OP. ED.

This year’s World Intellectual Property (IP) Day campaign—Reach for Gold—takes a closer look to the universal values sports encompass—excellence, respect and fair play—power their global appeal. It explores how innovation, creativity and the IP rights that encourage and protect them support the development of sport and its enjoyment around the world.[1]

There is virtually no sport that has remained unchanged since its inception; all have seen innovation and growth. What has driven this progress? To a large extent, IP rights have provided the right incentives to continuously inspire advancement in sports. Different kinds of IP rights stimulate the growth of the sports industry in different ways. This article examines how five important categories of IP rights (patents, trade marks, design rights, copyrights, and trade secrets) are used in the sports sector to protect assets, generate value, and stimulate growth.

Patents

Patent system has proved to be a powerful incentive to innovate with a no less important societal benefit of enhancing the common pool of knowledge and stimulating others to build on and improve the current state of the art—setting a virtuous cycle in motion. Sports is a sector that directly uses and benefits from the patent system. Sporting equipment is continuously evolving. New technologies help athletes jump higher, swim faster, cycle longer, and hit a ball harder and farther. Safety also improves with technologies that lessen impact and stress on athletes’ bodies. There are literally tens of thousands of utility patents relating to sports. A search of the Google patents public datasets reveals hundreds of thousands of utility patents related to sports and making reference to such terms as “athletic” or “athletes”.[2]

Trade Marks

Branding plays an essential role in creating value, interest, and vitality in sports. It drives consumer loyalty and confidence in the quality and features of sporting goods. It also generates allegiance to sports teams and sportswear styles. The sports sector presents a unique opportunity to create a “domino effect” in trade mark value creation.[3] Consider an individual athlete who becomes a dominant player in a team sport and develops his or her own individual brand. The dominance of this athlete drives the growth and popularity of the athlete’s team as well as the entire professional league in which he or she plays. There are numerous examples of athletes who raise teams and entire sports leagues to national and even global prominence and strengthen the brand and goodwill associated with both.

Designs

An equally important IP right in the sports sector is aesthetics protected by design-specific IP rights. Industrial designs are key to making a product attractive and desirable. Companies spend vast amounts of resources on understanding consumers’ tastes and developing stylish and attractive product designs to capture valuable market segments. These designs often become their most valuable assets .

Copyrights

Copyright plays a critical role in maintaining the vitality of sports, keeping fans interested and inspired, and enhancing value. The promotion and marketing of championships and sporting events, the artistic designs of the logos of sports teams and sports competitions, the literature contained in game day programmes sold to fans and supporters, the merchandise, and the software of computer and online games are all copyrightable subject-matter. Revenues from broadcasting and media rights are often the main source of funds for sports organisations to build stadiums, host sporting events, and carry out community outreach to maintain high levels of interest.[4] Major sporting events can now be streamed or broadcast anywhere in the world, giving millions of fans the opportunity to participate in the excitement of an event .

Trade Secrets

Sports also generate an important volume of trade secrets that play a key role in competitive advantage and value creation. Teams gather proprietary information in the form of statistical analysis, scouting reports, dietary regimens, physiological metrics, and psychological assessment techniques—all to gain potential competitive advantage over their rivals.[5] Sports gear often features secret new compounds and materials to allow athletes to perform better. Companies invest heavily in elaborate focus groups to find the right mix of features and designs to make their products more attractive and marketable.

Juxtaposition of Trade Secrets and Patents/Design Rights

Patents and design rights are the publicly known aspects of the invention, while trade secrets encompass the undisclosed knowledge behind it. In exchange for disclosure the inventor obtains a patent that prevents others from copying the invention for a period of time. Conversely, there is no need to register trade secrets, and they can last indefinitely as long as the information is kept confidential. But protection is much more limited; others are only prevented from breaching the security measures in place. Moreover, competitors are free to independently develop that very same invention. Hence the two sides of the innovation coin: elements of an invention subject to reverse engineering are candidates for patent protection, while trade secrets can protect what is not apparent from examining the product. Often patents and other registrable forms of IP rights are the tip of the iceberg. The rest is knowledge acquired over time during many iterations of the development process. Some inventions, like the secret syrup formula for Coca-Cola for instance, are difficult if not impossible to determine how to copy and as such can be kept entirely secret indefinitely, as long as measures are in place to ensure their security. Trade secrets can take many forms in the world of sports, from proprietary information and processes used by individual teams and leagues to techniques and business strategies used by sporting goods and product manufacturers. Sports gear and equipment utilise undisclosed formulas, material, and processes, so, for example, golf balls can be more aerodynamic or skateboards can be lighter and stronger.[6] The development process of new products and designs takes years of prototyping and testing that must be kept secret to prevent tipping off the competition.

