MODULE 4
IMAGE, PLAYER AND MEDIA RIGHTS
4.1 INTRODUCTION
The right of an individual comprises the right of publicity and the right of image flow from
the right to privacy of individuals. Such rights control the commercial use and exploitation of
a person’s identity. Initially, the unauthorised use of a person’s name, sameness and image
were only protected by the right of publicity. However, it has now been expanded
considerably. It now protects all the attributes that identify a person. Image rights are still
considered as a sub-category of publicity rights. The identity of an individual refers to all
definite, identifiable, elements which make up a distinct persona, including the individual’s
physical appearance, image or likeness, name, voice, signature, style, photograph, gestures,
recognizable attire, look and facial features. An individual or any third party on behalf of an
individual following assignment or inheritance exercises the right of publicity which is a right
in personam. The right of publicity incorporates the right to initiate an action to prevent the
wrongful expropriation of an individual’s identity for commercial purposes without his or her
consent or seek compensation.
The jurisprudence on publicity and image rights is in its incipient stage in India. Also, the
right of publicity and the right of image have not been recognised as distinct legal rights by
the judiciary. “The right of publicity does not extend to events and is constricted to persons as
stated by the High Court of Delhi in ICC Development (International) Ltd v Arvee
Enterprises1”. Thus the existence of the right in principle was recognized by court.
To secure statutory protection against any misuse individuals may apply for the protection of
their name, likeness and nicknames, among other things, with the Indian Trademarks
Registry. This is of crucial importance for sports persons who intend to use their image and
likeness to identify their own or an authorized line of merchandise. In the absence of statutory
protection, an individual may also resort to an action for passing off in order to protect his or
her publicity and image rights. However, an action for passing off requires proof of:
12003 (26) PTC 245 Del.
o the reputation of the individual;
o some form of misrepresentation; and
o Irreparable damage to the individual. Use of a celebrity’s name as part of a domain
name may also be prevented under trademark law by:
▪ bringing an action before a court of law; or
▪ Filing a complaint under the Uniform Dispute Resolution Policy procedure of the
Internet Corporation for Assigned Names and Numbers.
In the context of sports related marks, additional protection is also afforded under
the Emblems and Names (Prevention of Improper Use) Act, 1950 to prevent the improper use
and registration of certain emblems and names for professional and commercial purposes.
The only sports-related emblem and names currently notified and protected are “THE NAME
AND EMBLEM OF THE INTERNATIONAL OLYMPIC COMMITTEE CONSISTING OF FIVE INTERLACED
RINGS.”
In a case before the Calcutta High Court (Sourav Ganguly v Tata Tea Ltd), Sourav Ganguly,
a popular cricketer and former captain of the national team, discovered that a well-known
brand of tea was cashing in on his success by offering consumers a chance to meet and
congratulate the cricketer. The offer implied that the cricketer was associated with the
promotion, which was not the case. Ganguly successfully challenged the case in court before
settling the dispute amicably.
However, the adoption, use and protection of an individual’s name as a trademark may raise
the following contentious issues:
Use of the trademark in relation to the goods and/or services covered – it is important
to differentiate between the types of product that a celebrity could reasonably trade
under his or her name and goods which are mere ‘image carriers’ (eg, posters,
photographs and figurines).
Genuine use of a name that is similar to that of a celebrity – a celebrity’s rights in his
or her name may trump the rights of a person sharing the same name. However, the
Trademarks Act 1999 recognizes that an individual may use his or her own name in
good faith.
Cancellation on grounds of non-use – in the absence of actual use of the name as a
trademark, the mark may be subject to an action for cancellation on the grounds of
non-use, especially in light of the fact that a well-known name is likely to be protected
for all classes of goods and services.
Endorsement by multiple individuals – where a group of celebrities is associated with
a product, it may be difficult to define how the cumulative reputation and goodwill in
the product might be ascribed to any particular individual.
Works in which copyright vests are not required to be registered to be afforded protection, but
are capable of registration under The Copyright Act, 1957, the law in force governing
copyrights in India. The nature of rights and the extent of protection conferred on the holder
of the copyright depend on the nature of the holder’s work. The owner of a copyright enjoys
the exclusive rights to reproduce, perform, publish, adapt or translate the copyrighted work
and any such act undertaken without the license of the copyright owner would, generally,
constitute copyright infringement.
In order to register a work as a copyright protected work under the Copyright Act, 1957, the
author, publisher, or owner of the copyright in any work may make an application in the
prescribed form accompanied by the prescribed fee to the Registrar of Copyrights for entering
the particulars of the work in the Register of Copyrights.
The Register of Copyrights is a prima facie evidence of the particulars entered therein and is
permissible as an evidence in all courts without further proof or production of the original in
case of an infringement claim. This is a benefit to sports rights owners with registered
copyright protected works. As an example, Kolkata Knight Riders, a team participating in the
Indian Premier League has registered the team’s logo as an artistic work and the logo is now
registered as a copyright protected work. An infringement of the logo can therefore be
countered without issue by producing the registration certificate for validation before the
court, if the need arises.
As registration of a partnership firm helps the partners to file a suit. Similarly registration of a
design gives protection to the owner over the visual appearance of the product though not
over the functionality of the product. Owner secures exclusive right over the design of an
article against the unauthorized use of imitation of design by others. Products, in context of
sports, which can be registered under the Designs Act, 2000 are merchandise, equipments,
footwear, apparels.
The unfair competition legislation, the Competition Act 2002, prohibits anticompetitive
practices which harm the interests of consumers. Such practices include, among other things,
any act that suggests a sponsorship or endorsement which is untrue and/or misleading. Hence,
use of the name or image of a celebrity which creates the impression that the celebrity
endorses a product may fall under the provisions of the act. So far, only a few provisions of
the act have come into force; the remaining provisions will come into force in a phased
manner. In the meantime, individuals may rely on the provisions of the Monopolistic and
Restrictive Trade Practice Act 1969.
All advertisements are governed by the Code for Self-regulation in Advertising, which was
adopted by the Advertising Standards Council of India. The code provides that:
Advertisements should contain no references of any individual, firm or institution; and
The image of an easily identifiable individual may not be used without permission.
The Standards of Practice for Radio Advertising and the Code for Commercial
Advertising on Television contain similar provisions.
Generally there exists a conflict of image and player rights with freedom of speech and
expression. Often it happens that the right of image of an individual clashes with the freedom
of speech and expression of others (in particular, the media) under Article 19 of the
Constitution. At several instances the use of this freedom has been challenged by the Indian
sports personalities through the use of photographic images and material is preserved as it
serves public interest. In like manner, commentary and parody are valid defences. Post-
mortem assertion of publicity rights issues may arise out of the devolution of the publicity
rights of celebrities to their legal heirs.
Image and player rights have a conflict with freedom of speech and expression. The right of
image of an individual often clashes with the freedom of speech and expression of others (in
particular, the media) under Article 19 of the Constitution. In several instances, Indian sports
personalities have challenged the use of this freedom. However, the use of photographic
images and material is protected where it serves the public interest. Similarly, commentary
and parody are valid defences. Postpartum assertion of publicity rights Issues may arise out of
the devolution of the publicity rights of celebrities to their legal heirs. Roadmap for sports
personalities in light of those uncertainties, a sportsperson should:
ensure that a written consent is signed in every sponsorship, marketing or
endorsement situation where a third party obtains commercial benefits;
ensure that the consent on agreement is specific (permitted uses, media and
timeframe); and
specify in writing which images should not be made public or used in certain ways. In
light of the increase in celebrity endorsements, India must recognize the right of
publicity and image of famous individuals in order to manage the situation for the
benefit of all parties.
Case laws:
In ICC Development (International) Ltd v Arvee Enterprises, the Delhi High Court held that
the right of publicity does not extend to events and is confined to persons. The court thus
recognized the existence of the right in principle.
In Sourav Ganguly v Tata Tea Ltd, Sourav Ganguly, a popular cricketer and former captain of
the national team, discovered that a well-known brand of tea was cashing in on his success by
offering consumers a chance to meet and congratulate the cricketer. The offer implied that the
cricketer was associated with the promotion, which was not the case. Ganguly successfully
challenged the case in court before settling the dispute amicably.
