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By Rishika Mendiratta (Founder and Managing Editor at KhelAdhikar)
It is a game before a product, a sport before a market, a show before a business– Michael Pairus
The above lines hold true for a bygone era. The corporatization of sports in today’s world has an embedded commercial aspect. The athletes are players as well as endorsers, the teams are a talent pool and a brandwagon, the team uniforms assign identity but the sales of its merchandise signifies customer loyalty. Sports and business work hand-in-glove with various organizations in creating better opportunities for all athletes across the globe. The thriving source of any business in today’s technologically diverse world is the protection of intellectual property. It enhances goodwill, protects originality and incentivizes creativity and innovation. Thus it has been aptly summed up by Mark Getty, “Intellectual property is the oil of the 21st century”.
The success of any sports event, be it Olympics, World Cup, National Games or professional and semi-professional leagues depends upon various stakeholders such as – sponsors, broadcasters and players etc. Each of them has a specific category of Intellectual Property (IP) portfolios peculiar to their distinct roles. The official sponsors would want to ensure their return on investment by preventing unrelated third parties from free-riding through their superficial association with the event. (Commonly known as ambush marketing) The broadcasters aim at preventing economic leakages by unauthorized usage of video clippings or piracy of live streams. The players have to assure that their personal endorsements do not conflict with their team and event sponsors. The transition from Orwell’s classification of, “Sports is war minus shooting” to Andre Maurious’ description of, “Business is a combination of war and sport” encapsulates the present scenario of societal and commercial inter-linkages of the sports industry. It has become an important source for job creation and resource mobilization giving the necessary impetus to the world economy.
The forms of IP that usually intersect with sports events are mainly Trademark, Copyright and Designs.
Trademark protection can generally extend to a word, phrase, letter, number, sound, smell, shape, logo, picture etc. The function of the trademark is to distinguish the product or the services offered by an entity. The distinctiveness is associated with the enhancement of the goodwill of the enterprise. In sports, such protection could extend to team names and logos, event names, domain names etc. For example, VIVO IPL, DLF IPL, Mumbai Indians, Kings XI Punjab can all be protected under the ambit of trademark. Realizing the importance of brand creation during IPl, the teams also file for trademark registration of consumable products, such as meat, tobacco products, tea, coffee, mineral and aerated water, ﬁnancial services, insurance, websites, telecommunications, entertainment as well as games and playthings. Seems like trademark registration has itself become a trademark!
The protection of domain names under trademark is mainly routed through the mechanism of passing off remedy as they are not bounded by territoriality. Consequently, the protection under Trade Marks Act, 1999 may not serve any purpose. Domain names are instrumental in forming a connected brand image, portability and search engine optimization. Their protection has, therefore, become essential to evade the problem of cybersquatting of official team and fan engagement websites.
Copyright exists in original literary work. The creator is the owner unless and until the work is licensed or assigned. For example in IPL, the copyright may be extended to website layout designs and also to the team uniforms under Copyright Act 1957. The broadcast rights of the game are assigned through bids each year. STAR India presently holds the global telecast rights for the IPL tournament. As per Brand and Content Protection Guidelines, 2018 (IPL Brand Protection Guidelines), audio-visual images of match footages as well as deferred highlights are all protected under IPL IPR. To ensure that that official media rights holder can get the money value of their investment, in addition to preventing third-party misuse, the limits of fair use in journalistic coverage have also been prescribed in the Regulations for News and Current Affairs Broadcasters for Audio Visual Broadcasting, 2018. (IPL Media Guidelines). The guidelines mandate that the news channels can only broadcast 5.5 minutes of Fresh Footage during the day. The Fresh footage can only be shown for 2 minutes in an hour and there are only two repetitions allowed during the day. Besides, the broadcast on the channel has to be at least delayed by 30 minutes. No alterations are allowed in the video that is shown on the channels. There should not be any intentional advertising when the video footages of games are broadcasted in order to prevent commercial gain from such qualified rebroadcasting. IPL Media Guidelines, thus ensure that the official broadcasters are not at the receiving end of the fair-use exception.
Piracy in India has increased in all sports in general and IPL in particular by leaps and bounds. As per the data of a UK based anti-piracy company FriendsMTS, it has been reported that even in 2017, around 1700 URLs were streaming IPL illegally. In India, there have been instances of piracy as reported by Star India wherein the Delhi High Court directed the Internet Service Providers (ISPs) to block the websites instead of URLs as they can be easily manipulated by the change of web address. The passing of John Doe Orders is also a common resort to prevent piracy by targeting actual and potential infringers by the Indian judiciary. Other methods such as usage of watermarking technology to identify the source of illegal broadcasts and strengthening of the monitoring system can help the curb the problem of piracy to a great extent.
In addition to the remedy provided by the IPL Media Guidelines, the substantial piece of legislation governing and protecting sports broadcasts in the country is the Copyright Act 1957. Sports events can be subsumed under the definition of performance defined under section 2(q) and players of sports event as performers defined under section 2(qq). Broadcasting of live sports will also come under the purview of section 13(b) which protects cinematographic films. The protection for the broadcast of such events is covered by Section 37 which secures the rights of broadcasting organizations in general and section 38 which preserves the rights of performers. Therefore in case of infringement of exclusive rights, broadcasters can take recourse by filing a suit under section 37 or 38 of the Copyright Act 1957.
Design gives protection for the visual appearance of the product and not its mechanism or functional aspects. In sports, footwear, team merchandise and even some aspects of sports equipment can be protected under the Designs Act, 2000.
The intersection of IPR and sports is most prominent through the aspect of ambush marketing. It is a mechanism by which a third party tries to piggy-ride on the popularity of someone else’s established brand value. It can include indirect association with any copyright, trademark, design, domain name etc. It is a trite observation that ambush marketing has become the playfield of the advertisers during all major sports events.