Conclusion

Sports have become a multi billion dollar global industry—one that generates investment in facilities, employs millions of people around the world, and entertains many more. We look at how sports businesses use patents and designs to foster development of new sports technologies, materials, training, and equipment to help improve athletic performance and engage fans worldwide.

We find out how trade marks and branding maximise commercial revenue from sponsorship, merchandising and licensing agreements. These revenues offset the cost of organising world class events, such as the Olympic Games and World Cup series, and ensure that the value and integrity of these spectacular events are safeguarded. We explore how broadcasting rights underpin the relationship between sport and television and other media that bring fans ever closer to sporting action. At their core, IP protections and incentives allow industries and individuals to prosper in their pursuit of innovation and brand development. This creates a synergistic and reinforcing effect. The development of new technologies strengthens a given brand; the strengthening of a given brand leads to the development of new technologies and products, which in turn further strengthens the brand. Additionally, the popularisation of a given sport leads to the development of related industries and technologies. Think of wearable fitness devices, which have led to the creation of a whole new sub-industry of app development. Similarly, there is a powerful symbiosis between individual players, their sports, their teams, the respective leagues, and related industries, including branding, sporting goods, and sportswear. The success of one part of this ecosystem leads to potential commercial opportunities and the development of new products and services for all related industries.


*Vaishali Singh is an Assistant Professor of Law, School of Law, University of Petroleum and Energy Sciences.

[1]    Reach for Gold: IP and Sports, see <https://www.wipo.int/ip-outreach/en/ipday/>.

[2]    The data produced by Google patents is from the respective patent offices, not from Google patents itself. See <https://cloud.google.com/blog/big-data/2017/10/google-patents-public-datasets-connecting-public-paid-and-private-patent-data>.

[3]    See  <http://www.wipo.int/ip-sport/en/>.

[4]    See <http://www.wipo.int/ipadvantage/en/details.jsp?id=3110>.

[5]    D.C. Lippoldt and M.F. Schultz, Uncovering Trade Secrets—An Empirical Assessment of Economic Implications of Protection for Undisclosed Data, OECD Trade Policy Papers, No. 167, OECD Publishing, p. 29.

[6]    The most durable skateboard deck ever, Tech StartUps. See <https://techstartups.com/2017/07/31/capsule-skateboard-durable-skateboard-deck-ever/>.

Case BriefsForeign Courts

Supreme Court of United States: While determining that whether the ‘inter partes review’ established under the Leahy-Smith America Invents Act violates Article III or the Seventh Amendment of the US Constitution, the Court by a ratio of 7:2, held that, inter partes review does not violate the Seventh Amendment and Article III. When Congress properly assigns a matter to adjudication in a non-Article III tribunal, “the Seventh Amendment poses no independent bar to the adjudication of that action by a non-jury fact finder.”

As per the facts, in 2001, the petitioner Oil States Energy Services obtained a patent relating to an apparatus and method for protecting well-head equipment used in hydraulic fracturing. In 2012 however the petitioner company filed a suit against Greene’s Energy (the respondent in the present case) in Federal District Court for infringing that patent. At the same time, Greene’s Energy challenged the validity of the patent and instituted inter- partes review with the Patent Trial and Appeal Board. The inter- partes review was established by the Leahy-Smith America Invents Act, according to which any person other than the patent owner can file a petition for inter partes review. The petitioner can request cancellation of “one or more claims of a patent” on the grounds that the claim fails the novelty or non-obviousness standards for patentability; and the challenges must be made “only on the basis of prior art consisting of patents or printed publications.” Once inter partes review is instituted, the Patent Trial and Appeal Board—an adjudicatory body within the PTO created to conduct inter partes review—examines the patent’s validity.

