ROLE OF

INTELLECTUAL
PROPERTY RIGHTS IN
SPORTS
BY CHITRA PRAKASH
MNLU, NAGPUR (3rd
YEAR )
 SPORTS IN INDIA

 Entertainment, economic
 Fast rising as preferred venue for major sporting events
 No specific statute
 State list in constitution(entry 33)
 Ambiguity with respect to certain areas due to lack of a specific law
 Need to make sports part of concurrent list
 IPR & SPORTS LAW
 Role of separate identity in building and marketing a team
 Mumbai Indians, Nike
 Sports clubs as perfect example of brand capitalization e.g., Real Madrid, New York Yankees, CSK, etc.
 Broadcasting, merchandise, players associated, logos, branding and logos-everything attracts trademark
 Intersection of sports and IPR
 Categories:
• Copyright
• Patents
• Trademark
• Ambush marketing
 PATENTS
In India, the patent law seems to be much narrower than the patent regime in the U.S. Furthermore,
the Indian laws provide for a higher threshold while considering any invention for patent protection.
India seems to completely ousts the possibility of such protection to a sport moves as it might lead to
an unfair advantage in the game.
MS Dhoni’s “the Helicopter Shot” or even Harbhajan Singh’s “Doosra”
According to Article 27(1) of the TRIPS Agreement, which is also incorporated into Indian Patent
Law, a patent can only be awarded if something is novel, non-obvious, and has industrial use. When it
comes to sports patents, the first criteria of novelty must be met. This means that even if a player has
invented a method or a move to play or invented equipment to improve the game, he must first obtain
a patent on it before using it in front of other players. It mandates the patent application to be filed
before the public display of the move is done.
If it is not, the move is said to be in public domain - cannot be patented
According to Section 3 (m) of Indian Patents Act, 1970 - (m) a mere scheme or rule or method of
performing mental act or method of playing game is not an invention.
 COPYRIGHT
When it comes to sports, copyright mainly protects an organisation's broadcasting rights.
Copyright is also applicable to the artwork in the logo of the teams, literature in promotional material,
etc.
In sports, copyright can be found in a number of areas, such as artwork linked with logos and
trademarks, promotions, slogans, images of players or events, and so on, all of which are protected in
India under the Copyright Act, 1957.
 COPYRIGHT

Broadcasting
Section 2 (dd) defines broadcast as communication to the public— (i) by any means of wireless
diffusion, whether in any one or more of the forms of signs, sounds or visual images; or (ii) by wire,
and includes a re-broadcast
Section 37 gives the broadcasting organisation broadcasting reproduction rights.
Section 51 provides that broadcasting without owners consent would be considered as infringement
Section 55 provides civil remedies for copyright
 COPYRIGHT

Performance rights
Section 2(q) defines performance and Section 2(qq) defines a performer.
 Performance can be understood as a live presentation by one or more persons. The person making
such a performance is a performer.
 Section 38 discusses the performer’s rights including both exclusive rights and moral rights of
performer. Provides for protection of performers rights.
 Section 39 provides for acts that do not infringe broadcast production right or performers rights
and 39 A provides for certain provisions that apply in case of broadcast reproduction rights and
performers rights.
 CASE LAWS

Star India Pvt. Ltd v Piyush Agarwal

Facts: the plaintiff broadcasted matches organised by BCCI and had been given rights for the same. There was an agreement between the two and
the agreement also gave the plaintiff exclusive rights to provide value added services through SMS for 72 hours. The defendant Piyush Agarwal
was the CEO of Cricbuzz . Cricbuzz also provided the same SMS value-added services pertaining to cricket matches that were broadcasted by
plaintiff. Thus, the plaintiff claimed infringement of its exclusive rights.

Issues:

1. Whether the rights claimed by the plaintiff are covered under the Copyright Act.

2. Whether the plaintiff has exclusive rights of the information which is made available in public domain after its first broadcast of the
audio/visual recording.

Judgement:

1. The court laid that the hiatus of two minutes is required with respect to the defendants using the content/information in the first audio and/or
visual broadcast of the plaintiff.

2. defendant should not use the original audio and/or visual recording except for fair dealing, but so far as the information which comes in public
domain, there cannot be any bar upon the defendants to use the same.

3. As the news is in public domain it cant be monopolized, hot news rejected

 CASE LAWS
Star India Private Limited, and another versus Haneeth Ujjwal and others

Facts: the plaintiffs are leading sports broadcaster and have the rights to various sporting events or
properties and they are also the owners office network of sports, television channels and by permission of
MIB. They have the sole in exclusive right to broadcast and distribution channels in India that are a part
of Star sports channels. These are P channels and carry various exciting sporting events. The plaintive
prayed that over hundred websites in broadcasting content owned by Star India Private Limited be
blocked by internet service providers. These websites were located across the world.