Points to Remember:
o Right to publicity has now been expanded to protect all the attributes that identify a
particular person – specifically , his or her identity.
o The right of publicity is a right in personam which encompasses the right to initiate an
action to prevent the wrongful appropriation of an individual’s identity for commercial
purposes without his or her consent or seek compensation.
o The only sports-related emblem and name currently notified and protected under
the Emblems and Names (Prevention of Improper Use) Act, 1950, are “THE NAME AND
EMBLEM OF THE INTERNATIONAL OLYMPIC COMMITTEE CONSISTING OF FIVE
INTERLACED RINGS.”
o In order to register a work as a copyright protected work under The Copyright Act,
1957, the author, publisher, or owner of the copyright in any work may make an
application in the prescribed form accompanied by the prescribed fee to the Registrar of
Copyrights for entering the particulars of the work in the Register of Copyrights. In case
of an infringement claim, the Register of Copyrights is a prima facie evidence of the
particulars entered therein and is admissible as evidence in all courts without further
proof or production of the original.
o Registration of a design gives the owner protection for the visual appearance of the
product, not over the functionality of the product
o All advertisements are governed by the Code for Self-regulation in Advertising, which
was adopted by the Advertising Standards Council of India.
4.2 RIGHTS PROTECTION PROGRAMME
In relation to 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. Ideally, a rights protection programme is initiated well in advance of
the event, and remains in continuance until the conclusion of the event. Particularly, the rights
protection programme should address ambush marketing attempts, content piracy and
infringement of the sports rights owners’ intellectual and proprietary rights in and to the
sporting event.
4.3 IDENTIFYING STAKEHOLDERS AND RIGHTS REQUIRING PROTECTION
The major stakeholders or the sports rights owners, in relation to any sporting event are the
event organisers, the teams/franchises participating in the event, broadcasters, sponsors and
the individual players. As such, it is imperative that the essential rights of each of these
entities are safeguarded to ensure the success of the sporting event. The essential rights that
sports rights owners are most likely to protect are the use of event and team marks (logos,
word marks,), participating player images, match tickets and audio-visual content originating
from the event.
4.4 OUTREACH, EDUCATION & ADVANCE NOTIFICATION
This step of the rights protection programme involves identifying potential infringers,
specifically competitors of sponsors of the event, news broadcasters, broadcast platforms and
other important stakeholders, as well as known past infringers of sports rights (e.g., websites
streaming and hosting illegal match content) and issuing warning letters to these entities prior
to the commencement of the event, informing them of the sporting event schedule and clearly
specifying the assets and properties belonging to the rights holders, as well as defining the
limits of permissible and impermissible behaviour in relation to the event.
In India, the organisers of major sporting events often publish guidelines in the interest of
public education that serve to guide the general public as well as sponsor competitors on the
use of event marks, and permissible use and activities in relation to the event, but do take into
consideration the cultural sensitivities of such matters before initiating any formal legal
proceedings. The Brand and Content Protection Guidelines issued by Indian Premier League
prior to the 2016 season clarify that while the use of generic cricket terms and images in
promotional material may be permissible, any unlicensed and unauthorized usage in such
materials of the BCCI’s and event-related IP would be impermissible.
In recent times, event organizers, and official broadcasters of sports events in India have
issued News Access Regulations for news broadcasters in India that specify certain
limitations and appropriate use guidelines that the news broadcasters will comply with in
respect of their use of footage. A Delhi High Court decision has clarified that any guidelines
regarding news access issued by an official sports broadcaster must be issued at least two
weeks prior to the relevant event. Further, in the matter of ICC Development (International)
Ltd and Anr v. New Delhi Television Ltd., a Division Bench of the Delhi High Court held
that all television news channels should use match footage strictly in accordance with the
limits prescribed by the ICC or purchase the right to use such footage, from either the ICC or
the official broadcaster to whom the broadcasting and reproduction rights was assigned by the
ICC.
In addition to these guidelines, press releases, cautionary notices in newspapers and
magazines (in English and local languages) and other such informative advertisements in the
months leading up to the event that can enhance public awareness and protect essential
intellectual properties.
4.5 THREAT AWARENESS
In the context of intellectual property infringements, a sporting event is subjected to three
distinct threats: ambush marketing and trademark infringement; counterfeit merchandise;
online piracy of copyright protected content.
A sporting event in India is a major attraction and everyone wants to ride on the popularity
wave by associating themselves with the event in some way or the other. In many cases the
implied association is inadvertent and innocent, but there have been and will most likely
continue to be instances of deliberate misleading of the public to imply association with the
event without securing sponsorship or related rights officially from the event organisers. Such
instances of deliberate and sustained infringement can cause the rights granted to official
sponsors to be compromised, thereby diluting the value of the sponsors’ investment in the
event.
The following are the most common instances of (but not an exhaustive list of) tactics that
may be employed by infringers in relation to sporting events in India:
4.6 AMBUSH MARKETING & TRADE MARK INFRINGEMENT
4.6.1 PHYSICAL ADVERTISING:
The display of banners, commercial hoardings, mobile displays and other advertising
on the ground or on fixed infrastructure outside the perimeter of venues;
The display of commercial advertisement on non-fixed or inflatable media in the air
above the stadium or in its vicinity;
The systematic attempted offering for sale or free hand-outs of products outside the
perimeter of event venues, either expected to be taken into stadia or consumed prior to
stadium entry;
Third-party tie-ups and promotions at or through hotels and airports being used by
players and teams participating in the sporting event; and
Advertisements of live screenings and other hospitality offers in relation to the
sporting event.
4.6.2 ONLINE ACTIVITIES:
Cyber-squatting;
Promotional offers by websites using event names and logos implying association
with the event;
Keywords using proprietary names and marks;
4.6.3 MOBILE CONTENT:
Mobile games and contests which relate or refer to the event;
Mobile applications implying false association with the event and/or teams and/or
participants of the event;
SMS score updates; and
Promotions via bulk messaging which relate or refer to the event.
4.6.4 AD-HOC AMBUSH MARKETING ATTEMPTS:
Resale and commercialization of match tickets and official hospitality packages;
Promotions, contests, games and “good luck” or congratulatory messages;
Fantasy leagues, ratings and awards;
References to the event in promotional or marketing collateral; and
Sale of search and advertising keywords.
4.6.5 UNLICENSED USAGE OF MATCH PLAY FOOTAGE:
Syndicated event-oriented columns in newspapers and other media outlets written by
current players or former players and being sponsored by non-rights holders;
Incorporating news and political commentary into public relations campaigns and
news releases.
4.6.6 UNLICENSED USE OF DATA TO PROMOTE A BRAND/PRODUCT.
4.6.6.1 COUNTERFEIT MERCHANDISING:
a. The manufacture and sale of merchandise products bearing the name and logo of the
event or teams or of some or all of the participants in the event; and
b. Use of words, symbols or pictorials confusingly similar to event marks or team marks in
merchandise.
4.6.6.2 PIRACY OF ONLINE CONTENT:
a. Live streaming and archival footage through downloading copyrighted match play
footage and transmitting of such content via the internet either live or in a deferred
manner; and
b. Advertising and monetizing of revenues on websites offering live or archival footage of
event footage
c. Unlicensed uploading and monetization of content on third party websites;
d. Unauthorised commercial use of copyrighted match play photographs, illustrations, film
or broadcast feed; and
e. The production of print publications or television features about the event by non-rights
holders for commercial gain, which is considered inappropriate for news and editorial
coverage;
4.7 BRAND PROTECTION AND MONITORING
The implementation of an effective rights protection programme is largely dependent on this
step of the programme. Comprehensive monitoring, both online and offline (including on-
ground and surrounding areas) and enforcement are the mainstays of addressing IP
infringements by sports rights owners.
It is advisable to monitor potential infringements well in advance of the event, and continue
doing so through the entire duration of the event. The event organiser may choose to
concentrate on a few kinds of IP infringements that are likely to cause the most damage to the
event’s popularity and the rights of its sponsors. For instance, prior to the commencement of
the event, the number of unauthorised ticket sales and hospitality packages may be higher,
while marketing campaigns and promotions may go live as the event progresses.
While physical monitoring may prove to be problematic depending on the scale of the
sporting event, monitoring online channels can serve as a proxy, given that most marketing
campaigns have digital components in the present scenario. In order to minimise unlicensed
use and commercialisation of event footage, images and marks, all media platforms should be
monitored closely on a regular basis. Given that the intention of infringers is to reach-out to
the widest possible audience, regular online monitoring of known pirate websites and popular
social media and video upload websites is necessary, while offline scanning of advertisements
placed in newspapers and magazines supplements efforts to reduce infringements.
