By Abhay Singh (student of OP Jindal Global Law School) and Sakshi Pawar (co-founder and Managing Editor at KhelAdhikar)
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“A patent, or invention, is any assemblage of technologies or ideas that you can put together that nobody put together that way before. That’s how the patent office defines it. That’s an invention.” – Dean Kamen
Patent law in sports move has been in dispute for a long time now. Before coming to arguments for and against it, we need to first look into the principles of patent law. There have been various patent of sports move in the United States of America (USA) but there are no patents in the United Kingdom (UK) and India. This paper will give a brief overview regarding the patent law and how it affects the athletes. There are also arguments to be made for copyright and trademark protection of sports moves however that will be discussed in an upcoming article, the focus of this article is primarily on patenting of sports moves.
Currently, there are very few patents on sports moves but the few that are popular and well known are those such as D.S. Miller’s Dominant Hand putting method and Nolan Ryan’s baseball pitch, both in the USA. D.S. Miller’s dominant hand putting method has an interesting story where he was unable to putt properly due to a hand injury and thereafter devised a method by which he could hold the club normally in his right hand and place the left hand above the right wrist on the club. He showed that this had brought his handicap from 15 to 8! It was clearly a marked improvement from the previous technique and could provide a considerable advantage to anyone else who tried it.
The standard for an invention to get a patent is that it should be new, useful and non-obvious. And if an invention meets this standard, the patentee has the right to exclude others from using his inventions for a certain limited period or he can charge a fee for using his patented invention. According to Article 27(1) of TRIPS (Patent Law), Patents shall be available for any inventions, whether products or processes in all fields of technology, provided that they are new (novel), involve a non-obvious inventive step and are capable of industrial application.
A patent should be novel or new in light of the prior art, which includes all the information and the knowledge relating to the invention that was available on the date of the patent application.
There are various circumstances that can negate novelty, but we will only look into public use for the purpose of sports move. If an athlete patents a move or a play, he can’t practice it in front of teammates because that will amount to public use. He has to then file the patent quickly and hope that he doesn’t lose his chance for patenting the move. Patenting a move is generally not on the minds of the sportspersons while practising certain new and innovative moves or plays. All the athlete wants is to practice that unique move to get better in the sport. Human movements are limited, so all the movements are known to everyone. Therefore there is nothing which can be addressed as a new invention which is not in the public domain.
2. Inventive Step
The invention should also be non-obvious inventive step, and such obviousness should be determined in the perspective of the person skilled in the art. Sports being competitive in nature, it is very much possible that at least one of the athlete might have come up with the move, thus the move would be obvious and in the public domain. To explain this further, an example of the Fosbury flop in high jump would deem fit.
High jump had remained static for a while even after Fosbury flop because most athletes invested a lot of time in their own technique that they didn’t want to change it. The younger generations although explored this method and it took around a decade for people to use it as standard (patents last for 20 years as per TRIPS). Imagine if Dick Fosbury would have patented the move, he could have taught other athletes and could have made money from it and developed more new ways to use it. So, therefore, a patent wouldn’t have caused any problems in the sport. Fosbury could have got it patented on the basis of novelty and inventive step because of its uniqueness and non-obviousness.
3. Capable of Industrial Application
According to Patent law, an invention should be capable of an industrial application. It means that the patented invention should be used in industry etc. This principle is tangible and not abstract. At this point, a patent for sports move would likely be rejected. There is no example as such that sports move can be used in an industrial setting.
We have already discussed some parts of arguments for and against the topic in this part of the paper, but there are various more arguments which will be dealt with in the next part.
“Inventions Change the World, Not Patents” ― Kalyan C. K.
ARGUMENTS AGAINST GRANTING PATENT
The public should not be prevented from doing anything which is already an extension of what is already known. The human body has a limited range of moves, so therefore every movement is already in the public domain. As per the Indian Patents Act, 2005 (Indian Patents Act), section 3(c) states that “the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature” and is the statutory embodiment of the same principle.
No one wants to see the same team win every time, therefore, patenting a move would not be in public interest. Since the fans will lose interest after a point of time because they know that there is only one team, which is going to dominate every other team and win everything. Patenting a sports move gives an unfair advantage to the athlete because there is no competition. There are certain situations in a game, where, in order to win a game you have to do a certain move that was invented by someone else. Let’s take an example of the bicycle kick, during the world cup qualifier between Sweden and England, Joe Hart punched the ball away and Zlatan, from 30 yards, took a bicycle kick. There was no other way that he could have taken a shot apart from attempting a bicycle kick. A sport is dependent on the circumstances on the field and patenting a move would cause serious restriction on the movement of the athlete and how the game should be played.
