Person's name in description but non on the product

'Is it legal', 'can I do this' type questions and discussions.
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kmcgowan
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Person's name in description but non on the product

Post by kmcgowan » Thu Feb 22, 2018 9:38 pm

Hi

I am starting a new business that involves clothing such as hats, scarves etc. that are inspired by Football Clubs, their Managers and their players. The products will be my own creative design and the colours and design will be inspired by old and current jerseys/kit, rather than being exact copies (no manufactuer logos such as Nike, Addidas etc and no sponsor logos)

Your site and previous forums have provided a wealth of useful advise to the extents that the following will apply
- none of my products will visibly have a team name printed on them
- none of my products will have a printed person’s name other than a label inside that would have a short quote the person has made to media outlets in the past e.g. “I wouldn't say I was the best manager in the business. But I was in the top one.” : Brian Clough
- none of my products will have team logos on them and I will refrain from using the club logos on my website as well

With the above approach I hope I have addressed concerns re trademarks and copyright of team jerseys (derived versus inspired) and quotations.

In the supporting written material on the website I would like to refer to the team name & person’s name (e.g. Nottingham Forrest and Brian Clough, and comment using public facts regarding their association, history, famous results etc. I understand from your articles that names are facts and therefore not subject to copyright…

Are my interpretations correct/do you see any issues?

Now to what I think are the tricky points related to the ‘passing off’ topic. I do not want to be seen to be an authorised reseller of a team or person but I would like to use the name of the person in the description of the product on the website and also an image of the person e.g. The Cloughie scarf would be the product name on the website and would have a picture of Brian Clough.

If I clearly state on the website that this is an authorised product and is not endorsed by the person, would this be ok given that the name of the person is a ‘fact’ and I would source images which have no copyright associated with them or use caricatures. My thinking is that these approaches should avoid the Panini precedent and also the Arsenal scarf precedent.

Your guidance on what would be possible to link a person to the product would be greatly appreciated.

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AndyJ
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Re: Person's name in description but non on the product

Post by AndyJ » Thu Feb 22, 2018 10:34 pm

Hi kmcgowan,

As you have probably seen from the forums, we get lots and lots of questions about football clubs and matters relating to them and the players.

Football clubs make a great deal of money from merchandise, and some players make a great deal of money from sponsorship deals. This means that both clubs and players are far more likely to take action to protect their intellectual property and image (and have the financial resources to do so) if they feel they are under threat. That's the background which is worth bearing in mind when coming up with your designs for products. Clearly you are hoping to trade on the fame and popularity of the clubs, managers and players, and so you need to do so in a way which is fair.

If you concentrate on dead (Clough) or retired managers/players, and old team strips there should be very little problem with what you have outlined. The danger, if there is any, comes with current shirts, and players who are active today. As the Arsenal v Reed case shows, even non-replica shirts or scarves etc can fall foul of passing off claims. However quoting someone would not involve the same risk since a) this would not involve trade marks or goodwill, and b) is permissible under copyright law. There is no law in the UK which protects personal image rights, so as long as you avoid the possibility of implying an endorsement (as with the Eddie Irvine case) using a picture of a living player or manager isn't a problem, assuming you don't infringe the photographer's copyright. The dead have no need of protection in this area, so using Brian Clough in the way you describe is not a problem.

I assume that where you wrote
If I clearly state on the website that this is an authorised product
the word 'not' should have appeared after 'this is'. If so then, yes, this kind of disclaimer should go a long way to preventing a passing off claim. But as I stressed at the start, the clubs take this stuff very seriously and will think nothing of sending out a lawyer's letter to scare you if they have any grounds for believing you might damage their money making potential.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007

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Re: Person's name in description but non on the product

Post by kmcgowan » Fri Feb 23, 2018 12:09 pm

many thanks for the guidance AndyJ

Firstly, I can confirm my intention is trade in a fair way and value your advice on how best to do this.

Very good steer to avoid current shirts/players. Thank you.

a) Re your comment 'There is no law in the UK which protects personal image rights' , does this mean I can use the living person's name in the product title or would it be better to only refer to the name in the website description of the product (addressing the passing off disclaimer guidance... and yes, there should have been a NOT in front of my statement :shock: )

b) Your earlier posts referred to names as 'facts' and no copyright... but i have noticed that some ex footballers/clubs have trademarked name e.g. Robbie Keane and KEANO. Does this mean I cannot use these words in the product title and also not in the product description , as I thought these should be considered FACTS, noting that the names/words will not appear ON the physical product.

