An analysis of IP rights in Japanese sports business – Part 2

In the second part of this two-part series on IP rights in Japan, Takuya Yamasaki analyses the legal measures that can be taken to protect sports rights holders in Japan with a focus on infringement cases of ‘broadcasting rights’ and ‘sponsorship rights’.

In relation to sports event organisers combating these kinds of parasitic business practices there are two types of cases that outline the legal measures that can be taken to protect rights holders:

1. 'broadcasting rights' infringement cases (the limits associated with the lack of IP rights protection afforded to 'sports matches'); and
2. 'sponsorship rights' infringement cases (the limits associated with the protection of sports content as a 'brand')

'Broadcasting rights' infringement cases

Based on the ownership of a venue, sports match organisers/hosts and broadcaster that acquired the rights to broadcast a match cannot prohibit acts such as broadcasting by third parties or the transmission of information about the match.

In the afore-mentioned American 'SportsTrax' case, the claimant asserted that a basketball match in itself was a copyrightable work; however, this was rejected outright by both the first instance court and the appeals court. Also it was judged that the act of extracting and transmitting facts from the match broadcast was not an infringement of the copyright in terms of the audio and visual recordings of the match broadcast¹.

Therefore what legal means can be used to prevent unauthorised parties from exploiting the content of a match? There are considered to be 3 main approaches to this problem:

• Approach 1 - categorise such acts as the stealing or plagiarising of 'brand' value and to curb these by using the provisions of Japan's Trademark Act and the UCPA.
• Approach 2 - engage parties who are likely to commit such acts and gain their 'consent' in advance to contractual obligations that they will not commit these. Thus, control can potentially be asserted when such contractual obligations are infringed.
• Approach 3 - use tort law to control such acts (Japan's Civil Code - article 709 - Damages in Torts). This approach envisages that parties who infringe (intentionally or negligently) the rights of the sports event organiser and/or the broadcaster, which are contained in the broadcasting contract(s) agreed between the parties, could be pursued for liability under the said provision.

These three approaches are considered below.

Approach 1 – use of trademark laws as a means of control

The objective of Approach 1 is to utilise the provisions of Japan's Trademark Act and the UCPA to control 'unauthorised transmissions' of a sports match's content.

The Trademark Act and articles 2(1)(i) and (ii) of the UCPA (which cover acts of displaying indications of famous names and people), provide protection for marks/indications used in the course of business. The protection of team names and logos as 'brands' in the sports business will of course bring into effect the aforesaid trademark laws. These laws will not protect the 'content' or the 'intellectual creations' themselves; however, the business mark, when used consistently as a mark (e.g. when used in a form to indicate the source of the goods and services) should provide protection.

Accordingly, in this context let us consider the term 'Manchester United'. Basically, if this term is merely used in the text of a book, or as the book's title merely to indicate the book's content and not the source of the product, these uses cannot be controlled through the aforesaid trademark laws. There are of course limitations when using the laws concerned with protecting brands for the purpose of protecting sports contents.

There have been frequent efforts within the sports world, facilitated through a broad interpretation, to use 'brand protection laws' as if they functioned closely to 'contents protection laws'.