Intellectual Property Rights In The Commercialized Sports Industry - An Analysis Of The Legal Framework
Author: LawSphereX
Category: Intellectual Property
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INTELLECTUAL PROPERTY RIGHTS IN THE
COMMERCIALIZED SPORTS INDUSTRY: AN ANALYSIS
OF THE LEGAL FRAMEWORK
Asiimwe Moses, BA.LLB at Marwadi University, Rajkot, Gujarat.
ABSTRACT
The World Intellectual Property Organization identified the sports industry as one of the major contributors to most national and regional economies. The sports industry evolved from being a known entertainment source to a business field. The chunks of money and resources invested in the sports industry have contributed to the commercialization of the sports industry. The sports industry comprises stakeholders at different levels whose contribution boosts its growth and development. In whichever category, these can be termed as investors whose interest is in the profits generated by the industry. Their investment amounts to intellectual properties which without protection from intellectual property laws, their commercial gains cannot be fully utilized due to infringement by third parties. Intellectual property is an integral part of the commercialized sports industry.
It is imperative to note that sports events like the English Premier League, La Liga, and Indian Premier League among others that have commercialized and protected their intellectual properties from third parties have earned a lot of revenue with their partners compared to other organizations in the -sports industry that are yet to realize the importance of intellectual property laws in the sport industry. The sports industry's intellectual property is governed by sports-specific rules and general legal rules in various jurisdictions. Intellectual property laws address the legal challenges faced by the commercialized sports industry and protect the rights and interests of the stakeholders.
This research article provides an overview of intellectual property law in sports including different types of intellectual property rights, the legal framework governing intellectual property in sports, and commercial implications of intellectual property in the sports industry. Keywords: Sports Industry, Intellectual Property, Commercialization, Legal Framework, Intellectual Property Rights.
KEY STAKEHOLDERS IN THE SPORTS INDUSTRY.
The sports industry is characterized as an industry with “high levels of identification”1 Which constitute relationships. A stakeholder is defined as a group or an individual who can affect and is affected by the actions and decisions, policies, practices, or goals of an organization.2 The numerous stakeholders in the sports industry play different responsibilities and roles. The varying roles and responsibilities are directed toward achieving their desired goals. It is during the performance of such roles that an interaction with each other occurs and a relationship is formed.3 It is a massive sector bringing together entertainment, games, culture, and financial business together.4
PARTNERS AND SPONSORS
The role of the sponsors in the sports industry is a very crucial one. Companies invest in sports not only to gain brand visibility, and awareness but also to gain deeper and more engagement with fans, and staff and even manage the perception of the sponsoring company. 5 Sponsoring companies like insurance firms and banks such as Standard Chartered use sports to generate global recognition. Telecommunication companies like Orange who are the official sponsors of the African Cup of Nations are heavier sponsors of sports. 6 Sponsors are a source of revenue for the sports industry. In BRICS countries, sponsorship represents the biggest component of the sports market with its importance to most sports organizations and major events steadily increasing.
With their investments in the sports industry, sponsors target the wide viewership of sports events like the English Premier League and the Olympic Games. The viewers who in this case the clubs refer to as fans, and sponsors consider them as their potential customers for their products and thus use sports events to market their products, create awareness, and 1Underwood, R. L. , Klein, N. M. and Burke, R. R. (2001) ‘Packaging Communication: Attentional effects of product imagery’, Journal of Product & Brand Management, 10(7), pp. 403–422. doi:10. 1108/10610420110410531. 2 Sotiriadou, K. The Australian sport system and its stakeholders: Development of cooperative relationships. Sport in society, 12(7), 848. 842-860 (2009)
3 Id. at 848.
4 Emergence and influence of intellectual property in the sports industry. The Daily Guardian.Available at:https://thedailyguardian.com/emergence-and-influence-of-intellectual-property-in-the-sports-industry/ (Accessed: 13 October 2024).
5 Coopers, P.W., Changing the game: Outlook for the global sports market to 2015. PwC, 20, 2011.
6 Id.
strengthen their goodwill. In exchange for their money, sponsors, and partners are granted exclusive marketing rights associated with the sports event brand. The marketing rights granted are so vulnerable to ambush marketing thus their protection is assured under intellectual property laws.
MEDIA
The sports industry and media have an inseparable relationship. They both have a give-andtake relationship which is vital for both industries. Media generates profit through sports while sports and their content are transmitted through data. 7 Collectively, the interdependence of the two can be called sports media. 8 TV, radio, newspapers, magazines, and the internet are the mediums that deliver sports information, scenes of sports, and related content. The emergence of social media has seen great development in the sports industry. It has revolutionized the efficiency of communication. The role of the media as the key stakeholder of the sports industry is to communicate with various stakeholders. New and unique opportunities for engagement throughout the sports industry have been introduced by social media.