Perusing the concerned laws and precedents on the point, the Court only addressed the constitutionality of inter partes review. A majority of 7 judges observed that the inter partes review falls within the public-rights doctrine as a decision to grant patents is a issue involving public rights, specifically the grant of a public franchise. Inter partes review is simply a reconsideration of that grant, and the Congress has permissibly reserved the United States Patent and Trademark Office’s authority to conduct such reconsideration. However John Roberts, C.J., and Gorsuch, J., delivering the dissenting opinion, observed that a political appointee and his administrative agents instead of independent judges are not the competent authority to resolve a patent dispute. Citing various precedents and procedure from the past, the Judges held that, “law traditionally treated patents issued under the Patent Clause very differently than monopoly franchises when it came to governmental invasions. Patents alone required independent judges and the decision of the Majority signals a retreat from Article III’s guarantees.” [Oils State Energy Services LLC v. Greene’s Energy Group LLC, No. 16–712, decided on 24.04.2018]

Experts CornerGUJCOST - GNLU

 Vidya Dadati Vinayam, Vinaya Dadati Paatrataam I

Paatratva Dhanamaapnoti, Dhanaat Dharmam Tatah Sukham II

This shloka in Sanskrit means true/complete knowledge gives discipline, from discipline comes worthiness, from worthiness one gets wealth, from wealth one does good deeds, from that comes joy.

This ancient Sanskrit proverb resonates of the power and value of knowledge. It also echoes the need for protection of traditional knowledge, a branch under intellectual property rights (IPR) that spurt on the global platform with the finalisation of Convention on Biological Diversity (CBD), 1992.

A broad worded explanation of traditional knowledge is provided under Article 8(j) of the Convention, which reads as:

Traditional knowledge refers to the knowledge, innovations and practices of indigenous and local communities around the world. Developed from experience gained over the centuries and adapted to the local culture and environment, traditional knowledge is transmitted orally from generation to generation. It tends to be collectively owned and takes the form of stories, songs, folklore, proverbs, cultural values, beliefs, rituals, community laws, local language, and agricultural practices, including the development of plant species and animal breeds. Sometimes it is referred to as an oral traditional for it is practiced, sung, danced, painted, carved, chanted and performed down through millennia. Traditional knowledge is mainly of a practical nature, particularly in such fields as agriculture, fisheries, health, horticulture, forestry and environmental management in general.[1]

Traditional knowledge, as opposed to common belief, is not so called because of its antiquity. It is a living body of knowledge that is developed, sustained and passed on from generation to generation within a community, and often forms part of its cultural or spiritual identity. As such, it is not easily protected by the current intellectual property system, which typically grants protection for a limited period to inventions and original works by named individuals or companies. Its living nature also means that “traditional” knowledge is not easy to define.[2]

Protecting and promoting traditional knowledge is an amalgamation of various ideas like human rights, conservation of resources, sustainable development, intellectual property rights and benefit sharing mechanism. This work looks at traditional knowledge through the lens of intellectual property ecosystem.

In term of Intellectual Property (IP) protection for traditional knowledge, two types are being sought:

(i) Defensive protection which aims to stop people outside the community from acquiring intellectual property rights over traditional knowledge. India, for example, has compiled a searchable database of traditional medicine that can be used as evidence of prior art by patent examiners when assessing patent applications. Defensive strategies might also be used to protect sacred cultural manifestations, such as sacred symbols or words from being registered as trade marks.[3]

(ii) Positive protection under which there is granting of rights that empower communities to promote their traditional knowledge, control its uses and benefit from its commercial exploitation. Some uses of traditional knowledge can be protected through the existing intellectual property system, and a number of countries have also developed specific legislation.[4]

However, the international legal system has not surfaced with an instrument for specific protection of such traditional or indigenous knowledge and even though some national laws do accord protection, this may not hold sufficient for other countries.