Patents do not allow for innocent infringement or independent organization as a defence to using that invention. This can create problems as someone may eventually due to the constraints of the game accidentally use that move or something akin to it and it would invoke a legal battle. That isn’t even the greatest problem, there is also the consideration of the status of a win-loss in a match when such a situation occurs. Let us imagine a situation where a player in the middle of the tennis match seemingly uses a serve patented by another player. The referee would obviously be required to halt the match and determine whether such an infringement took place or not and whether to award any penalty points or to ask for a re-serve. Worse, imagine if the player is aware of certain fallacies in the filing of the patent and asserts that even if he had used that same sports move it would not be incorrect. At that very moment, the legal implications cannot be determined and even if the match can be continued the fans have not only lost the enjoyment brought by momentum in a match, but they are also left unsure as to the capabilities of the players. The feeling brought by the sport will be removed.
Besides, there is also the question of derivative sports moves. The slam dunk that Micheal Jordan is famously associated with is said to be a derivation from Dr J’s (Julius Erving’s) style of play that emphasizes leaping and playing above the rim. If such a derivation were to happen innocently in the game what would be the rights and legal implications associated with that? Patenting of a sports move would not only cause overthinking in the players to ensure that they don’t make a mistake but it would also pave the way for many more unsolvable legal questions.
Another major problem for patenting a sports move is enforcing the protection set forth by the patent. Let’s take an example of a patented method of putting in golf. It would be tough to police and check whether there was infringement in certain golf competition because the patentee can’t monitor every competition. He/She would require someone to police it, the only viable options being match officials of the game or the groundsmen and this will require extra funding and the patent holder would not like to bear such a cost. Televised games would be easier to oversee because they can be used as evidence if the patent holder goes to the court for the infringement of the patent protection.
The argument that the patent encourages innovation, and if the athletes are rewarded for it they will be more inclined to come up with new moves. This argument is absurd because sports are competitive in nature and all of them want to win and strive for the best on the field. Therefore, there is no need of giving further incentives because it will take out competitiveness out of the sport and will make the sport easy for one team, hence making them favourites to win every time.
“A patent a day keeps the competitor away.” ― K.C. Kankanala
ARGUMENTS FOR GRANTING PATENT
Kunstadt was the first one to talk about IP rights in sports moves but his argument concentrated mainly on copyright and trademark protection and had limited arguments for patent protection. He argues that an athlete by his own labour develops a new move, so he is entitled to the protection. His only main argument was based on economics and argues that the athletes should get some rewards since their movements are part of the fuel that drives the sporting economy.
An argumentsuch as the career of an athlete is short in comparison to any other profession, so they should be entitled to a patent to ensure that they are financially secure after their retirement. It carries very less weight since most of the sponsorship, advertising etc. are done by the top athletes of each sport and they earn the major part of the revenue in comparison to an amateur who earn little. If Patent protection is granted it would be grossly unfair and it won’t be equitable towards the amateurs. Since the career of an athlete usually short, therefore patenting a move for the 20-year term would give him a monopoly over the right for the use in the sport.
Moreover, the problem lies in the natural law libertarian view that there should be no restriction of freedom in the manner of moving the human body merely because an attorney filed an application in the patent office. This point of view is incorrect primarily because the filing of the patent does not take away anything from society. If it did restrict the movement of our body and make us realise that we would be prevented from playing a sport in a particular manner, then this patent wouldn’t be non-obvious and new in the first place. Let us return to the example of the Fosbury Flop which was so unique that when it was first used people laughed at it and didn’t feel inclined to follow the method. The method was so unique and absurd that not using it did not make anybody feel deprived of that bodily movement. Therefore, a patent is not taking away a right that belongs to society, as a matter of fact, it is awarding monetary consideration to someone for an addition to society. Scholars like Nozick have defended patents and copyright with the “Lockean Proviso” which states that “[a]n inventor’s patent does not deprive others of an object which would not exist if not for the inventor.”
Additionally, nothing has prevented the leagues, countries and Intellectual Property (IP) organizations from drafting rules to level the proverbial playing field by preventing the patentee from making an exclusive use of the patented move. This could be done by creating a non-exclusive license with a nominal fee. It would increase the incentive to create novel playing methods in sports while at the same time ensuring competition across all players. There is, however, a problem of harmonization of these rules across all countries and the possibility of continual amendments in them. There is also the issue that countries believe that playing sports is a sovereign matter and might place additional restrictions in cross-border licensing while at the same time enthusiastically ensuring the non-exclusivity of these same licenses within the country. Although rules and treaties to ensure sports development may seem like the answer, it may be best to avoid unnecessary politicisation of sports.
