Losing on penalties: UK businesses face hefty claims for World Cup copyright breaches
7 June 2010
Many UK businesses using the World Cup to boost business could face substantial financial penalties for infringing World Cup copyright or inadvertently suggesting their products and services are endorsed by FIFA or the FA. Businesses could face payouts of tens of thousands of pounds, if not more.
Businesses who are found to be using protected emblems, words or logos by FIFA, the FA, a football team or player could find themselves in trouble with these authorities or individuals. At the very least, businesses could be asked to cease any sales or provision of services. At the other end of the scale, businesses could face the threat of a hefty payout for breaches.
Clive Halperin, IP lawyer at GSC comments:
“Hotels, cafes, pubs, retailers, websites and other businesses around Britain will be capitalising on the World Cup by selling all manner of merchandise and services. However, I would urge any business, no matter what size, to check they are adhering to some of the essential copyright and trademark guidelines and have licences in place. Whilst businesses are within the law to organise campaigns around the event, football authorities, players and clubs are notoriously keen to protect their brands. Arsenal football club, for example, pursued a seller of unauthorised club merchandise outside its stadium through to the Court of Appeal even though the seller had a sign on his stall saying that they were not official products from the club.
“A disclaimer confirming that there is no affiliation with the World Cup or the England team may be one way to avoid legal action. However, a small print disclaimer will not be enough to overcome “in your face” suggestions of endorsement and will not protect you from a claim of copyright or trade mark infringement. Each use will depend on the context in which the branding is going to be used and some cases will be ‘borderline’”.
What businesses can do:
- Refer to the World Cup (as long as there is no suggestion of FIFA involvement or endorsement)
- Use national flags or imagery such as the St George’s Cross
- Use photographs of players and stadiums with permission of the copyright owner (but you will need additional permissions if there are any suggestions of endorsement or if the photos incorporate club or country logos)
- Use photographs of officially licensed merchandise to promote the sale of those goods (e.g. you can use a photo of an official video game to promote that game but you must not give the impression that you too are an official sponsor)
What businesses can’t do:
- Use any FA or FIFA logos or mascots without getting a special licence
- Give any impression that you are an official supplier
- Give any impression that you are being endorsed or recommended by FIFA, the FA or individual players
- Mislead any consumers, for example, by falling foul of any prohibitions on misleading advertisements.
- Use marketing that is defamatory (e.g. unfairly disparage a player)
Clive provides answers to some specific questions many business owners may be asking themselves over the next few months:
Can businesses use the term ‘World Cup’?
- Businesses can promote their products or services using the phrase “World Cup” but as it’s a registered trade mark, the phrase “World Cup” must be used with extreme care. The key is avoiding any suggestion that FIFA are involved with or endorsing the promotion or the products. For example, a pub sign promoting that World Cup games will be shown in the pub will be acceptable, provided there is no suggestion that FIFA are endorsing the pub. However, a banner that says “FIFA World Cup” may land you in trouble because it may suggest that FIFA are involved in the promotion.
- T-shirts with the words ‘World Cup’ on it may be fine if it is not suggesting official involvement or endorsement (such as “My mate went to the World Cup and all he brought back was this shirt”). However, it will be an infringement to reproduce or suggest that the clothing is official merchandise liked with the South Africa 2010 FIFA World Cup.
Can businesses use World Cup images, such as the World Cup trophy itself?
- Using an image of the World Cup trophy, the three lions logo or even the word ‘FIFA’ could very likely lead businesses into trouble. Businesses mustn’t use any branding that could be confused with such authorities or teams unless you have a licence.
Can businesses use photographs and logos?
- Even if you have licensed a photograph of a player, this does not mean that you can use his image to promote your product. TalkSport Radio ran into trouble when they used a photograph of a well known Formula 1 driver without the proper permissions.
- Club and country logos may have strict copyright protection stopping you using even photographs of the players in their kit where the logo is an important part of that photograph – football sticker manufacturers have run into this problem in the past.
Clive Halperin concludes:
“Ultimately the World Cup is a chance for everybody to get behind their nation’s team. By being aware of these copyright issues, business owners will be able to celebrate the global event within the law – and not face a red card from authorities. Even if a business believes it has a winnable case, in many cases, it may well not be worth the energy or money fighting it.”
