How sports rights holders protect against IP infringements in India: Part 1 - overview of IP lawsRoshan Gopalakrishna, Shibumi Raje
Rapid changes in technology, media and the pattern of consumption of content have paved the way for a growing range of unauthorized uses of intellectual property rights ("IP”) in India. In particular, the barriers to the illegal reproduction and retransmission of copyrighted content on the Internet are so low – with easy access to relevant software, huge distribution, unlimited broadband, and perceived negligible risks of prosecution – that piracy of content has become pervasive. This represents an enormous challenge for content owners, especially in a globally important sports market such as India.
While revenues are the major draw for sports rights owners, the intangible benefits gained from association with a sporting event or team such as brand recognition in the market and goodwill generated cannot be overlooked. IP infringements and freeriding by unaffiliated parties have a negative impact not only on the integrity of the sports rights owners’ rights but also on the sporting event as a whole. It is understandable that entities want to associate with major sporting events and teams to promote their business interests. While some of these are acceptable and fair uses, a majority of them can be considered IP or other infringements, and need to be addressed.
This article provides a step-by-step guide for sports rights owners to address IP infringements in India. The article is split into two parts.
Part 1, below, explains the IP regime in India, looking specifically at:
- Types of IP - the IP assets that are protected by law in India, namely: copyright, trade marks, design rights, publicity/personality rights, and data rights;
- Registration requirements - the registration steps (if any) that need to be taken to ensure that IP assets are fully protected under the law; and
- How to establish a comprehensive rights protection programme - for sporting events, a rights protection programme is a systematic plan of action to protect the investment of and the exclusive rights granted to the sponsors, partners and licensees of an event
Part 2, available here, moves on to considers how rights holders can protect their rights, looking specifically at:
- How to engage with infringers – the action that can be taken to try and stop a breach prior to commencing official legal proceedings;
- The legal remedies available to rights holders looking to enforce their rights - how to initiate legal proceedings against consistent infringers;
- Conclusion – authors’ comments on addressing IP infringement in India’s sports industry
UNDERSTANDING THE IP THAT NEEDS PROTECTION
In the context of this article, it is imperative to understand the stakeholders or sports rights owners whose IP is being infringed. The primary sports rights owners are evidently the event organisers or the governing body of the sport. Event organisers often contractually or otherwise grant rights in specific properties in the event to other entities, most notably: broadcasters, franchise/team owners, sponsors, partners and service providers. Further, the sportspersons participating in the event can also be considered sports rights owners in certain circumstances relating to the use of the sportspersons’ name, image or persona without licence or authorisation.
In the context of sports and sporting events, the following properties are protected under the existing IP regime in India:
Original literary, dramatic, musical and artistic works, cinematographic films and sound recordings are classes of works in which copyright subsists under the Copyright Act, 1957.1 In addition, copyright law protects broadcasting and performers’ rights. Copyright can exist, with respect to sports, in recorded visual images or commentaries of sports events, photographs of events, teams, athletes, materials used in administration and promotion of the sport and the team/franchise. In respect of the event itself, the fixtures, programs, published results, and computer programs may be subject to copyright protection. Logos and mascots may be protected as “artistic works” whereas slogans may be protected as “literary works”.
The Trade Marks Act, 1999,2 protects registered marks such as names, logos, brands of the event and each individual team/franchise. Trade mark lies at the heart of branding and the branding elements are critical for creating value for the event in the market. Event names, team names, their respective logos, tag-lines, colour schemes, emblems, and similar elements relating to the branding and merchandising can be the subject of trade mark registration.
Registration of a design gives the owner protection for the visual appearance of the product, not over the functionality of the product. Examples of products which can be registered under the Designs Act, 2000,3 in the context of sports are merchandise, equipment, footwear, and apparel.
