Manchester United has brought an infringement and passing off action against Sega and Sports Interactive ('SI') regarding their 'extensive' use of MANCHESTER UNITED within the Football Manager game.
In addition to the alleged infringement of the club's name, Manchester United also claims that the official crest was infringed because it wasn't used...which is an interesting take on infringement.
In place of the official crest, Sega and SI used a simplified red and white striped logo. Manchester United argue that this “deprives the registered proprietor of its right to have the club crest licensed”.
Manchester United allege that the "origin function may be impaired if a significant proportion of consumers are led to believe, contrary to the facts, that Football Manager is licensed or endorsed [by Manchester United]". They also claim that the investment and advertising functions of the trade mark are impaired by the unauthorised use.
However, Sega and SI deny the allegations claiming that the use of MANCHESTER UNITED is legitimate as it is referring to the football team in the context of the game. Also, it has been used in the game, and its predecessor Championship Manager since 1992 "without complaint". In fact, Sega and SI's grounds claim that “copies of the game have also been sent by SI to a number of officials and players at [Manchester United] for a number of years and there have been a number of positive press comments and tweets about the game by them”. Therefore, Sega and SI also claim that Manchester United has acquiesced in its right to take action in any case.
Manchester United sought to amend its original claims to include a new claim regarding use of the mark in "patches". These are "downloadable files provided by third parties via their websites...allowing gamers to associate certain graphics with the teams in the game. Such graphics include...a replica of...the figurative mark depicting the Manchester United club crest".
Whilst Manchester United did not seek to join any third party patch provider to the action, it claimed that Sega and SI are jointly liable. In particular, they were aware of the practice of patch provision by third parties and in fact allowed them so that they did not need to obtain a licence to use signs or graphics.
On 4 June 2020, Mr Justice Morgan provided his decision in respect of the additional claim. Morgan J held that the use of patches was not use in the course of trade by gamers and therefore the new claim would likely fail. Accordingly, Morgan J denied permission to amend the original claims. He also confirmed that if Manchester United wished to elaborate on this claim to demonstrate why it would succeed (which they had failed to do so adequately) then they would need to do so in the usual way - by issuing an application notice.
Stay tuned for further updates!
16 years after the release of Sports Interactive's first Football Manager game, and 28 years after the launch of the first Championship Manager game, Manchester United is suing the developer over the use of its name in the game.