Sports and IPR

Introduction

The sports industry is responsible for creating plethora of employment opportunities while also
having a major hand in creating communities of players and fans across the world. The sports
industry has a growing impact on economy of the world, employment, investments in public
infrastructure and so on. The sports industry is now a multi-billion-dollar industry with huge
commercial opportunities and corporatization of sporting events.

The Indian market is a perfect opportunity to capitalize for the major players in the sports organising
sector as India has come up with various marketable opportunities of its own which has raked in
revenue in millions. Ideas like the Indian Premier League of cricket, one of the most popular and
most watched cricketing events in the world.

These ideas need a strong foundation in IPR to maximise their and preventing 3rd parties from
capitalising on the rights owned by the respective companies that organise and conduct sports.

For example, in the case of broadcasting, it is very easy for 3rd party websites to stream, post and sell
sports related rights.

TRADEMARK

A trademark

• word

• name

• symbol

• device or

• any combination thereof

- which is used to distinguish the goods of one manufacturer from those manufactured –

- to indicate the origin of the goods.

 provides businesses with an incentive to produce superior products and services and at the
same time protect consumers from deceptive producers.

To gain trademark protection

- a mark must be

• Distinctive

• used commercially

• and need not be functional.

- Marks that are fanciful and suggestive - inherently distinctive.

 goodwill of mark owners

Sports- Protected marks include the teams, leagues, and unions “

 • Names

• logos

• symbols

• emblems

• designs

• uniforms

• likenesses

• visual representations

• characters, and the like.

- Advertising law [ use without permission]:

Advertising law in relation to trademarks involves the regulations and legal principles governing how
trademarks are used in advertising and marketing. This intersection ensures that trademarks, which
identify and distinguish the goods or services of one entity from those of others, are used truthfully
and fairly in promotional activities

History:

 Topps Chewing Gum Company for the first time entered into a formal licensing agreement
with Major League Baseball to secure its right to use Major League team names and
trademarks on its baseball cards.

 Since sports teams were the producers of sporting events and not consumer goods, it was
not at all obvious that team names or logos were protected by trademark law, except to the
extent necessary to prevent confusion as to the real identity of a team participating in a
particular game.

 The “problem” of unlicensed goods appears to have arisen in the late 1960s and early
1970s, when it became apparent that there was much greater consumer demand than
previously realized for items of clothing bearing the name or logo of college and professional
sports teams.

 In the early 1970s, professional teams and leagues began to file lawsuits against
manufacturers who were making use of teams names and logos without license. But in
these cases they allege - not false adverting or unfair competition [ but violations of any
trademark statute provided under].

 Boston Prof Hockey Assn. v. Dallas Cap & Emblem Mfg., Inc (1975)

- courts discovered that the existing trademark statute provided the holder a right against dilution as
well as against fraud or passing off.

-marks - sports teams to reap large profits.

• Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., [1979]

- the plaintiffs asserted that their protected mark was infringed and diluted by the defendant’s
advertisement and exhibition of the film “Debbie Does Dallas.”
- the defendant asserted that the public did not believe that the Dallas Cowboys football team or its
cheerleaders produced the movie

- the court found the statute was satisfied if it can be implied that the offending item was sponsored
or approved by the plaintiffs. The fact that the plaintiff held no registered trademark in the items
complained of did not fail to bar recovery.

-The court held that a combination of white boots, white shorts, blue and white star-studded vest
and belt worn by plaintiff’s cheerleading group was worthy of a trademark and a likelihood of
confusion was sufficiently established to entitle plaintiff’s cheerleading group to a preliminary
injunction prohibiting defendants from distributing or exhibiting “Debbie Does Dallas.”

 Jaguar Cars, Ltd. v. National Football League (1995)

- car maker sought to enjoin one of the new expansion franchises in the National Football League
(NFL), from using the name “Jacksonville Jaguars”. The case was settled after the team agreed to
change its mark to an enlarged jaguar head instead of a partially pouncing jaguar that the car
company felt was too close to their own bounding feline logo.

• Boston Professional Hockey Association v. Dallas Cap & Emblem Manufacturing.

- The National Hockey League (NHL) and thirteen of its member hockey teams sought to enjoin the
defendant from manufacturing and selling patches which depicted NHL trademarks. The NHL had
authorized NHL Services (NHLS) as its exclusive licensing agent. NHLS thus licensed to various
manufacturers the right to use the team symbols on various merchandise. NHLS had granted Lion
Brothers Company an exclusive license to manufacture such embroidered emblems.

- sold such emblems without permission.

- issue as whether “the unauthorized, intentional duplication of a professional hockey team’s symbol
on an embroidered emblem, to be sold to the public as a patch for attachment to clothing, violates
any legal right of the team to the exclusive use of that symbol.”

The court reversed the district court’s finding that there was no likelihood of confusion.

