Hi all,
Apologies if this has been asked already but I can't see it anywhere - I've seen one similar-ish thread but it isn't entirely the same. I'm looking at starting a venture Moonpig style around football kits.
Now I'm in the design game so I know that I can't go using clubs crests, players names, nicknames or slogans or anything like that. My plan is to create a bunch of 'back of a shirt' templates that can be personalised by the person buying the print with a name and number of their choice. There would be nothing necessarily to link back to the club apart from that the shirt is stylised (if that makes sense).
So for instance say someone requested a particular print. It would be named 'Black and White Striped Shirt Print' on the website/page. There would be no reference to a club on the site or on the print. Naturally however as humans we would draw the link with Newcastle for example but there would be no reference on there.
Is this something passable? At the end of the day, it is just a print out of a black and white striped shirt with Bloggs and 7 on the back of it...
Thanks in advance.
Football Shirt Print Venture
Re: Football Shirt Print Venture
Hi Wanderer,
I assume that the shirts which you use will not be the official merchandise from the club concerned. If I am wrong and you are re-purposing the official shirts, then there is absolutely no problem with doing this.
So the rest of this (long) reply assumes that the shirts will not be those supplied by the clubs. There is no copyright involved in the colour(s) of a shirt, because there is insuffucuent intellectual creativity involved in the design process and the article is a functional item. The areas of concern cover Registered Design Right and Trade Mark law, along with passing off.
If the design of the shirt has been registered with the IPO or the European Union IPO then it would make your venture risky because as you mention, if a normally-aware person saw one of your shirts they would immediately think of the club. This is effectively the test to be applied in Design Right cases of alleged infringement. Fortunately because the design has to be registered, you can check the database before using a particular club’s shirt. That said, searching is not the easiest of tasks as there are hundreds of shirt designs to trawl through. Unlike with the issue of passing off (see below), putting a disclaimer on your products to the effect that they are not an offical product, authorised by the registered design owner, does not prevent a design right claim from succeeding.
A less likely problem would be that the design of the shirt had been registered as a trade mark. Taking your example, there are 73 registered marks associated with Newcastle United Football Club Ltd although none of these include a shirt design. Most refer to the club’s crest, its name or phrases associated with the club or its fans, such as Magpies and Toon Army. Again you would need to check for each club, although this is a little easier with the trade mark database as you can enter the name of the club (or more likely its parent company) and then look through the list of marks owned by them. As I say, it is not likely that many clubs will have done this, probably because the mark needs to be distinctive if it is to be accepted during the registration process and so, for example, black and white stripes on fabric probably won’t qualify.
The last and possibly most tricky thing to consider is that of passing off. Passing off is a common law tort, which basically means that there is no written statute on the subject, just a volume of past cases which shape the law. The accepted definition today is that passing can occur when an owner has goodwill attaching to his goods and another person misrepresents their goods so as to confuse a custumer as to the origin of the goods and in so doing causes damage to the first company. (You can read more about passing off here and here). Since there can be little doubt about the goodwill aspect, the active part of this issue in your case is what the customer (or potential customer) thinks. So contrary to your proposed course of action, you would better to say that these shirts are not the official shirts of XXX club. In this way you remove the likelihood of confusion.
I have gone to some length about this because I suspect you will face some opposition to your venture from some clubs. They generate a great deal of money from their merchandising, most of which is licensed out to third party suppliers, and in turn the clubs are duty bound to protect the value of these licences by trying to stamp out unlicensed competition. On that basis, do not be surprised to receive a threatening letter or two, but so long as you have protected yourself in the way I have suggested, you should be able to resist any such claims.
I assume that the shirts which you use will not be the official merchandise from the club concerned. If I am wrong and you are re-purposing the official shirts, then there is absolutely no problem with doing this.
So the rest of this (long) reply assumes that the shirts will not be those supplied by the clubs. There is no copyright involved in the colour(s) of a shirt, because there is insuffucuent intellectual creativity involved in the design process and the article is a functional item. The areas of concern cover Registered Design Right and Trade Mark law, along with passing off.
If the design of the shirt has been registered with the IPO or the European Union IPO then it would make your venture risky because as you mention, if a normally-aware person saw one of your shirts they would immediately think of the club. This is effectively the test to be applied in Design Right cases of alleged infringement. Fortunately because the design has to be registered, you can check the database before using a particular club’s shirt. That said, searching is not the easiest of tasks as there are hundreds of shirt designs to trawl through. Unlike with the issue of passing off (see below), putting a disclaimer on your products to the effect that they are not an offical product, authorised by the registered design owner, does not prevent a design right claim from succeeding.
A less likely problem would be that the design of the shirt had been registered as a trade mark. Taking your example, there are 73 registered marks associated with Newcastle United Football Club Ltd although none of these include a shirt design. Most refer to the club’s crest, its name or phrases associated with the club or its fans, such as Magpies and Toon Army. Again you would need to check for each club, although this is a little easier with the trade mark database as you can enter the name of the club (or more likely its parent company) and then look through the list of marks owned by them. As I say, it is not likely that many clubs will have done this, probably because the mark needs to be distinctive if it is to be accepted during the registration process and so, for example, black and white stripes on fabric probably won’t qualify.
The last and possibly most tricky thing to consider is that of passing off. Passing off is a common law tort, which basically means that there is no written statute on the subject, just a volume of past cases which shape the law. The accepted definition today is that passing can occur when an owner has goodwill attaching to his goods and another person misrepresents their goods so as to confuse a custumer as to the origin of the goods and in so doing causes damage to the first company. (You can read more about passing off here and here). Since there can be little doubt about the goodwill aspect, the active part of this issue in your case is what the customer (or potential customer) thinks. So contrary to your proposed course of action, you would better to say that these shirts are not the official shirts of XXX club. In this way you remove the likelihood of confusion.
I have gone to some length about this because I suspect you will face some opposition to your venture from some clubs. They generate a great deal of money from their merchandising, most of which is licensed out to third party suppliers, and in turn the clubs are duty bound to protect the value of these licences by trying to stamp out unlicensed competition. On that basis, do not be surprised to receive a threatening letter or two, but so long as you have protected yourself in the way I have suggested, you should be able to resist any such claims.
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