Intellectual Property Rights and The Sports Industry

Introduction:
Throughout history sport has been viewed as merely a method of recreation, expression
through physical actions and as a breeding ground for competitiveness. However, sport has
become so much more than that in modern times - it is now a business, generating an
immense amount of money, employment and entertainment to all those stakeholders
involved.1 With this growth and expansion of the idea of sport has come the advent of
‘sports law’. Law that ties itself in with sports are of various kinds and can be applied in
numerous aspects of sport.

Intellectual property rights stem from the idea that intangible forms of property may at
times hold great value to the creator of the same and to other stakeholders, and so in order
to protect such value, the individual is granted certain protective and exclusive rights over
said property.2 The Personhood theory states that intangible property is protected as it is
considered to be a part of the creator’s personality, they are manifestations of one’s
intellectual expressions, and this in-turn creates an emotional and psychic bond between
creator and property.3

Given the modern circumstances, would it be justified for an athlete to state that his
celebration should be considered a form of intellectual property requiring protection from
usage by other athletes, and what other aspects of the sports industry may warrant
intellectual property protection? This paper looks to analyse as to whether a nexus may be
drawn between the concepts of intellectual property laws and the sports industry and
thereby determine the role of intellectual property in the sports industry.

Subject Matter and Role of Intellectual Property Laws:

The sports industry is covered under intellectual property laws as the extent to which these
laws can be utilized and aspects of the industry fall under subject matter for intellectual
property laws. The balance that intellectual property laws aim to achieve is to provide legal
protection to maximize incentives to indulge in creative activities while also trying to
minimize the interference with the free flow of ideas in general. 4 Thus, the main difficulty in
extending the protection towards other subject matters is to strike a proper balance. 5 In the
field of sports, this balance would be to protect the economic interests, the image and
reputation of an athlete, as well as those inventors creating technological advancements to
improve the game, while also ensuring that the free flow of ideas of various other persons
1
James J. Zhang, The Sport Industry in Growing Economies: Critical Issues and Challenge, International Journal
of Sports Marketing and Sponsorship, March 2018.
2
Justin Hughes, The Philosophy of Intellectual Property, 77 Geo. L.J. 287, Georgetown University Law Center
and Georgetown Law Journal, 1988.
3
Yoo, Christopher S., "Rethinking Copyright and Personhood" (2019). Faculty Scholarship at Penn Law. 423.
4
Andrew Beckermen-Rodau, The Problem with Intellectual Property Rights: Subject Matter Expansion, Volume
13, Issue 1, Yale Journal of Law and Technology, 2011.
5
Bonito Boats v. Thunder Craft Boats, 489 U.S. 141, 146 (1989).
involved in the sport is not hindered to a large extent by the said protection, this is the
crucial role to be played by intellectual property rights.

One can analyse different forms of intellectual property protection to understand how this
role is being played out for different aspects of the sports industry falling under the subject
matter of intellectual property protection.

1. Trademark:

The Trade Marks Act, 1999 provides for certain requirements to be fulfilled in order for a
mark to be viable and registrable as a trademark such as – the mark must have the
capability to distinguish one’s goods or services from another’s; and the mark must be
capable of being graphically represented.6

Over the course of time the usage of the moves by an athlete would create a secondary
meaning to be attached to the move and provide it with an acquired distinctiveness 7,
thereby creating a well-known mark.8 Graphical representation of a mark essentially means
that the mark should be capable of being reduced to a paper form 9 or digital form.10 This is
done in order to enable the public to easily identify the trademark and also to ensure that
other traders are aware of and can identify the other marks that have been registered
already.11 This allows for the concept of ‘non-conventional’ trademarks such as motion
marks.12 A motion mark is a moving object or a series of motions that is utilized by a
company or an individual.13

Sports moves may also be described as a series of motions that can be utilized by an athlete
or an agency to gain a consumer base or as a marketing strategy. Thus, one may interpret
motion marks to include sports moves as well. While the concept of motion marks is not
significant in India, one may argue that it need not limit itself to only animated logos, but
real-life movements as well.