4.8 ENGAGING WITH INFRINGERS
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.
4.9 NOTIFICATION TO INFRINGERS
Notifying the infringers and directing them to cease infringing the sports rights owners’ IP
can be the first stage of action taken in engaging with infringers. Depending on the nature of
the infringement and its impact, the severity of the notice may differ. As illustrative example,
a notice to an official partner overstepping the boundaries of the rights granted to it may be in
the form of a legal communication, setting out a list of permissible and impermissible
activities whereas a notice to a repeated infringer may be much more stringent, demanding
full compliance within a specified time period, failure to comply with which will result in the
initiation of formal legal proceedings.
In relation to ceasing the infringement, notices must include list of demands for the infringer
to comply with and a statement of the sports rights owners’ rights. Based on the nature of
infringement, the demand as well as the tone of the notice may vary: for instance, in the case
of unauthorised use of the sports rights’ owners’ name or image, the infringer might be
directed to take down all such material making unauthorised use, but in the case of counterfeit
merchandise the infringer may be directed to either dispose of the counterfeit merchandise or
deliver the same to the sports rights owner and provide an account of profits. It has been
noticed that in case of first time infringers or inadvertent infringements, the notice is most
often sufficient to ensure that the infringer ceases and desists from making use of the sports
rights owners’ IP.
Given the purely offline infringement, if in case after reminders there is no response for the
notice from the infringers, the subsequent step should be to either report the case to the
relevant a agencies or initiate legal proceedings.
In case of online infringers, prior to legal proceedings, if the infringers do not cooperate or
conceal their identities to avoid notices, in such event the associated domain registry/ internet
service provider and a host of related service providers may be notified.
4.10 REPORTING INFRINGEMENTS TO LAW ENFORCEMENT AGENCIES FOR FURTHER
ACTION
If there lacks a specific legislation with regard to ambush marketing and related
infringements, the effective administration of the issue requires sports rights owners to have
liaison with the law enforcement agencies of local level and set clear protocols in
collaboration with these agencies so as to assert their rights. A few examples are provided
below:
4.11 COUNTERFEIT MERCHANDISE
In the case of counterfeit merchandise and merchandise making unlicensed use of the event
names and marks, the sports rights owners may, in the event the manufacturers of such
merchandise do not comply with the notice issued by the sports rights owner, either through a
specialised agency or by themselves, conduct search and seizure raids to ensure that the
infringing items (unlicensed merchandise in this case) are suitably seized, confiscated, or
disposed of, as required depending on the nature and scale of the infringement. For instance,
during the ICC Cricket World Cup 2011, the ICC, with help from the Bangalore
police, seized a number of counterfeit goods and illegal merchandise and arrested hawkers.2
4.12 DIRECT-TO-HOME ACCOUNTS
On identifying pirate direct-to-home accounts, event organizers may report direct-to-home
accounts being used for piracy to the television broadcaster, who then proceed to deactivate
the associated cable accounts. There also arises the question of certain dubious direct-to-home
set-top boxes that are widely marketed to the Indian Diaspora around the world, and which
provide unlimited content to unlicensed content. In 2014, Indian broadcasters came together
to initiate police action3 against Jadoo TV, a notorious player in this space.
4.13 BLACK MARKETING OF MATCH TICKETS
At the ground level, the issue of black marketing of match tickets at public places can be dealt
through local municipal "ANTI-HAWKING" laws. As a representative example, in Bangalore,
the activities of hawkers are regulated through The Karnataka Police Act, 1963. Section 92 of
Act, 1963 relates to “PREVENTION OF CERTAIN STREET OFFENCES AND NUISANCE” and
empowers the police authorities to imprison offenders. More specifically, the Act also
empowers the local police authorities to regulate or prohibit the sale of any ticket or pass for
admission, by whatever name called, to a place of public amusement. There have been
2‘Counterfeit merchandise seized’, deccanherald.com, 2 March 2011, last viewed 23 Nov
2016, http://www.deccanherald.com/content/142271/counterfeit-merchandise-seized.html
3‘Satellite TV racket busted in Hyderabad’, timesofindia.com, 30 June 2015, last viewed 23 Nov
2016, http://timesofindia.indiatimes.com/city/hyderabad/Satellite-TV-racket-busted-in-
Hyderabad/articleshow/37482679.cms
instances of police authorities arresting individuals for black marketing of match tickets
in Bangalore as well as other cities such as New Delhi, Indore and Kochi.
Case Laws:
In ICC Development (International) Ltd and Anr v. New Delhi Television Ltd., a Division
Bench of the Delhi High Court held that all television news channels should use match
footage strictly in accordance with the limits prescribed by the ICC or purchase the right to
use such footage, from either the ICC or the official broadcaster, whom they have assigned
the broadcasting and reproduction rights.
Points to Remember:
o 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. It is initiated well in advance of the event, and remains in continuance
until the conclusion of the event.
o The essential rights that sports rights owners are most likely to protect are the use of
event and team marks (logos, word marks,), participating player images, match
tickets and audio-visual content originating from the event.
o In India, the organisers of major sporting events often publish guidelines in the
interest of public education that serve to guide the general public as well as sponsor
competitors on the use of event marks, and permissible use and activities in relation
to the event, but do take into consideration the cultural sensitivities of such matters
before initiating any formal legal proceedings.
o There are three distinct threats that a sporting event is subjected to in the context of
intellectual property infringements: ambush marketing and trade mark infringement;
counterfeit merchandise; and online piracy of copyright protected content.
o While physical monitoring may prove to be problematic depending on the scale of
the sporting event, monitoring online channels can serve as a proxy, given that most
marketing campaigns have digital components in the present scenario.
o 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 license or authorization.
o Notices must contain a statement of the sports rights owners’ rights as well as a
list of demands for the infringer to comply with, in relation to ceasing the
infringement. The demands may as well as the tone of the notice may differ,
based on the nature of the infringement itself.
o At the ground level, the issue of black marketing of match tickets at public places
can be dealt through local municipal "anti-hawking" laws.
4.14 AWARENESS OF REMEDIES AVAILABLE AT LAW FOR IP INFRINGEMENT
In order to engage meaningfully with infringers, it is important to be fully aware of remedies
available under law in respect of IP infringements in India.
The civil remedies available to aggrieved parties are similar for the different types of IP
protected under law. Sports rights owners may obtain injunctions against future violation,
civil raids and seizures, damages or accounts of profits, delivery up/ discovery of infringing
material/ documents, preservation of assets and interim/ interlocutory injunction.
In addition, the following remedies are available in cases of infringement under various laws,
if proved:
4.14.1 COPYRIGHT:
To prove infringement under copyright law in India: (i) there must be sufficient objective
similarity between the infringing work and the copyright work; and (ii) the infringing work
must have been derived from the copyright work. Copyright infringement is a crime, a
cognizable (non-bailable) offence punishable with an imprisonment of six months, which can
be extended to three years or a fine not less than INR 50,000 which can be extended to INR
2,00,000. Subsequent convictions carry more stringent sanctions.
4.14.2 TRADE MARKS:
Trade mark infringement is also an offence that is punishable with imprisonment for a term
which shall not be less than six months but which may extend to three years and with fine
which shall not be less than INR 50,000 but which may extend to INR 2,00,000.
4.14.3 DESIGN RIGHTS:
During the existence of right in any design, the penalty for piracy of a registered design is a
sum not exceeding INR 25,000, recoverable as a contract debt, provided that the total sum
recoverable in respect of on design shall not exceed INR 50,000.
In order to initiate criminal proceedings for any intellectual property rights infringement, the
aggrieved party must register a first information report. The applicant may then file a criminal
complaint before a competent magisterial court, and also apply for the issue of search and
seizure warrants directing the police to raid of the premises of the accused for seizure of the
infringing material and arrest of the infringers. Criminal prosecution for violation of any
intellectual property rights can be initiated against known as well as unknown persons.
Further, civil and criminal remedies may be availed simultaneously and are coexistent.
4.15 AWARENESS OF OTHER RIGHTS AND REMEDIES AVAILABLE AT LAW
PASSING OFF: As per the Trade Marks Act, 1999, no person is entitled to institute any
proceedings to prevent or to recover damages for the infringement of an unregistered
trade mark. However, the Act also provides that nothing in the Act is deemed to affect
the rights of action against any person for passing-off goods or services, as the
goods goodwill associated with a product or an entity from misrepresentation by a
third party as being the goods and services of the third party or as having some
association or connection with the third party.