9 Platforms like X formerly known as Twitter and Facebook among others have not only engaged teams, and players with fans but also changed the perception of sports consumption, transforming it from an individual activity to a group activity. The trend of reporting sports news has drastically changed. The most popular sports media outlets including ESPN, and Barstool Sports among others have had a great impact on the sports industry. Content shared with mass followers has increased the sponsors' visibility and the viewership of leagues. Non-fungible tokens (NFTs) are paving their way in the sports digital industry. NFTs can be an income avenue for stakeholders in the sports industry like sports leagues, clubs, and athletes10 given the fact that they offer fans a platform to acquire their team’s officially licensed media.
11 It should be noted that Sports NFTs smart contract provides the acquirer with a specific nonduplicable moment exercised on a piece of digital asset and not ownership and use rights. 7 Kim, N. K. and Park, S. P. The relationship between media sports involvement experiences and sports values and sports participation. International Journal of Applied Engineering Research.
8 Id. at 1.
9 https://www.bu.edu/prlab/2018/10/29/the-impact-of-social-media-on-the-sports-industry/
10 https://www2.deloitte.com/us/en/insights/industry/technology/technology-media-and-telecompredictions/2022/sports-nfts-digital-media.html (last viewed on 13 October 2024) 11https://fintechmagazine.com/articles/nfts-in-sport-are-they-the-future-of-sports-merchandising. (last viewed on
13 October 2024)
There’s however, a need for the platforms and rights creators to consider the rights of thirdparty rights over the underlying digital assets as they strike a balance between consumer demand and intellectual property rights.12 It is worth noting that such revolutionized broadcast sports due to advancements in communication technologies come with a huge cost. Televisions and media organizations pay huge sums of money for exclusive rights to broadcast top sporting events live and thus Intellectual property rights become an important factor in this relationship.
ATHLETES AND SPORTS TEAMS
The sports would not be in existence without the athletes and the sports teams. How would cricket be played without players like Ravindra Jadeja and football without teams like Manchester United? No sports event can happen without this special category of the sports industry. This category is directly affected by Intellectual Property infringement since they are the main center of focus. A sports event organizer, or merchandise manufacturer like Nike among other brands would like to get involved with a sports team and athletes because they are the point of contact and interest for the consumers of sports goods and thus sign endorsement contracts for such brands. Their Intellectual property rights like image rights and trademark rights are vulnerable because everyone in the industry would like to show an affiliation with them.
THE LEGAL FRAMEWORK OF INTELLECTUAL PROPERTY IN THE SPORTS
INDUSTRY
TRADEMARK LAW
A trademark is defined as "[a]ny sign, or any combination of signs, capable of distinguishing
the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.”13 Sports-related trademarks are governed by the standard trademark law principles that apply in the relevant jurisdiction in light of the international substantive and procedural principles governing trademark law. Intellectual Property Laws are subject to the territorial limits and hence governed by the law of the land and different jurisdictions offer
12 Id.
13 Art. 15 para 1 TRIPS Agreement.
independent protection either attained by registration or common law in a specific country. 14 In India for example, sports-related trademarks are protected under the provisions of the Trademarks Act, 1999. They must comply with the general conditions of protection of the country in which registration is sought. 15 This concept is developed on the territoriality doctrine16 where the registered proprietor is granted exclusive rights within the territorial boundaries by the municipal law. The registered proprietor cannot claim exclusive trademark rights in another dominion by contending prior use of the same trademark in a given dominion. 17 The Madrid System for the International Registration of Marks makes it possible for the sports industry to protect its trademarks in multiple jurisdictions through one single centralized system.
18 It is pertinent to state that a trademark is a badge of origin that enables a customer to recognize a product of a particular company. 19 Different countries have defined the term trademarks in light of TRIPS. However, courts in different countries have dealt with an important question of what constitutes a “trademark”. The Supreme Court of India laid three essentials of a trademark viz, (i) it should be a mark: (ii) it should be capable of being represented geographically: and (iii) it should be capable of distinguishing the goods or services of one person from those of others. 20 The sports industry has increasingly developed into a commercial activity. Through sponsorship, merchandising, branding, and licensing, it generates huge revenues for several key stakeholders like athletes, sports clubs, and leagues.
21, international and national federations, and manufacturers of sporting goods like Nike and Adidas among others. The sporting goods industry depends on strong trademark protection to fight efficiently against
14 William Jay Gross, “The Territorial Scope of Trade Mark Rights’, University of Miami Law Review.
15https://www.wipo.int/export/sites/www/sports/en/docs/guide-sustaining-sport-ipr-2022.pdf (last visited on 3 May 2023).
16 AHUJA, VIRENDRA KUMAR. “LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS.” 290
LEXIS NEXIS, (2019).
17 Trans Tyres India Pvt Ltd v Double Coin Holdings Ltd, 2012 (49) PTC 209 (Del) (DB) at page 216.
18 https://www.wipo.int/madrid/en/ (last visited on 3 May 2023).
19 https://www.wipo.int/sports/en/branding.html (last visited on 3 May 2023).