- team had an interest in its own individualized symbol and was entitled to legal protection against
such unauthorized duplication.

• The confusion requirement was met since “the defendant duplicated the protected
trademarks and sold them to the public knowing that the public would identify them as
being the teams’ trademarks. The certain knowledge of the buyer that the source and origin
of the trademark symbols were in the plaintiffs satisfies the requirement of the act.

National Football League Properties, Inc. v. Consumer Enterprises, Inc (1975)

- The court recognized that the plaintiffs had a property right in the team symbols, which entitled
them to protection. This right accrued as a result of the teams acquiring goodwill and a strong
secondary meaning in their marks.

- defendant contended that “no trademark infringement has occurred because the emblems are
merely decorative ornaments and do not identify sponsorship by plaintiff or the NFL or the
member clubs.”
 • The court rejected this argument - noted that - defendant is in the business of manufacturing
and selling emblems; it can place any design it wishes on the emblems. However, it has
chosen to copy the marks of the NFL teams because they are very distinctive and are
associated with highly successful football teams. Therefore, we conclude that the
trademarks of the teams copied by defendant indicate sponsorship or origin in addition to
their ornamental value.

• - secondary meaning has been interpreted by the Supreme Court as establishing

“in the minds of the public, the primary significance of a product feature or term is to identify the
source of the product rather than the product itself.”

- The prime element of secondary meaning is “a mental association in buyers’ minds between the
alleged mark and a single source of the product”.

• National Football League Properties, Inc. v. Wichita Falls Sportswear, Inc (1982)

- Plaintiff NFLP sought to enjoin defendant Wichita Falls Sportswear, Inc. from manufacturing and
selling NFL football jersey replicas. The replicas used the name of NFL teams or their nicknames on
the jersey.

- secondary meaning in the marks of the NFL teams court - examined whether a likelihood of
confusion existed.

• - found that the replicas were physically similar to official NFL football jersey

• the goods were sold in similar markets, and there was evidence of actual confusion.

• the intent of the defendant - to create confusion as to authorization or sponsorship.

 Thus, the court found that the defendant infringed on the plaintiff’s rights as the trademark
owner by causing consumer confusion as to who produced the goods.

Ownership of rights

In sports events, the individual participants do nothing to organize or run the event. They simply
show up to play, and leave the marketing tasks to the event managers. Also they never own or
control the facility in which the event is played. The individual match or game is merely a part of the
large scheme and derives most of its value from being part of that large tournament or season.

• So normally, in sports the Intellectual Property rights at issue are owned by the individual
teams. And when such teams own these rights, the only way for the league to sell the rights
is if the teams assign their individual rights to the league, which they pool and sell them
collectively.

• And if the rights are not initially the property of the teams but rather of the league, then the
leagues selling of those rights does not involve pooling or collectivizing anything.

- organising - league games are an integral part of a large integrated product that is owned by the
league as a whole, not simply the athletes or teams that play in a game.

TRADEMARK AND OWNERSHIP

 • Separate corporations established by each league have the Exclusive right to license for
commercial purposes the use of the names, Logos, symbols, emblems, signs, uniforms and
identification of the league and its member clubs.

• Restrictions exist through league-wide agreements on individual team use of names and
logos, choosing to market instead through licensing agreements approved only by the
properties divisions of each league.

• In general, although clubs retain some rights in their logos, anything they wish to pursue
must first be approved by their respective properties divisions.

• The properties divisions, as separate agents for the teams, possess the right to issue licenses
for the use of the member club’s as well as the league’s names, logos, uniforms, mascots,
and practically everything else that can be imagined. Leagues derive a great deal of profit
from licenses, which can often be very expensive; therefore, in order to keep both the
licensees and member clubs happy, any possible infringement is treated promptly and
harshly by the properties divisions.

Trademarks, often being the source of great pride and wealth, are always stringently protected both
by the law and the trademark holder. For example, the NHL in its standard player contract provides
that profits from any endorsements by players which show team logos, such as on jerseys, etc., must
be shared with the team. However, the player may keep the entire fee from any endorsements which
do not show such logo.

All major team sports restrict the use of team names and logos in endorsements and normally
require separate licensing agreements whenever a team name or logo is to be used in
advertisements. For example, a professional football player cannot appear in his team uniform in an
advertisement unless the manufacturer or the player has entered into a separate licensing
agreement with NFL Properties for the use of the team name and logo

Patents

• Inventors have begun to obtain patent protection for sports method inventions. Recently
granted patents cover, for example, a method for putting a golf ball, a method for fitness
training, a method for training baseball pitchers, and a method for training swings. A player,
team, or league gains significant benefits from exclusive control over a technique that
provides a competitive advantage. It can capture sizeable economic rents by dominating
sports contests or force others to license the invention. A patent permits the holder to
exclude others from using her invention.