Lastly, it is also important to notice that the USA patent provisions would argue for sports move patenting while the Indian and UK law provisions would not. This is because the US law follows the test laid down in Diamond v. Chakraborty which states that the anything made by man under the sun can be patented. The major exception to this is natural phenomena or something which is a produced by nature itself. Two patents can be an example of this, first, is that a method or surgery can be patented in the USA and second, that the USA has also granted patent such as one on a method of typing which prevents injuries such as carpal tunnel syndrome. The first is a new and unique method of performing a surgery which provides a monetary advantage to the surgeon when patented. The second is a form of bodily posture which is medically known to be better and has been derived through different stratagem. These two patents show that the USA is not hesitant to grant patents even though it affects public health (for example in India, methods of medical practice cannot be patented as it would increase public health cost) and also that the USA will grant patents on bodily movements if they are not merely natural but on the other hand have been deduced with research to be better than the natural postures that people already use. This shows that the USA is not concerned with two of the major arguments against patenting sports moves that is, public enjoyment of the sport being affected and patenting of bodily movements. In India on the other hand, the social effect of a patent is given greater importance over the commercial aspect. Therefore various provisions of the Indian Patent Act, such as section 3(h) states that method of horticulture and agriculture and 3(i) states that anything curative or procedure relating to medicinal practice cannot be patented. Due to the impact on farmers and public health both these patents are not allowed. More importantly, section 3(m) of the Indian Patent Act does not allow a mere scheme or rule or method of performing mental act or method of playing a game to be patented. Although this might be a reference to playing games such as chess where mental stratagem is involved as opposed to the difference in bodily movement, India’s present global standing in sports is still not high enough for India to approve of licensing of new sports methods.
“We think we have solved the mystery of creation. Maybe we should patent the universe and charge everyone royalties for their existence.” – Stephen Hawking
OWNERSHIP OF THE PATENT
The Indian Patent Act does not define proprietor anywhere in the act. It just says in section 2(p)  while defining the meaning of patentee that the person for the time being entered on the register as the grantee or the proprietor of the patent. Any person can apply for a patent.
If the issue of Intellectual property ownership in an employment arises, the employee and employed relationship must be taken into consideration. If a coach or a sports player develops a new move or a new play, he doesn’t have the right of proprietorship over it because it will be taken by the employer where it was made in the course of normal duties of the employment. This is because employment contracts generally stipulate that any Intellectual Property Right (IPR) created by the employee during the course of employment shall belong to the employer.
An athlete would be unable to benefit financially when the sports move is made in course of employment, even if they are recognized as the inventor. The main right an athlete might get that they will be named inventor or co-inventor on the patent of the sports movement and this might give advertising and sponsorship opportunities to him/her.
One of the difficulties that arise when a sports coach develops a new move or a new play with the cooperation of an athlete is deciding the rightful inventor of the move. There might be instances where the coach is the inventor but the only way he can be sure that the certain play is effective or not is by practising and develop with the help of the athlete. We can also say, alternatively that an athlete also needs the help of the coach in order the hone and refine the move for better results.
First, considering what constitutes non-patentable subject matter under section 3 of the Indian Patent Act it seems unlikely that there will be any possibility of sports moves being patented in India. India specifically does not permit methods of playing games to be patented. Even more so, India does not allow patents which may have an adverse social impact to exist. In a country like India where sports is any way stymied due to various other factors, it seems unlikely that the Patent Office will permit it, even if it will satisfy the three criteria of patentability.
Second, even if Indian law accepts that patent should be allowed in sports moves, it would require the support of the organizing bodies or leagues in adopting a private law solution. Besides, court or the government are not likely to interfere with it unless or until it begins to impair competition and revenues in the professional sport. If it is found to be effective, then there is no need for legislation, but if not leagues may get a persuasive evidence that can bolster their case for statutory governance of the same.
Lastly, we feel that the arguments against the patent law make more sense because there won’t be any restriction on an athlete during the game and he can do any move freely without thinking about the consequences of it. The athletes can perform at a high level for a longer period of time because of no restriction. It will ensure that competition will be fair and no one athlete will unfairly dominate the other.
World Trade Organizations. (n.d.) https://www.wto.org/english/docs_e/legal_e/27-trips_04c_e.htm
 Ibid 1
 Can you patent a sports move. (n.d.). Retrieved from https://www.lawteacher.net/free-law-essays/sports-law/can-you-patent-a-sports-move.php
 Supra 1
 P. Bigold, Sports Saturday, Interview with Dick Fosbury, 13 February 1999, available at: http://archives.starbulletin.com/1999/02/13/sports/story2.html_on_30.12.99
 Supra 1
 Ibid. 8
 C. A. Kukkonen III, Be A Good Sport and Refrain From Using my Patented Putt: Intellectual Property Protection for Sports Related Movements, (1998) 80 J. Pat. & Trademark Off . Soc’y, pp. 808-829 at pp 819-820
 ROBERT NOZICK, ANARCHY, STATE, AND UTOPIA, 182 (1974).
 Indian Patents act,1970
 Patents Act 1977 s. 39(1)(a) (USA)