20 Laxmikant v Patel v Chetanbhai Shah AIR 2002 SC 275.
21 The Indian Premier League, English Premier League, UEFA Champions League.
online and offline counterfeiting activities. 22 Which involves exploitation of the intellectual property rights, especially trademarks. 23 The various types of traditional and nontraditional trademarks24 are of great significance to the sports industry. They aim at identifying goods or services of one seller and distinguish them from goods or services sold by others25 signifying that all goods or services bearing the trademark come from a single source and are of an equal level of quality; protect the public against confusion or deception, protect trademark owner’s goodwill and as a tool for advertising and marketing. 26 Sponsor companies invest a huge amount of money in the sports industry to obtain a limited license to use the names, logos, and marks associated with the event or team.
27 Symbols of sports events like Delhi 2010 XIX, Commonwealth Games, Indian Premier League, and names of teams like Mumbai Indians, Delhi Dare Devils, and Kolkata Knight Riders28 Establish a strong bond with the public hence with such a connection, companies market their product. Any unauthorized use of the logos and works associated with the sports event affects the value of the sponsorship agreement. Such an unauthorized usage of the logos and marks associated with the sports event leads to confusion in the consumer’s mind and the perpetrator benefits from the exclusive rights of the sponsor of an event due to ambush marketing. 29 Athletes are a point of connection between the various stakeholders in the sports industry. They are increasingly attempting to register their nicknames, catchphrases fan slogans30, initials, 22 https://www. wipo.
int/export/sites/www/sports/en/docs/guide-sustaining-sport-ipr-2022. pdf (last visited on 3 May2023).
23AHUJA, VIRENDRA KUMAR. “LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS.” 417 LEXIS
NEXIS, (2019).
24 https://www.wipo.int/export/sites/www/sports/en/docs/guide-sustaining-sport-ipr-2022.pdf (last visited on 3 May 2023).
25 Imperial Tobacco Co. of India Ltd v. The Registrar of Trademarks. AIR 1977 Cal 413
26 AHUJA, VIRENDRA KUMAR. “LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS.” 419
LEXIS NEXIS, (2019).
27AHUJA, VIRENDRA KUMAR. “LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS.” 420 LEXIS
NEXIS, (2019).
28AHUJA, VIRENDRA KUMAR. “LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS.” 422 LEXIS
NEXIS, (2019).
29 G Nufer, Ambush marketing in sports: an attack on sponsorship or innovative marketing? SPORT, BUSINESS AND MANAGEMENT: AN INTERNATIONAL JOURNAL (2016).
30 Roberts, Alexandra J. "Athlete Trademarks: Names, Nicknames, & Catchphrases." Book chapter in The Oxford Handbook of American Sports Law (2018), Forthcoming 1, (2017).
logos like Jordan’s “Jumpman”31 and portraits, celebrations,32 and signatures that are associated with them. 33 Such signs constitute valid trademarks. 34 Athletes have capitalized on their fame, reputation, and athletic prowess to secure endorsement deals with sports manufacturing firms like NIKE and Adidas hence trademarks associated with athletes are worth lots of money. For instance, Kevin Durant signed a lifetime deal with Nike. 35Reliance is placed on trademark laws to monetize its fame. For example, “ROGER FEDERER” is owned by Roger Federer. Athlete trademark registrations are most prevalent in two categories; apparel and entertainment services. Brand Studio Lifestyle a clothing company uses Rohit Sharma’s name to promote its brand “HIGHLANDER BY ROHIT SHARMA. ” Some develop product ranges bearing the athlete’s name like NIKE: Michael Jordan.
It is worth noting that the athlete is not the manufacturer of the apparel but rather the manufacturer benefits from the loyalty of the fans to the athlete. An athlete may register his name for entertainment services such as endorsements or personal appearances. The name essentially functions as a trademark for the athlete himself without even a semblance of separate services. 36 The registration of trademarks by athletes may not necessarily protect them against all uses of their characteristics by third parties especially if the third parties use them in creative and artistic works. 37 As a general rule, a person’s image or likeliness cannot function as a trademark. However, an athlete is advantaged in that he will almost always have a greater claim to his name than will an unaffiliated entity.
38 For instance, Lionel Messi’s reputation constituted a relevant factor in establishing a conceptual difference between “Messi” and “massi. ” The Central Court held that the football player’s reputation counteracted the visual and phonetic similarities between the two signs and excluded any 31 Glaus, A. R. (2021). The Intersection of Trademark Law, Athletes, and Money: A" Three-Peat". Marq. Sports L. Rev. , 32, 583.
32 https://www.huffingtonpost.co.uk/2013/08/09/gareth-bale-heart-celebration_n_3732430.html
33 Roberts, A. J. (2017). Athlete Trademarks: Names, Nicknames, & Catchphrases. Book chapter in The Oxford Handbook of American Sports Law, Forthcoming, 4 (2018).
34 https://www.wipo.int/export/sites/www/sports/en/docs/guide-sustaining-sport-ipr-2022.pdf.
35Adam Zagoria, Kevin Durant Becomes 3rd NBA Player To Sign Lifetime Deal With Nike, FORBES, May 2, 2023. 36 Roberts, A. J. (2017). Athlete Trademarks: Names, Nicknames, & Catchphrases. Book chapter in The Oxford Handbook of American Sports Law, Forthcoming, 4 (2018).
