Chapter 4. Intellectual Property and the Protection of Sports Rights

• Pages: 97-148

4.1 INTRODUCTION

The global sporting industry has witnessed tremendous growth over the last two to three

decades as it relates to spectator interest, participation and television viewership. However, it

is probably in the realm of sports business that the most phenomenal growth has taken place.

Sports governing bodies, especially at the international level, have depended on sponsorship,

media rights, merchandising and ticket sales, in particular, as their main sources of revenue.

Some of the most lucrative global sporting events include the Olympic Games, cricket’s Indian

Premier League (IPL), the National Basketball Association (NBA) finals, the National Football

League’s (NFL) Superbowl and FIFA’s senior men’s World Cup. It has been suggested that one

of the key factors leading to the success of the joint 2026 bid from Canada, Mexico and the

United States for that edition of the World Cup was the promise of a USD $11billion profit.1

Against this backdrop, this chapter will oer an introduction to intellectual property rights

in sport and will proceed to present a detailed analysis of two of the major themes that arise

today in the business of sport, namely ambush marketing and image rights. While there is a

dearth of Commonwealth Caribbean case law in both areas, there has been meaningful devel-

opment regarding both actual and proposed legislative intervention to address gaps in the law.

Regional statutes and international instruments will be examined as they relate to assessing

the threat of ambush marketing to sports rights holders, while the discussion on image rights

will include an international comparison between the applicable law in the United States, the

United Kingdom, Europe and the Caribbean. The chapter will close with a brief discussion on

how sports broadcasting rights can be protected with special emphasis on the case of Television

Jamaica Ltd v CVM Jamaica Ltd, which arose for judicial consideration at the time of the 2015

IAAF World Championships.

4.2 INTELLECTUAL PROPERTY RIGHTS IN SPORT

Intellectual Property (IP) rights (patents, industrial designs, trademarks, copyright, etc) are usually

associated with industry, typically the manufacturing industry. IP rights give exclusivity to the IP

owner for a limited period of time. But organizers of sports activities are utilizing IP laws to take

advantage of the interest in particular sports. Sports activities started as a hobby or a pastime event

to enable participants to enjoy the sports or as a form of physical exercise. Now certain games

have evolved into giant international events, or more appropriately international businesses with

their own ‘tailor-made’ law. Such international events even challenge sovereign laws of countries.2

As highlighted in the above excerpt, intellectual property (IP) rights grant exclusivity to the

owner for a particular period of time. Within the context of sport, the dominant and most rel-

evant IP rights are copyright, trademark, patents and the related theme of image rights, which

1 ‘North American World Cup Bid Projects $11billion Profit for FIFA’ (New York Times, 8 May2018): www.

nytimes.com/2018/05/08/sports/2026-world-cup.html.

2 ‘Report of the Cabinet-appointed Committee to Enable the Protection and Commercialization of Sports-

Related Intellectual Property in Trinidad and Tobago’ (Government of Trinidad and Tobago, 2017) 7.

CHAPTER 4

INTELLECTUAL PROPERTY AND

THE PROTECTION OF SPORTS RIGHTS

98 Intellectual property and the protection of sports rights

will be considered in detail later in this chapter. Although it is beyond the scope of this book

to oer a comprehensive analysis of every aspect of intellectual property,3 a brief introduction

to IP rights in sport will lay the groundwork for this chapter’s focus on sports rights protection.

4.3 DEFINING INTELLECTUAL PROPERTY

Cornish’s definition of intellectual property (IP) as cited in the third edition of Sports Law4 oers

a useful starting point in the assessment of the relationship between sport and IP rights:

Bill Cornish has defined intellectual property (IP) as ‘the application of ideas and infor mation

that are of commercial value. IP is a product of the mind-the-intellect-and has economic value

in that, like any other kind of property, it may be bought, sold, licensed, assigned or otherwise

exploited. The body of law that recognizes and protects this species of property is known as IP

law and the rights that IP gives rise to are known as IP rights. (IPRs). IPRs essentially comprise

trade mark rights, copyright, patent rights and design rights. In the sports context, perhaps

the most important IPRs are trademarks and copyright, although the other IPRs enjoy some

significance too.5

In the context of sport, Gardiner et al placed predictable emphasis on copyright and trade-

marks, while, as mentioned above, a case can be made for the inclusion of patents and image

rights as part of the central elements of sports-related IP. Summaries of the first three main

aspects of IP follow.

4.4 COPYRIGHT

Gardiner et al launched their overview of copyright law in a concise, yet helpful, way by stat-

ing that copyright literally means the right to copy something, in which copyright exists.6 The

Copyright Act of Grenada,7 for instance, defines copyright in the following manner: ‘Copy-

right is a property right which subsists in literary and artistic works that are original intellec-

tual creations in the literary and artistic domains.’8 Section5(2) of the Act adds that: ‘Works

shall be protected by the sole fact of their creation, and irrespective of their mode or form of

expression, as well as of their content, quality and purpose.’ Under the Grenadian definition,

for copyright to subsist in a work, there is no registration requirement. Copyright protection

arises on the creation of the work, provided that the work is original. Similar language is used

in copyright legislation throughout the Caribbean.9

3 Readers are directed to specialist publications on intellectual property for a more detailed exposition of this

topic such as William Cornish, David Llewelyn and Tanya Aplin, Intellectual Property: Patents, Copyright, Trade

Marks and Allied Rights (Sweet& Maxwell, 2013).

