How to use intellectual property rights to protect a new sports formatLaura Canham, Ed Hadcock, Emma Day
New formats are revolutionising the world of sport and the manner in which sports content is consumed. In the digital age, sport is competing hard for the public’s attention and, in doing so, is becoming increasingly shorter, faster and more dynamic. The need, on one hand, to respect and uphold a sport’s tradition is now being balanced with the public demand (particularly from younger audiences), on the other, for easily digested, accessible and narrative-heavy sports content, often fusing sport with music, entertainment and pyrotechnics.
T20 cricket has led the way, particularly in India and Australia, where attendances and domestic TV viewing figures regularly dwarf those of these nation’s test matches. The England and Wales Cricket Board (ECB) is taking things a step further by introducing a new 100 ball format ("The Hundred"), an even shorter-form version of the game designed to fit snuggly into an evening TV schedule.
Beyond cricket, a range of other international sports have trialled new shorter formats, ranging from golf (Hero Challenge, Golf Sixes, World Super 6), athletics (Nitro Athletics), tennis (Fast 4 Tennis, Tie Break Tens), netball (Fast 5 Netball), horseracing (Championship Racing), snooker (the Shoot-Out Tournament) and cycling (Hammer Series). This is not an overnight trend and many more formats across all sports are bound to be trialled in future.
The authors are currently advising on a number of other as yet unreleased new formats, including in football, golf and horseracing. In our experience, while new formats are often developed in-house and rolled out by rights holders, they can also be the work of private entrepreneurs who then work with rights holders under contract to stage the event.
In both of the above cases, the eventual rolling out of any new format will involve significant expertise (including from a sporting and TV/media production perspective), time and financial investment, plenty of trial and error and a considerable appetite for risk. If the format is successful it can also be highly lucrative commercially in terms of media and sponsorship rights revenues, team franchise fees and merchandising etc.
Given the significant risk and investment involved in successfully designing and implementing a new sporting format, what steps (if any) can a format creator or rights holder take to protect the format (and their financial interests) against rival copy-cats? Can any form of control and exclusivity - and, therefore, commercial values - be preserved?
IP in the format or idea itself
The bad news for sports format creators is that the idea or the concept of a sports format itself will not, from an IP law perspective, be protectable or protected unless it is kept confidential (which it won’t be!). For example, intellectual property rights will not entitle anyone to prevent someone from organising and staging a 20 over (or indeed 100 ball) cricket match. An organiser could run into legal difficulties if they sought to name their event "The Big Bash" or "The IPL" (more of that later), but IP law cannot be used to prevent the simple staging of the new format by a third party.
However some steps can and should be taken by format creators to protect their interests. IP rights are constantly in use in the sports sector to secure and protect the value of events and products, particularly now traditional revenue streams such as physical ticket sales are being overtaken by new, less tangible sources of value, such as digital broadcasting and sponsorship.
For new sports formats, protection in the name, look and feel of an event is vital to cornering the market in its chosen area, and ensuring competitors are not able to benefit from the reputation/goodwill generated through the hard work of the originator of the format.
IP protections that can be taken
Trade marks are at the forefront of protecting any “brand”. They help to protect the visual elements which the consumer is most exposed to. This includes words, logos, sounds, shapes or colours, or a combination of any of these. The most effective means of protecting a trade mark against unauthorised use is to register the trade mark (if possible); applications to register trade marks can be made in most countries. The costs, duration and procedure of trade mark applications will differ from country to country. If a sport or new format is played (or likely to be played) in a number of countries internationally, it is obviously important to obtain (to the extent practicable) trade mark registrations in each relevant country.
Consider any famous sporting brand and it’s likely a registered trade mark is one of the first things that springs to mind: the Nike "swoosh", for example, or the Premier League lion. New sports format creators interested in creating a distinctive and economically-exploitable "personality" for their product should look at what trade marks they can register to achieve this.
For their new “The Hundred” brand, the ECB have sensibly anticipated the need for trade mark protection and have applied to register “The Hundred” as a word mark with the UK trade mark office, with a view also to applying to register this overseas. You can view their application (including the various classes of registration) here1. Unfortunately, however, for the ECB, their application has been opposed by the US apparel company The Hundreds Is Huge Inc.