• U.S. Patent No. 6,190,291 (issued Feb. 20, 2001) (describing how a ‘fitness method for an
exerciser combines the benefits of isometric-like exercising with isotonic exercising for
simultaneous training of the exerciser's cardiovascular and skeletal musculature systems and
strength and endurance build up’).

• U.S. Patent No. 5,639,243 (issued June 17, 1997) (stating that the invention may be used to
train an athlete, such as a baseball pitcher, to accurately repeat a sequence of coordinated
leg, arm and torso movements).

• U.S. Patent No. 6,176,790 (issued Jan. 23, 2001) (protecting a method of training golf and
similar swings where balls of varying sizes, weights, and pliability are placed between a limb
and a reactionary surface to restrict movement of a limb and nearby limbs wherein specific
 muscles groups are stretched and trained while imitating swing motion to induce muscle
memory).

• For example, the inventor of a new golf putting method can prevent anyone else in the
United States from putting this way without permission, which is generally given in exchange
for compensation. Patent benefits from encouraging invention and competitive pressures
force participants in professional sports to innovate more. Intense competition in sports
generates powerful incentives to innovate; professional athletes constantly train and
experiment to obtain even a slight edge over rivals. New methods help competitors
compensate for their weaknesses and overcome others' strengths. This competitive pressure
helps to explain why sports have a great history of innovation.

The owner of the patent product or process can prevent anyone from making, using, offering for
sale, or selling the patented invention for the entire term of patent. Neither innocent copying nor
independent origination of a patent invention will provide a defence to patent infringement.

• Nike, Inc. v. Wolverine World Wide, Inc., Nike was unable to successfully use the doctrine.
The Nike case involved a shoe which, among its many parts, included a sole with a sealed
inner member inflated with a gaseous medium. Nike sued Wolverine for infringement based
on a Wolverine shoe which included a “heel insert containing 80-90% viscous silicone liquid
and [10-20%] air at ambient pressure.” The court applied a basic two-step analysis to the
question of infringement first construing the relevant claim of the invention to determine its
scope and meaning, and secondly, comparing the claim as properly construed to the alleged
infringing product. The court concluded that the Wolverine shoe did not infringe.

In Wilson Sporting Goods Co. v. David Geoffrey & Associates, a new approach to the use of the
doctrine of equivalents was tendered. This case involved the complicated theory of "dimple science,"
which provides the backdrop for the very serious competition of developing the better golf ball. The
dimples on the golf ball create the turbulence, lift and drag ratios responsible for the distance and
flight paths of the balls. In essence, the court suggested a theoretical claim, which encompassed the
total range of equivalents, to determine whether such an invention would have been patentable at
the outset. The court felt such an approach would help determine if a patentee was improperly
seeking a broader reading of his patent, via equivalency, than entitled, relative to the prior art
involved. This new approach to the doctrine of equivalents led to the defendant's ultimate success in
the case. Thus, it becomes evident that a sports scenario enables one to easily comprehend patent
law fundamentals. As Wilson indicates, the sport context may also provide the backdrop for bold
new judicial experiments. After all, each game utilizing something more than pure physical dexterity
involves products, many of which are grounded in a scientific or technical discipline.

COPYRIGHT IN SPORTS
 Live sports telecast rights are a core asset of the world’s premier sports leagues and
organizations.
 Whether broadcast on radio or television, practically every professional athletic event
- secure a very valuable right: the right to protect original works of authorship, better
known as copyrights.
 Such rights are valuable to everyone, but in the world of professional sports and their
billion dollar industries - they are essential to survival.
 But the event must be completed and recorded in some manner before it is afforded
protection. In other words, it must be fixed. [fixed in a tangible form such as a tape,
film or disc]
Pittsburgh Athletic Co. v. KQV Broad. Co. (1938)
 The owners of the Pittsburgh Pirates baseball team licensed the exclusive right for
radio broadcasts to General Mills.
 However, KQV, a competing broadcast company, was broadcasting the games
simultaneously through information relayed to them by informants positioned outside
the stadium.
 Pittsburgh Athletic was not a ‘copyright’ case because the allegedly misappropriated
plays of the game had not yet been ‘fixed.’
 The court drew a solid line of demarcation between those aspects eligible for
copyright protection, like the broadcast, and those not-the underlying plays of the
game.
 It held that the right to broadcast a game belongs to the team and any attempt to
broadcast a game without permission from the copyright owner is illegal.
 Therefore, while cameras or announcers that relay the broadcast to a television or
radio affiliate are instantaneously creating a copyrightable work, a fan who sits in the
stands with a single video recorder is not.
 To clarify, the courts offered protection to the broadcast of the game as a whole, not
the plays of the game themselves.

