September 2006
The Boot Is Finally On The Other Foot!!
It’s the type of David and Goliath type battle that has had the sports industry jumping boots! Hackney Council has won its copyright battle against sportswear giant Nike which had emblazoned the logo of the council on T-shirts, vests, trainers and footballs, produced by Nike, in its campaign to promote grassroots football in the run-up to the World Cup. The Hackney logo consists of a green dumb-bell shaped H and has been related to and used by the council since the 1960s. The logo itself is embossed on council uniforms, vehicles and benches.
Nike, who have now ceased making the range, had sold the goods abroad including places as far afield as Russia, Japan and the Philippines. It was after an employee of the council had seen the range of goods at the sports giant store in Oxford Street that Hackney council became aware of the extent of the infringement. As a result the council threatened to take Nike to court.
Nike, recognised all over the world for its tick logo and "Just Do It" slogan, settled out of court 4 months after the council threatened legal action. The Oregon-based company apologised to the east London borough and agreed to pay £300,000, including legal costs. The settlement figure was based on a percentage of Nike’s sales of the range, which attempted to tap into Hackney’s image as the home of England's best amateur football.
The council has pledged to use the money to improve the sporting facilities in the area and maintain that this action was important and necessary in not only highlighting that big companies cannot “take what they want from local people without asking” but also in showing that it is just as important and worthwhile for the public sector to protect its intellectual property rights.
Charlie Brooks, a Nike spokesman, said "Hackney Council and Nike have reached a mutually satisfactory agreement following Nike’s use of the council’s logo on a limited range of sportswear. Nike created a range of products that was designed to celebrate the amateur football heritage and culture of Hackney Marshes. In doing so, we inadvertently used imagery that included the council’s logo. This was done in good faith and not as a deliberate act.
Briffa Comment:
It is not always private companies that can be the subject of trademark infringement and the public sector need to ensure they have protection in place in relation to their intellectual property rights. Also the council has proved that if there is a clear cut case of infringement then the power and might of the opponent should not act as a deterrent in pursuing the case.