Megan Briggs, Senior Solicitor at ACID Legal Affiliate Burness Paull LLP, looks at the importance of due diligence before finalising any re-brand.

For many football clubs, the team’s logo will often be one of its most valuable assets, becoming synonymous with the club itself.  It’s the image that’s plastered on everything from football strips to towels, from mugs to bedsheets. Fans wave flags with their team’s logo on match day and children cover their bedroom walls with posters of their favourite players.  Football merchandising has never been more valuable.  Manchester United Football Club reported that, in the year ending June 2018, their turnover from retail, merchandising, apparel and product licensing revenue was £102.9 million! It is perhaps unsurprising then, that the top tier clubs take the safeguarding of their intellectual property portfolio especially seriously.

Recently, a pensioner learned this lesson the hard way when his claim for copyright infringement was thrown out by the High Court in England. The facts of Mr Davies’ case are quite unusual. In 1978, the Wolverhampton Wanderers (known as “Wolves”) commissioned a new logo from a designer in the shape of a geometric wolf’s head.  The new logo was adopted by the club in 1979, which did not sit well with Mr Davies. The longstanding fan claimed that he had created a wolf’s head design as a teenager in the 1960s and entered it in a local art competition in Wolverhampton. According to Mr Davies, the new Wolverhampton Wanderers logo bore such an uncanny resemblance to his own design that they must have copied it, either consciously or subconsciously. Mr Davies’ reasoning for the 40-year delay in raising an action was that he had no evidence to support his claims until 2015, when he unexpectedly stumbled upon a folder of his childhood drawings.

The High Court dismissed the action. Although it was clear that Mr Davies had submitted a wolf’s head design into an art competition in the 1960s, it was impossible to establish which competition that was. The court acknowledged that the 1979 logo closely resembled Mr Davies’ 1960’s drawings, but that was not enough to show that the designer had copied the design. In order to uphold his claim, the court would have to accept that Mr Davies’ drawing had been copied. Either if it had been given to the designer in the 1960s and that the designer had kept it and later copied it, or that the designer saw the competition entry and replicated it at a later date. The court held that copying was implausible.

As a result, Wolves can rest easy in the knowledge that their logo is safe.  Mr Davies, on the other hand, will have to settle the costs incurred by Wolves’ lawyers in defending the action, reportedly somewhere in region of £250,000.  Whether Wolves will enforce their order, and likely bankrupt one of their fans in the process, remains to be seen.  Sometimes being in the right isn’t quite enough, and such decisions by brand owners need to be handled carefully. We considered the reputational aspects of enforcing your intellectual property rights in our April 2019 blog.

Of course, copyright infringement in relation football club logos is not a novel issue. In 2014, it was reported that DC Comics filed a complaint with the EUIPO over a re-vamped Valencia FC’s logo. DC Comics alleged that the new badge contained an image of a bat which strayed too close to the emblem of the well-known caped crusader. Despite Valencia having used a bat in their logo for the best part of a century, the threat of an action by DC Comic was enough to dissuade the club from using the revamped logo.

In an even more unusual case, Ayr United were threatened with legal action in 2015 on the basis that their badge breached an ancient heraldic law.  The club’s badge apparently incorporated an unregistered coat of arms, with Ayr United being taken to task by a rival supporter. Perhaps one of the more creative ways to get one up on derby day!

For football clubs like many other businesses protecting and exploiting intellectual property is a crucial part of their business plan.  Outside the work on the pitch, the selling of merchandise and branded products is a vital revenue stream.  In doing so, clubs must make sure that they have adequate intellectual property protection in place, including undertaking due diligence before finalising any re-brand, ensuring (as far as possible) that there are no wolves lurking round the corner looking for fresh meat.