Judgement:
 difficulty in the identification of the perpetrators
 John Doe/ Ashok Kumar order restricting the perpetrators from telecasting, redistributing, displaying,
and sharing for illegal downloading, hosting, and running via telecommunications.
 Under Section 65B, any person who deliberately supplies, imports for redistribution, telecasts, or
transmits copies of any work or performance in the community without permission is subject to
imprisonment extending up to two years and with a fine.
 CASE LAWS
ESPN Stars Sports v. Global Broadcast News Ltd. and Ors
Facts: ESPN, the exclusive broadcaster for various cricket matches from December 26, 2007 until March 8,
2008, sought an injunction against several broadcasters to prevent them from broadcasting the footage of the
matches on grounds that it violated its broadcast reproduction right under Section 37 of the Copyrights Act,
1957.
Judgement:
Justice S. Ravindra Bhat held: “As observed in Vosper, whenever a court has to see whether a particular
conduct is fair dealing or not, the context, the length of the original work borrowed, and the purpose, can
never be ignored. No universal rule or standard exists; cases have to be decided on the peculiar facts. What
may be unfair in one context may be perfectly fair in another and vice versa. There is a certain amount of
elusiveness in evolving a thumb rule”
Copyright and broadcast reproduction rights were independent of each other under Section 37 of the (Indian)
Copyright Act. Live telecast of a sporting event was nothing but an audio-visual recording, the said element
could be protected as a cinematograph film under Section 13(b) of the Act.
 Sections pertaining to the judgement
 13(b) – cinematograph films are works on which copyrights subsists.
 37 – broadcasting reproduction rights
 Live sports could be protected under section 13(b) thus ending ambiguity
 TRADEMARK

• Distinctive sign or indicator representing a business or trade.

• Logos, captions, taglines, slogans, team names.
• Essential for sports teams and clubs.
• Indicates association with the brand.
• Helps in sponsorship, by creating distinct identity for the brand or organsiation.
• Identification, brand value.
• protected in India under the provisions of Trade Marks Act, 1999.
 TRADEMARK
• According to Section 2(zb) of the Trade Marks Act, 1999, a trademark means a mark capable of
being represented graphically and which is capable of distinguishing the goods or services of one
person from those of others and may include the shape of goods, their packaging, and combination
of colors.
• Section 135 of the Trade Marks Act, 1999 provides for both civil and criminal remedies against
infringement or for passing off.
 TRADEMARK
Sourav Ganguly v Tata Tea Ltd.
Landmark case pertaining to celebrity rights and separating their public and personal identity.
Facts: the plaintiff had been employed as a manager for the defendant brand. However, the defendant
without the plaintiff’s consent started promoting their 1 kg tea packet by offering the consumers a
chance to congratulate the plaintiff through a postcard which was there inside each packet of tea.
These consumers could also get a chance to meet and greet Sourav Ganguly personally. The plaintiff
had no prior idea about such a promotion and sued Tata tea for unlawfully using his name for
promotion of the product without his consent.
Judgement: the court ruled in the plaintiff’s favour and stated that his fame and popularity is his
intellectual property. It cannot be exploited without his authority.
 TRADEMARK
ICC Development (International) Ltd. v. Arvee Enterprises
Facts: ICC development international Ltd (IDL) had the power to own in control commercial rights relating to ICC events.
Ideal was the organiser of ICC World Cup held in South Africa, Zimbabwe and Kenya in 2003. They had created a distinct
logo and a mascot and filed registration of trademark in several countries, defendants were an authorised dealer for sale of
goods manufactured by Phillips and they were offering cricket. World Cup tickets as prices using the slogan Phillips: Diwali
Manao, World Cup jao. They had also inserted a pictorial representation of the ticket with an imaginary seat and gate
numbers in cricket World Cup, 2003. IDL filed a suit for temporary injunction, restraining the defendants from publishing
any advertisement associating themselves with the plaintiff and cricket World Cup in any manner.
Judgement:
 Philip slogans merely showed the purchasers that they might win a ticket in travel package to go see the World Cup.
Philips did not use IDI’s mascot or logo. There is no likelihood of confusion in the mind of the purchasing public that
Phillips was a sponsor or licensee. Thus the basic criteria for passing off action or for unfair trading were not met.
 Right to publicity has evolved from right to privacy and applies only to an individual and thus it does not extend to non-
living entities. Even though the athlete acquires the right of publicity by associating themselves with the event, the right
of publicity could only be vested in favour of the individual athlete, who is a living person.
 TRADEMARK