Protection of copyright
 Since establishing that copyright protects fixed events, it is vital to determine the
owner of such copyright.
 Basic copyright law states that the author of the work holds rights in the work.
 However, in the professional sports world, complications arise spawning litigation
over who owns the rights to every part of the broadcast, whether it be the original
broadcast, a replay of it, or the highlights cut from it.
 Legislations were brought in to avoid confusion in the area.
 For example the U.S enacted the Sports Broadcasting Act of 1961 (SBA) of which
Section 1291 provides the means for each league to pool their member team’s rights
to broadcasts and contract on behalf of the entire league, thereby circumventing
federal antitrust laws.
 Protection extends to copyright owners on both an economic and moral level, by
virtue of their relationship to the work, whether as author or transferee owner under
which the leagues strive to protect their exclusive economic rights in reproducing,
distributing, preparing derivative works, and displaying the work publicly.
 Licensing of authorized carriers for sporting events is a major source of revenue for
the leagues; therefore, damages are often not too difficult to prove, whether they be
in the form of, inter alia, loss of viewers from authorized network carriers or a decline
in gate receipts.
 Accordingly, the more viewers there are, the more money networks can charge for
advertisements before, during, and after the events. With all this money involved, it is
not a surprise that leagues, teams, and networks take these infringement actions
very seriously.
 Since, the most important issue is that the infringer be stopped; therefore, injunctions
are the most common remedy for infringement-whether temporary or permanent.

 When a football game is being covered by four television cameras, with a director
guiding the activities of the four cameramen and choosing which of their electronic
images are sent out to the public and in what order, constitutes ‘authorship.’
 Sports leagues and their representatives have been successful in bringing lawsuits
against infringers who provide unauthorized online retransmission of live sports
telecasts.
  Such litigations involve both the direct liability of unicast service providers and the
secondary liability of P2P providers.

In Twentieth Century Fox Film Co. v. iCraveTV, (2000),

 a Canadian-based website provided internet users with real-time access to U.S.
broadcasts of live television programs.
 The suits were filed first by a coalition of television networks and studios in the United
States, then by the National Basketball Association (NBA) and the National Football
League (NFL).
 The plaintiffs claimed direct and/or indirect infringement of their exclusive rights
under the Copyright Act, as well as infringement of their trademarks and trade names
or otherwise making false designations of origin or false representation.
 The federal district court in Pennsylvania consolidated the two cases and ruled that
the plaintiffs were likely to prevail on their copyright and trademark infringement
claims.
 Thus the court temporarily enjoined iCrave TV’s transmission of copyrighted
programming in the U.S.
 With regard to secondary liability claims, unauthorized P2P movie and music file-
sharing services have generally been held liable for copyright infringement under
secondary liability theories, including contributory, vicarious and inducement
theories.

Union of European Football Association (UEFA) v. Briscomb (2006),

 the plaintiffs, UEFA together with its licensed broadcasters “British Sky Broadcasting
Group PLC” (BskB) and “British Sky Broadcasting Limited,” sued three individuals for
infringing UEFA’s copyright in the broadcasts of a UEFA Champions League match
made by B sky B.
 The defendants allegedly made copies of such broadcasts, retransmitted them or
authorizing their retransmission to the public, and possessed in the course of
business an article that is known or should have been known to contain an infringing
copy of the broadcasts.
 Court ruled that the defendants were liable for copyright infringement.
 It was held that the plaintiffs own the copyright not only in the live broadcasts but in
the ancillary works or creative elements including all broadcasts of UEFA Champions
League matches throughout the world containing uniform branding through the use of
video sequences, onscreen graphics, logos and composed music and works
consisting of a programme content roll, short film clips called break bumpers, the
UEFA star ball logo and specially composed accompanying music.
 However, where the service provider has actual knowledge of the illegal activity or
information, and fails to act expeditiously to remove or to disable access to the
information, the provider will be found liable for copyright infringement.

Broadcasting in copyright:
Advances in communications technologies have revolutionized broadcast sports coverage
and enabled billions of people around the world to take part in the spectacle and excitement
of major sporting events.

For most sports organizations, the sale of broadcasting and media rights is now the biggest source of
revenue, generating the funds needed to finance major sporting events, refurbish stadiums, and
contribute to the development of sport at grassroots level. The royalties that broadcasters earn from
selling their exclusive footage to other media outlets enable them to invest in the costly
organizational and technical infrastructure involved in broadcasting sports events to millions of fans
all over the world.

Broadcasters' rights:

 safeguard costly investments in televising sporting events

 recognize and reward the entrepreneurial efforts of broadcasting organizations
 recognize and reward their contribution to diffusion of information and culture

EXAMPLE:

Under the Rome Convention of 1961, broadcasters have exclusive rights for 20 years to authorize
rebroadcasting, “fixation” (recording), reproduction and communication to the public of their
broadcasts.