Leaving aside the opposition, the ECB’s approach makes sense. In the UK the costs of registering a trade mark are not onerous (provided the application is not yellow or red-carded with an objection or opposition), compared with the significant potential value of the brand being protected). This includes being able to exclusively exploit the name and logo of “The Hundred” via sponsorship and merchandising (ECB’s registration covers classes from USB chargers to Christmas tree decorations). There is also the availability of a simple and quick remedy for infringement against a competitor who attempts to use the same name for their event. Try and title your new football tournament “Premier League”, for example, and you may find yourself on the receiving end of a strongly worded letter from lawyers acting from the Football Association Premier League Limited (which has registered the Premier League logo as an EU trade mark).
The BBC states that part of the ECB’s plans might be to “demand payment from other international boards that want to play a version of the 100-ball format” 2. It’s true that the ECB can apply to register this as a trade mark around the world, but will such a move work to protect the format? Can the ECB really stop another cricket board from setting up a differently titled, differently branded hundred-ball game? In short, no. A trade mark can protect only the name of the format, not the idea or rules behind it.
Although the ECB cannot charge for use of their format, they can charge for the use of their trade mark. The more successful the format of the game, the more prestigious the brand. Consumers will not want to play a knock-off version of the original, and the trade marks will be the best indication of the quality and originality of the format. So the ECB may charge others for the privilege of using their mark to show that the games are from the same source, or are at least affiliated with each other; the consumer will automatically link the two.
An organiser’s best bet would be to register the key elements of the brand, and then look at other IP protections for the format itself.
In the UK, copyright cannot be registered; it arises automatically on creation. For copyright to subsist in the UK, the authored work must fall into a specific category of works protected by copyright law, for example, as a literary, dramatic or artistic work.
Let’s say you’ve created a new, captivating approach to your sport, and you have the idea and the materials to bring it to the stage, potentially to global audiences. The good news is that events and formats can be dissected and protected by copyright in a number of ways. For example, the artistic work in any original team logos, titles of competitions, onscreen graphics, promotional leaflets, photographs of players and the original literature in the game-day programs. Any original music or jingle will be protected by copyright, as will any lyrics intended to be sung or spoken with the music.
A great example of a sport leveraging IP is Zumba Fitness, who have created a recognisable brand and dance workout by licensing others to use its copyright (and trade marks) in the literary, dramatic, musical and artistic works that makes up a Zumba Fitness class.
But will copyright protect the format as a whole from being exploited by others? The closest we come to a view on this arrives through the UK court’s commentary on copyright in TV game show formats. TV shows and sports’ formats share some useful characteristics for comparison versus other "staged" works, in particular they both rely on variety i.e. that for each staging of the format the outcome is not known in advance (we hope) and there is spontaneity and change from game to game, even if the format remains the same.
In the case of Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd & Anor3 it was argued that copyright was infringed in a TV game show in which contestants had a short minute-long challenge to complete. The idea had been written down and presented by Mr Banner as "Minute Winner", but was later broadcast without acknowledgment by Endemol as ‘Minute to Win It’. The court ruled that Mr Banner’s synopsis of his format was not protected by copyright, but that did not mean that formats in general could not be protected. If certain criteria were met, it was possible for copyright to subsist in a TV format as a dramatic work. As a minimum this would include:
having a number of clearly identified features which, taken together, distinguish the show in question from others of a similar type; and
having those distinguishing features connected with each other in a coherent framework which can be repeatedly applied so as to enable the show to be reproduced in recognisable form.
Therefore, for a new sports format to qualify for copyright protection, it would have to be set out in a written form which satisfies these minimum criteria. How easy it is for this to be done in an as-yet untested legal environment remains to be seen, and even if copyright subsists, it may still be difficult to claim infringement if only the idea itself has been copied (the mere idea of a fitness dance class, for example, or the mere idea of a 100-ball cricket game, will not be protected by copyright).
