How sports rights holders protect against IP infringements in India: Part 1 - overview of IP laws

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:

Copyright

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”. 

Trade Marks

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.

Design Rights

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/Personality Rights

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. 

Data Rights

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