An action for the tort of passing-off involves a combination of two elements: (i) That
certain names were distinctive and related to a party’s goods; and (ii) That a third
party’s use of the name was likely to deceive and thus cause confusion and injury to
the business reputation of the former party. However, in order to claim passing off,
there must be a representation that the defendant’s goods are connected with the
plaintiff in such a way as would lead people to accept them on the faith of the
plaintiff’s reputation in order for a "PASSING-OFF" case to be made. Therefore, for
advancing a successful passing-off action in case of sports rights owners it is essential
to prove the existence of confusion in the market, which misleads the members of the
public into believing that the defendants are official sponsors or associated with the
event and/or its sponsors.
ADVERTISING LAW: The Advertising Standards Council of India (“ASCI”), a self-
regulatory voluntary industry organisation deals with honesty and fairness in
advertising in India. The ASCI prescribes “The Code for Self Regulation in
Advertising” with a view to achieve the acceptance of fair advertising practices.
Chapter IV of the Code makes it clear that advertisements should not either (i) make
unjustifiable use of the name or initials of any other firm, company or institution, nor
take unfair advantage of the goodwill attached to the trade mark or symbol of another
firm or its product or the goodwill acquired by its advertising campaign; or (ii) be
similar to any other advertiser’s earlier run advertisements in general layout, copy,
slogans, visual presentations, music or sound effects, so as to suggest plagiarism.
Complaints against advertisements allegedly in violation of the ASCI Code need to be
lodged within twelve (12) months of the first general circulation of the
advertisements/campaign complained against. The complaint may be lodged by any
entity or individual and need not be brought by a party that is aggrieved alone.
The Consumer Complaints Council of the ASCI then considers the complaint received
along with substantiation and response from the agency/advertiser complained against.
An assurance is sought from the advertiser/agency that the notified advertisement will
either be withdrawn of modified. The advertiser/agency is also notified, where
required that its advertisement is in contravention of the ASCI Code. Although the
ASCI is a self-regulatory body, it has reasonable influence and the Council’s
determinations are generally respected by agencies and advertisers despite the absence
of legal imprimatur.
REMEDIES FOR BLACK MARKETING OF TICKETS: Potentially, there are civil and criminal
remedies available to limit unlicensed sales of event/match tickets. Individuals found
to be engaging in black marketing of match tickets are liable for prosecution under
sections 416 and 420 of the Indian Penal Code, 1860 dealing with "CHEATING BY
PERSONATION" and "CHEATING AND DISHONESTLY INDUCING DELIVERY OF PROPERTY",
respectively. Under section 416, a person is said to "CHEAT BY PERSONATION" if he
cheats, inter alia, by knowingly substituting one person for another. More importantly,
an offence under section 416 is completed when a person obtains possession of
property by a trick. A person is in contravention of section 420 when such person
‘cheats and thereby dishonestly induces the person deceived inter alia to deliver any
property to any person. The essential ingredients to attract section 420 are (i) cheating;
(ii) dishonest inducement to deliver property; and (iii) mens rea of the accused at the
time of making the inducement. It is important to note here that the complainant is
required to show fraudulent or dishonest intention on the part of the person accused of
cheating and this intention can also be inferred from the conduct of the person.
However, it is well settled that mere breach of contract cannot give rise to criminal
prosecution under section 420 unless fraudulent or dishonest intention is shown right
at the beginning of the transaction. These legal instruments may be used effectively in
cases of blatant and intentional black marketing of match tickets. Separately, under
Indian law, it is tortious to, knowingly and without lawful justification, induce one
person to make a breach of a subsisting contract with another as a result of which that
other person suffers damage. The case of AASIA INDUSTRIAL TECHNOLOGIES LTD.
AND ORS. V. AMBIENCE SPACE SELLERS LTD. AND ORS.4 specified the test in respect
of the tort of inducing breach of contract. The tort may be committed through: (i)
direct inducement – encouraging breach of an existing contract through offering
higher remuneration or through threats; (ii) by doing some act which renders the
performance of the contract physically impossible; and (iii) knowingly doing an act
which if done by one of the parties to the contract would have been a breach of
contract.
4.16 INITIATION OF LEGAL PROCEEDINGS
Initiation of legal proceedings requires the sports rights owners to collect evidence in support
of their claim against the infringer (in the form of evidence of the infringement,
communication with the infringer, the continuance of the infringement after such
infringement has been brought to the notice of the infringer) and carefully draft their claim
after taking into account the lawful protections available to the sports rights owners as well as
their remedies under law and contract, if applicable.
The main ingredient required to initiate legal proceedings against infringers is ascertaining
the identity of the infringer. In the case of some of the more resilient pirates, it is extremely
difficult to determine the jurisdiction in which a case can be tried since these pirates
resolutely refuse to even acknowledge, far less comply with, any engagement strategy.
For instance, the most problematic infringers offering live and deferred streaming of audio-
visual footage in relation to cricket, such as CricTime, have moved their hosting servers to
permissive jurisdictions such as the Netherlands and Sweden, wherein hosting service
providers are reluctant to disable access to copyright infringing content on their servers. Such
service providers specialise in high-risk and co-location hosting services that are often used as
platforms to run websites that cannot legally operate elsewhere. Dedicated infringers have
4[(1997) 99 BOMLR 613]
opted to host pirated content on these co-located servers and pay considerably higher hosting
fees in doing so. Pirate websites thrive by taking advantage of the discrepancies between
various jurisdictions and moving to permissive jurisdictions where they cannot be tried easily.
In the absence of verified information, identifying the direct registrant of the pirate website,
action that can potentially be taken against infringers and the chances of obtaining
compliance are severely limited, and are unlikely to yield significant results without further
escalation.
Further, the sluggish pace of the judicial proceedings in India poses a problem in the case of
sports rights owners desirous of litigating against infringers. Further, considerable amounts of
time and monetary resources are required to be expended, and the lack of a satisfactory
decision can cause irreparable damage and loss to the sports rights owner.
Notwithstanding the above, it is evident that the most plausible solution to the problems
mentioned above is to target infringing entities at the base level, by identifying the infringers
and taking legal action against them. Legal proceedings while involving additional costs form
necessary backstops to much of the rest of the steps taken to addressing IP infringements in
India. Infringers must face consequences for their failure to comply with the legal process and
the threats in legal notices must be carried out in a small number of cases to establish
precedent and intent.
In light of the situation described above, it is heartening that in recent times there have been a
few cases wherein the courts have ruled in favour of sports rights owners. In the case of Star
India Pvt. Ltd. v. Piyush Agarwal & Ors.,5 the Supreme Court granted relief to the rights
holder, Star India, by directing the defendants to deposit a sum of Rs. 10,00,000 before the
Delhi High Court for each Test/ODI /T20 match for which STAR has been granted exclusive
rights and to maintain accurate accounts of receipts and revenue from the match related SMS
alerts sent by the defendants to their customers and file such accounts on a monthly basis in
the Supreme Court. A similar stance has been adopted by other Indian courts in future cases.
5[CS(OS) No.2722/2012& Conn.]
Further, as recently as July 2016, STAR India Private Limited has successfully obtained
an injunction6 against a number of pirate websites and potential infringers to block such pirate
websites for the duration of sporting events in which STAR India had obtained broadcast and
media rights.
IP infringements are an inevitable by-product of the business of sport in India and if left
unchecked, can cause irreparable damage to the business model of sporting event as well as
the interests of each of the stakeholders. With each successive sporting event, the number and
nature of IP infringements are increasing, with innovative solutions needed to address the
infringements.
While precise methodologies for estimating the costs of digital piracy and intellectual
property misappropriation are the subject of much debate, what is clear is that digital piracy
represents a real threat to the owners of valuable content in traditional and new media.
Professional protection of rights from the threat of piracy and unauthorised use plays a critical
role in safeguarding online assets. As discussed above, litigation against infringers could be a
long-winded, expensive and possibly unsatisfactory approach to addressing IP infringements,
and should be resorted to only in the severest cases, against the most blatant and seasoned
infringers. Often, what may be classified as infringements are merely attempts by the general
public to feel included in the event, and these should be viewed with a wider perspective on
the perceived harmfulness and damage potentially caused to the event. It would be prudent to
take an informed decision on the addressing of IP infringements such that the popularity of
the sport and the sporting event is maintained while malicious attempts at false association
are thwarted in a timely manner.
