Selling Unofficial Merchandise at Sports Events

Selling cheaper sports merchandise outside sporting grounds is big business. Fans want to buy something to remember the day, but don’t want to pay the prices charged by official outlets.

This is particularly common for football matches in the UK, with stalls outside the grounds selling merchandise bearing the club’s name – but which has nothing to do with the official brand of the club.

Merchandise typically sold outside football grounds includes team scarves, team pin badges, T shirts with the club badge, and T shirts bearing the image of a well-known player. However, there is likely to be infringement in relation to:

• The use of the official club badge and or name
• The use of a club nickname
• The use of a name of a player or signature
• The use of a picture of a group of players
• The use of a picture of an individual player

A football club’s official badge is invariably protected as a trademark. Most Premier League clubs will have registered their official club badges as a trademark in order to exploit the use of it on official merchandise – and to limit the use of it on unofficial merchandise.

Football clubs may also register the name of their club as a trademark. As many club names will include a place name, they can only attract trademark protection in the entire name. For example, Manchester United could be registered as a trademark – whereas Manchester will not.

Many football clubs have nicknames, for example, Manchester United are also called ‘the Red Devils’. It is also likely that a club will seek to protect the official use of the club’s nickname by registering it as a trademark.

Many individual football players will seek to protect themselves and their own brand by registering their name and signature as trademarks. However, to be registered as a trademark it must be distinctive and not commonplace – so not every footballer is able to register his name as a trademark. This means the use of a footballer’s name on a product may therefore infringe a trademark in that name if the player was able to register his name as a trademark.

Some sportsmen and women are also able to register their signature as a trademark. This means any T shirts or posters containing their signature could infringe the player’s rights. Certain sportsmen (Tiger Woods, for instance) are rumoured to refuse to sign autographs as they feel it will decrease the value in their registered trademark.

To prove a trademark infringement, the use of that trademark must be shown to create a likelihood of confusion on the part of the public. This means that a member of the general public must be led to be mistaken in their belief that use of the trademark identifies the goods or services of another trader.

For example, if the use of the club’s badge would lead a member of the general public to believe the goods are official club goods – then a trademark infringement would be established.

Often, posters of an entire team lining up for the season photograph will be sold outside the ground. If posters such as this are sold, it is likely to infringe the copyright held in the actual photograph. Copyright is an automatic right which exists as soon as the photograph is taken, and is owned by the person who took the photo. The copyright of a photograph of the entire team will be owned by the club itself, so if you reproduce it you will be liable for copyright infringement (regardless of whether or not a member of the public believes it to be official).

If you use a picture of an individual player, for example, as a poster or on a T shirt, you may be breaching their intellectual property rights. The copyright in the photo will usually be owned by the person taking the photograph. However, if you use a picture of an individual player on a T shirt without authorisation, you maybe liable to an action for passing off.

To prove passing off, the following must be established:

• At the time of the acts complained of, the player had a significant reputation or goodwill
• The actions of the person selling the merchandise gave rise to a false message which would be understood by a not insignificant section of the general public that his goods have been endorsed, recommended or approved by the claimant (in this case the footballer)

If the T shirt (or similar merchandise) containing the image of that player would be assumed by members of the public to be endorsed by that player, a passing off claim can follow. In practice, this is difficult to prove in circumstances where the product is intended to show passion for a particular player – and is not intended to use that image to endorse a product.