Sports and intellectual property in India: an emerging sector
February 2017 | EXPERT BRIEFING | INTELLECTUAL PROPERTY
The Indian sports market is rapidly growing with different disciplines such as cricket, football, badminton, hockey, tennis and kabbadi proving popular. Sport in India has never really been taken seriously, however. It has always been seen as a source of recreation. Globally, the sports industry is a massive sector, bringing together entertainment, games, culture and monetary business together. It is only in recent years that the commercial viability of sport in India has begun to be explored and exploited.
Commercialisation of sport and competition
The commercial aspect of sports has not only added to individual gains, but has reaped benefits for the economic growth of the country. Almost every facet of the industry is being tapped into and capitalised. Intellectual property rights (IPR) are valuable assets that are used as marketing tools toward the branding of games and connected events, sports clubs, teams, celebrity status, etc.
With growing competition comes the need to protect individual and team interests, so that others do not ‘piggyback’ on their established name and goodwill. Every aspect of intellectual property (IP), whether it is trademarks (including personality rights), copyrights, design or patents, form an integral part of the commercial sports industry, and thus require protection in order to circumvent any complications that may arise. There are various statutory provisions, that deal with IPR disputes that may arise.
In the sports industry, a chain of title has relevance in sports agreements which incorporate the legal release of the talent of the sportsman, so that their work, images, personality rights, etc., can be used by another for their profit. With the emergence of the Indian Premier League (IPL), and various other emerging leagues, various teams have been formed, which are owned by individuals or partners. Teams are sold to other individuals or partners and in such an event the chain of title becomes an issue, in order to ascertain the title in trademark, copyright and various other IPR which may form a part of such an event.
Ownership of IPR in the sports industry
Due to their inherent basic attributes, IPR can be bought, sold or licensed. It is mandatory to corroborate the ownership, so that the attributes of the IPR can be commercially exploited by their owner. Therefore, in order to circumvent disputes, it is recommended that the IP is registered, as this enables ownership to be accurately established.
IP protection is jurisdiction-specific, which means IPR must be registered in India even if they are protected in a foreign jurisdiction. Registration of patents, trademarks, designs and copyright could take several months or even years in India owing to considerable backlogs at the IP registries, so businesses should plan their registration well ahead of entering the market.
They should conduct an audit of IP that may be exposed to the Indian market. If it is commercially worth it, businesses should take steps to register it well in advance.
The Trade Marks Act, 1999 protects registered marks such as names, logos, brands of the event and each individual team or franchise. The Designs Act, 2000, provides protection for merchandise, equipment, footwear and apparel. The Copyright Act, 1957 provides registration for original literary, dramatic, musical and artistic works, cinematographic films and sound recordings. In addition, it provides for broadcasting and performers’ rights. Copyright also exists, with respect to sports, in recorded visual images or commentaries of sports events, and photographs of events.
Sources of IP disputes
Various acts of infringements of IP, as well as unauthorised use of IP, eventually lead to IP disputes.
There are various legal issues that can arise in the sports industry, including: infringement of trademarks, brand abuse, misbranding, misuse in bad faith, using the name of a sports personality without permission or without paying any licence fee or royalty; copyright infringement with regard to the copyrighted merchandise, sports equipments, artwork in logo, without licence broadcasting, piracy in audiovisual recordings, infringement in promotional material used, use of copyrighted software without licence or royalty; infringement of design, use of design without license, use of design for promotion of other goods; and in case of patents, the use of patented technology without authorisation from the owner of the patent.
These issues can lead to damage of goodwill, unfair trade practice, unfair competition, commercial disputes and ultimately lead to huge commercial losses which would defeat the principal purpose of exploring the commercial aspect of the sports industry.
Enforcing IPR in India
India is a signatory to various international treaties on IPR. Furthermore, rights such as trademarks, designs, patents and copyright can be protected through registration. These rights are enforceable through the Indian courts, which, in the event of infringement, can provide interim remedies such as injunctions relatively quickly. The courts can also instruct perpetrators to account for profits generated from their infringement.
There are three IP enforcement channels – police, customs and judiciary. Trademarks and copyright can be enforced through civil or criminal litigation, whereas patents and designs can only be enforced through civil litigation.
The sports industry comprises stakeholders such as sponsors, broadcasters and players, all of which have developed exclusive IPR. Companies therefore need to continuously monitor their IPR by instituting effective systems, policies and regulations to prevent infringement. Regular IP audits help to identifyIP portfolios that need strengthening.
Kirit S. Javali is a partner at Jafa & Javali, Advocates. He can be contacted on +91 11 4164 1757 or by email: firstname.lastname@example.org.
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Kirit S. Javali
Jafa & Javali, Advocates