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An artist is taking legal action against Sunderland over the design of the club’s away kit. Lawyer and IP expert Geoff Cunningham explains the dispute.
Clubs, brands and sponsors are busy finalising kit launches, merchandise and commercial campaigns for next season and a summer of international football.
But this week a dispute involving Sunderland AFC and the club’s away kit emerged – a case which serves as a timely reminder that intellectual property is a real risk in sport and one that is too often underestimated.
In a nutshell, it’s been reported that artist Andrew Small is in dispute with the club over the use of a likeness of one of his works, although it was the manufacturer of the kit that incorporated the design which drew the complaint.
Mr Small claims that Sunderland’s away kit, produced by Hummel, reproduces his sculpture ‘C’ placed at the end of the Whitehaven to Sunderland cycle path, through which Roker Lighthouse can be viewed, without his permission. In response, the club have apparently argued that there is no copyright in ideas and concepts.
However, the club could potentially be exposed to a claim for secondary copyright infringement due to its role in receiving, approving and commercially using the design if it knew or had reason to believe that the kits infringed a copyright work.
While it’s a well-established legal principle that reproduction of a substantial part of a copyright work without permission is unlawful, the murkiness lies in establishing whether particular works are eligible for copyright protection and, if so, the gap between inspiration and reproduction.
This is not new territory for football. The Premier League successfully sued Panini over the reproduction of logos on collectors’ cards.
While copyright law does not protect an idea in the abstract, it may protect the specific expression of that idea, such as the form, aesthetics and proportions of a copyright work. If a substantial part of a sculpture’s visual character has been replicated, a court could find that the line between inspiration and infringement has been crossed.
Mr Small’s allegations epitomise why IP rights clearance matters so much, especially when designers are drawing on existing works, whether or not in public spaces or cultural assets.
There is an assumption that because a sculpture stands in a public place, it is available for commercial use, but this is simply not the case. While there are certain exceptions to copyright infringement in respect of artistic works in public places, those are generally not regarded as extending to use on merchandise. Public accessibility does not equal a free ride for football clubs.
The commercial and reputational stakes
The commercial stakes in cases like Sunderland’s can be significant. Where infringement is established, remedies may include a court order preventing further sales of or dealings with the infringing product, an account of profits, which are calculated by reference to revenues generated from the infringing product, or damages based on losses suffered by the owner of the rights in question.
For a club with a newly launched away kit, that could mean revenue-sharing claims across thousands of merchandise units and/or having to use a different kit. And beyond the financial exposure, there is also the reputational risk. It’s not uncommon for high-profile disputes to overshadow the sporting season itself, generating headlines that no club or sponsor wants.
While the Sunderland story is football-focused, the warning applies to all sports. Brands and rights holders regularly draw on communities, cultural heritage and landmark imagery to give their products authenticity and resonance among fans.
No one questions that instinct, and it’s indeed commercially sound when executed properly. However, that entails conducting careful due diligence before the design is finalised, not after it has gone to market.
For clubs and their commercial partners, asking the right questions early on is critical. For example: who created this work? Was it independently created or inspired by an existing design or work? Do any IP rights exist in any aspect of it, or anything it was inspired by? Have we sought permission from all of the relevant intellectual property right owners? Are there any licensing terms that we should be aware of?
These are simple but vital starting points that need to be addressed before a kit is launched to a global fanbase. Also, bear in mind that just because you pay for a design to be created, that doesn’t mean you own the IP rights in it. So, consider obtaining an assignment of all the IP created for you, or at the very least a licence to allow you to fully use and adapt the design in question.
Clarion’s specialist intellectual property team works with an international network of attorneys in over 150 countries and is well placed to carry out IP due diligence as well as to advise on protecting, commercialising and enforcing IP rights.
Don’t get caught out before kick-off
The Sunderland situation is still developing, and we cannot pre-judge the outcome. But whatever the result, it has already raised an important question that everyone involved in sports’ commercial ecosystem should be asking: when did we last properly audit the IP clearance process behind our designs?
The summer of sport is coming, and if you fail to prepare your IP clearance, by the final whistle you might find your big kit launch remembered less for the design and more for the dispute.
Geoff Cunningham is a partner in sports law at Clarion.