37 ETW Corp. v. Jireh Publ. Inc 332 f.3d 915 (6th Cir. 2003).
38 Roberts, A. J. (2017). Athlete Trademarks: Names, Nicknames, & Catchphrases. Book chapter in The Oxford Handbook of American Sports Law, Forthcoming, 4 (2018).
likelihood of confusion. 39 The sports industry has been challenged by the non-distinctiveness of some trademarks. Word trademarks consist of the location and the year of the sports event. Word trademarks “PUMA WORLD CUP QATAR 2022” and “PUMA WORLD CUP 2022” registered by Puma in Switzerland were declared invalid because they were misleading. Additionally, FIFA registered trademarks “QATAR 2022” or “WORLD CUP 2022” were pronounced valid because they lacked distinctiveness. However, the target consumers only attribute such designations to the sporting event of the football World Cup itself. 40 Event trademarks are an exception to the essential ingredient of distinctiveness. Such event trademarks include the Olympic games whose symbol is protected under the Nairobi Treaty. 41 The same is granted protection under the Emblems and Names (Prevention of Improper Use) Act, 1950 of India.
Such trademarks are considered to be intrinsically non-distinctive42 but gained secondary meaning. On the contrary the word “World Cup” is generic and the event itself is not registered by any international or domestic law. 43 Domain names like the Gujarat Lions domain name “thegujaratlions. com”44 Build brand image and search engine optimization. A domain comprises of trademark of an organization or business. 45 The domain name is intended to benefit the traders in a business through the advertisement of services and goods on the internet. With the commercialization of sports, there is so much to play for off the field and the internet has a lot to offer to the sports industry, especially with the advent of E-tickets. Sponsors spread awareness of the event and sell their products online.
The domain name thus enables sponsors and companies to have consumers identify their goods and distinguish them from others. 39 The Court of Justice dismisses the appeals brought by EUIPO and a Spanish company against the judgment of the General Court authorising football player Lionel Messi to register the trade mark ‘MESSI’ for sports equipment and clothing (Europa. eu) (last visited on 5 May 2023). 40 https://trademarkblog. kluweriplaw. com/2022/06/01/decision-of-the-swiss-federal-supreme-court-in-the-fifa-vpuma-case/ (last visited on 8 Maya 2023)
41 Supra note 13 at 420.
42 https://www.wipo.int/export/sites/www/sports/en/docs/guide-sustaining-sport-ipr-2022.pdf (last visited on 8 May 2023).
43 ICC Development (International) Ltd. V. Arvee Enterprises. 2003 (26) PTC 245 (Del).
44 https://our.in/ipl-2017-teams-domain-names/ (last visited on 8 May 2023).
45AHUJA, VIRENDRA KUMAR. “LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS.” 454 LEXIS
NEXIS, (2019).
Registration of domain names becomes a necessity for the stakeholders in the sports industry like sponsors, leagues, and clubs to prevent the misuse of goodwill in the name of one entity over the other especially cyber-squatters who are in bad faith.46 Register names to gain commercial advantage of any other person’s trademark. WIPO uses Alternative Dispute Resolution to speedily solve domain name-related disputes. For the complaint to succeed, three essential conditions must be proved viz; ● The disputed domain is identical or confusingly similar to a trademark of service in which the complaint has rights.47 ● Respondent has no rights or legitimate interest in respect of the domain name. ● The disputed domain name has been registered and is being used in bad faith.48
DESIGN LAW
The sports industry is an attractive option for investments. Investors endeavor to take a responsible and sustainable approach. 49 The diverse options of the sports industry include TV distribution, fitness, ticketing, betting, and advertising to sponsorship or merchandise. The sports industry is expected to grow to $623. 63 billion in 2027. 50 The spectator sports sector which includes clubs, sports teams, events revenue, media rights, sponsorship, and merchandising was expected to be the fastest growing. 51 With major international events like the Cricket World Cup, Rugby World Cup, FIFA World Cup, AFCON, and FIFA Women’s World Cup among others which attract the attention of several fans and consumers of sports products all over the world, designs offer the distinctiveness of the sports competition, teams, and their gears.
52 Designs increase the marketability, commercial value, and attractiveness of sports events. Fans want to enjoy the
46 https://doi.org/10.16997/eslj.29
47 https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0034.html (last visited on 8 May 2023). 48 https://www.wipo.int/amc/en/domains/decisions/html/1999/d1999-0001.html (last visited on 8 May 2023). 49https://www.pwc.com/gx/en/industries/hospitality-leisure/publications/changing-the-game-outlook-for-theglobal-sports-market-to-2015.html 50https://www.researchandmarkets.com/reports/5781098/sports-global-market-report(last visited on 8 May 2023).
