of the player’s image would create the impression amongst the general public that the player was in fact endorsing the product – ie. this is misrepresentation. This is because it is commonplace for the official image of a footballer to be used on the front of the game when he is actually endorsing it (for instance, a FIFA game).
Is this also the case where an image is used in the game itself?
The use of a player’s image in the computerised game itself would be unlikely to lead to a misrepresentation that the player was endorsing the game, because images of many players will likely be used within the game.
This is how many gaming companies get around the issue: whilst they cannot use the footballers’ official names, they can ensure the players in the game looks strikingly similar to the players theselves.