SUPPLEMENTARY AREAS OF IPR IN SPORTS LAW IN INDIA–NEED FOR SPECIFIC LEGISLATION TO ADDRESS CONFLICTS
This post has been authored by Surbhit Shrivastava & Nimish Dhagarra. It is being featured on the blog for winning Runners Up position in the Online National Level Sports Law Essay Writing Competition organized by Centre for Sports Law, Policy and Research, JLU School of Law, Jagran Lakecity University, Bhopal in Association with Atharva Legal and Extra-Cover, Sports Law Blog of India.
Surbhit and Nimish are students of the B.A. LL.B. course at the prestigious School of Law, University of Petroleum and Energy Studies (UPES), Dehradun.
INTRODUCTION
‘Lex Sportiva’ or sports law is one of the emerging areas in the field of law. The jurisprudence of sports law has started gaining attention of lawmakers throughout the globe as areas of law such as contracts; tax, competition etc. are sharing their boundaries with sports in a more detailed manner in the running era. One of these areas is Intellectual Property Rights (“IPR”). IP (“IP”) rights are the medium through which innovation and creativity are encouraged but most importantly they are the rights which make sure that creator and innovators get a fair reward for their work and their goodwill remains protected. IPR in sports law includes different rights that protect different types of IP, such as inventions (patents), brands (trademarks), designs (industrial design rights or design patents), and creative works, such as sports programs, other sports-related creative outputs, and certain sports broadcasts (copyright and related rights). The Indian sport market is one of those rapid growing markets and commercial viability of sports in India has just started exploding. Data compiled by KPMG Sports Advisory Group through an economic survey revealed that the economic output associated with the Indian Premier League alone stood at Rs 26.5 billion ($418 million).
Sports are a major source of entertainment, just like movies or music concerts. The rise of sports in the entertainment industry is accompanied by glamour and commercialization like any other source of entertainment.
Justice Prathiba M Singh, Judge, Delhi High Court, speaking at FICCI World IP Day 2019 said;
“The more we protect IP in sports, the greater the growth we will see in sports, and larger will be the contribution of this emerging industry to the economic growth of the country.”
Encouragement of games and sports is a State function in India in terms of Entry 33, List II of the Seventh Schedule of the Constitution of India which reads;
“Theaters and dramatic performances; cinemas subject to the provisions of Entry 60 of List 1; sports, entertainments and amusements.”
But studies have suggested that the intentions of the function have been poorly implemented by the state governments and the judiciary due to the High Courts’ failure to comply with the provisions of the Act and the lack of enthusiasm from the state government itself. The disposable rate of cases by these commercial divisions is less than 10% of the cases that are presented before this division. In India, IPR recognized under statute are as follows;
a. The Patents Act, 1970;
b. The Trade Marks Act, 1999;
c. The Copyright Act, 1957;
d. The Designs Act, 2000;
e. The Geographical Indications of Goods (Registration & Protection) Act, 1999;
f. The Semiconductor Integrated Circuits Layout Design Act, 2000;
g. The Biological Diversity Act, 2002;
h. The Protection of Plant Varieties and Farmers’ Rights Act, 2001.IPR promotion in India mainly is done by government bodies such as Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM), which is a subordinate office under Government of India and Cell for IPR Promotion and Management (CIPAM) both working in coordination with WIPO (World Intellectual Property Organization) that organizes various programs, workshops and training for High Court and District Court judges, so that courts have greater understanding with the laws of IPR.
India has very few legislations directly related to the realm of sports law. Most IP conflicts in India arise from personality rights, broadcasting, and ambush marketing. Patent, trademark, and copyright infringements are few and most of them are resolved via arbitration. Traditionally, arbitration is the preferred option for parties trying to resolve an intellectual property conflict since it is similar to a breach of contract. As discussed earlier, civil courts have complex procedures and cases take a lot of time. IPR conflicts need to be disposed of at the earliest to minimize the damage to the owner of the rights.
PERSONALITY RIGHTS
Personality rights are generally defined as the rights of an individual to commercialize his/her persona for commercial purposes. It means 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. The judgement in ICC Development (International) v. Arvee Enterprises,[i] the judgment states;
“The right of publicity has evolved from the right of privacy and can inhere only in an individual or in any indicia of an individual’s personality like his name, personality trait, signature, voice, etc. Any effort to take away the right of publicity from the individuals, to the organizer {non-human entity} of the event would be violative of Articles 19 and 21 of the Constitution of India. No persona can be monopolized. The right of Publicity vests in an individual and he alone is entitled to profit from it.”