India—An overview of wealth

India is a mega diverse country with only 2.4% of the world’s land area, harbours 7-8% of all recorded species, including over 45,000 species of plants and 91,000 species of animals. Of the 34 global biodiversity hotspots, four are present in India, represented by the Himalaya, the Western Ghats, the North-East, and the Nicobar Islands.[5] Further, India is the largest producer of medicinal plants and the traditional medicinal systems found under Ayurveda, Siddha and Unani, are concepts that were developed between 2500 and 500 BC in India.[6]

That India is a biologically diverse and the traditional knowledge possessed regarding various resources, especially the medicinal system, makes it a richer nation is understood, however such the possession of such knowledge must be both protected and promoted. India has undergone many struggles in trying to safeguard her traditional knowledge. These resulted from patents granted to corporations, for knowledge that is India’s legacy. I will enunciate three popular cases that brought to the fore the supposed “stealing” of Indian traditional knowledge and access of biological resources, in contravention of the Biological Diversity Act, 2002.

The Neem case

A controversy that can be tagged the “first” for India, and which rose doubts about a supposedly “strict” patent system, was the granting of patent to a company W.R. Grace. The company was granted a patent in the United States and the European Union, for a formulation that held in the stable storage of azadirachtin, the active ingredient in the neem plant; it planned to use azadirachtin for its pesticidal properties. Traditional systems of medicine like Ayurveda and Unani, identify antiviral and antibacterial properties of the neem tree also known as the “curer of all ailments” in Sanskrit, and prescribe the same for treating  skin diseases and as a natural pesticide. The applicant admitted in the patent application of how the pesticidal uses of neem were known and pointed out to the fact that storing azadirachtin for a longer duration is difficult. The US patent granted, covered a limited invention whereby the applicant was only given the exclusive right to use azadirachtin in the particular storage solution described in the patent.

The grant of the patent was followed by an uproar and it was challenged through re-examination and post-grant opposition proceedings before the United States Patent and Trade Mark Office (USPTO) and the European Patent Office (EPO), respectively. Though there was no success at the Uspto, the European Patent Office ruled in favour of the opposition stating the patent granted, lacked in novelty and inventive step.

The Turmeric case

As the USPTO and EPO were dealing with the Neem case, a similar matter was boiling; a patent was granted for “use of turmeric in wound healing” and claimed a method to heal wounds in a patient by administration of an “effective amount” of turmeric. Suman K. Das and Hari Har P. Cohly were the inventors of this patent and had later assigned the patent to the University of Mississippi.

A re-examination application was filed against the granted patent, along with nearly two dozen references, which resulted into early success. The inventors’ defence was proven weak in front of the modern commentaries on classic ayurvedic texts, extracts from Compendium of Indian Medicinal Plants and nineteenth century historical texts from the library of Hamdard University, resultantly in August 1997, the USPTO ordered revocation of the patent, which lacked novelty.

The Basmati case

Another case that created much havoc was a patent granted by the USPTO to an American company called RiceTec for “Basmati rice lines and grains”. Basmati rice is a traditionally grown aromatic variety of rice, in India and Pakistan. The grant of this patent created multitude IP issues besides that under the patent law i.e. under trade marks and geographical indications.

RiceTec had been granted patent for the invention of hybrid rice lines that combined desirable grain traits of Basmati rice with desirable plant traits; this was due to the inferior quality of Basmati rice that grew in US in comparison to the good quality Basmati rice being cultivated in northern India and Pakistan and would help in growing a better crop of Basmati rice in the western hemisphere, especially US. A re-examination request was filed, with declarations from two scientists, along with several publications on Basmati rice and the research conducted on the rice in India—one of which made the USPTO realise that core claims of RiceTec were non-obvious. This resulted into RiceTec not challenging the USPTO’s decision and reducing its twenty claims to three.

Traditional Knowledge Digital Library (TKDL)

In June 1999, the then Planning Commission under the Central Government constituted a “Task Force on Conservation and Sustainable Use of Medicinal Plants”.[7] One of its objectives included identification of measures to facilitate the protection of “patent rights and IPR of medicinal plants”. One among several recommendations of the Task Force, was creation of a library to ensure collation of traditional knowledge on one platform, which is available digitally and is helpful in proving to the world that traditional medicinal knowledge with India is prior art due to which, patent applications based on such knowledge will not fulfil the criteria of novelty.[8] Thus, a database of India’s traditional knowledge, took birth.