51 Id.
52 https://www.wipo.int/sports/en/design.html (last visited on 8 May 2023).
event but that alone also has a lot to do with their lifestyle which is satisfied by the design of a team’s jersey or sports gear and the ambience of the event. Every design creates a specific pattern, recognized by different senses of human beings, and becomes symbolic of products belonging to that ‘article’ or business. 53 Consumers relate a given product with a specific brand. Therefore, in a sports marketplace that is so competitive, a design establishes a reputable name for the company which determines its market share at both the national and international levels. Huge amounts of money are invested in research and technologies used to develop the article which is appealing to the eyes of the consumer hence designs are valuable innovations that are worth the protection.
The WIPO international design protection system, known as the Hague System54 Offers protection at the international level. In India, articles distinguishable from other known designs or combinations of the known designs are registered under the Designs Act, 2000. Design law can protect the aesthetic (2D or 3D) shape of products knowing that the shape plays a key role in making a product attractive and desirable. 55
PATENTS LAW
The sports industry has been driven by groundbreaking inventions without which sports would not have existed. Imagine football without a ball, cricket without a bat and a ball. The sports industry is considered one of the most technological innovations due to the way technology is used in many different ways. 56 More interestingly, research, creativity, and expertise have been applied by sports technologists to make it possible for differently-abled enthusiasts and talented athletes to showcase their passion for sports. The athletic ability of the Tokyo 2020 gold medalist Johannes Floors and silver medalist Martina Caironi have been possible due to the specially designed prostheses for sprinters like the 3S80, IE91 for long jumpers, and IE95 prosthetic foot used in basketball and volleyball.
Increasingly the sports industry is requiring the use of technology to facilitate performance improvements,57 Monitor their health and
53 Trans Tyres India Pvt Ltd v Double Coin Holdings Ltd, 2012 (49) PTC 209 (Del) (DB).
54 https://www.wipo.int/hague/en/ (last visited on 8 May 2023).
55 https://www.wipo.int/export/sites/www/sports/en/docs/guide-sustaining-sport-ipr-2022.pdf (last visited on 8 May 2023). 56 Riot C., James D. Innovating to grow sport: The wider context of innovation in sport. Proceedings of ASTN1. 1(1):40. 2013.
57 Patrick Trabal. Resistance to Technological Innovation in Elite Sport. International Review for the Sociology of Sport, 2008, 43 (3), pp.313-330. 43(3):313–330.
reduce injuries. Sports drinks, and muscle-building and nutritional supplements, are other examples of sports patents. 58 Fans are key stakeholders in the sports industry. The sports industry is nothing without billions of fans who are passionate about various sports and make investments in terms of the time they use to watch cricket matches for example either at the stadium or via live streaming, and financial investments through buying tickets and merchandise for their clubs like Arsenal in the English Premier league. Their experience has been transformed by tech companies that have curated various avenues for them to enjoy sports. With high tech, fans can adjust their seats in stadiums, replay missed actions, view close-ups, and share them with friends who are not at the stadium using their mobile apps.
The protection of highly valuable innovations from unauthorized use is vital for the sports industry. On the international level, WIPO’s Patent Cooperation Treaty (PCT) enables inventors to file a single “international” application to set in motion the process of obtaining patent protection in multiple countries. A patent consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period in exchange for public disclosure of an invention59 which, after the expiry of the fixed period of the monopoly, passes into the public domain. 60 In India, patent rights are subject to the provisions of the Patents Act, 1970. 61 Generally, the main requirements are that an invention must be; ● Novel, ● Inventive ● Industrially applicable The Olympic motto says “Citius, Altius, Fortius” (Faster, higher, stronger).
Such a dream can only be achieved with innovations of sophisticated, complex, and high-tech sports equipment like the ASICS Meta -ride high-end-end E-bikes like those developed by SCOTT S. A. To 2008.
58 https://www.wipo.int/ip-outreach/en/ipday/2019/ip_sports.html.
59 https://www.wipo.int/edocs/mdocs/sme/en/wipo_smes_bwn_13/wipo_smes_bwn_13_5_park.pdf
60 B.Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1979) 2 SCC 511.
61 The Patents Act, 1970 (Act 39 of 1970)
achieve that, manufacturers of sports goods need confidence that they will get a return on R&D investment.62
COPYRIGHT LAW AND OTHER RELATED RIGHTS
Fans are the targeted consumers of the sports industry. Sports event organizers want to keep them engaged, interested, and inspired. Revenues from broadcasting and media rights are the main source of funds for sports organizations to build stadiums, host sporting events, and carry out community outreach to maintain a higher level of interest. The development of technology has made it possible for fans to stream their favorite sports events or leagues without necessarily leaving the comfort of their homes or even workplaces. The expansion of TV licensing into new digital technologies has added value to companies that are taking advantage of this space. New streaming media and movable technology have expanded the global audience, and opened up new advertising revenue, while traditional TV distribution contracts continue to be lucrative in some sources.
