Introduction:
Sports have been a fundamental part of our social life and well-being. Right from the primitive era, through the glorious days of the Roman Empire to the twenty-first century, the love for sports has never faded. It has been a popular sector across the globe bringing together culture, competition, and monetary benefits in business. Marketing and promotions through franchising, advertising, or brand value have gained enormous significance, surpassing the barriers of the traditional scope of sports.
Sports like football, cricket, car racing, or tennis have evolved into international occasions yielding huge market potential for the organizers. Popular events such as FIFA for football, NBA for basketball, and IPL for cricket have enabled the organizers to extract the maximum value of the market potential of these events. Therefore, it becomes obvious for sports franchises to tap and capitalize on intellectual property rights created by them, reserving their rights on various forms of merchandising, licenses, online games, etc. to create their brand equity and rise on their reputation.
The popularity of sports clubs and associations has become immense, requiring the protection of their intellectual properties. The authenticity of their merchandise is valued amongst their fans and other potential customers, thus IP branch capitalization has become a general norm in the sports sector. For example, the brand value of Manchester United, New York Yankees, and Chennai Super Kings is worth millions of dollars.
The enormous role of official merchandise and brand name in itself has often been recognized by Forbes Magazine through an occasional listing of valuable sports teams in terms of their economic value. Today, while forming a sports team or a club, the two most important Intellectual Property Rights utilized are Trademark and Copyright. Not only the sports associations but also the sportspersons are recognized by the team name, team logo, or other fancy taglines that are created for their identification. It is crucial to perform well on the field, but a lot of work goes off-field into endorsements and advertising of these teams and to establish their unique identity in the market.
Today, we can recognize and differentiate between Chennai Super Kings and Kolkata Knight Riders (cricket) because of their signature taglines and colors associated with each team and its merchandise. This is a part of the multiple creative elements that are put into the commercialization of these teams and clubs, thus, their intangible value needs to be protected with Intellectual Property Rights.
Trademarks in Sports
According to Section 2(zb) of the Trademarks 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. Trademarks are distinctive signs or an indicator for a particular business. They are in form of a logo or a tagline, to specify the source of origin of that particular product or service. It has become one of the most frequently created Intellectual Property associated with sports and sports teams. It assists in building the brand and establishing the market of sports businesses. It includes the names, titles of the franchise, taglines, logo, and even the name of the fandom of that sports team.
The sports team becomes capable of registering for a trademark after creating any of the aforementioned identification tools for itself. It adds brand value to that sports team or club when it is used in merchandise and sponsorships. They also assist to generate revenues through advertisements and enable the calculation of brand equity of that sports team. It is crucial to safeguard the commercial value of sports teams and the brand value, through the protection of their trademarks.
Trademarks also include the image rights of many sports personalities to generate significant profits both from leveraging their brand and from sponsorship contracts with various other brands. Sporting celebrities register themselves as trademarks, including their name, nicknames, poses, slogans, signatures, etc. For example, Usain Bolt’s Lightning Bolt pose is a registered trademark. Even without a registered trademark, elite athletes have image or personality rights to prevent unauthorized use of their name or other personal attributes.
Sourav Ganguly v. Tata Tea Ltd. [MANU/WB/0644/2008]
Sourav Ganguly (plaintiff), the former Indian Cricketer, found out that a well-established tea brand (defendant) was waging for money by offering customers the exclusive opportunity to greet him in person. The defendant had earlier hired the plaintiff as their manager. The offer indicated that the plaintiff had committed himself with advertising the defendant’s brand, however, he did not. This was challenged by the plaintiff and the court ruled that the fame and popularity of the sportspersons are their intellectual property rights and cannot be exploited without their authority.
In India, under the Trademarks Act, 1999 the sports club proprietors register their trademark through application under various classes of goods and services concerned with the use of their trademark. For example, the Chennai Super Kings or CSK indulges in the sale of official jerseys, as well as kids’ stationery goods that are registered into different classes of trademarks under the Act. It is vital to identify the suitable class for the registration of the trademark.
These trademarks are registered through a trademark agent or lawyer in exchange for prescribed statutory fees which vary from classes of goods and services. The registration of trademark ensures civil and criminal remedies in cases of trademark infringement under the Indian Trademarks Act, 1999. Apart from the registration of domestic trademarks, protection of the same trademark can be taken internationally through an application for the same via WIPO’s Madrid System.
For registered trademarks, there is the availability of statutory remedies and protection. When the trademarks are not registered, the trademark owner needs to seek the remedy under common law and provide concrete proof of the following,
- That the trademark has obtained sufficient goodwill in the market,
- That there was a misrepresentation of their trademark without their consent,
- That such a misuse of their trademark has caused them irreparable damages.