Case Laws:
IN AASIA INDUSTRIAL TECHNOLOGIES LTD. AND ORS. V. AMBIENCE SPACE SELLERS LTD.
AND ORS., the Court specified the test in respect of the tort of inducing breach of contract.
6Department of Electronics and Information Technology v. Star India pvt. Ltd, R.P.131/2016 in FAO (OS)
57/2015, 19 July 2016, http://lobis.nic.in/ddir/dhc/PNJ/judgement/29-07-
2016/PNJ29072016REVIEWPET1312016.pdf
The tort may be committed through: (i) direct inducement – encouraging breach of an
existing contract through offering higher remuneration or through threats; (ii) by doing some
act which renders the performance of the contract physically impossible; and (iii) knowingly
doing an act which if done by one of the parties to the contract would have been a breach of
contract.
In STAR INDIA PVT. LTD. V. PIYUSH AGARWAL & ORS, the Supreme Court granted relief to
the rights holder, Star India, by directing the defendants to deposit a sum of Rs. 10,00,000
before the Delhi High Court for each Test/ODI /T20 match for which STAR has been granted
exclusive rights and to maintain accurate accounts of receipts and revenue from the match
related SMS alerts sent by the defendants to their customers and file such accounts on a
monthly basis in the Supreme Court.
Points to Remember
o The civil remedies available to aggrieved parties are similar for the different types of
IP protected under law. Sports rights owners may obtain injunctions against future
violation, civil raids and seizures, damages or accounts of profits, delivery
up/discovery of infringing material/ documents, preservation of assets and
interim/interlocutory injunction.
o In order to initiate criminal proceedings for any intellectual property rights
infringement, the aggrieved party must register a first information report. The
applicant may then file a criminal complaint before a competent magisterial court,
and apply for the issue of search and seizure warrants directing the police to raid of
the premises of the accused for seizure of the infringing material and arrest of the
infringers.
o The other rights and remedies available at law are that of passing off, The Code for
Self-Regulation in Advertising prescribed by the Advertising Standards Council of
India and the ones for black marketing of tickets which includes both civil and
criminal.
o Initiation of legal proceedings requires the sports rights owners to collect evidence in
support of their claim against the infringer and carefully draft their claim after taking
into account the lawful protections available to the sports rights owners as well as
their remedies under law and contract, if applicable. The main ingredient required to
initiate legal proceedings against infringers is ascertaining the identity of the
infringer.
o Often, what may be classified as infringements are merely attempts by the general
public to feel included in the event, and these should be viewed with a wider
perspective on the perceived harmfulness and damage potentially caused to the event.
4.17 ROLE OF TRADEMARK IN SPORTS LAW
Corporatization of sports has become monumental. Marketing through franchising, as well as
brand building of the sports, sportsmen and the event has gained gigantic importance,
surpassing all other major aspects of a game.7 With the business angle of sports growing by
the day, dormant intellectual property rights vesting in almost every component of the sports
industry are being tapped into and capitalized. IPRs are valuable assets that are used as
marketing tools towards the branding of sporting games and connected events, sports clubs,
teams, celebrity status etc. Marketing techniques are applied in creation, maintenance,
popularization and sustenance of distinctive marks, logos and personalities, while copyrights
vesting in brand and image creation etc. are protected to reap benefits on an exclusive basis
considering the very nature of competition in sports.8
The industries in India have been mushrooming at a faster pace over the years with certain
sports getting unimaginable mileage over the years due to commercialization and investment
interest. For decades cricket has been considered a gentleman’s sport which has now
transformed into an enormous commercial game attracting huge capital, investments and
profits. The latest T20-20 format and IPL have taken off the veil to boldly announce that it is
7 Christine Chiramel, “India: Intellectual Property Rights In Sports-Indian Perspective, 17th February 2012,
available at
<http://www.mondaq.com/india/x/164974/Trademark/Intellectual+Property+Rights+In+SportsIndian+Perspecti
ve >
8 Ibid
the commerce, which is now on the forefront of the game. The money in the games has led to
huge scams in the recent past due to large monetary stakes, fixing, betting, doping and
gambling issues. The Indian government is also trying to streamline the industry keeping
every party interest in mind including the players, teams, sponsors and the public at large,
through the introduction of the Sports Bill, 2011, which is soon likely to become a reality, and
hopefully will be able to control the management of sports to some extent. The same effect
has also been seen during the recently organized Formula Race. From the legal perspective
the intellectual property rights in the form of trademarks, copyrights, industrial designs,
personality and image rights, advertising and publicity rights, licensing and franchising
opportunities have acquired immense value for protection, commercialization and
exploitation of commercial aspects of sports, sportsmen and sporting events. In India, IPL
teams are an example of value creation through branding and intellectual property
exploitation.
Under the Trade Marks Act, 1999 both civil and criminal remedies are simultaneously
available against infringement and passing off. It is interesting to note that for seeking
protection under the Indian laws registration of trademarks is not necessary, so even THOSE
WHO HAVE NOT OBTAINED ANY REGISTRATION CAN ENFORCE THEIR RIGHTS IN THE COURT OF
LAW. Interestingly violation of a trademark is a cognizable offence in India, and criminal
proceedings can be initiated against the accused. Such enforcement mechanisms are expected
to boost the protection of marks in India and reduce infringement and contravention of
trademarks.
As always, to claim protection under the Trademarks Act, 1999, the person who seeks
protection should register the trademark. Since there exists various classes of goods and
services, the proprietor should identify the appropriate class for registering the mark. For
instance, the Chennai Super Kings, though they are a cricket team, also sell caps and shirts,
which fall under the category of clothing. So it has to be registered under Class 25 of the Act.
A person who registers under the Trademarks act can have his product protected only within
India. But if a person ever wishes to register his trademark internationally, he can make an
application under the Madrid Protocol. This is a system which offers the trademark owner the
possibility to protect his trademark internationally. Just like any other trademark
infringement, both civil and criminal remedies are available if the trademark is registered
under the Trademarks Act. If otherwise, the remedy of passing off is available.
Personality Rights in sports have a significant role in the brand creation of individual sports
players and teams. Celebrity status leads to various forms of image creation, brand
endorsement and revenue generation capitalizing on fame. It is desirable that the federations,
organizers, team owners and sports gear manufacturers must opt for registration of their team
names, logos, venues, captions, taglines and slogans registered as trademarks under the
Trademarks Act 1999, which will make their life easy for protecting their trademarks in
Indian courts. An initiative on the part of the players to register their names, photographs and
caricatures as trademarks/ brands should also be the norm of the day. Mere association of the
name of a team, their logo or a team player, could offer unprecedented mileage to the person
or entity using such name or logo. It is a loss to the team, team owner, the player and an
unwarranted gain for the entity associating such name or logo for their own commercial
benefits, without taking any permission, or paying any license fee or royalty. An unauthorized
use of the trademarks by a third party without the consent or license of the respective owners
of such trademarks, may also result in damage to the goodwill and reputation of the
stakeholders, also amounting to unfair trade practice, unfair competition and dilution of
goodwill and reputation.