As explained below, each edition of IPL has witnessed its share of ambush marketing. India does not have a sui-generis system to prevent ambush marketing. Moreover, there is no event-specific legislation to prevent the same as is common in many other countries. In India redress is available through the Trade Marks Act, 1999 (during unauthorized use of same or similar mark), the Copyright Act, 1957 (in instances of unlawful replication of the logo, tagline or quotes etc.), the Emblems and Names Act, 1950 and the common law notion of passing off (in case of unlawful association with the goodwill) depending upon the form of IPR that has been infringed.
As we near the end of VIVO IPL 2018, following are examples of some prominent instances that have cropped up in the 11 years journey of Brand-IPL
The harmless yet impactful ways in which ambush marketing can occur at IPL are as follows. As per the Brand and Content Protection Guidelines, 2018 the following acts constitute ambush marketing –
“it is unlawful to (i) use the IPL Names and IPL Marks in a manner likely to cause confusion among members of the public as to the existence of a commercial association with the IPL, or
(ii) reproduce or distribute items using IPL IPR in the course of trade. The IPL Names and IPL Marks cannot be used on goods, in business names or in advertising or promotions without a license from the IPL or one of its authorised licensees that, in turn, has the rights to grant sub-licenses. It is also unlawful, through the use of the IPL IPR, to falsely represent or imply any association, affiliation, endorsement, sponsorship or similar relationship with the IPL.
It is important to note that a formal or pre-existing association with any of the eight participating franchises does not permit a team partner or team sponsor any right to use the IPL IPR (other than the specific rights such franchisee is authorised by the IPL to license) without the prior authorisation of the IPL.”
- Incidental instances of ambush marketing– The sponsorship rights do not include various associated rights. For example, CEAT is the umpire sponsor for IPL 2018. The associate sponsors or category specific results in indirect association with the main events. In the previous editions, although DLF and Pepsi were official sponsors in different seasons, Vodafone and Karbonn as presenting sponsors did hog on to a lot of limelight. The same holds true for team sponsors or specific event sponsors. For example, Burger King is one of the sponsors for the Mumbai Indians. It has started an event Sixes for Kings whereby it will donate money equivalent to the sixes hit by the team members to a charitable cause. The average consumer with imperfect recollection tends to associate the fringe sponsors with the main event, with effects similar to intentional ambush marketing.
- Direct ambush marketing– One of the most common forms of ambush marketing is through television advertising. Therefore there are so many brands such as Coca Cola, Pepsi, Jio, Vodafone, rushing to grab the advertisement spaces during matches to enhance their brand recall. This platform is widely exploited for direct ambush marketing. For example in 2013, Quickr came up with the concept of IBL (Indian Becho League) wherein it was portrayed that if the unsold cricketers were gadgets they could have been easily sold on their website. As there was a likelihood of confusion and similarity between the acronyms IPL and IBL, a legal notice was sent to Quickr to beep out word IBL.
- There have been various creative attempts to indulge in various forms of surrogate advertising. For example in 2017, Parle came up with Indian Food League (IFL) where dishes specific to the region of the IPL teams were pitted against each other and daily winners were awarded prizes.
- Last year, even Jio ambushed the title sponsor Vodafone by creating a Mexican wave in the stands in the formation of the word “JIO” during the match between Mumbai Indians and Sunrisers Hyderabad.
- In 2008, BCCI had filed a suit against an online gaming company and rediff.com pertaining to domain name registration and launching of the game- Indian Fantasy League – Indian Fantasy Cricket. The name of the league was considered to be deceptively similar to the IPL logo and name. Thus Madras High Court prohibited their usage as it amounted to infringement.
- In February 2018, BCCI won a legal battle against Grace India Sports Private Limited. (GISPL) for attempting to start Indian Junior Premier League. (IJPL). Bombay High Court banned GISPL from using any trademark or domain name such as http://www.iijplt20.com or juniorsipl.com which was deceptively similar to IPL with respect to similar services or goods.
- In 2015, the opening ceremony of IPL was not only a bummer for the audience but also BCCI. The organizers failed to get permission from the copyright society Indian Performing Rights Society (IPRS) for using the music for the opening ceremony although it had been taken for using the songs played during the matches. BCCI was slapped a legal notice for this non-compliance by IPRS and had to pay the license fees immediately to remedy this defect.
Consequences of Infringement of IPL IPR
As per the IPL Brand and Content Protection Guidelines and the Advance Notice sent to the potential competitors by the BCCI’s Legal Advisor, “Copyright Integrity International” the primary remedy against any infringer is the sending of the legal notice to the opposite party informing about the infringing action, instructing them to stop indulgence in the same. Any non-adherence to the notice allows BCCI to resort to any criminal, civil and administrative remedies. This includes a suit for injunction, compensation for damages or an account of profits.
IPL Media Guidelines treat the violation of the mentioned guidelines as a material violation and BCCI is authorized to take any legal action as mentioned therein. They also explicitly mention that the BCCI is not barred to take any action under contracts or specific relief in the form of revocation, suspension or cancellation of media accreditation.
The protection of the IPL IPR has certainly been strengthened by the above-mentioned measures. IPL is the 5th most watched sports tournament in the world. The official broadcasters and commercial sponsors occupy the driver’s seat in directing the successful journey of this tournament. As the enormity of IPL increases each season, it is incumbent upon the organizers and the country to come up with better mechanisms to protect and incentivize the effort, support and contribution of the commercial entities. A sui-generis ambush marketing legislation, a centralized monitoring agency to track online piracy, combined with an effective and efficient judicial mechanism for dispensing contractual and statutory remedies in a time-bound manner during the tournament will go a long way in protecting India’s very own Intellectual Property League.