"Three Lions on a shirt, Jules Rimet still gleaming; thirty years of hurt, never stopped me dreaming..."

"Three Lions" is quite possibly the greatest sporting anthem ever written, and the familiar lyrics of David Baddiel and Frank Skinner came irresistibly to mind when reading the recent judgment in Jules Rimet Cup Limited v The Football Association Limited [2007] EWHC 2376 (CH).

The decision dealt with various intellectual property issues arising out of a dispute concerning the ownership of rights in the trade mark WORLD CUP WILLIE and a device consisting of a cartoon lion dressed in the England football strip.

In particular, it considered questions of ownership of copyright in the original WORLD CUP WILLIE drawing; the effect of the design having been industrially applied; whether the device mark was copied from the original drawing; whether the copyright had been infringed; whether the Football Association still had any accrued goodwill in relation to the drawing sufficient for a passing off action at the time of registration of the mark; whether use of the mark would constitute passing off; and whether the trade mark applications had been made in bad faith.

The question whether, after over 40 years of hurt, people still remembered World Cup Willie, the Lion mascot of the 1966 World Cup winning England team, was central to the case.

Background

Three English entrepreneurs set up a company, Jules Rimet Cup Limited, to capitalise on the nostalgia for the time in 1966 when the England football team won the World Cup, then formally known as the Jules Rimet Trophy. "World Cup Willie" was the name of the lion mascot for the 1966 competition which had been hosted in England by the Football Association (FA). Apart from some use in relation to the 1970 World Cup, the FA had not used or licensed World Cup Willie since then, and had allowed its trade mark registrations for WILLIE to lapse. In 2005 Jules Rimet Cup Limited applied to register the words WORLD CUP WILLIE, and a lion device together with the words WORLD CUP WILLIE, as trade marks in respect of a range of goods. The Football Association became aware of the applications and opposed them. It also raised various other intellectual property issues.

Commercialisation of the original design

The court held that the application of the original design to various articles by an industrial process (which results in a shorter period of copyright) would provide a defence to copyright infringement in respect of some articles, but not in respect of others which were excluded from the effect of s.52(1) and (2) of the Copyright Designs and Patents Act 1988 (eg. wall plaques, medals, calendars, trade advertisements). This meant that it would still be an infringement of the artistic work to reproduce it on paper or canvas, and this was held to be sufficient to prevent anyone but the copyright owner applying to register a reproduction of the artistic work as a trade mark.

Copyright infringement

Jules Rimet Cup Limited denied that their device was a reproduction of the original artistic work. In order to produce its new WORLD CUP WILLIE device mark, Mr Tufft of Jules Rimet Cup Limited instructed Mr Day, a freelance designer and artist, to create the image. The designer searched on the internet for the 1966 images and found an image of the original character. Using Photoshop software he produced an image of a similar lion but changed it, putting it in a modern looking England kit and making it look stronger. Mr Tufft however thought the design too simple and similar to the 1966 images and instructed Mr Day to have another attempt and to get away from the 1966 images – he wanted a lion that was more open and friendly, "a lion with attitude" (NB: The intro to "Three Lions on a Shirt" featured a sample of a Trevor Brooking commentary - "We're not creative enough; we're not positive enough"...). Mr Day proceeded to produce another version from scratch.

It was held that the designer still had the original design in his mind, could not do a completely independent design, and that any similarities between the device and the original World Cup Willie image was due to subconscious copying.

The court however went on to hold that although there were similarities, the new version did not reproduce a substantial part of the original, with the result that there had been no copyright infringement.

Bearing in mind the designer's access to the original images and the finding that any similarities were due to subconscious copying you be the judge. The original is on the left:

Goodwill and passing off

The FA opposed registration of the two trade marks on the grounds that the FA owned the goodwill in the original drawing and in the name World Cup Willie; and that the applications were made in bad faith.

The court ruled that goodwill had been created by the merchandising activities leading up to the 1966 World Cup; that the FA owned that goodwill; that it had not abandoned that goodwill in the interim, despite having allowed its trade mark registrations to lapse; and that there was residual goodwill in 2005 belonging to the FA. Although the court ruled out market survey evidence that the FA sought to introduce, it was nevertheless able to find that there was residual goodwill in 2005, largely on the basis of documents produced by Jules Rimet Cup Limited itself, including sales literature which referred to the rights to World Cup Willie (and to the Jules Rimet Cup) as "some of the most valuable sports rights in the UK". In addition, the FA still received approaches from time to time from potential licensees seeking licences; and held out hope of hosting the World Cup again (possibly in 2018), in which case World Cup Willie would be used again ("I know that was then, but it could be again. It's coming home, it's coming home, football's coming home..."). The court held that fair use of the new device mark and word mark across the specifications applied for would result in passing off.

Bad faith registration

The court adopted the test of bad faith established in Harrison's Trade Mark Application (CHINAWHITE), whereby the court decides whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards. The applicable standard is acceptable commercial behaviour observed by reasonable and experienced persons in the particular commercial area being examined. Various matters were advanced by the FA as indicating bad faith, most of which failed on the factual findings of the court, in particular the fact that Jules Rimet Cup Limited believed that the FA had no continuing interest in World Cup Willie and did not believe that it needed to seek permission from the FA. The court did however find that Jules Rimet Cup Limited knew when it made its trade mark applications that there was valuable residual goodwill in World Cup Willie, and that applying for the registrations in light of that knowledge amounted to bad faith. The court stressed that this was on the basis of an objective legal test, and that the people concerned did not think they were doing anything wrong.

Comment

This case is a fascinating example of the ability of goodwill to survive over a period of some 40 years of virtual disuse, and the consequent ability of the owner of the residual goodwill to recapture it when prompted to do so by the recognition of others that there remains something valuable still to be exploited.

Given the finding of actual (albeit subconscious) copying, and the clear similarities between the new device and the original drawing, the copyright infringement issue was certainly not clear-cut. Nor was a finding of bad faith based simply on knowledge of the existence of some residual goodwill, particularly given the apparent lack of any continuing interest by the FA in World Cup Willie. The decision is accordingly an interesting precedent on both of these points. It will be interesting to see whether it is appealed.

Need more information?

For more information on intellectual property infringement issues please call Alan Ringwood on 64 9 916 8925.