With the accelerated participation of the Indian economy in the global sports arena, a new bill ‘National Sports Ethics Commission Bill, 2016’ was introduced in the Parliament which aims at improving the integrity of sports in India by introducing various legislative forums and mechanisms.

The Geneva based specialized agency of the United Nations, World Intellectual Property Organization (WIPO), promotes innovation and creativity for the economic, social and cultural development of all countries through a balanced and effective Intellectual property (IP) system. The main motive of an Intellectual Property Right (IPR) is to grant capacity to a person/legal entity to protect their intellect and unique imagination for a certain period of time.

In today’s generation, sports is not just a career option or passion, but also a great business opportunity. Taking the example of Swimming goggles, the inventive technology applied to the goggles can be protected under the Patents Act, 1970; the Brand Logo printed on it can be registered as a Trademark under the Trademarks Act, 1999; the Designer of the goggles can claim the copyright under the Copyrights Act, 1957; and the physical design of the goggles can be protected as an Industrial Design under the Design Act, 2000. Intellectual Property Rights (IPR) constitutes of copyrights, patents, trademarks and designs have become a source of significant value to the sporting sector.

Following are the Intellectual Property Rights that assist in managing Intellectual Property in the sports industry.

Copyrights in Sports

Copyright secures the financing of sports. Copyrights in Sports is protected in India under the provisions of the Copyright Act, 1957. Original literary, dramatic, musical and artistic works, cinematographic films and sound recordings are the classes of works under which copyright protection is granted. Copyright law provides protection rights through contractual clauses or arrangements, enforcement, competition rights, and specific sports rights (sui generis).

Copyright subsists in the pictures or slogans in a logo, dialogues, depiction and story line in a particular advertisement of a product, computer software used in video games, and characters of a game or any graphical art contained therein. With respect to a sports event itself, the fixtures, published results, recorded visual images, commentaries, photographs of events, teams and athletes, rule books, promotional music track, etc. used in the promotion of sport, may also be subject to copyright protection.

Cinematographic works are protected under Article 2 (1) of the Berne Convention, 1906: The expression “literary and artistic works” shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as …… cinematographic works to which are assimilated works expressed by a process analogous to cinematography. As listed under Article 14 of the Berne Convention, 1906, audiovisual work is one category of “literary and artistic works. Ownership of copyright in a cinematographic work shall be a matter for legislation in the country where protection is claimed.

In IPL, copyright subsists in website layout designs and the team uniforms. With respect to broadcasting of the IPL tournament, there are bids each year to assign the right to broadcast the IPL matches. The broadcaster winning the bid holds the exclusive right to broadcast the IPL matches. Currently, the STAR India network holds the right to broadcast the IPL matches by winning the bid for INR 16347.5 Crores under a five year contract beginning from 2018. Audiovisual images of match footages as well as adjourned highlights are all protected under the Intellectual Property Rights.

India is a signatory to Berne Convention, 1906 for the Protection of Literary and artistic Works and the International Copyright Order, 1999. Thus, in order to protect international copyrights in India, it is advisable to register the copyright even though registration is not mandatory in India. This is because the copyright registration certificate serves as a “proof of ownership” in Courts, and is acted upon smoothly by them.

The Mumbai High Court (Nagpur Bench) in its recent judgement in the case of Dhiraj Dharamdas Dewani V. M/s Sonal Info Systems Pvt. Ltd (2012), held that a copyright owner cannot avail the statutory remedies under the Copyrights Act, 1957 if he does not register his copyright under the Act.

In the year 2015, a legal notice was filed against BCCI by the Indian Performing Rights Society (IPRS) for using the songs played during the matches as the music for the opening ceremony, without taking permission from the copyrights society. BCCI then had to pay the license fees for this default on its part.

Trademark Rights help in establishing reputed sports companies, including manufacturers of sport gears, sport event organizers and associations, sports teams and others. Trademarks play a major role in determining and maintaining the commercial value of a sports company.

A trademark may consist of words, letters, numerals, drawings, slogans, captions, taglines, symbols or a team name which represents a particular company or a brand, thus, the goodwill of the company is also attached to the Trademark.

Tactical use of trademark can successfully remove all the barriers that have been barring profit making opportunities from the brand/company. Team names and logos of a franchise, tag lines and other names associated with a sports team/club/association are capable of being registered as trademarks under the Trademarks Act, 1999.

For instance, the Chennai Super Kings, apart from being a cricket team (in the Indian Premier League Tournament), also sells merchandise in the form of caps, t-shirts, etc.

Class of goods must be properly recognized before registering the trademark. For example, T-shirt, which falls under the category of clothing, can be registered under class 25 in India as per the classification of goods in India.

Trademark is exclusive and inexhaustible in nature. It may be protected by filing an application for registration with a national or regional trademark office and paying the required registration fees. A trademark can be protected both nationally and globally. For claiming protection internationally, a trademark can be protected either by filing an application with the trademark office of each country in which protection is sought, or by filing an application with WIPO’s Madrid System.

The trademark holder can use it or can license it to someone else in return for payment. However, in cases of trademark infringement, both civil and criminal remedies are available under the Indian Trademarks Act, 1999. The Trademarks Act, 1999 contains statutory remedies for registered trademarks. For unregistered trademarks, the remedy of passing off is available under the common law. The anti-dilution law also provides remedy for trademark proprietors. This remedy of anti-dilution is applicable only for well-known marks. Well-known marks for their strong association in the minds of the customers have a special protection under the anti-dilution law, that is, the right to prevent dilution of their marks used by another brand or company.