Publicity rights are generally defined as the right of an individual to commercialise his/her persona for commercial purposes. The concept of personality rights is generally understood to mean the rights an individual retains over the use of his/her persona, and includes the right of privacy as well as publicity rights within its scope. Although not granted specifically under any law, Indian courts have upheld cases under Article 21 of the Constitution of India4 (the Right to Protection of Life and Personal Liberty) where the infringement of personality rights of sportspersons due to unauthorized usage by entities of such sportspersons’ name, fame, image, and other facets of their personality were called into question. However, in ICC Development (International) Ltd. v. Arvee Enterprises and Anr,5 the High Court of Delhi unambiguously stated that non-living entities are not entitled to the protection of publicity rights in an event.
The centralized collection and effective marketing of sports data (in the form of live score updates, SMS score updates, fantasy sports, etc.) have emerged as niche parts of the business of sport. However, the law regarding the ownership and commercial exploitation of sports data in India is still unsettled. Event owners, therefore, must rely on other proprietary rights and supplementary contractual measures to establish their rights over event-related facts and information.
Apart from the protections afforded under intellectual property laws as discussed above, rights granted by event organisers to their partners, broadcasters, sponsors, teams and other entities contractually or otherwise may be protected through a contractually obligated comprehensive rights protection programme (as described in detail in Step 3).
REGISTRATION OF IP
While not all IP and related infringements can be anticipated, and prevented by sports rights owners, specific infringements can be prevented by registering IP assets in accordance with the procedures prescribed by law.
Works in which copyright vests are not required to be registered to be afforded protection, but are capable of registration under The Copyright Act, 1957, the law in force governing copyrights in India. The nature of rights and the extent of protection conferred on the holder of the copyright depend on the nature of the holder’s work. The owner of a copyright enjoys the exclusive rights to reproduce, perform, publish, adapt or translate the copyrighted work and any such act undertaken without the license of the copyright owner would, generally, constitute copyright infringement.
In order to register a work as a copyright protected work under The Copyright Act, 1957, the author, publisher, or owner of the copyright in any work may make an application in the prescribed form accompanied by the prescribed fee to the Registrar of Copyrights for entering the particulars of the work in the Register of Copyrights.
In case of an infringement claim, the Register of Copyrights is a prima facie evidence of the particulars entered therein and is admissible as evidence in all courts without further proof or production of the original. This is a benefit to sports rights owners with registered copyright protected works. As an example, Kolkata Knight Riders, a team participating in the Indian Premier League has registered the team’s logo as an artistic work and the logo is now registered as a copyright protected work. An infringement of the logo can therefore be countered without difficulty by producing the registration certificate as evidence before the court, if the need arises.
A trade mark registration can be filed with the Trade Mark Registrar in the prescribed manner along with the fee. The application must contain logo or the word mark, name and address of the applicant, classification or trade mark class, trade mark used since date, description of the goods or services for which the applicant wishes them to be registered.
In order to register a trade mark, the applicant must be able to display the “distinctiveness” of such a mark. This is essentially a quality in the trade mark which earmarks the goods marked as distinct from those of other products or goods. A trade mark devoid of any distinctive character or a trade mark “deceptively similar” to an existing trade mark will not be registered. Generic words and those in common descriptive usages are not considered sufficiently distinctive and ought not to be the subject matter of a trade mark registration.
By registering a trade mark, the registrant is granted: (i) title to the mark established, which enables the trade mark owner to avoid proving his title against any infringement of the mark, (ii) the exclusive right to use the registered trade mark in relation to the goods or services in respect of which the trade mark is registered, and (iii) the right to obtain relief in respect of infringement of the trade mark.
In the context of sports related marks, additional protection is also afforded under the Emblems and Names (Prevention of Improper Use) Act, 19506 is to prevent the improper use and registration of certain emblems and names for professional and commercial purposes. The only sports-related emblem and name currently notified and protected are “the name and emblem of the International Olympic Committee consisting of five interlaced rings.”
A design under the Designs Act, 2000,7 needs to be registered at the Indian Patent office and is granted a design right for a period of ten (10) years, with renewal for another five (5) years on application. To be registrable, a design must be appealing to the eyes, new or original, and not previously published in India.