In 2017, famous Indian cricketer Gautam Gambhir moved to the Delhi HC concerning infringement of his personality rights.[ii] He came to know of a pub being operated by the name ‘Ghungroo ~ By Gautam Gambhir’. It was pleaded by him;
“The said name carries with itself immense goodwill and reputation and continues to be exclusively associated with the plaintiff. The said name is a rare combination of two words being specifically associated with the plaintiff and it is protectable under the provisions of the Trade Marks Act, 1999 as the fame, recognition and achievements of the plaintiff add value to such a personal name which does not remain a mere name but becomes an indicator which identifies the persona of the world renowned cricket player and therefore the right to use the said name vests solely with the plaintiff and does not accrue to anyone else. The name has attained a special distinctive character by virtue of extensive use since 2003 and has attained the status of a well-known mark.”
The main contention in this case was regarding the use of tagline ‘By Gautam Gambhir’ which the cricketer alleged was prejudicial to his identity/reputation in the society and that the pub was using his name to be deceivingly associated with him for gaining popularity.
The defendant, another man named Gautam Gambhir, pleaded that he was not trying to ride the coat-tails of the former captain of the Indian Cricket team. He stated that he was not using any logos, images, slogans and lingo related to cricket. He acknowledged the cricketer but asserted that he has a personal identity as well and that he had created a brand value for himself by successfully running his previous ventures, namely ‘Blu Wavs – By Gautam Gambhir’. The Delhi HC dismissed the petition in favor of the defendant and held that there was no material on record to infer if any time in running the said restaurants with the tagline ‘by Gautam Gambhir’, the defendant ever represented to the public at large in any manner that the said restaurants were owned by the plaintiff or he was associated with them in any manner.
Legislations on ‘Personality Rights’ are at a primitive state in India. Mostly, protection is sought under Article 21 of the Constitution of India, as no separate legislation specifically covering personality rights exist hitherto. Personality Rights are as important as other types of IP, like trademark. A trademark is a mark that distinguishes a brand and its associated qualities and helps it form a standing in the market. Trademark is how customers identify a brand. Similarly, Personality Rights distinguish a well-known person from namesakes seeking to capitalize on the brand name created by the personality. In the case discussed above, even if the Court has held that the defendant cannot be held liable, the fact remains that the defendant benefits from being a namesake of the famous cricketer since many people would still associate the pub with the cricketer.
RULES ON BROADCASTING OF SPORTS EVENTS OF ‘NATIONAL IMPORTANCE’
IPR include the rights of broadcasters under the head of ‘Related Rights’, which also protect the rights of performers and producers. These rights ensure that the broadcaster gets due return on his investment in the equipment set up for broadcasting across channels. For broadcasting rights to be identified, the mere fact that they possess the ability to transmit signals gives them the protection of that sort. Normally, sports broadcasting rights are purchased by TV channels by participating in an auction for the rights organized by the organizer of the competition. These rights may be purchased for a fixed period, or may have to be renewed with every successive competition held. Star Sports, for example, holds the broadcasting rights of all cricket matches played in India for the period 2018-23. These rights are usually territorial. For example, in India, the broadcasting rights for the UEFA Champions League is held by Sony Pictures Sports Network, whereas in the USA, it is held by Turner Sports. In the UK, it is held by BT Sport.
An important legislation covering sports broadcasting in India is the Sports Broadcasting Signals (Mandatory Sharing with Prasar Bharati) Act, 2007 (hereinafter referred to as ‘Sports Act 2007’). Under S. 3(1) of this Act, it is stated that;
“No content rights owner or holder and no television or radio broadcasting service provider shall carry a live television broadcast on any cable or Direct-to-Home network or radio commentary broadcast in India of sporting events of national importance, unless it simultaneously shares the live broadcasting signal, without its advertisements, with the Prasar Bharati to enable them to re-transmit the same on its terrestrial networks and Direct-to-Home networks in such manner and on such terms and conditions as may be specified”
The intent of this Act is to provide citizens access to sporting events of ‘national importance’ as specified by order under Section 5 of the act. Some of the important events that come under the national importance rubric include national cricket matches, semi-finals and finals of the football World Cup, The Asian Games, Commonwealth Games and The Summer Olympics.[iii]
There are a lot of concerns private broadcasting companies have with the Sports Act, 2007. Section 3(1) of the act provides that no broadcasting service providers shall be allowed to broadcast sporting events of national importance unless they simultaneously share a ‘clean’ broadcast signal – a signal without advertisements of any sort with the Prasar Bharati, India’s public service broadcaster, which further broadcasts it on Doordarshan (TV) or All India Radio. Section 3(2) obligates the content rights holder to share its advertisement revenue in a proportion not less than 75:25 (in case of TV broadcast) and 50:50 (in case of radio broadcast) if the private broadcaster transmits the signals accompanied with commercials. As specified under the Sports Broadcasting Signals (Mandatory Sharing with Prasar Bharati) Rules, 2007;[iv]
a. Section 3(2): Content rights owner shall provide live signals to the Master Control Room of Doordarshan at its own cost.
