Intellectual property rights in basketball.

• Author: Colantuoni, Lucio

1. Introduction

   1.1 Background

   Traditionally, "intellectual property" connotes a legal system of protection of immaterial goods that have significant economic importance: it refers to the result of human creativity and imagination such as, for example, artistic and literary works, the industrial inventions and the trademarks. Intellectual property rights (IPR) influence three dimensions of a community: socio-cultural, economical and environmental. Copyright and Image Rights particularly affect the cultural/artistic process, to the point that they can influence freedom of expression. Patents and Trademarks become such an integrated part of the product and of the industrial/commercial processes that they regulate significant and economically relevant aspects (production, use and circulation).

   Intellectual Property can be divided into two categories: Industrial Property, which includes inventions (patents), trademarks, industrial designs, and geographic indications of source; and Copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs. Copyright may subsist in creative and artistic works (e.g. books, movies, music, paintings, photographs, and software) and gives the copyright holder the exclusive right to control reproduction or adaptation of such works, for a certain period of time. A patent may be granted for a new, useful, and non-obvious invention, and gives the patent holder a right to prevent others from practicing the invention without a license from the inventor, for a certain period of time.

   Trademark is a distinctive sign, which is used to distinguish products or services of different businesses.

   In this work, we will analyze the specific role of intellectual property rights regulation in sports industry. Of course, American legal system can be defined as the true forerunner of marketing applied to sport. In particular, the absolutely innovative legal review on celebrities' image rights established by American law represented a significant turning point, which has significantly influenced European experience. In addition, legal practices such as licensing and merchandising have constituted for several decades a fundamental component of sports law in USA and, therefore, they have a high level of sophistication and complexity that are not found in other jurisdictions (1)1.

   The analysis will continue pointing out some peculiarities of basketball context and, in this regard, the experience of English and Italian systems is not fully developed, because within these countries, this sport, even if extensively played, does not have a great commercial impact and, therefore, ip rights infringements very rarely occur. Consequently, this paper will focus on the American experience, where basketball has a great market and the Courts have stated important principles on ip rights.

   1.2 The Importance of IP Rights in Sports

   IPR are generally important in business and, in particular, in sports business. They have a value and importance on their own, and also as marketing tools. Branding of sports, sports events, sports clubs and teams, through the application and commercialisation of distinctive marks and logos, is a marketing phenomenon that, in the last 20 years, has led to a new lucrative global business of sports marketing (2).

   A growing part of the economic value of sport is linked to intellectual property rights. In an increasingly globalised and dynamic sector, the effective enforcement of intellectual property rights around the world is becoming an essential part of the health of sports economy. Use and exploitation of intellectual property (IP) in a sports business context are, in themselves, unremarkable. IPR within sport have become an extremely important asset, as for many modern commercial businesses.

   After the Second World War, as the influence of cinema and, later, of television grew, so, slowly, did the status of the professional footballer as a sports and television personality who could sell commercial products through advertising, sponsorship and merchandising. In fact, commercial exploitation of the image rights of famous sports persons is a big business.

   Equally, licensing and merchandising rights in relation to major sports events, such as FIFA World Cup and Olympic Games, are "hot properties", commanding high returns for the rights owners and concessionaires alike (3). Likewise, sports broadcasting and new media rights are also money-spinner.

   In relation to the commercialisation of sports events, it is essential to have trademarks, copyrights or other legal protections of event marks and logos. Otherwise, there is nothing that an event organiser can exploit for business purposes, like media or merchandising rights, which provide a lucrative source of income for sport in general and sports event in particular.

   In sum, the role played by intellectual property rights in connection with organization and promotion of sporting events and commercial exploitation of athletes and teams is crucial and significant and has not to be underestimated. Indeed, without exploitation of such rights, many major sports events could no be staged - as there would be nothing that could be commercialised and exploited and, therefore, no financial returns available for defraying costs. As with the granting and commercial exploitation of all intellectual property rights, attention to details is the key to their success; as also is a holistic approach, especially one that reflects and respects the special characteristics and dynamics of sport.

2. The International Discipline of Intellectual Property Rights: Brief Legal Background

   The intrinsic characteristics of IPR - that they can circulate with extreme facility outside national borders - has led to a strong acceleration of previous initiatives in order to achieve international harmonization. The following part reviews past and recent international agreements.

   Paris Convention for Protection of industrial property (4), signed in Paris on March 20, 1883, constitutes one of the first treaties on intellectual property.

   Berne Convention for Protection of Literary and Artistic Works (5), signed in 1886, is the oldest international treaty in the field of copyright.

   These two Conventions, conducted in the ambit of WIPO (6), only supplied a general picture, and any State can provide protection remaining within one's border in honour of principle of territoriality.

   The international community, however, did not have a single source for intellectual property obligations and norms until 1994 Uruguay Round of General Agreement on Tariffs and Trade created the World Trade Organization (WTO) and included Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Significance of TRIPS Agreement is three-fold. It is the first single, truly international agreement that:

   * establishes minimum standards of protection for several forms of intellectual property

   * mandates detailed civil, criminal, and border enforcement provisions; and

   * is subjected to binding, enforceable dispute settlement. TRIPS, in effect, lays the groundwork for a strong and modern IPR infrastructure for the world community.

   In the international landscape, there are other treaties specifically dedicated to the matter of intellectual property, such as:

   - PCT (Patent Cooperation Treaty): this Treaty makes possible to seek patent protection for an invention simultaneously in a large number of countries by filling an "international" patent application;

   - Madrid Agreement Concerning International Registration of Marks, and Protocol Relating to Madrid Agreement: Madrid system for registration of international trademarks offers the owner of trademark the possibility to protect his brand in several countries (members of the Madrid Union) simply by presenting the request at his national or regional patent office;

   - Geneva Copyright Treaty: Contracting Party must ensure that enforcement procedures are available under its law in order to permit an effective action against any act of infringement of rights covered by the Treaty. Such action must include expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements.

3. Intellectual Property Rights in the Field of Sport

   Intellectual property rights have an unchallenged value and they are generally very important in business and in sports in particular. World Bank's Global Economic Prospects Report for 2002 confirmed the growing importance of intellectual property for today's globalised economies, finding that "across the range of income levels, intellectual property rights (IPR) are associated with greater trade and foreign direct investment flows, which in turn translate into faster rates of economic growth". (7)

   This phenomenon is so important that Sports Rights Owners Coalition (SROC), which includes 37 sports institutions - from soccer's Premier League and FIFA to cycling's Tour de France and World Snooker - seeking international treaties in order to "protect and promote the special nature of sport" and its intellectual property rights in a fast-changing digital world. In particular, the purposes of SROC are to enable:

   - discussion and sharing of best practice on key legal, political and regulatory issues,

   - raising awareness of new developments and innovation in sports rights, and

   - sport to take joint actions in order to protect and promote their rights.

   Actually, SROC members are looking to national governments and international treaty organisations such as European Union, WTO and WIPO in order to:

   - fully recognise, protect and promote the special nature of sport and sports rights,

   - provide comprehensive protection for sports rights, including their names, logos and marks, outlaw ambush marketing and ticket touting/scalping,

   - create a regime for...