COMPREHENSIVE RIGHTS PROTECTION PROGRAMME
In relation to sporting events, a rights protection programme is a systematic plan of action to protect the investment of and the exclusive rights granted to the sponsors, partners and licensees of an event. Ideally, a rights protection programme is initiated well in advance of the event, and remains in continuance until the conclusion of the event. Particularly, the rights protection programme should address ambush marketing attempts, content piracy and infringement of the sports rights owners’ intellectual and proprietary rights in and to the sporting event.
IDENTIFYING STAKEHOLDERS AND RIGHTS REQUIRING PROTECTION
The major stakeholders or the sports rights owners, in relation to any sporting event are the event organisers, the teams/franchises participating in the event, broadcasters, sponsors and the individual players. As such, it is imperative that the essential rights of each of these entities are safeguarded to ensure the success of the sporting event. The essential rights that sports rights owners are most likely to protect are the use of event and team marks (logos, word marks,), participating player images, match tickets and audio-visual content originating from the event.
OUTREACH, EDUCATION & ADVANCE NOTIFICATION
This step of the rights protection programme involves identifying potential infringers, specifically competitors of sponsors of the event, news broadcasters, broadcast platforms and other important stakeholders, as well as known past infringers of sports rights (e.g., websites streaming and hosting illegal match content) and issuing warning letters to these entities prior to the commencement of the event, informing them of the sporting event schedule and clearly specifying the assets and properties belonging to the rights holders, as well as defining the limits of permissible and impermissible behaviour in relation to the event.
In India, the organisers of major sporting events often publish guidelines in the interest of public education that serve to guide the general public as well as sponsor competitors on the use of event marks, and permissible use and activities in relation to the event, but do take into consideration the cultural sensitivities of such matters before initiating any formal legal proceedings. The Brand and Content Protection Guidelines issued by Indian Premier League8 prior to the 2016 season clarify that while the use of generic cricket terms and images in promotional material may be permissible, any unlicensed and unauthorised usage in such materials of the BCCI’s and event-related IP would be impermissible.
In recent times, event organisers and official broadcasters of sports events in India have issued News Access Regulations9 for news broadcasters in India that specify certain limitations and appropriate use guidelines that the news broadcasters will comply with in respect of their use of footage. A Delhi High Court decision10 has clarified that any guidelines regarding news access issued by an official sports broadcaster must be issued at least two weeks prior to the relevant event. Further, in the matter of ICC Development (International) Ltd and Anr v. New Delhi Television Ltd.,11 a Division Bench of the Delhi High Court held that all television news channels should use match footage strictly in accordance with the limits prescribed by the ICC or purchase the right to use such footage, from either the ICC or the official broadcaster to whom the broadcasting and reproduction rights was assigned by the ICC.
In addition to these guidelines, press releases, cautionary notices in newspapers and magazines (in English and local languages) and other such informative advertisements in the months leading up to the event can enhance public awareness and protect essential intellectual properties.
There are three distinct threats that a sporting event is subjected to in the context of intellectual property infringements: ambush marketing and trade mark infringement; counterfeit merchandise; and online piracy of copyright protected content.
A sporting event in India is a major attraction and everyone wants to ride on the popularity wave by associating themselves with the event in some way or the other. In many cases the implied association is inadvertent and innocent, but there have been and will most likely continue to be instances of deliberate misleading of the public to imply association with the event without securing sponsorship or related rights officially from the event organisers. Such instances of deliberate and sustained infringement can cause the rights granted to official sponsors to be compromised, thereby diluting the value of the sponsors’ investment in the event.
The following are the most common instances of (but not an exhaustive list of) tactics that may be employed by infringers in relation to sporting events in India:
Ambush Marketing & Trade Mark Infringement:
- Physical Advertising:
- The display of banners, commercial hoardings, mobile displays and other advertising on the ground or on fixed infrastructure outside the perimeter of venues;
- The display of commercial advertisement on non-fixed or inflatable media in the air above the stadium or in its vicinity;
- The systematic attempted offering for sale or free hand-outs of products outside the perimeter of event venues, either expected to be taken into stadia or consumed prior to stadium entry;
- Third-party tie-ins and promotions at or through hotels and airports being used by players and teams participating in the sporting event; and
- Advertisements of live screenings and other hospitality offers in relation to the sporting event.
