Use of Premier League players names and numbers (different query to other post)

[futureguy]

Hi all,
I'm launching a clothing and textile brand that is based around Premier League stats and I would love to get answers to some questions/concerns I have. I note there is a very similar thread covering the topic but I feel the content is different and did not want to hijack that user's thread.

1) Is it ok to use a player's first or second name (or both) name on a piece of clothing...eg. Kevin, DeBruyne, Kevin DeBruyne?
2) Is it ok to use a player's current number in tandem with their name (as per Q1 above)?
3) Can I use a caricature of a player's Image? This would be hand-drawn and not an actual photograph.
4) Can I use the name of a footbal club when stating a fact about them? E.G "Liverpool are Champions"?

I really appreciate your advice here.

[AndyJ]

Hi furtureguy,

As you have seen the other thread started by DH1718, you will be aware that I answered your first two questions in that thread.

Question 3. Provided that you own or have licensed the copyright in the image which forms the caricature, and the caricature itself does not use a substantial part of a photograph of a player, there are no copyright implications in doing this. Caricature per se is permissible under section 30A of the Copyright Designs and Patents Act 1988.

Question 4. I've already mentioned elsewhere that there is a risk of trade mark infringement when employing football club names, which are quite often registered as trade marks. So long as you keep the references generic, as you have with the Liverpool example, you should be fine. However it would be wise to include a disclaimer in any advertising and packaging for your clothing, stating that it is not official merchandise authorized by the club or player concerned. This should reduce the chance of a claim of passing off, ie the suggestion that you are taking advantage of the goodwill or reputation of the player/club in a way which misrepresents the true origin of the garment, or that the player is personally endorsing it.

[futureguy]

Hi AndyJ,
I greatly appreciate the time you took to answer my query. I was uncertain that the advice you gave the other user would apply to selling merchandise such as t-shirts/hoodies etc.

As for questions 3 and 4, I dont plan on doing either at the launch but it is good to be aware of this regardless.

Thanks again, AndyJ

[futureguy]

Hi AndyJ,
I hope you are well and are able to see this.

I will be launching as an LLC with a number of eCOM businesses under my umbrella, one of which is based on the above conversation.

Is there any online service that could vet my designs JUST to be certain I haven't crossed any boundaries? For example, a plain red shirt that references "Salah" in white (red and white being roughly the club colours of Liverpool, Salah's club).

Just to say I am based in Ireland by the way.

[AndyJ]

Hi futureguy,

You are wise to consider getting a professional opinion before committing your business to any specific designs. As you are in Ireland you (and your adviser) need to consider both UK and EU law on the subject. At present the two are largely the same, but over time it is possible that the UK will move away from the caselaw created by the Court of Justice of the EU (CJEU), which may have implications for your business when you are considering English clubs.

Given that the main area of concern lies with trade marks and registered design right, I think the best way forward is to consult a trade mark attorney. These are specialist lawyers who tend to have much greater detailed knowledge of their subject matter than generalist lawyers. The best way to find a trade mark attorney is via their professional body APTMA. One of their members should be able look at your designs and tell you if you are likely to encounter problems. The Premier League clubs tend to be very robust when it comes to protecting their intellectual property, given how important the revenue from merchandise is to them, and so you can expect some push back, but a good legal opinion supporting you will be a great confidence booster.