For example, Hotstar, a video streaming platform that is the official broadcaster of the Indian Premier League has a majority of mobile-based users and registered a growth of 74 in viewership in 2019. 63 The copyrightable subject matter includes the promotion and marketing of championships and sporting events, the artistic designs of the logos of sports teams and sports competitions, literature contained in game day programs sold to fans, merchandise, software of computers, and online games. 64 Whereas sports events don’t qualify for copyright protection, the media companies are beneficiaries of such protection and thus pay lots of money to acquire exclusive rights to broadcast sports events. The unauthorized rebroadcast of sporting events is feared to impair the marketability and profitability of licensed sports broadcasts.
The emergence of new, live-streaming technologies has only increased the vigilance of sports enterprises against unauthorized game broadcasts. 65 The images of athletes, sports teams, and events are the foundation of the sports industry which qualifies it as an image industry. It is this kind of nature that makes it so vulnerable to IP infringement and thus worth the protection because companies invest a lot of money and infringement of the visual or image makes them lose a lot. This image
62 https://www.wipo.int/ip-outreach/en/ipday/archive/ipday_2019.html.
63 https://www.thebusinessresearchcompany.com/report/sports-market.
64 theglobalipcenter.com.
65 Edelman, M.From Meerkat to Periscope: Does intellectual property law prohibit the live streaming of commercial sporting events? Colum. JL & Arts, 39, p.469.
industry is protected by copyright law and neighboring rights which protect sports performances, broadcasters, organizers of sports events, and databases relating to sports events. Extraordinary performances by athletes in sports either by an individual or team are at the heart of sports. It is such moments of creativity that distinguish an ordinary extraordinary athlete from the ordinary athlete. 66 Copyright law protects original expressions worth the economic value. The question is, do the unique artistic expressions of the athletes amount to original expressions that are copyrightable? It is argued by Weber that the conditions and circumstances in today’s sports world now make protection of athletes’ “original moves” a desirable addition to the bundle of valuable rights athletes have secured in their performances over the years.
67 This is however defeated by the fact that the majority of sports moves do and shall not enjoy a blanket of protection under copyright law, artistic choreography of sports exercises is however copyrightable. 68 There are four categories of sports viz sports events, scripted sports plays, routine-oriented competitive sports, and routine-oriented, non-competitive sports. Among these, the last two are possibly copyrightable. Unlike adversarial team sports like football, solely routine-oriented or aesthetic sports provide athletes with room to express their uniqueness leading to the creation of sports moves or combinations that meet the requirements of copyrightability. 69 However adversarial team sports have also some level of expressed creativity like Zidane’s panenka penalty kick which is referred to as “athletic skill and judgment.
” Players' performances like those of basketball players possess great commercial value which indicates that the work embodies the modicum of creativity required for copyrightability. 70 The copyrightability of individual sports moves is contested on the assertion that they are more ideas than expressions. Nevertheless, their combination can amount to sufficient copyrightable expressions. 71 Another seemingly convincing doctrine of merger is based on contesting the 66 Mezei, Péter. "Copyright protection of sports moves. " In Non-Conventional Copyright, pp. 271-297. Edward Elgar Publishing, 2018.
67 Id. at 1.
68 Mezei, Péter. "Copyright protection of sports moves." In Non-Conventional Copyright, pp. 271-297. Edward Elgar Publishing, 2018. 69 Mezei, Péter. "Copyright protection of sports moves." In Non-Conventional Copyright, pp. 271-297. Edward Elgar Publishing, 2018. 70 Baltimore Orioles, Inc. v Major League Basketball Players Association 805 F.2d 663, 669 (1986) note 7. 71 Carl A. Kukkonen III. Be a Good Sport and Refrain from Using my Patented Putt? Intellectual Property Protection for Sports Related Movements, 80, JOURNAL OF THE PATENT AND TRADEMARK OFFICE SOCIETY 808- 829 (1998).
copyrightability of sports moves. Copyrights grant exclusive rights to use hence such a move is monopolized. 72 The sports industry is driven by key players whose contributions don’t consist of performances of sports activities. Their contribution involves filming, recording, and communication of sports events. They invest huge sums of money to diffuse information and culture to the fans. Whereas the sports event itself doesn’t fall in the ambit of copyright. Live broadcasting of sporting events doesn’t constitute the author’s intellectual creation and not works of authorship. 73 Copyright law protects authorship works that meet the requirements of originality and predictability.
74 Filming of a sporting event is copyrightable provided it has some element of creativity75 which involves the intellect of the director, cameraman’s selection, angling, and overall production and transmission of the event. 76 In Australia, live broadcasts of sporting events like rugby matches are copyrightable under the provisions of the Australian Copyright Act. 77 It is prudent to note that the broadcasting signal is protected separately from the content that is broadcast. 78 The legal protection is extended to the process by which programs are broadcast on air or by cable. 79 The increase in signal piracy results from the evaluation of the sports media in terms of content creation and the modes of distribution which are tech-driven.