Other aspects of the sports industry that satisfy the requirements of trademark and have
attained protection already include the names of sporting associations such as the
International Cricket Council, FIFA (Federation Internationale Football Association) etc. as
well as logos, taglines, captions and team names. Team names and symbols create a level of
association that the public and the fans of the sport feel towards their team and so creates a
following for any given team, club, player etc. This popularity and brand image also result in

6
Section 2 (zb), Trade Marks Act, 1999.
7
Section 9 (a), Trade Marks Act, 1999.
8
Section 2 (zg) Trade Marks Act, 1999.
9
Swizzels Matlow Ltd.’s Appeal, (1998) RPC 244 (United Kingdom).
10
The Trade Mark Rules 2017, R. 2(1)(k).
11
Arka Majumdar, ‘The Requirement of Graphical Representability for Non-Conventional Trademarks’, 11, 314,
Journal of Intellectual Property Rights (JIPR) (2006).
12
V. K. Ahuja, Law Relating to Intellectual Property Rights, 281 (3rd Ed., 2017).
13
Archi, Registration of Motion Mark as Trademark, 2018, https://blog.ipleaders.in/motion-mark-as-
trademark/.
monetary profit through advertisements, brand ambassadors, goodwill and reputation of
the sponsors etc.

Therefore, sports moves or celebrations can be classified as a subject matter of trademark

law as it fulfills the criteria of distinctiveness through having acquired distinctiveness, and
may also fulfill the criteria of graphical representation as a non-conventional mark.
Moreover, various other aspects of the sports industry have already been internationally
agreed upon to fall under trademark law and warrant protection under the same.

2. Patent:

Patents are a form of intellectual property protection given to inventions that fulfill certain
criteria.14 The said criteria applicable is the NUNs test namely, the invention must be novel,
must have utility and must be non-obvious to a person experienced in the field.

a) Novelty:

This requirement states that the subject matter of the patent must not have been
published, claimed or used before the application of the patent. The anticipation of a patent
renders it to be no longer novel. 15 The creation of various gadgets and methods such as the
Decision Review System (DRS) in cricket and the VAR (Video Assistant Referee) in football
are examples of novel inventions created to improve the conduct of sports and they fulfill
the requirements of being novel and having not been anticipated.16

Various other jurisdictions around the world have considered the same and granted
patents17, and these inventions are being constantly improved upon or being replaced with
a newer and more effective solution. Thus, one may find it easy to prove the novelty and
uniqueness of a given sports invention in order to receive a patent for the same.

b) Utility:

This criteria states that the invention must be useful, capable of industrial application and
the repeated use of the invention must yield certain results. The concept of utility is to
promote the creation of ‘useful arts’18 and this is liberally interpreted to mean that the
invention capable of being beneficial in some form. It can be argued that sports inventions
indeed have beneficial utility as the usage of such creations may assist in the meeting of a
useful end, i.e. conducting the sport in a fair manner. Moreover, certain inventions such as a
slow-motion replay or inventions that allow for a more detailed analysis of events can prove
useful in terms of entertaining fans and drawing in audiences.19

14
Section 2 (1) (m), Patents Act, 1970.
15
Windsurfing International v. Tabur Marine, [1985] RPC 59.
16
Abhay Singh, Can Sports Moves be Patented under the Indian Patents Act?, August 4, 2018,
https://kheladhikar.com/2018/08/04/can-sports-moves-be-patented-under-the-indian-patents-act/.
17
Carl A Kukkonen, pg 822; D. Miller, US Patent Number 5,616,089 “Dominant Hand Putting Method”
18
Jeffrey A. Smith, It's Your Move - No, It's Not - The Application of Patent Law to Sports Moves, 70 U. COLO. L.
REV. 1051 (1999).
Industrial application signifies that the invention must be capable of being used in an
industry or can be made in an industry. 20 This aspect of patents is to ensure that inventions
are tangible and not abstract in nature. While sports moves are likely to fail in this area 21,
sports inventions are tangible creations and do have the capability of being industrially
applied.

c) Non-obviousness:

This criteria states that the invention must involve a substantial technological advancement
to existing knowledge and must have economic significance which is not obvious to a person
skilled in the art or subject matter.22 This essentially means that the invention must have an
inventive step.23

Sports inventions are certainly capable of being non-obvious as people are constantly
inventing new methods or creations to enhance their game. Inventions such as HotSpot
used in cricket to identify the points of contact between the bat and ball using heat
signatures is an example of the utilization of a concept of science in sport, which can be
considered as unexpected or non-obvious.24

Thus, sports inventions fulfill the requirement of usefulness, they are novel, non-
obviousness and are capable of industrial application and for those reasons, one can
conclude that sports inventions do fall under the subject matter of patent protection.