4 Simon Gardiner, Mark James, John O’Leary and Roger Welch, Ian Blackshaw, Simon Boyes and Andrew

Caiger, Sports Law (3rd edn, Cavendish Publishing, 2006).

5 Ibid 400.

6 Ibid 408.

7 Act No 21 of 2011.

8 Ibid section5(1).

9 Anguilla Copyright Act, section2; Antigua and Barbuda Copyright Act 2003, section6(1); Bahamas Copy-

right Act, Chapter323, section6(1); Barbados Copyright Act, Chapter300, section6; Belize Copyright Act

Ch.252, section7(1); Bermuda Copyright and Designs Act 2004, section7; Dominica Copyright Act 2003,

section5; Guyana Copyright Act 1956, section2; Jamaica Copyright Act 1993, section6(1); St. Christopher

and Nevis Copyright Act Ch. 18.08, section6(1); St. Lucia Copyright Act 1995, section7(1); St. Vincent

and the Grenadines Copyright Act 2003, section5(1); Trinidad and Tobago Copyright Act Ch. 82.80,

section5(1).

Intellectual property and the protection of sports rights 99

In Jamaica, under its 1993 Copyright Act, whose most recent amendment occurred in

2015,10 copyright applies to original literary, dramatic, musical or artistic works as well as sound

recordings, films, broadcasts, cable programmes and typographical arrangements of published

editions.11 Unless a work falls into these tightly defined categories, they may not, at the outset,

obtain copyright protection.12

The requirement of originality was identified as a key feature of copyright in Ladbroke (Foot-

ball) Ltd v William Hill (Football) Ltd.13 In that case, Lord Pearce oered guidance both in terms

of what is captured by a ‘literary work’ as well as what ‘original’ means. He said:

My Lords, the question whether the plaintis are entitled to copyright in their coupon depends

on whether it is an original literary work. The words ‘literary work’ include a compilation. They

are used to describe work which is expressed in print or writing irrespective of whether it has

any excellence of quality or style of writing...The word ‘original’ does not demand original or

inventive thought, but only that the work should not be copied but should originate from the

author.14

The core ingredient of originality, therefore, is that the work originates from the author and is

not something that has been copied.15

Copyright legislation in the Caribbean details other salient features, such as the type of

works that are protected, the duration of copyright,16 what amounts to infringement of copy-

right,17 applicable remedies18 and any relevant defences to alleged breaches.19

4.4.1 On-field moves and copyright in broadcasts

Notwithstanding what seems to be an ever-expanding range of rights aorded to stakeholders

under copyright, trademark and patent legislation, it does not appear that the law has reached

to the point of protecting the actual moves of players in matches, though the broadcast of such

moves, with the underlying additions of graphics and text, appear to be protected. This point

10 Copyright (Amendment) Act, 2015, No 13 of 2015.

11 ‘About Copyright and Related Rights’ (Jamaica Intellectual Property Oce, 2018) www.jipo.gov.jm/

node/47.

12 See Jason Haynes, ‘Subject Matter of Copyright Protection In The UK: A Road Map To Eectuating

Statutory Reform’ (2013) 39(2) Commonwealth Law Bulletin 319.

13 [1964] 1 WLR 273.

14 Ibid 291.

15 Note that in a number of UK cases, courts have held that if the work in question is the result of its author’s

own skill, labour, judgement and eort, then copyright subsists therein. See, for example, University of London

Press v University Tutorial Press [1916] 2 Ch 601, 609–610, per Peterson J; Independent Television Publications Ltd. v

Time Out Ltd. [1984] FSR 64.

16 In Jamaica, for example, copyright subsists in a work for up to 95years after its creation. In most other

jurisdictions, however, this period is 50years.

17 A person may not do any of the following acts in relation to a work in which copyright subsists, unless

the permission of the author/owner is obtained: reproduction; translation; adaption; arrangement, other

transformation; rental/public lending; importation of copies of work; public display; public performance;

broadcasting; or communication of work to the public. The infringer must have copied/showed/rebroad-

cast a substantial part of the work, judged both quantitatively and qualitatively.

18 Damages, injunctions and accounts of profits, plus additional damages because of flag rancy of an infringe-

ment, may be sought. Criminal sanctions, including fines and terms of imprisonment, may also be imposed

in appropriate cases.

19 Persons who are alleged to have infringed copyright work may seek to rely on various defences, including

the fair dealing defence, which exempts criticism, review or the reporting of current events from being

regarded as infringements. See Jason Haynes, ‘Critically Reconceptualising the United Kingdom’s Fair

Dealing Exception to Copyright Infringement in light of the Government’s Most Recent Proposals for

Reform and Lessons Learnt from Civil Law Countries’ (2012) 12 European Intellectual Property Review

811.