Traditional Knowledge Digital Library (TKDL), is a database of over 2,50,000 formulations used in traditional medicine systems in India, namely, Ayuveda, Siddha, Unani and Yoga. TKDL is a pioneer initiative of India to prevent misappropriation of country’s traditional medicinal knowledge at international patent offices on which healthcare needs of more than 70% population and livelihood of millions of people in India is dependent.[9]

The world has noted India’s move towards a defensive protection in preparing the digital library, so as to curb biopiracy and misappropriation of traditional knowledge. However, mere acknowledgement is not sufficient, rather the implementation of an equitable benefit sharing mechanism which is imperative.

In 2005, the TKDL expert group estimated that about 2000 wrong patents concerning Indian systems of medicine were being granted every year at international level, mainly due to the fact that India’s traditional medicinal knowledge which exists in local languages such as Sanskrit, Hindi, Arabic, Urdu, Tamil, etc. is neither accessible nor comprehensible for patent examiners at the international patent offices.[10]

Conclusion

Knowledge is wealth and traditional knowledge has immense potential to resolve man’s budding problems. Exploitation of this knowledge is extremely important but it must be coupled with protection, promotion and benefit sharing.

Traditional knowledge may be termed as the IP family’s newest member. However, the decisions on tackling this child have to be taken considering several factors, besides the (un)willingness of nations. Correctly put, the knowledge system of informal sector i.e. traditional knowledge, is often oral and not properly documented, thus non-defendable.[11] India has taken a step ahead and created a repository of its ages old knowledge, which grows periodically but at an international level the need of a legal instrument becomes increasingly urgent. The linking of traditional systems of knowledge with a modern IPR system is the question of relevance.

A sui generis law is often pitched in as a probable solution for proper protection of traditional knowledge, however till the time a legislation is formulated, policies and ideas like the National IP Policy, Digital India and Startup India can rescue the fast fading system of traditional knowledge. It will not be wrong to suggest, that in order to secure the future of species and mankind, the current generation will have to help protect a fading generation’s valuable knowledge.

 

*Hetvi Trivedi is Research Associate, GNLU-GUJCOST Research Centre of Excellence in IP Laws, Policies & Practices.

[1]  Convention on Biological Diversity, available at <https://www.cbd.int/traditional/intro.shtml>, last visited on 4-4-2018.

[2]  WIPO, Traditional Knowledge and Intellectual Property, available at <http://www.wipo.int/pressroom/en/briefs/tk_ip.html>, last visited on 4-4-2018 .

[3]  WIPO, Traditional Knowledge and Intellectual Property, available at <http://www.wipo.int/pressroom/en/briefs/tk_ip.html>, last visited on 4-4-2018.

[4]  Ibid.

[5] National Biodiversity Authority, India’s Fifth National Report to the Convention on Biological Diversity, 2014, available at <http://nbaindia.org/uploaded/Biodiversityindia/5th_NationalReporttoCBD.pdf>, last visited on 4-4-2018.

[6] M.M. Pandey, Subha Rastogi and A.K.S. Rawat, Indian Traditional Ayurvedic System of Medicine and Nutritional Supplementation, Evidence-Based Complementary and Alternative Medicine (2013), available at <https://www.hindawi.com/journals/ecam/2013/376327/cta/>, last visited on 5-4-2018.

[7]  V.K. Gupta, An Approach for Establishing a Traditional Knowledge Digital Library, 5 JIPR 307 (2000), available at <http://nopr.niscair.res.in/bitstream/123456789/26010/1/JIPR%205%286%29%20307-319.pdf>, last visited on 4-4-2018.

[8]  Prashant Reddy T., Sumathi Chandrashekaran, Create, Copy, Disrupt: India’s Intellectual Property Dilemmas, 271 (Oxford University Press 2017).

[9]  Traditional Knowledge Digital Library, available at <http://www.tkdl.res.in/tkdl/langdefault/common/Abouttkdl.asp?GL=Eng>, last visited on 4-4-2018.

[10]  Ibid.

[11]  V.K. Gupta, An Approach for Establishing a Traditional Knowledge Digital Library, 5 JIPR 307 (2000), available at <http://nopr.niscair.res.in/bitstream/123456789/26010/1/JIPR%205%286%29%20307-319.pdf>, last visited on 4-4-2018.