3. Copyright:

The Copyright Act, 1957 in India grants copyright protection to all things that fall under the
definition of ‘works. This mean that literary, dramatic, musical, artistic, cinematograph films
and sound recordings may be given such protection in India. 25 Based on this definition, the
sports industry has many aspects that fall under copyright protection such as the artwork
connected to the logos and trademarks, promotions, slogans, sports moves 26 and images of
players.27

In the sporting industry there are numerous stakeholders and persons involved that are
constantly creating works that may require copyright protection. Sporting stars like Kevin

19
Giuliana R Garcia, He Shoots, He scores…and Receives Copyright Protection? How the Current State of
Intellectual Property Law Fumbles with Sports, 11 U. Denv. Sports & Ent. L.J. 81 (2011).
20
Section 2 (1) (ac), Patents Act, 1970.
21
Jane Rapin, A Critical Analysis of the Arguments for and Against the Granting of Patent Rights Over Sporting
Apparatus and Sports Moves.
22
Graham v. John Deere Co., 383 U.S. 1 (1966).
23
Section 2 (1) (ja), Patents Act, 1970.
24
Jeffrey A. Smith, It's Your Move - No, It's Not - The Application of Patent Law to Sports Moves, 70 U. COLO. L.
REV. 1051 (1999).
25
Section 2 (y), Copyright Act, 1957.
26
Henry M. Abromson, The Copyrightability of Sports Celebration Moves: Dance Fever or Just Plain Sick, 14
Marq. Sports L. Rev. 571 (2004).
27
Christine Chiramel, Intellectual Property Rights in Sports - Indian Perspective, 2012,
https://www.mondaq.com/india/trademark/164974/intellectual-property-rights-in-sports-indian-perspective.
Pietersen, Andre Agassi, Tyson Fury, Ricky Ponting etc. have all written books about their
sporting careers. This may fall under literary works requiring copyright protection. 28 The
musical composition of various theme songs for t20 franchise teams such as the Royal
Challengers Bangalore, Mumbai Indians. Rajasthan Royals, Trinabago Knight Riders and
numerous other teams all have their own special theme song which can fall under the
category of musical works and sound recordings.29

Thus, while registration of copyright is not mandatory in India and many sports persons do
not file for copyright protection, it does not take away from the fact that there are
numerous forms of works within the sports industry that satisfy the requirements for
copyright protection.

Conclusion:
As highlighted in the paper, there are numerous aspects of the sporting industry from
players reputation, moves, celebrations, inventions that make the sport better to artwork,
logos, musical creations that all warrant intellectual property protection of one form or
another. The various sporting company logos, tag lines, slogans etc. all fall under the
requirements of trademark protection. Inventions that enhance the games played for both
athletes as well as the viewers such as Snicko, DRS, VAR etc. fulfill the criteria of the NUNs
test and can be granted patent protection. The literary, musical works and sound
recordings, as well as certain cinematograph films that may be made within the sports
industry satisfy the demands of copyright protection. Thus, each form of intellectual
property protection has a role to play in the protection of different aspects and components
of the sports industry.

This new commercial avatar of sports that has evolved over a long period of time with core
issues like licensing, franchising, contractual issues etc. makes it so that the involvement of
intellectual property law in the sports industry is inevitable 30 and so is the need for domestic
and international reform.31 The large amounts of revenue that sports generate in modern
times means that there is a large number of stakeholders and financial investors that rely on
the assets and aspects of their industry. It is therefore necessary that these assets and
various components of the sports industry are granted as much protection as there is
indeed a very clear and profound nexus between the sports industry and intellectual
property rights to help fulfill the role of maximizing incentives to indulge in creative
activities while also trying to minimize the interference with the free flow of ideas in
general.

28
Section 2 (o), Copyright Act, 1957.
29
Section 2 (p) Copyright Act, 1957; Section 2 (xx), Copyright Act, 1957.
30
James J. Zhang, The sport industry in growing economies: critical issues and challenge, International Journal
of Sports Marketing and Sponsorship, March 2018.
31
Graeme B. Dinwoodie, The Integration of International and Domestic Intellectual Property Law Making, 23
Columbia-VLA J.L. & Arts 307 (1999).