An artist is taking legal action against Sunderland AFC over the design of the club's away kit, a case that serves as a stark reminder of intellectual property risks in sport. Lawyer and IP expert Geoff Cunningham explains the dispute.
The Dispute
Artist Andrew Small claims Sunderland's blue away kit, produced by Hummel, reproduces his sculpture 'C' located at the end of the Whitehaven to Sunderland cycle path, through which Roker Lighthouse can be viewed, without his permission. The club has reportedly argued that there is no copyright in ideas and concepts. However, the club could face secondary copyright infringement claims if it knew or had reason to believe the kits infringed a copyright work.
Copyright and Inspiration vs. Infringement
Copyright law protects the specific expression of an idea, such as form, aesthetics, and proportions. If a substantial part of a sculpture's visual character is replicated, a court may find infringement. This is not new territory for football; the Premier League successfully sued Panini over logo reproductions on collectors' cards.
Public Space Misconception
There is a common assumption that sculptures in public places are free for commercial use, but this is incorrect. Exceptions to copyright for artistic works in public places generally do not extend to merchandise. Public accessibility does not grant a free license for commercial exploitation.
Commercial and Reputational Stakes
If infringement is established, remedies may include injunctions preventing further sales, accounts of profits from revenues, or damages based on losses. For a newly launched kit, this could mean revenue-sharing claims across thousands of units or having to use a different kit. Beyond financial exposure, reputational risk can overshadow the sporting season with unwanted headlines.
A Lesson for All Sports
While this case is football-focused, the warning applies to all sports. Brands and rights holders often draw on community heritage and landmarks for authenticity. However, careful due diligence must be conducted before designs are finalized, not after market launch.
Key Questions for Clubs and Partners
- Who created the work?
- Was it independently created or inspired by an existing design?
- Do any IP rights exist in any aspect of it?
- Have we sought permission from all relevant IP owners?
- Are there licensing terms to be aware of?
Paying for a design does not mean owning the IP rights. Consider obtaining an assignment of all IP created or at least a license for full use and adaptation.
Don't Get Caught Out
The Sunderland situation is still developing, but it raises an important question: when did you last audit your IP clearance process? The summer of sport is coming; failing to prepare IP clearance could result in a kit launch remembered more for the dispute than the design.