Personality right is the right to administer commercial exploitation to protect one’s name, image, abilities, interests, physical attributes and biography. The operation of some sports celebrities to broaden the scope of the exploitation of their personality rights by establishing business ventures to produce, market and sell merchandise bearing their image and personality rights.

For instance, Sachin Tendulkar has registered his name as a Trademark under the Trademarks Act, 1999.

The right of publicity originates from the right of privacy. It can exist essentially in an individual or in any indication (or distinguished marks) of an individual personality such as his name, personality trait, signature, voice and so on. The right of publicity can be enjoyed by a personality by means of association with a sports event, movie, biography books, etc. Personality rights do not substantially exist in the sports event in question which made the individual personality famous nor in the corporation organizing the event.

The Personality right holder has the exclusive right to prevent any sports event to use his name for unauthorized gains without his permission. The sportsperson may also demand for indemnity or royalty in such cases. Personality rights create a clearly defined distinction between the sportsmen’s individual personality rights and his image as a part of the team is fundamental.

Popular sportsmen also get associated with highly capitalized companies dealing in active lifestyle. The sports celebrity and the developer, under certain terms and conditions of a contract, may agree to produce merchandise having names and using the personality rights of the sportsperson. For instance, M.S. Dhoni is associated with SEVEN, Virat Kohli associated with WROGN.

Recently, in 2019, Indian Cricketer Virat Kohli entered into a contract with a cartoon production company for the production of a cartoon character named ‘Super V’ that looks like Virat Kohli himself.

In ICC Development (International) Ltd. V. Arvee Enterprises and Another, 2003 VII AD Delhi 405, it was held : “Any effort to take away the right of publicity from the individuals, to the organizer of the event would be vocative of Articles 19 and 21 of the Constitution of India. No personality can be monopolized. The right of publicity vests in an individual and he alone is entitled to profit from it. For example, if any entity, was to use Kapil Dev or Sachin Tendulkar’s name/persona/indicia in connection with the ‘World Cup’ without their authorization, they would have a valid and enforceable cause of action.”

The purpose of patent rights is to protect inventions that are novel, innovative and capable of finding industrial application. Patents can be granted to both products as well as to processes of achieving a result. There have been various patent in the field of sports in the United States of America (USA) but there are no sports patents in the United Kingdom (UK) and India.

According to Article 27 (1) of the TRIPS (Patent Law), patents shall be granted for inventions, whether products or processes in all fields of technology, provided that they are new, involve a non-obvious inventive step and are capable of industrial application.

The ‘bodily movement’ of a particular sportsperson has no protection under the patents law. A fraction of the population is of the opinion that a sportsperson by his own labour develops a new move (for instance, Mahendra Singh Dhoni’s Helicopter shot), so his unique style or move must be protected under the Patents Act, 1970. On the other hand, if a patent is granted in such a case, it would be grossly unfair and it would cause the amateurs a disadvantage. It would impose restrictions on an athlete during the game and he would be unable to move freely without thinking about the consequences of it. More importantly, as per section 3(m) of the Patents Act, 1970, a mere scheme or rule or method of performing mental act or method of playing a game cannot be patented.

India specifically does not permit methods of playing games to be patented. Furthermore, India does not permit patents which may have an adverse social impact to exist.

Designs play a major role in the era of improving technology by adding commercial value to a product/event. The investments made in new designs must be safeguarded in the sports sector to enhance the peculiarity in designs of sport gears and sport equipment. In India, however, there is no such separate law that protects the Industrial designs. Industrial designs can be registered if they are satisfactorily original. Registration extends protection to the visual appearance of the product in the country in which it has been registered.

Under Class 21 of Schedule 3 of the Designs (Amendment) Rules, 2008: games, toys, gymnastics and sports apparatus and equipment necessary for the various sports which have no other specific purpose, such as footballs, skis and tennis rackets, training equipment and apparatus, equipment necessary for outdoor games can seek protection under ‘Industrial Design’. However, objects which are used in practicing a given sport and sports clothing cannot claim protection as ‘Industrial Designs’.

Almost every sports club or sports association has its own domain in order to promote themselves and interact with the target population. Domain names help in brand building and advertisement of the sports club. Indian courts treat domain names in sports as trademarks. There is no such separate method for registration of domains for the sports sector in India. Domain names are a cost effective method to reach out and create interest in the minds of the general public. Famous sports celebrities, for instance, Sachin Tendulkar has his own website: www.sachintendulkar.in

Intellectual Property Rights revives creativity and innovation in all facets of human behavior, including the Sports industry. Intellectual Property Rights provides the framework for the Sports sector to flourish and come up with new inventions that can be used to upgrade the pre-existing technologies. Companies in the Sports Sector that promise sophisticated technology, durability, and emerging facilities are more successful in catching the eye of a new customer. Thus, to ensure the widespread application of up-to-date technology in the Sports Sector, Intellectual Property Management is essential.

-Anuradha Panda

KIIT School of Law

1. http://www.ijcrt.org/papers/IJCRT2003361.pdf

2. The Copyrights Act, 1957.