An additional remedy is available to trademark owners through the anti-dilution law. Few trademarks become immensely famous amongst the masses and become a famous mark in itself. They are given high importance under trademark law due to their strong association with their customers and strong market hold. The anti-dilution law provides special protection to such trademarks and prevents them from diluting by another product or service.
Hence, trademark protection enables the organizers of sports events to achieve multiple objectives. To ensure that the value and integrity of the event are maintained; to maximize commercial revenue from sponsorship, merchandising, and licensing agreements; to inspire confidence among customers that the product or image associated with the sporting event is authentic, and that any advertising or promotion that makes reference to the event or associated images is legitimate.
Copyright in Sports
According to Section 13 of the Copyright Act, 1957, copyright protects original literary, dramatic, musical, and artistic works, and cinematograph films and sound recordings from unauthorized uses. However, there is no copyright protection for ideas, procedures, and methods of operation or mathematical concepts. Copyright in sports vests in various elements of sporting occasions, including the art associated with the logos and trademarks, promotions, slogans, images of players, etc., which is protected in India under the Copyright Act, 1957. The registration of copyright is not mandatory in nature, furthermore, it is rather trouble-free to protect under the Indian IP statutes. The international copyrights are also protectable in India because India is a signatory to the Berne Convention, 1906 for Protection of Literary and Artistic Works, and the International Copyright Order, 1999. However, it is wise to register the copyright in India because that certificate is treated as proof of ownership in the court of law and other authorities, and accepted effortlessly.
The copyright law in India provides for the civil remedies in form of permanent injunction, damages or balances of profits, delivery of the infringing material for destruction, or by recovering the cost of the legal proceedings, etc. It also makes copyright infringement a cognizable offense punishable with a term not being less than six months extending up to three years with a fine being not being less than INR 50 K extending up to INR 2 L. The Indian Copyright Act, 1957 empowers the police authorities to register the F.I.R and to arrest the accused, search the premises of the accused and seize the infringing material without any intervention of the court.
The sports organizations additionally depend upon the revenues from broadcasting rights to stage the sporting events and engage in public outreach to sustain high levels of interest. Major sporting events are now run or aired live across the world, letting millions of spectators share the excitement of the event. Copyrights defend against unlicensed broadcasts and assist the sports-television media relationship. Broadcasting without the owner’s permission is an infringement under Section 51 of the Copyright Act, 1957. The Act did not incorporate the provision to safeguard the rights of broadcasters and live performers at first. However, Sections 37 and 38 were later repealed in 1994, and the new section was inserted to provide for the same.
ESPN Stars Sports v. Global Broadcast News Ltd. and Ors [2008 (38) PTC 477 (Del)]
The Plaintiff, ESPN Stars Sports, requested a permanent injunction against the Defendants, Global Broadcast News Ltd., to stop them from using Plaintiff’s footage in upcoming India-Australia Test series, T20-series, and ODIs including Sri Lanka, India, and Australia without obtaining prior permission or in violation of the terms and conditions. The appeal relied on the fact that under the Copyright Act, 1957, the broadcasting organizations’ rights are treated as related rights. Subsequently, these rights are handled only under Sections 37-39A of the Act.
Since Section 39A makes no mention of the applicability of Section 61 on broadcasting rights and infringement actions, the latter is not pertinent to an infringement action filed by an exclusive licensee of a broadcasting organization. Henceforth, the previous court made an error in determining the application of Section 61 on infringement suits sought by broadcasting companies acting as sole licensees.
Star India Pvt. Ltd. & Anr. v. Haneeth Ujwal & Ors. [2014 (60) PTC 504 (Del)]
Plaintiff sought before the court that the Internet Service Providers obstructed over a hundred websites that broadcast content held by Star India Private Limited. It was argued that blocking particular URLs containing pirated content would be insufficient because web pages could readily telecast the infringing contents with certain modifications to the characters of the URL.
There was difficulty in the identification of the perpetrators, the Hon’ble Delhi High Court delivered a 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.
Conclusion
Because of the intense competition in the sports sector to commercialize, various sports clubs, associations and organizations have participated in optimum use of the intellectual property rights for their business to grow with protection. Presently, merchandising is the most efficient form of business where these sports associations and clubs obtain a larger market share. Therefore, while developing their merchandise business, it becomes essential for the proprietors to understand the legal intricacies and the benefits of trademark, copyright, and other IP Laws.
References:
- Sports and Branding, WIPO, https://www.wipo.int/ip-sport/en/branding.html
- Christine Chiramel, Intellectual Property Rights in Sports- Indian Perspective, Mondaq (Feb. 17, 2012), https://www.mondaq.com/india/trademark/164974/intellectual-property-rights-in-sports-indian-perspective
- Sharda Kalamadi, Intellectual Property and the Business of Sports Management, Vol. 17 Journal of Intellectual Property Rights, pg. 437 (2012).
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