The Rome Convention and other existing international instruments are, however not sufficient to efficiently protect broadcasters against digital threats. 80 Comprehensive copyright protection is relevant to maximize the potential commercialization and revenue of a given sport. 81 The legal issues that are a result of the grant of exclusive broadcast rights cannot be covered by one specific legislation since they include competition law and media law. 82 Intellectual property provides exclusive rights, however, the broadcast of audiovisuals is not exclusive in situations that involve the broadcasting of major sports events like the FIFA World Cup. Audiovisual is
72 Herbet Rosenthat Jewelry Corp. v Kalpakian 446 F.2d 738 (1971).
73 Football Association Premier League Ltd v. QC Leisure (C403/08)
74 Institute Inner Studies v. Charlotte Anderson 2014 SCC ONLINE DEL 136
75 https://www.wipo.int/export/sites/www/sports/en/docs/guide-sustaining-sport-ipr-2022.pdf (last visited on 8 May 2023).
76 United States, the 1976 Copyright law.
77 National Rugby League Investment Pty Ltd v. SingTel Optus Pty Ltd
78 https://www.wipo.int/export/sites/www/sports/en/docs/guide-sustaining-sport-ipr-2022.pdf page 83 (last visited on 8 May 2023). 79 Eugen Kharytonov et al., Intellectual property law in the field of sports: specifics of manifestations and features of legal regulation, ONUA.EDU.UA (2021). 80https://www.wipo.int/export/sites/www/sports/en/docs/guide-sustaining-sport-ipr-2022.pdf page 86 (last visited on 8 May 2023)
81 Leveraging Intellectual Property in the Global Sports Economy, GOOGLE BOOKS 17 (2018).
82https://www.wipo.int/export/sites/www/sports/en/docs/guide-sustaining-sport-ipr-2022.pdf page 83 (last visited on 8 May 2023).
made accessible on free television, as well as short news reports. 83 The sports industry is statistic-based and generates huge sums viz from fixtures to goals when scored the scorer, yellow cards, red cards, starting line up, substitution, penalties, and the taker among others. Some sports institutions like the International Olympic Committee voluntarily give access to such valuable data. 84 The unauthorized use of sports data especially by betting companies robs huge sums of money from the sports industry and thus poses legal challenges. In some jurisdictions like the European Union, sports-related data is protected by the statutory regime. 85 Image rights are so important to the sports industry. Athletes are the face of any sports event. Event organizers, sponsors, and fans have their eyes focused on them each with a specific interest.
Event organizers, sponsors, and clubs have commercial interests while fans are interested in being entertained by their spectacular performances. Athletes have taken advantage of their fame to gain revenue by commercializing their images which are protected by image rights. 86 Image rights include rights to such objects of civil rights which include the right to privacy, the right to a name, and the right to protect the image of a citizen. 87 Secondly, they are a result of intellectual activity which includes photographic works depicting athletes as well as video recordings or works of visual art which are depicted. 88 Image rights accord protection to all identifying features of the athletes that are beyond their image rights like names, initials, signals, body features, and achievements among others.
Athletes by way of contract grant licenses to third parties to use their rights for commercial benefits which may include product endorsement and advertising. 89 Unauthorized use results in the infringement of image rights which are protected by some countries like Germany. 90 Image rights are a combination of other IP rights like trademarks and can also be covered by copyrights once a certain degree of creativity is established. 91 The scope of protection of image 83https://www. wipo. int/export/sites/www/sports/en/docs/guide-sustaining-sport-ipr-2022. pdf page 96 (last visited on 9 May 2023).
84 Id. at 101.
85 Id. at 109.
86 William Jay Gross, The Territorial Scope of Trademark Rights, UNIVERSITY OF MIAMI SCHOOL OF LAW
INSTITUTIONAL REPOSITORY (2015).1079,1075-1117.
87 Eugen Kharytonov et al., Intellectual property law in the field of sports: specifics of manifestations and features of legal regulation, ONUA.EDU.UA 538 (2021).
88 Id
89 ETW Corp. v. Jireh Pub., Inc., 99 F. Supp. 2d 829 (N.D. Ohio 2000).
90 Kahn v Electronic Arts GmbH, unreported, 25 April 2003
91 Keller v. Elec. Arts (In re NCAA Student-Athlete Name & Likeness Licensing Litig.), 724 F.3d 1268 (9th Cir. 2013).
rights can differ depending on the legal system concerned.92
TRADE SECRET LAW
Trade secrets can be critical in the sports industry to the extent that they can significantly contribute to giving a competitive advantage to teams and athletes. 93 Intellectual property law in addition to local laws on trade secrets intends to prevent “any fraudulent conduct or any act prejudicial to the interests of any competition” 94Trade secrets are IP rights on confidential information that may be sold or licensed. 95 A trade secret is any kind of information that is secret or not generally known in the relevant industry giving the owner an advantage over competitors. Various definitions are provided according to jurisdictions but the essential requirements are uniform.
● not generally known or readily accessible to persons within the circles that normally deal with all kinds of information in question, ● the information must have commercial value because it is secret, and ● the information must have commercial value because it is secret and the information must be subject to reasonable steps by its owners to keep it secret. Article 39 of the TRIPS Agreement protects trade secrets in the form of “undisclosed information”, and provides a uniform mechanism for the international protection of trade secrets. TRIPS Agreement requires the member countries to provide effective remedies for trade secret misappropriation including • injunctive relief; • damages; and • provisional relief to prevent infringement and to preserve evidence.