Mahendra Singh Dhoni and Rhiti Sports Management Private Limited v David Hanley
Facts: A person used MS Dhoni as his domain name, it was identical to the MS Dhoni trademark. He
neither had legitimate interest in the domain name nor could provide an explanation behind why he
chose this particular domain name. The website frequently used the MS Dhoni trademark to raise
advertising revenue through the use of sponsored or click through links.
Judgement: The WIPO, arbitration and mediation centre observed that since this was done strictly for
commercial purposes, without any alternative explanation, the defendant was a trademarks squatter
who registered the domain name in bad faith and thus, the well-known standard is applied here. The
registration of the domain name <MS dhoni.com> by respondent was in violation of petitioner, a
reputed Indian cricket player. <MS Dhoni.com> was confusingly similar to Dhoni’s registered
trademark of his own personal name.
 AMBUSH MARKETING
• Ambush Marketing is a mechanism of marketing whereby companies try to gain mileage out of
any popular sports event even though they are not officially associated with it.
• Types: direct and indirect ambushing
• Direct ambush marketing
• unauthorized usage of symbols, words, logos, designs, and so on, thus stealing the exposure of
competitor.
• Example 1. During the 2012 London Olympics, Beats Electronics was not a sponsor of the
Olympics. Taking advantage of the audience of Olympic games without paying anything, the CEO
of Beats gifted athletes customized headphones with the colors of their irrespective home flag.
This was observed by many people and even lots of athletes tweeted about this and Beats got
millions to see their product without even paying a dime.
• Example 2. 2008 UEFA European Championship. Carlsberg, a beer brand was an official sponsor
of the tournament. They gave out free branded t-shirts and headbands of Carlsberg in spite of such
a thing not being a part of their contract agreement, by doing this they infringed the rights of other
sponsors who agreed on giving out free products.
 AMBUSH MARKETING
Indirect ambush marketing
• brand attempts to indirectly take advantage of the marketing efforts of another brand.
Example 1. During the 2012 London Olympic games, an Irish Gambling chain named Paddy Power put up
billboards across London claiming themselves to be the “official sponsor of the largest athletics event in London”
for that year. In a smaller print, they put a disclaimer as well which makes it clear that they were referring to the
French Town of London and not referring to the Olympics. They were referring to a traditional egg and spoon
race in London, which they were actually sponsoring. The International Olympic Committee (IOC) even tried to
sue Paddy Power for their cheeky ambush, but they failed.
Example 2. A marketing distraction was set up by Nike during the 1996 Olympics in Atlanta. Reebok was the
official sponsor of that year’s Olympic games. What Nike did is that they set up an alternative athletes village
which overlooked the Olympic park a distance of about one mile away from the Official Olympic athlete’s
village. They gained so much attraction not only from the random people but from the athletes as well.
 AMBUSH MARKETING
Claims against ambush marketers:
• Passing off:
(i) it has an established reputation or goodwill with reference to the event in question
(ii) the third party has made a misrepresentation by way of its marketing, which has led the public to believe that
there is a connection with that party and the event organizer
(iii) it has suffered or is likely to suffer damage as a result of this confusion.
• Trademark Infringement : If the event organizer has a registered trademark, and that registered trade mark or
similar mark is used by an unauthorized sponsor, then the event organizer can commence proceedings for
trademark infringement and if successful, he will be entitled to restrain any further infringement and/or to a
payment of damages or an account of profits arising from the infringement
• Copyright Infringement: Where an event organizer has a logo created in connection with a specific event, that
logo may be sufficiently original to attract copyright. Any unauthorized replication of that logo shall infringe the
copyright subsisting in the logo.
Section 135, Trade Marks Act mentions reliefs in suits for passing off
Section 51, Copyright Act provides when copyright in a work would be considered to be infringed
Section 29, Trade Marks Act provides situations in which a registered trademark would be infringed.
 AMBUSH MARKETING

Gautam Gambhir v D.A.P & Co. & Anr

Fact: cricketer Gautam Gambhir claimed personality rights in his name when he found out that the
Defendant was running restaurants with the tag line 'by Gautam Gambhir' while he had absolutely no
connection with the said restaurants. The cricketer alleged that his 'Personality Rights' had been illegally
violated by the Defendant.
Judgement:
• Plaintiff's name had not been commercialized by the Defendant.
• nothing had emerged on record to show that because of running of the restaurants by the Defendant with
the tag line 'by Gautam Gambhir’ any loss had been incurred to the Plaintiff in his field i.e., cricket
• It cannot be inferred that the defendant ever represented to the public, that the said restaurants were
owned by the plaintiff, what he was associated with them in any manner.
• The defendant is entitled to carry on his business in his own name.
• The said restaurants being run by the defendant after getting necessary permission from authorities.
 AMBUSH MARKETING

National Hockey League (NHL) v Pepsi-Cola Canada Ltd.

 The licensing body of the NHL, National Hockey Services League (NHSL) entered into a contract
with Coca-Cola for the official sponsorship of the event in 1989. Therefore, Coca-Cola had the rights
to the NHL symbols for promotional events in the USA and Canada. However, Coca-Cola did not
obtain the rights to advertise during the broadcast in Canada during the televised NHL games.
Television rights were controlled by NHL and not the NHSL and the same was sold to Molson
Breweries of Canada Ltd. in 1988 in a 5-year long contract. Molson Breweries further sold the
contract to Coca-Cola’s biggest competitor, Pepsi-Cola. Pepsi released an advertisement campaign on
television, without using the NHL symbols but the advertisement was about a hockey contest.
 The court said that even though aggressive, the advertisement by Pepsi is not unlawful and the NHL is
at fault for not protecting its official sponsor. No infringement of registered trademarks was found.
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