“World Cup Willie” is the name of the mascot used in the 1966 World Cup hosted in England by the Football Association (FA). The mascot at the centre of Jules Rimet Cup Ltd v The Football Association  EWHC 2376 (Ch) consists of a “cartoon type lion dressed in a Union Flag shirt and white trousers”. In 2005, Jules Rimet Cup Ltd (JR) applied to register as trade marks, in respect of a range of goods, the words “World Cup Willie” and a lion device with the words “World Cup Willie”. Once the FA became aware of the applications, it indicated its intention to oppose them. This led to the dispute in which the Claimant, JR, sought, inter alia, a declaration that its two trade mark applications could not be successfully opposed by the FA.
The judge first considered the copyright issues arising from the Claimant’s applications. He accepted that the drawings for the World Cup Willie 1966 mascot belonged to the FA. He then focused on whether s52 of the Copyright Design and Patents Act (CDPA) could apply and therefore exclude the possibility that copyright infringement had been committed in the circumstances. Section 52 concerns the effects of exploitation of a design derived from an artistic work and prescribes that, 25 years after the relevant articles are first marketed by the copyright owner (in this case the FA), the work may be copied and this will not amount to copyright infringement. However, Article 3 of the Copyright (Industrial Process and Excluded Articles) (no. 2) Order 1989 excludes the applicability of s52 to certain specific articles such as wall plaques, medals, calendars and trade advertisements. It would therefore be an infringement to reproduce the artistic work on articles that appear on the list in Article 3 without the permission of the copyright owner. Naturally, JR also agreed that reproducing the work on paper would amount to copyright infringement. As a consequence, this would entitle only the copyright owner to apply to register a reproduction of the initial artistic work. Nevertheless, it was also submitted that JR’s drawings were not an exact reproduction of the FA’s works. Actually, the judge found that despite the causal link and the apparent similarities between the two works, the Claimant did not reproduce a substantial part of the original work. Thus, JR did not infringe FA’s copyright.
However, JR’s claim in relation to its applications for the two trade marks failed in consideration of the residual goodwill the FA retains in World Cup Willie. In particular, the judge considered that, even if the FA did not directly produce the articles bearing World Cup Willie, the public would have considered that the FA was directly involved and responsible for the selection of the manufacturers of such articles. In addition, in the light of the cyclical nature of the allocation of the football World Cup, it was held that the goodwill had not been abandoned and was sufficient to succeed in a passing off action at the time of the applications. Finally, when considering whether JR acted in bad faith, the court found that the Claimant’s telephoning the FA and enquiring whether or not the FA knew of, or claimed any right in the mascot, was a sufficient indication that JR had a good idea that World Cup Willie may have belonged to the FA.
Given these facts, it was not enough for JR to show that it had sought legal advice from trade mark attorneys. The judge found that applying for the trade mark registrations while knowing that residual goodwill of the FA still existed amounted to bad faith. This victory obtained by the FA is likely to represent an important precedent now that an official application has been made for England to host the 2018 World Cup.