b. Section 3(5): Prasar Bharati is not required to carry the logo or any mark of the content rights owner.
c. Section 3(7): Prasar Bharati shall have the rights to retransmit the signals on its terrestrial and Direct-to-Home network.Broadcasters pay a huge amount of money to secure broadcasting rights of sporting events. They develop the infrastructure required for high-definition streaming across various platforms, including online streaming. These conditions are unreasonable and violate basic IPR of private broadcasters viewed from a free market approach.
i. It mandates sharing of ad revenue, even after getting broadcast rights for free and there is no obligation to give credit to the original broadcaster.
ii. Under S.8 of Cable Television Networks Act, all DTH and cable operators are mandated to carry 2 Doordarshan channels which may be viewed for free. This meant that cable companies gained access to key sporting events both through the private broadcasting channels, for which viewers have to pay, and also via Doordarshan channels, which are free[v].
iii. This provision combined with the Sports Act 2007 led to huge loss of for broadcast rights holders in two ways. Advertisement revenue is generated according to watch time and impressions but since the match broadcast can be viewed on Doordarshan for free, it resulted in less viewership and therefore led to reduced ad revenue. These broadcasters also lost revenue from channel subscriptions, since subscribers were unlikely to pay for events they can view for free in Doordarshan channel; affecting their sizeable revenue.It was after the Supreme Court in Star Sports India Pvt. Ltd. v. Prasar Bharati and Ors[vi] held that Prasar Bharati can carry the telecast only on its own terrestrial and DTH network (DD Free Dish), and not retransmit the rights to private cable operators.
This statute is against the fundamental reason IP is protected in the first place. IP is protected to encourage creativity and encourage businesses to invest and advance technology in the respective field. Due to the absurd conditions in the Sports Act and related rules, specifically sharing of advertising revenue, only big players in the market can afford to invest in purchasing broadcasting rights and telecast them.
Broadcasting corporations new in the market are reluctant to bid in purchasing the rights as even if they do purchase them, they will have to compromise a significant share of their income to be able to telecast them in the first place, which new entrants into the field cannot afford. It creates a certain monopoly in the market (as Star Sports has established) which discourages investments from other firms in the business and further discourages innovative input.
AMBUSH MARKETING
Ambush marketing refers to a company’s attempt to capitalize on the popularity of a well-known property or event without consent or authorization of the necessary parties.[vii] It is a marketing strategy in which a competing brand associates itself with major sporting events without paying sponsorship fees.[viii] A marketer attempts to create a direct or indirect association with the sporting event to drive traffic to its product or service.[ix]
The fans of a particular sport are emotionally connected to it and express their support by buying fan merchandise and sponsor goodies. When a major sporting event is held, the sponsors of that event have the right to associate themselves with the event and market their goods and services. They hold the trademark and copyrights of the event and may use them in their advertising. Some companies, however, seek to exploit the opportunity and advertise in such a manner that they appear to be related to the event. In the Beijing Summer Olympics 2008, following Liu Xiang’s injury in the men’s 110m hurdles, Nike released a full page ad in the major Beijing newspaper featuring the image of the disconsolate Liu, a Nike-endorsed athlete, and the tagline: "Love competition. Love risking your pride. Love winning it back. Love giving it everything you’ve got. Love the glory. Love the pain. Love the sport even when it breaks your heart". Nike advertised in a manner that made it appear to be directly associated with the event, without securing official sponsor status.[x]
In India, ambush marketing is not specifically addressed in a legislation. Protection is sought under trademark/copyright infringement and unfair competition. There is need for a proper legislation in this regard since sports is an ever-growing field in India, and every year the value of sporting events organized in India, such as the Indian Premier League, increases significantly. Ambush marketing is a concern since competitors of the sponsors seek to take advantage of the sponsor’s association with the event. Hardly any incentive remains for the sponsors to pay a huge sponsorship fee since their competitors are usually successful in driving sizeable customers to their product at a proportion of the investment poured in by the sponsor[xi]. This environment discourages investments in huge sporting events.
NEED FOR SPECIFIC LEGISLATION UNDER INDIAN IP LAW
Most countries have separate judicial bodies and specific legislations which resolve disputes arising under sports laws, though courts in India have emphasized that arbitration fulfills the need to resolve disputes like these especially relating to sports laws.[xii] But when merged with the dynamics of IPR, it changes the dimension of the dispute completely, as the owner of an intellectual property would not settle for a middle ground with the party accused of infringing the rights related to IP, since a lot of investment in terms of time and money as well as efforts are put in to develop an intellectual property – be it a patent, trademark copyright or even a personality.