Another observation/question:

c) Robbie Keane is trademarked under Class 25 with the details covering " Articles of clothing; footwear; headgear; football shirts, football boots, socks and shorts" whereas KEANO is trademarked under Class 25 for "Football boots and football trainers". Does this mean that KEANO could be used on a hat but Robbie Keane could not?
And depending upon your answer to point a) above, does this imply that I could use KEANO in a product name and/or description for a hat but I could not use Robbie Keane

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AndyJ
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Re: Person's name in description but non on the product

Post by AndyJ » Fri Feb 23, 2018 3:13 pm

Hi again,

You need to differentiate between copyright protection and trade mark protection with respect to 'facts'. Names are virtually never subject to copyright. The very slight exception may apply in the case of a wholly made-up name, such as Dumbledore or Caractacus Pott, which could possibly be judged a creative work. However this fact exception does not apply to trade mark words. There is nothing to stop someone registering their name as a trade mark as Robbie Keane has done, but it would not be enough to stop someone else whose real name was also Robbie Keane from using his own name in the course of trade, even if that trade was selling of football clothing (see section 11(2) of the Trade Marks Act 1994).

Then your next point was about how trade mark protection worked in relation to goods/services within the registered classes, and also to other goods/services which are outside the registered classes. The system is supposed to give near monopoly rights within the classes which have been registered, both with respect to the exact mark and also to similar marks (see section 10(2) of the TMA). In addition a trade mark owner is also afforded some protection where someone uses an identical or quite similar mark in relation to other goods and services (section 10(3)) where there is the likelihood of confusion occurring in the minds of the buying public as to the origin of the goods etc. In some repects this has some similarity to the essence of a passing off claim. However with section 10(3) the claimant would need to demonstrate to the court that the likelihood of confusion exists, whereas with section 10(2) this is automatically assumed to be the case, and it is not a defence to claim confusion was unlikely.

So that basis, you should not use a name, like Robbie Keane, which has been registered as a trade mark in the title or description of goods which fall into the same classes as his trade mark. And you should be very wary about how you use a registered name in connection with other sorts of goods which might lead to the confusion the Act talks about. Since you seem to be trading in largely football related memorabilia, this would be a constant source of doubt. This caution is not just in relation to the goods themselves, but also to any advertising which relates to the goods, since clearly, such advertising could form part of the process by which a member of the public becomes confused as to the origin of the goods (trade mark law) or whether the personality concerned is endorsing the goods (passing off law). So for instance if you are selling a hat or perhaps a scarf with the words "I can't even remember when the Seventies was" on it and you wish to tell potential customers that this is a quote from Robbie Keane, then that would be OK so long as you also make it clear that Keane in no way endorses your product or has any other connection with it, other than being the source of the quote. You would not need to be quite so fastidious over something similar involving a quote from the late Brian Clough because as I mentioned, any personality rights which he might once have had, including product endorsements, ceased on his death.
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Re: Person's name in description but non on the product

Post by kmcgowan » Fri Feb 23, 2018 6:15 pm

your guidance is very much appreciated AndyJ

so in summary, I interpret that to be fair and 'on the safe side'..
- I can refer to the club name in a description of the product but must make clear there is no association with the club; e.g. perhaps referencing ' inspired by Arsenal old team jersey's..... PLEASE NOTE this is not an authorised or endorsed product of Arsenal FC'

- I can reference a living ex-manager/ex-player in the description as long as the name of the person is not a trademark and make clear there is no association between the person and product, if the trademark is in class 25 'clothing' (irrespective of the details of the registered details in the class - to avoid potential of confusion)

- I understand that fashion designs are not subject to copyright so basing designs on old shirt designs should be ok as long as I exclude sponsors logos etc from my design

does this align with your guidance?

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Re: Person's name in description but non on the product

Post by AndyJ » Fri Feb 23, 2018 8:37 pm

kmcgowan wrote:
Fri Feb 23, 2018 6:15 pm
- I understand that fashion designs are not subject to copyright so basing designs on old shirt designs should be ok as long as I exclude sponsors logos etc from my design
I think this rather over simplifies things. Yes, you should definitely exclude all logos, but there are other considerations too. Fashion designs (ie a drawing or sketch on paper etc) most certainly are protected by copyright and may also be protected by design right. Generally speaking a garment which is mass produced lacks the necessary creativity on the part of its maker to attract copyright, but a garment made almost entirely by hand would definitely meet the standards of a work of artistic craftsmanship for copyright purposes. The basic structure of a football shirt will probably have no unique characterics to make it worthy of copyright protection, but the choice and placement of colours in the appearance of the shirt may well provide sufficient originality to make the design of the finished shirt eligible for both copyright and design right, although the latter would only apply if the design was registered. Unregistered design right (in the UK) does not apply to surface decoration. Companies like Adidas have registered dozens of designs for sports shirts, and these may include shirts they have specifically provided for football clubs. So, since registered design right lasts for 25 years, it would be foolhardy to assume that copying old club shirts without checking on this aspect, was plain sailing.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007

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