92 Mr. Gautam Gambhir vs D.A.P & Co. & Anr.
93 Leveraging Intellectual Property in the Global Sports Economy, GOOGLE BOOKS (2018).
94 Re: Article 151(c) International Sporting Code – Vodafone McLaren Mercedes - 13 September 2007.” Para. 8.5
95 https://www.wipo.int/tradesecrets/en/
The sports industry is data-driven which is also connected to its commercial value. This raises both IP issues and legal issues. The latter is more challenging given that athlete data is collected hence it is beyond intellectual property. The test for a cause of action for breach of confidence in the common law world is set out in the case of Coco v. A.N. Clark (Engineers) Ltd., (1969) R.P.C. 41: • the information itself must have the necessary quality of confidence about it; • that information must have been imparted in circumstances imparting an obligation of confidence; • there must be an unauthorized use of that information to the detriment of the party communicating it.
REMEDIES UNDER THE INDIAN LAW
The sports industry is made up of various key stakeholders. These various stakeholders like athletes own Intellectual property rights which face infringement. Sports event organizers primarily own sports rights. Most of the time they grant rights by way of contract to team owners, sponsors, partners, and service providers. Engaging with infringers of Intellectual Property rights by sending a notification to the infringer is the first step of action. The notice informs the infringer of the owner’s rights and demands which the infringer has to comply. The demands might include taking down all unauthorized use in case of image rights infringement, disposing of counterfeit merchandise or delivery to the sports rights owner, and providing an account of profit in case of counterfeit merchandise. Where the infringer fails to comply, legal proceedings are initiated.
Similar civil and criminal remedies for all Intellectual Property rights are available for the aggrieved parties. These remedies are general and therefore injunctions against future unauthorized use, civil raids, seizures, damages or accounts of profits, delivery up/discovery of infringing material/documents, preservation of assets, and interim injunction can be sought
and obtained by sports rights owners.96 Certain requirements must however be proven by the sports rights owners to benefit from the available remedies. For instance, under copyright infringement, the following ingredients must be available ● sufficient objective similarity between the infringing work and the copyrighted work;97 ● the infringing work must have been derived from the copyrighted work without consent.98 Copyright and trademark infringement amount to cognizable non-bailable offenses punishable with a six-month imprisonment extendable to three years or a fine not less than INR 50,000 which can be extended to INR 2,00,000. Piracy of a registered design attracts a penalty of a sum not exceeding INR 25,000.
CONCLUSION
Years ago, sport was popularly known for leisure and entertainment. The perspective changed the moment huge amounts of money were invested in sports and thus gained a new identity of being an industry. This indicates that though sport is still kind enough to offer leisure and entertainment which it was previously known for, the business aspect of it is more prominent than the former though the latter has an impact and influence on fans who are key stakeholders in the sports industry. Where money is invested in research and technology, there is an expectation of profiting from the same scheme which cannot fully be achieved without excluding competitors. The bundle of rights granted to various stakeholders who invest in sports, like title sponsors are accorded protection by the intellectual property laws and other related laws.
It is worth noting that such rights are so vulnerable to market ambushing, and cybersquatting which once they come into the picture cause a huge commercial loss to sponsors, partners, investors, and sports event organizers and eventually hinder the development of the industry. Leagues, sports event organizers, and athletes who have been keen on protecting their
96 Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia and Ors. AIR 2004 SC 186.
97 Hindustan Lever Ltd., v. Nirma Private Limited, Ahmedabad, AIR 1991.
98 Kartar Singh Giani v. Ladha Singh & Others AIR 1934, Lah 777 (DB).
intellectual properties sports data, image rights, and broadcasting rights among others have earned lots of money by excluding their competitors, licensing their rights for royalties and some have endorsed merchandise and companies compared to those who are yet to protect and commercialize their intellectual properties. The sports industry is covered by several Intellectual Property. A sports shoe can be protected by trademark rights, design rights, copyrights, and patent rights. Such protection is enforced by WIPO and domestic laws. It should be noted that there are no special laws for the sports industry but rather the general laws of Intellectual property are used to protect the sports industry. WIPO makes the protection of the sports industry on an international level possible through systems like the Madrid System for trademark rights.
In some jurisdictions like Europe, there is a centralized legal system that settles matters concerning Intellectual Property Rights via arbitration. Since Intellectual Property Rights are territorial, domestic laws are used to govern them. In India, civil and criminal remedies are available which indicates the relevance of Intellectual Property Rights in the Sports Industry.
REFERENCES
STATUTES
1. TRIPS Agreement.
2. The Patents Act, 1970.
3. The Copyright Act, 1957.
4. The Trademarks Act, 1999.
5. The Designs Act, 2000.
6. TRIP Agreement, 1995.
7. United States Copyright, 1976.
JOURNALS, ARTICLES AND RELATED REFERENCES
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6. ICC Development (International) Ltd. v. Arvee Enterprises. 2003 (26) PTC 245 (Del).
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