The growth of sports industries in India opened the gateway for IPR mostly due to opportunities arising out of sponsorship, broadcasting, personality rights, licensing, branding, trademarks etc. IP rights are important because of the economic returns that are attached to them. Effective management of these rights in return will maximize economic profit which will not only promote creativity among society but will also boost the economy with its returns. Sports as an entertainment industry has witnessed a huge growth in the recent years, with investments worth billions of dollars flowing in. Prof. De Werra in his book Sports and Intellectual Property[xiii], pointed out that;
“If intellectual property has something to learn from the sports industry, it can conversely be considered that the sports industry may have something to gain from the assimilation of the key values of IP law."
But for India to achieve this objective there is the need of an effective system, policies, rules and regulations to prevent infringement but more importantly a mechanism that can help in identifying as well as mitigating such disputes. India is slowly rising up the ranks to become a favorable destination for holding sporting events, but there is still a long way to go. Lack of specific legislation protecting IP rights in the realm of Sports Law leads to damages in goodwill, unfair trade practices, violation of competition laws, commercial loss such as investment, brand abuse, etc. ultimately discouraging the organizers. There has to be a legal framework to enforce and direct these laws and litigation is the viable option that fits perfect for mitigating IPR conflicts under sports law for the purpose for which IP rights are constituted. Most importantly, a system that addresses to complaints and disposes them speedily, is required.
CONCLUSION
Sports law is an emerging area in the field of law. In the last few years, India has organized many international sporting events, the prominent ones being the Commonwealth Games, ICC Cricket Matches and the 2016 South Asian Games. As such, India is growing as the preferred destination for organizing sporting events. India had also placed its bid for hosting the 2032 Summer Olympic Games but dropped that and is now focusing on the 2026 Summer Youth Olympics. As the nation seeks to host more and more international events, a lot of internal legislations and policy changes are required to be made to ensure the least complications for international organizers, participants and investors.
One of the pivotal rights that needs to be protected is the IPR of the associated persons and business entities. Personality Rights, Broadcasting Rights and Ambush Marketing are some supplementary areas in this field which have no specific legislation designed for them and as such have to rely on trademark or copyright infringement laws for their protection. Hence, there arises a need for a separate legislation to ensure proper protection of these rights.
Another area of reform to be focused on is the restrictive Sports Act of 2007 which imposes a lot of unfavorable conditions on the broadcast of sporting events and the advertisement revenue generated from them. It discourages investment from new players and leads to a virtual monopoly. Sports as a growing entertainment industry that runs on billions of dollars, needs such restrictive legislations to be done away with to attract investments from new businesses and individuals that bring in novel, innovative ideas that enhance creativity and further lead to growth of the industry as a whole, not only nationally but on a global level.
The authors can be reached for comments on their emails at surbhit.shrivastava20@outlook.com & dhagarran@gmail.com
Cite as: Surbhit S. & Nimish D., Supplementary Areas of IPR in Sports Law in India–Need For Specific Legislation to Address Conflicts, Extra-Cover: The Sports Law Blog of India (5th December 2020), Accessed at https://www.extra-cover.org/post/supplementary-areas-of-ipr-in-sports-law-in-india-need-for-specific-legislation-to-address-conflicts [Date of Access].
End-Notes: [i] ICC Development (International) v. Arvee Enterprises, 2004 (1) RAJ 10. [ii] Gautam Gambhir v. D.A.P and Co. and Ors, MANU/DE/5440/2017. [iii] Amendment to The Sports Broadcasting Signals Act, IAS Parliament (Oct. 29, 2008) https://www.iasparliament.com/current-affairs/amendment-to-the-sports-broadcasting-signals-act [iv] Vide G.S.R. 687(E), dated 31/10/2007, published in the Gazette of India, Extra., Pt. II, Sec. 3(i), dated 31/10/2007. [v] IAS Parliament, supra note 3. [vi] Star Sports India Pvt. Ltd. v. Prasar Bharati and Ors, MANU/SC/0655/2016. [vii] Sandler D M & Shani D, Olympic Sponsorship vs 'Ambush' marketing: Who gets the gold?, Journal of Advertising Research, 29 (4) (1989) 9, 11. [viii] Macmillan English Dictionary, http://www.macmill andictionary.com/spellcheck/ british/?q=ambush+marketing (11 April 2010). [ix] Rukmani Seth, Ambush Marketing – Need for Legislation in India, Journal of I.P.R. 455, 461 (2015). [x] Manish Tiwari & Radhika Bhargava, Protect the Sports; Protect the Sponsors: Need for an Action against Ambush Marketing, India L.J. (2007). [xi] Rukmani Seth, supra note 9. [xii] M.P. Triathlon Association through its Secretary and Anr. v. Indian Triathlon Federation and Ors, Transfer Petition (Civil) No. 239-252 of 1996 with No. 384-396 of 1996. [xiii] Aswathy Sujith, Sports and intellectual property rights – An overview on the Indian Standards, The Law Brigade, http://thelawbrigade.com/wp-content/uploads/2019/05/Aswathy.pdf