As per the Indian Trademark Act, a person can register trademark over his/her name. One
such example would be SACHIN TENDULKAR. The Delhi High Court in ICC Development
(International) Ltd v. Arvee Enterprises and Anr9, has rightly held that the right of publicity
vests in an individual and he alone is entitled to profit from it. Apart from these, the business
of sports also involves licensing, domain names, broadcasting rights etc. Sports club off late
merchandises shirts, curios, mugs and toys which are very attractive and monetize them by
entering into licensing agreements with the vendors. A standard merchandising license
agreement is essential while licensing creative works. With the increasing growth of
commercial activities, domain names have come to dominate the commercial arena. So much
to the extent that most of them have a domain in their own name, the Chennai Super Kings
for instance. There is no separate law to protect domain names. So protecting one’s own
92003 VIIAD Delhi 405.
domain is a tedious task. However, it can be protected under the Trademarks
Act. Broadcasting rights are those rights which lie with the broadcasting company and which
allows them to broadcast and re-broadcast a sports match which are recognized by the
Copyright Act, 1957.10
Internationally, World Intellectual Property Organization (WIPO’s) international trademark
registration system called Madrid System, enables trademark holders to file a single
application for registration in up to 85 countries and to maintain and renew those marks
through a single procedure. By an entry on a national trademark register, trademarks are
protected and once it is registered, they are valid potentially for unlimited time as long as they
are used.11Another array under the sports cum trademark law is Domain names which are also
treated as trademarks by Indian courts plays a substantial role in protection of intellectual
property rights associated with sports. Domain names builds brand image, portability and
search engine optimization. WIPO, among others, operates a quick dispute resolution
procedure for website domain names based on internationally-accepted rules.12
10 Jayashree Suresh, “SPORTS – Intellectual Property has got your back!”, 18th February 2016, available at
<http://www.selvamandselvam.in/blog/sports-intellectual-property-has-got-your-back/>
11 Aswathy Sujish, “SPORTS AND INTELLECTUAL PROPERTY RIGHTS – AN OVERVIEW ON THE
INDIAN STANDARDS”, available at <http://jlsr.thelawbrigade.com/wp-
content/uploads/2016/11/Aswathy.pdf>
12 “Sports and Branding”, available at <http://www.wipo.int/ip-sport/en/branding.html>
Case Law:
In ICC Development (International) Ltd v. Arvee Enterprises and Anr, the Delhi High
Court has rightly held that the right of publicity vests in an individual and he alone is
entitled to profit from it.
Points to Remember:
o IPRs are valuable assets that are used as marketing tools towards the branding of
sporting games and connected events, sports clubs, teams, celebrity status etc.
Marketing techniques are applied in creation, maintenance, popularization and
sustenance of distinctive marks, logos and personalities, while copyrights vesting
in brand and image creation etc. are protected to reap benefits on an exclusive
basis considering the very nature of competition in sports.
o From the legal perspective the intellectual property rights in the form of
trademarks, copyrights, industrial designs, personality and image rights,
advertising and publicity rights, licensing and franchising opportunities have
acquired immense value for protection, commercialization and exploitation of
commercial aspects of sports, sportsmen and sporting events.
o Under the Trade Marks Act, 1999 both civil and criminal remedies are
simultaneously available against infringement and passing off. To claim
protection under the Trademarks Act, 1999, the person who seeks protection
should register the trademark. Since there exists various classes of goods and
services, the proprietor should identify the appropriate class for registering the
mark
o An unauthorized use of the trademarks by a third party without the consent or
license of the respective owners of such trademarks, may also result in damage to
the goodwill and reputation of the stakeholders, also amounting to unfair trade
practice, unfair competition and dilution of goodwill and reputation.
o As per the Indian Trademark Act, a person can register trademark over his/he
name.
o With the increasing growth of commercial activities, domain names have come to
dominate the commercial arena. So much to the extent that most of them have a
domain in their own name. There is no separate law to protect domain names.
However, it can be protected under the Trademarks Act.
o Internationally, World Intellectual Property Organization (WIPO’s) international
trademark registration system called Madrid System, enables trademark holders to
file a single application for registration in up to 85 countries and to maintain and
renew those marks through a single procedure.
4.18 ROLE OF IPR IN SPORTS LAW
As the Indian economy accelerates and India enhances its participation in the global sport
arena there are several Intellectual Property issues to be addressed involving trademarks,
broadcasting rights, sponsorship issues, licensing issues etc. In India the government tried to
streamline the sports industry by keeping every parties interest in mind including teams,
sponsors and the public at large by introducing the sports bill, 2011 which was rejected by the
cabinet. In early 2016, a new bill known as the National Sports Ethics Commission Bill ,2016
was introduced in the parliament which aims to bring about legislative reform to help
improve the integrity of sports in India which if becomes a reality will be able to control the
management of sports to some extent.
The Formula One Race which was successfully organized in India has shown the commercial
interest in the corporate world with respect to branding and event management. The
organization and smooth execution of a race of such international standard in India for the
very first time has brought the nation into a select league, putting further focus on the sports
laws and the intellectual property rights, which can be used to create branding, leading to
immense value generation.
Symbols and Team names (Deccan Chargers, Chennai super kings) create a level of
association with the public and fan followers and helps the popularity ratings of any given
team, club, and players. As sports have developed into a global business, so too has the
significance of athletes’ image rights.13 Cricket is synonymous to sports in India in olden days
and it has now transitioned into a commercial game attracting huge capital investments and
profits. The initiatives on T20- 20 format and Indian Premier League, Hockey India League,
Indian Badminton League, ProKabaddi, Indian Super League and heritage sports such as
Goti, Lagori, Gatta Gusthi have proudly announced that it is the commerce, which is now on
13 Molly Torsen, “Intellectual Property and Sporting Events: Effective Protection of Event Symbols through Law
and Practice”, 19th March 2007, available at < http://iipi.org/wp-
content/uploads/2010/07/Sporting_Events_and_Intellectual_Property.pdf >
the forefront of the game and along with this transition the need for Intellectual Property
rights protection in sporting events is gaining importance.14
In a legal perspective, the intellectual properties in the form of copyrights, trademarks,
industrial designs, and patents have acquired immense value for protection due to
commercialization and exploitation of commercial aspects of sportsmen and sporting events.
Copyright in sports is protected in India under the provisions of the Copyright Act, 1957,
vests in various components of sporting events which includes the artwork connected to the
trademarks, logos, promotions, slogans, images of a player, event etc.
India has signed Berne Convention of 1906 for the Protection of Literary and Artistic Works
and the International Copyright Order, 1999. Though the fact that the registration of copyright
is not mandatory in India and is comparatively easy to protect under the Indian laws, it is
advisable to register the copyright in India as the copyright registration certificate is accepted
as a proof of ownership of copyrights in courts and by enforcement authorities. The copyright
law in India provides for civil remedies in the form of permanent injunction, damages or
accounts of profits, delivery of the infringing material for destruction and cost of the legal
proceedings etc. and also makes an instance of infringement of copyright, which is a
cognizable offence punished with a term which shall not be less than six months but may
extend to three years with a fine which shall not be less than INR 50,000 but may extend to
INR 200,000. The Copyright Act in India gives power to the police to register the First
Information Report (FIR) and to act on its own to arrest the accused and to search the
premises of the accused and seize the infringing material without any court’s intervention.
Licenses and sponsorship in sports play a very important role in sports industry. By acquiring
intellectual property rights and then using them strategically, sports organizations and other
rights owners can protect and increase their income-generating potential. Exclusivity is the
key factor in sales generation and brand building. In light of counterfeit product markets, it is
important to ensure that all intellectual property rights involved are adequately protected
under relevant agreements. Trade Secrets, in India there is no separate statute for protection of
trade secrets and in sports industry there is always possibility of some information which
14 Manish Ranjan, “Sports and IPR”, 26th May 2016, available at
<http://www.legalservicesindia.com/article/article/sports-and-ipr-2109-1.html>
requires confidentiality to be maintained. Trade secrets encompass manufacturing or
industrial secrets and commercial secrets, formula, practice, process, design, instrument,
pattern, commercial method, or compilation of information which is not generally known or
reasonably ascertainable by other.15
There are ample instances of where such misbalances have led to unintended consequences.
For example The Sports Broadcasting Signals (Mandatory Sharing with Prasar Bharati) Act,
2007 requires the broadcasting rights holders of sporting events of national importance to
share their feed with the public broadcaster ‘Doordarshan’. However the Act itself mandates
that such shared feed of sporting events of national importance shall be carried by
Doordarshan only on its terrestrial channel and on its own DTH platform. However the
terrestrial channel of Doordarshan is also freely available to all private cable and DTH
operators in the country. As a result these private cable and DTH operators have very little
incentive to negotiate a fair value with the broadcasting rights holder of such sporting events.
The broadcast rights holders who have had to pay a considerable sum of money to acquire the
rights from the rights owners are thus precluded from effective monetizing such rights as a
result of which their ability to invest funds for acquiring further rights is considerably
impaired.