- Online Activities:
- Promotional offers by websites using event names and logos implying association with the event;
- Keywords using proprietary names and marks;
- Mobile Content:
- Mobile games and contests which relate or refer to the event;
- Mobile applications implying false association with the event and/or teams and/or participants of the event;
- SMS score updates; and
- Promotions via bulk messaging which relate or refer to the event.
- Ad-hoc ambush marketing attempts:
- Resale and commercialisation of match tickets and official hospitality packages;
- Promotions, contests, games and “good luck” or congratulatory messages;
- Fantasy leagues, ratings and awards;
- References to the event in promotional or marketing collateral; and
- Sale of search and advertising keywords.
- Unlicensed usage of match play footage:
- Syndicated event-oriented columns in newspapers and other media outlets written by current players or former players and being sponsored by non-rights holders;
- Incorporating news and political commentary into public relations campaigns and news releases.
- Unlicensed use of a participating sportsperson’s name, image or other facets of their personality to promote a brand/product.
- Unlicensed use of data to promote a brand/product.
- The manufacture and sale of merchandise products bearing the name and logo of the event or teams or of some or all of the participants in the event; and
- Use of words, symbols or pictorials confusingly similar to event marks or team marks in merchandise.
Piracy of Online Content:
- Live streaming and archival footage through downloading copyrighted match play footage and transmitting of such content via the internet either live or in a deferred manner; and
- Advertising and monetizing of revenues on websites offering live or archival footage of event footage.
- Unlicensed uploading and monetization of content on third party websites;
- Unauthorised commercial use of copyrighted match play photographs, illustrations, film or broadcast feed; and
- The production of print publications or television features about the event by non-rights holders for commercial gain, which is considered inappropriate for news and editorial coverage;
BRAND PROTECTION AND MONITORING
The implementation of an effective rights protection programme is largely dependent on this step of the programme. Comprehensive monitoring, both online and offline (including on-ground and surrounding areas) and enforcement are the mainstays of addressing IP infringements by sports rights owners.
It is advisable to monitor potential infringements well in advance of the event, and continue doing so through the entire duration of the event. The event organiser may choose to concentrate on a few kinds of IP infringements that are likely to cause the most damage to the event’s popularity and the rights of its sponsors. For instance, prior to the commencement of the event, the number of unauthorised ticket sales and hospitality packages may be higher, while marketing campaigns and promotions may go live as the event progresses.
While physical monitoring may prove to be problematic depending on the scale of the sporting event, monitoring online channels can serve as a proxy, given that most marketing campaigns have digital components in the present scenario. In order to minimise unlicensed use and commercialisation of event footage, images and marks, all media platforms should be monitored closely on a regular basis. Given that the intention of infringers is to reachout to the widest possible audience, regular online monitoring of known pirate websites and popular social media and video upload websites is necessary, while offline scanning of advertisements placed in newspapers and magazines supplements efforts to reduce infringements.
That concludes Part 1 of the article. Part 2, available here, moves on to consider how rights holders can protect their rights, looking specifically at how to engage with infringers and the legal remedies available to rights holders looking to enforce their rights.
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- Tags: Board of Control for Cricket in India (BCCI) | Constitution of India | Copyright | Copyright Act 1957 | Cricket | Design right | Designs Act 2000 | Emblems and Names (Prevention of Improper Use) Act 1950 | India | Indian Penal Code | Indian Premier League | Intellectual Property | International Cricket Council (ICC) | International Olympic Committee (IOC) | Olympic | Paralympic | Patent | The Advertising Standards Council of India (ASCI) | Trade Mark | Trademark Act 1999
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About the Author
Roshan is Counsel (Sports & Entertainment) at LawNK, a Bangalore based niche law practice specializing in sports, intellectual property, media and information technology laws. In addition, Roshan is also the Chief Legal Counsel at Copyright Integrity International, a world leader in the protection of digital and broadcast rights. Roshan is a graduate of the National Law School of India University, Bangalore.