The principle “A man is not to sell his own goods under the pretence that they are the goods of another man” underpins the concept of passing off. It is not a registered or statutory right, it is right that has been developed by the courts to protect goodwill. “Passing off” actions are only available in countries which have legal systems based on English common law; in other countries other rights of action are relevant, such as unfair competition.
To succeed in a passing off claim, it is necessary to prove that you have acquired goodwill in your name, logo or “get-up”, that the use by another person of something which is the same or similar is a misrepresentation to the public (i.e. likely to cause confusion) and that this is likely to cause financial or reputational damage.
A reputation (or “goodwill”) in the UK is key here; it is vital that the sporting event has a reputation – which is likely to be built up over a number of years - and is recognised by the public. Once sports event has developed goodwill, its name, logo or “get-up can be protected by an action in passing off against rival copy-cats. However, the quickest and most effective way of protecting a name or logo, is to register it as a trade mark.
As the strict requirements for bringing an action in passing-off shows, it’s one thing to work out clearly the scope of protection, but another thing entirely to actually exercise that protection, not least because a lot of infringement of IP rights takes place increasingly in the context of online and global markets, where identifying and tracing the infringer can be extremely difficult. These are challenges that face the IP sector globally, particularly as new technologies make it easier to make copycat designs and products quickly and cheaply, and with enforcement regimes in different jurisdictions operating at varying levels of efficiency.
However, there are regularly-exercised enforcement options available, and it’s fair to say that the sport sector is no stranger to challenging IP infringement. Live sports broadcasting, for example, is protected by copyright which, under an international treaty, can generally be enforced around the world. That said, in general registered rights such as trade marks tend to be the quickest and simplest to enforce. In the context of a new sports format, copyright and unregistered trade marks are both more difficult and more expensive to enforce.
The best advice for new sports formats in this context lies in doing the advance preparation – understanding what materials and designs are worth protecting, considering the best form of protection, and then monitoring and being prepared to take action against infringement.
Governing body protections
It can be highly advantageous, and is sometimes necessary, for format creators to work collaboratively and closely with the governing body of the relevant sport, particularly if the new format requires any form of governing body sanctioning, aims to utilise the services of the body’s registered players or use its know-how and other services. In some cases, international governing bodies will immerse themselves in the operation and staging of new format events, and will be willing to assist in the protection of format IP and to prevent rival competitions being held, including by refusing to sanction (to the extent legally permissible4) the participation by their professional athletes in such rival events.
For some of our clients, this type of collaboration has included entering into contractual relations with the sport’s governing body. Under some of these agreements the governing body has agreed to stage a minimum number of the new events (thereby providing the format owner with guaranteed exposure and a "stamp" of sporting approval), and to provide the format creator with a range of protections in the event of copy-cats, assistance in the procurement of player appearances and a degree of exclusivity, including assurances that they will not work with competing or other similar formats. These types of arrangements with governing bodies can be invaluable for obvious reasons.
Other protections: confidentiality and non-disclosure
As a final point, it makes sense to ensure that early discussions (including with governing bodies) are framed by clear confidentiality and non-disclosure obligations, to avoid losing control of the idea to other interested parties. Whilst these have their limitations, they form part of the package of protections that work together to provide a useful mix of rights that can be enforced to the benefit of the creator/organiser of a new sports event.
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- Tags: Australia | Commercial | Copyright | Corporate | Cricket | England and Wales Cricket Board (ECB) | Football | Governance | India | Intellectual Property | Passing Off | Trademark | Zumba
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About the Author
Associate, Mills & Reeve
Laura is an associate in the Mills & Reeve sports team, and specialises in particular on the creation, licensing, exploitation and protection of a wide range of sports IP rights, domestically and overseas.
Associate, Mills & Reeve
Ed is an associate in the Mills & Reeve sports team, and specialises in particular on the creation, licensing, exploitation and protection of a wide range of sports IP rights, domestically and overseas.
CITMA paralegal, Mills & Reeve
Emma is a CITMA paralegal in the Mills & Reeve sports team, and specialises in particular on the creation, licensing, exploitation and protection of a wide range of sports IP rights, domestically and overseas.