The debilitating effect this has had particularly in the area of sports broadcasting is already
evident. Disney, who was one of the partners in ESPN- a leading sport broadcaster holding
several rights to multiple sporting events, quit and made exit from the Indian sports
broadcasting arena after divesting its stake. Neo Sports, another leading sports broadcaster
who had acquired an array of broadcasting rights of several sporting events of national
importance is now on the brink of bankruptcy and searching for a strategic investor to whom
it could divest its stake. These incidents do not portend well for a country like India where
such systematic dilution of IP is perpetuated by anachronistic legislative and statutory
constructs. Soon there could be a situation where there would be no broadcast rights holders (
of sporting events of national importance) left to share their feed with the public broadcaster
15 Vinay Vaish, “Intellectual Property Rights for Startups”, 9th January 2016, available at
<http://www.mondaq.com/india/x/456442/Trademark/Intellectual+Property+Rights+IPR+For+Startups>
thereby resulting in the Indian viewer losing out on all such sporting events even though s/he
may be willing to pay a fair value for watching such events. 16
Points to Remember:
Copyright in sports is protected in India under the provisions of the Copyright
Act, 1957, vests in various components of sporting events which includes the
artwork connected to the trademarks, logos, promotions, slogans, images of a
player, event etc.
India has signed Berne Convention of 1906 for the Protection of Literary and
Artistic Works and the International Copyright Order, 1999. Though the fact that the
registration of copyright is not mandatory in India and is comparatively easy to
protect under the Indian laws, it is advisable to register the copyright in India as the
copyright registration certificate is accepted as a proof of ownership of copyrights in
courts and by enforcement authorities.
The copyright law in India provides for civil remedies in the form of permanent
injunction, damages or accounts of profits, delivery of the infringing material for
destruction and cost of the legal proceedings etc. and also makes an instance of
infringement of copyright, which is a cognizable offence punished with a term
which shall not be less than six months but may extend to three years with a fine
which shall not be less than INR 50,000 but may extend to INR 200,000.
The Copyright Act in India gives power to the police to register the First
Information Report (FIR) and to act on its own to arrest the accused and to search
the premises of the accused and seize the infringing material without any court’s
intervention.
In India there is no separate statute for protection of trade secrets and in sports
industry there is always possibility of some information which requires
confidentiality to be maintained. Trade secrets encompass manufacturing or
industrial secrets and commercial secrets, instrument, pattern, commercial method,
or compilation of information which is not generally known or reasonably
ascertainable by other.
16 “National Intellectual property Rights Policy”, available at ,<http://ficci.in/SEdocument/20340/FICCI-
Suggestions-on-Proposed-IPR-Policy-Nov-2014.pdf>
4.19 COMPETITION LAW AND SPORTS IN INDIA
In India, Sports is a state subject and sports bodies are registered as societies. State Olympic
Associations and National Sports Federations promote sports and organise events. The
government plays an active role in Sports through the Ministry of Youth Affairs and Sports.
They provide infrastructure and financial assistance to NSFs and SOAs. For non-Olympic
Sports there are equivalent Federations like the Board of Control for Cricket in India that are
direct affiliates of their respective international federations. These federations follow a
pyramid structure for organizing sport. The EU through its Helsinki Report acknowledges
that to maintain the integrity and uniformity of sports and in sports, there is a requirement of
singularity of governing bodies. Governing bodies also claim the exception of ‘Specificity of
Sport’ and say that certain sporting activities have to be excluded from competition law
analysis. The EU Courts in the MECCA-MEDINA case17 have divided activities as those that
are pure sporting functions and those that have a substantial economic impact. The latter
would fall within the purview of competition law. The former, according to the courts, though
restricting competition, has led to achieving of a larger public objective of protecting the
integrity of sports in the world. They also decided that if the anti-doping legislation had been
discriminatory in its nature then that would not escape Treaty provisions.
Under the provisions of the Competition Act, 2002, as per Section 4(2)(c) of the Act if any
enterprise “indulges in practice or practices resulting in denial of market access in any
manner”, then it shall be liable for abuse of dominant position. Thus, such practice of banning
players from domestic tournaments on account of joining the rival leagues may prove
expensive for the BCCI, which may face a challenge on grounds of abuse of dominant
position.
The denial of stadiums by the BCCI can attract liability for abuse of dominant position under
s.4(2)(c) of the Competition Act, 2002 as by denying the use of essential facility under its
control it raises the barriers to entry in the market for its competitors, resulting effectively in
17(2006) ECR I-6991
denial of market access. 18 The issues that the sports industry grapples today are with regard
to the domination of single players in the realm of sports. The ambit of the Competition
Commission of India, deals with issues that plague sports industries around the world such as
broadcasting rights, prejudice in selection procedures, inappropriate deployment of funds and
non-accountability in addition to unethical and undemocratic electoral practices.19
The Indian Competition Act, 2002 states that a dominant position arises when the enterprise
has the power to function independently of its competitors and effect then and its consumers
in its favour.20 The commission then proceeds to identify this dominant position based on
section 19 of the Competition Act. This identification of such a position in the market
becomes difficult in the sports industry as the sporting exceptions are applied in adherence to
the rule of reason. The role of competition law in other realms of the market has resulted in an
affirmative balance of creating a righteous market. The lack of competition law in the
emerging sports law in India creates a vacuum that cannot be filled through the absence of
law. The application of competition law in the European countries has resulted in a positive
outcome to the development of sports administration. The BCCI, IOA and the IHF and
various other associations in India have a politicized administrative structure, which reduces
the scope for competition and sports development.21
Such monopolizing bodies with political heads rebuff the private players that want to enter
the emerging sports market in India. The effect of competition law on sports can be gauged
from the way in which Competition law impacts the organization, structure and commercial
exploitation of sport. The arrangements that exist in India scenario comprise of an
autonomous governing body, which acts as the centralized decision- making mechanism for
all sport related commercial activities. There is little substance in the argument that sport
should be exempt from the application of competition law, considering the way in which
decisions of sport bodies impacts other related sectors and industries in the market. The
18 Gaurang Kanth, “Emergenceof Sports Law in India”, available at
<http://www.indialawjournal.org/archives/volume3/issue_2/article_by_Gaurang.html>
19 Bhagirath Ashiya, “THE SPORT, MONEY AND LAW: TRANSFORMING INDIAN SPORTS
ADMINISTRATION THROUGH COMPETITION LAW”, available at
<http://www.iclr.in/assets/pdf/ICLR%20Volume%201%20(Second%20Article).pdf>
20 Section 4, Competition Act, 2002.
21 Boria Majumdar and Nalin Mehta,India and the Olympics, Harper Collins Publishers (2010) p.97-99
European Commission has classified such a proposition of exemption to be unnecessary,
undesirable and unjustified‘.22The very existence of such one federation governing bodies
instills the logic of clear domination in a monopolistic manner, resulting in making claims of
abuse of dominant position an easy proposition. The de facto monopolistic like dominance of
the certain bodies in India raises doubt as to their functioning, with no checks and balances as
to their decision making and discretionary powers. This issue is merely not the grant of power
but the abuse of power, which is the mainframe issue of Indian sports administration. As the
European Commission has accurately portrayed this principle ―It is not the power to regulate
a given sporting activity as such which might constitute an abuse but rather the way in which
a given sporting organization exercises such power.23
The BCCI decision has invoked the much- needed intervention of the competition
commission to regulate the economic aspects of the sports industry, which effect the very
future of this sector in India. The sale of broadcast rights of the Indian Premier League (IPL)
for a period of 10 years was considered as anti-competitive by the Competition Commission,
thus foreclosing an alternative channel from broadcasting the IPL for a prolonged period.
Under Section 4 of the Competition Act, BCCI was considered to come under the definition
of enterprise enshrined under this section. The CCI ordered the BCCI to ―cease and desistǁ
from using their regulatory power in arriving at a commercial agreement and directed it to
pay six per cent of the annual turnover of the BCCI for the last six years.43 The power that
the BCCI derives from the ICC for rules regarding disapproved cricket were used against
Indian Cricket League (ICL), which the CCI clearly stated as being used for anti-competitive
activities. The judgment of the CCI in this regard, removes the illusions under which the
BCCI has been functioning throughout its existence as the sole regulator. The CCI establishes
the domain under which the actions of the BCCI will remain under scrutiny and will have a
clear application of competition law with some exceptions. The Indian Cricket League (ICL)
a private league organized by Zee Entertainment Enterprises was denied a number of benefits
that accrued only to BCCI out of its dominant position in the market. The entry barriers that
BCCI creates in its domain of dominance, amount to restraint of trade and unfair competition
22 Adam Lewis and Jonathan Taylor, 'EC and UK Competition Rules and Sport' in (eds), Sport: Law and
Practice (2nd, Lexis Nexis Butterworths, London 2003) 337.
23 Supra n 12
in effect invoking the essential facilities doctrine, even whilst taking regulatory decisions.
