The dangers of copyright disputes arising from the use of football club badges

Published 07 March 2017 By: Lloyd Thomas

Copyright law in the UK

In the United Kingdom, the vast majority of professional (and some amateur) clubs’ crests will be covered by copyright. UK copyright law primarily seeks to protect the expression of ideas, particularly in the form of original works. Copyright is an unregistered right which arises automatically as soon as the relevant work is created. In short, it seeks to prevent parties from copying (and making a profit from) other parties’ original creations. UK copyright law is set out in the Copyright, Designs and Patents Act 1988[6] (the “CDPA”).

Football club crests may also be registered as trade marks (both under UK and EU legislation). A trade mark registration provides the club with a statutory right to the exclusive use of the trade mark in respect of the goods or services for which it is registered. Broadly speaking, such a registration affords the club a monopoly right to sue for trade mark infringement any person who uses, in the course of trade without permission, any identical or confusingly similar mark or sign in connection with identical or similar goods or services to those for which the trade mark is registered. Even where a trade mark is not registered, a club may seek to protect its brand by bringing a common law passing off action to prevent a third party’s use of the mark. Also highlighted in 'The importance of trade marks in football – controlling brand value & avoiding own goals'.

High profile examples of copyright related disputes

Football clubs across the world, particularly those at the elite level, take the protection of their intellectual property very seriously. It is therefore not surprising that there have been a number of legal quarrels regarding the use (or misuse) of football crests:

• In 2015, FC Barcelona was reported to have threatened legal proceedings[7] against Romanian club Otelul Galati, who had redesigned its crest to celebrate its 50th anniversary, with the resulting crest[8] bearing more than a passing resemblance to that of the Blaugrana. Galati’s sporting director was reported to have stated that[9]:

“Barcelona are right. The club logo is identical to that of Barcelona. It was a mistake, a copy-paste, so we will change the logo. I wanted to change it anyway as supporters were not happy with the new logo. We will return to our old logo which we played with in the Champions League and won the championship and Super Cup. We are obliged to Barcelona [to change it] because we received notice from Barcelona. Someone from Barcelona saw the logo and they sent us a notice.” 

• For clubs of the stature of FC Barcelona, brand protection is of the utmost importance. Given the vast sums brought in from commercial revenue, it is imperative that clubs takes a strong stance against potential infringements of their intellectual property. In this case, Galati found out just how seriously FC Barcelona takes such potential infringements.

• In 2014, it was reported that[10] DC Comics, the creator of Batman, had filed an official complaint with the OHIC (the European Union’s trade mark registration organisation) over the reworking of Valencia CF’s club crest. The new badge was reported to have contained a bat that DC Comics considered to be very similar to the “bat signal[11]”. On 25 November 2014, Valencia sought to provide clarification on the reports and issued a club statement that stated that[12]:

“1. In 2012, Valencia CF applied to the Office of Harmonisation of the Internal Market (OAMI) for trademark registration of a new bat design, to be used for a line of casual clothing. During the registration process, DC Comics filed an objection to our trademark registration. There is no lawsuit, nor any claim by DC Comics against VCF.

2. Without prejudice to the aforementioned matter, the new bat design is currently not used – and is not planned for future use – by the club.

3. For purposes of clarification, a bat has been incorporated into the Club’s official crest since 1922. The official crest and the bat have been trademark registered worldwide and their use has not been subject to any legal challenge.”

• Despite Valencia CF having used a bat in its club crest for almost a century, DC Comics’ concern at the club’s proposed reworking of the crest for its casual clothing line appeared enough to dissuade the club from taking any further steps in that direction.

• Not all club crest cases relate to infringements of intellectual property. In 2015, the Scottish club Ayr United was reported to have been threatened with legal action[13] after being told that its badge breached an ancient heraldic law. The club was accused of breaking a law which dates back to the time of King Charles II, as its crest was alleged to be an unregistered coat of arms[14]. It was report[15]ed that a supporter of a rival team lodged the complaint before the ancient Court of Lord Lyon, leaving Ayr United to fight to keep their crest on their shirt. Alexander Green, the Procurator Fiscal to the Court of Lord Lyon, said that he had advised the club on potential changes it could make so as to avoid breaching the law: (a) apply for a grant of arms from the Court of Lyon (b) render the current badge so as to be non-heraldic or (c) to redesign it so as to be non-heraldic.

• Perhaps even more bizarre was the furore that surrounded the U.C. Sampdoria club crest in 2009. Its club crest consists of blue, red, white and black stripes sitting behind a black profile[16]. That black profile is of a sailor (the lupo di mare) smoking a pipe. That sailor is known as Baciccia, a dialect title for John the Baptist, the local patron saint[17]. In this author’s view, Baciccia rounds off one of the most consistently aesthetically pleasing football kits of all time. Yet in 2009, Baciccia roused the ire of an anti-tobacco group that tried (but failed)[18] to have the pipe removed from Sampdoria’s crest for reasons related to the crest’s purported promotion of tobacco smoking. The crest was temporarily moved to the sleeve of the La Samp shirt but has since been reinstated on the front of the shirt, with pipe still in place.

Comment

Given the importance of brand recognition to football clubs, it is no surprise that they go to great lengths to ensure that their brands are protected. That will of course involve the use of intellectual property protection, together with an often aggressive approach to any possible infringements. In this respect, individuals and organisations must be incredibly careful about using or reproducing club crests without permission.

However, as referred to above, club crests can cause several other legal concerns. Ancient heraldry laws or comic-book franchises may not, for example, be top of a club’s list of concerns when considering a new crest. Despite the negative public opinions regarding Juventus’ new crest, club officials will surely hope that the club’s attempts at appealing to millennials and to new markets through the implementation of the J shield will not involve the contravention of any ancient laws. On the other hand – too jazzy?

If you would like to learn more about this topic we encourage you to read this piece by Sean Corbett: The importance of trade marks in football – controlling brand value & avoiding own goals

This article first appeared on “Sports Shorts” and has been republished with the permission of the authors.

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• Tags: Copyright | Designs and Patents Act 1988 | Football | Intellectual Property | Italy | Spain | United Kingdom (UK)

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Author

Lloyd Thomas

Lloyd Thomas is an associate in Squire Patton Boggs’ Litigation department and is part of the Sports Law team based in its London office.

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