The alleged irregularities in grant of franchise rights, media rights and award of sponsorship
rights were contented, wherein the CCI stated - ―There is no other competitor nor was
anyone allowed to emerge due to the BCCI‘s strategy of monopolizing the entire marketǁ.24
Under the powers conferred by virtue of Section 18 of the Competition Act, the CCI observed
that Hockey India should provide for an effective internal control mechanism ‘to ensure
regulatory powers do not impede the process of decision making while deliberating matters of
commercial nature. The CCI has rightly stated that ―A regulator must necessarily follow the
dictum that Caesar‘s wife must be above suspicion.25
Though Hockey India was absolved of the charges of anti-competitive activities, but the
judgment acts as a warning to the transgressors of the competition act, clearly laying down
that the duality of functions have to be exercised with caution. The monopoly status of the
BCCI has been recognized by Apex court, but the court has rendered the exercise of such
powers dependent on the doctrine of fairness and good faith. This application is based on the
public function that the BCCI exercises in the domain of cricket regulation. Thus the courts
have created legal barriers in the absence of specific regulations, but the sports sector still
remains largely unregulated in regard to sports administration.26
The forthcoming issues such as All India Chess Federation withholding players from
participating in events of other associations can now be dealt with in the purview of the
competition act. The European Commission Competition law also provides for rules
regarding state aid, which threatens to distort competition. Thus the advantage conferred by
the state upon a selected body, puts it in a better position to compete with the rivals in the
market. The European Commission as a safeguard requires its sanction for state aid 52 to be
not considered illegal, but such a practice does not prevail in the Indian scenario, serving as
an inherent defect.
24 Surinder Singh Barmi v. Board for Control of Cricket in India (BCCI), Case No.61/2010' (www.cci.gov.in
2013)
25 Competition Commission of India, 'Dhanraj Pillay and Others v. Hockey India (Case No.73 o f 2011)'
http://www.cci.gov.in/May2011/OrderOfCommission/732011.pdf
26 Board of Control of Cricket, India v. Netaji Cricket Club , AIR 2005 SC 592.
The coming of sports law under the ambit of competition law, whereby the inherently
monopolistic like regulators must factor in regulatory and competitive policies in decision
making in the sports industry. Therefore no sports regulator would ignore the prevailing
competition law when exercising decision- making powers over commercial transactions or
whilst framing rules and regulations. The unique features of the sports realm distinguish it
from other industries, where elimination of rivals is not the goal, but interdependence, which
would sustain demand in this sector. The overriding factor of self-aggrandizing behaviour in
the sports industry due to little checks and balances, will be curbed due to the perceived
intervention of the competition commission. The autocratic and autonomous method of
governance of sporting bodies will reduce due to the emergence of the application of
competition rules in the sports industry. Thus as soon as the legal mechanism comes into
place to counter the growing anti-competitive behaviour, it will also prove efficient in
sustaining the investment into sports and the appropriate utilization of the resulting profits.
The competition commission can help realize the objective of transparency, accountability
and good market practices in sports administration. This scenario only envisages the cricket
industry and not the sports industry, but the upsurge in viewership can be seen from the
diversification of sports investment into boxing, wrestling, badminton and other upcoming
sports in relation to the Olympic movement.
Case Laws:
In the Meca-Medina case, the EU courts have divided activities as those that are pure
sporting functions and those that have a substantial economic impact. The latter would fall
within the purview of competition law. The former, according to the courts, though
restricting competition, has led to achieving of a larger public objective of protecting the
integrity of sports in the world. They also decided that if the anti-doping legislation had
been discriminatory in its nature then that would not escape Treaty provisions.
Points to Remember:
o The EU through its Helsinki Report acknowledges that to maintain the integrity and
uniformity of sports and in sports, there is a requirement of singularity of
governing bodies. Governing bodies also claim the exception of ‘Specificity of
Sport’ and say that certain sporting activities have to be excluded from competition
law analysis.
o Under the provisions of the Competition Act, 2002, as per Section 4(2)(c) of the Act
if any enterprise “indulges in practice or practices resulting in denial of market
access in any manner”, then it shall be liable for abuse of dominant position
o The denial of stadiums by the BCCI can attract liability for abuse of dominant
position under s.4(2)(c) of the Competition Act, 2002 as by denying the use of
essential facility under its control it raises the barriers to entry in the market for its
competitors, resulting effectively in denial of market access.
o The application of competition law in the European countries has resulted in a
positive outcome to the development of sports administration. The BCCI, IOA and
the IHF and various other associations in India have a politicized administrative
structure, which reduces the scope for competition and sports development.
o The courts have created legal barriers in the absence of specific regulations, but
the sports sector still remains largely unregulated in regard to sports
administration.
o The forthcoming issues such as All India Chess Federation withholding players
from participating in events of other associations can now be dealt with in the
purview of the competition act. The European Commission Competition law also
provides for rules regarding state aid, which threatens to distort competition.
4.20 EQUALITY AND DISCRIMINATION IN SPORTS LAW
The Indian Constitution guarantees equality as ‘Fundamental Rights’ in Articles 14, 15 and
16 under Part III. Article 14 guarantees equality before law and the equal protection of laws.
Article 15 prohibits discrimination ‘only’ on the basis of religion, race, caste, sex, place of
birth, or any of them. Article 15 also allows for special provisions to be made for women,
children, socially and educationally backward classes of citizens as well as the Schedule
Castes and the Scheduled Tribes (SCs and STs) – such special provisions shall not be
considered discriminatory. Article 16 provides for equality of opportunity in matters of public
employment. It also allows the state to make reservations in favour of the SC, ST and Other
Backward Classes. However, these protections can only be opted when the discrimination has
been made by the State or any Governmental bodies, including Government offices of both
Central and State Governments. In case of discrimination on any of the grounds mentioned in
Article 15, i.e. religion, race, caste, sex and place of birth by the Government through its
policies, or regulations, or otherwise, including recruitment, promotions, transfers, demotions
and removals, the affected person can file a writ before the concerned High Court of the State
or the Supreme Court. The Constitution further lays down certain fundamental duties, which
though cannot be challenged before a Court of law; the duties should ideally be implemented
by the Government. Article 39 in part IV of the constitution urges state to ensure that citizens
,men and women equally have the right to an adequate means of livelihood, right to shelter
,food, education and work.27
Apart from these constitutional safeguards, India does not have any separate comprehensive
code towards equality and discrimination. However, the National Sports Policy (2007)
promotes the engagement of young women into sports and prohibits discrimination of any
kind. However the binding effect of the same can be questioned into as the provisions are
unclear and vague.
Countries like Australia have a properly laid out legislation on prohibiting discrimination
being Equal Opportunity Act 2010. Under the Equal Opportunity Act 2010 it is against the
law to treat, or propose to treat, someone unfavourably because of a personal characteristic
preserved by law in sport. It is also against the law to sexually harass someone. The Act also
comprises specific exceptions in context to competitive sporting activities.
Under this Act, a ‘competitive sporting activity’ encompasses any display of a sport. This
implies that exceptions are not just confined to recognised sporting competitions. However,
under the exception provisions of the Act the definition of ‘competitive sporting activity’
27 Amartya Bag, “Types of discrimination at workplace and their legal protection in India”,<available at
https://blog.ipleaders.in/types-of-discrimination-in-workplace-and-their-legal-protection-in-india/>
does not include administrative or supporting aspects of a sporting activity such as coaching,
refereeing, umpiring or administration, or non-competitive sporting activities.
India also needs something on these lines whereby the principles of selection have been
clearly laid out and stipulated in a code and the scope of exercising discretion by authorities
are reduced to bare minimum to ensure just and fair administration of selection process.
Points to Remember:
o Protections under Article 14, 15 and 16 of the Indian Constitution can only be
opted when the discrimination has been made by the State or any Governmental
bodies, including Government offices of both Central and State Governments.
o Apart from these constitutional safeguards, India does not have any separate
comprehensive code towards equality and discrimination. However, the National
Sports Policy (2007) promotes the engagement of young women into sports and
prohibits discrimination of any kind. However, the binding effect of the same can
be questioned into as the provisions are unclear and vague.
o In Australia, under the Equal Opportunity Act 2010 it is against the law to treat, or
propose to treat, someone unfavourably because of a personal characteristic
protected by law in sport. It is also against the law to sexually harass someone.
The Act also includes specific exceptions in relation to competitive sporting
activities.
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