World Intellectual Property Day 2019 — The Australian Story of Intellectual Property and Sport
Professor Matthew Rimmer
26 April 2019 is World Intellectual Property Day. This year, the event is focusing on intellectual property and sports. The Director-General of the World Intellectual Property Organization (WIPO), Francis Gurry, has emphasized: ‘Intellectual property rights underlie and empower the financial model of all sporting events worldwide.’
The WIPO elaborates upon the theme of this year’s celebrations:
‘This year’s World Intellectual Property Day campaign — Reach for Gold — takes a closer look inside the world of sports. 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. The universal values sports encompass — excellence, respect and fair play — power their global appeal. Today, thanks to advances in broadcasting and communications technologies, anyone, anywhere, can follow sporting action around the clock, tracking the performances of their favorite athletes and teams without leaving home.’
WIPO emphasizes: ‘Sports have become a multi-billion dollar global industry — one that generates investment in facilities (from sports stadia to broadcasting networks), employs millions of people around the world, and entertains many more.’
- The Australian Story
In this context, it is worthwhile reflecting upon Australia’s distinctive contribution to the jurisprudence on intellectual property and sport.
One of the foundational intellectual property cases in Australia concerned sport — namely, horse racing.
The High Court of Australia held in the 1937 case of Victoria Park Racing & Recreation Grounds v Taylor that there was no property in a “spectacle”.
Professor Jill McKeough of the University of Technology Sydney has explained the significance of the case in the collection Landmarks in Australian Intellectual Property Law. She reflects: ‘Victoria Park Racing is still an important decision in the light of attempts to expand notions of property and control of information.’ McKeough notes that the ‘case foreshadows some of the great debates on whether the “sweat of the brow” leads to creation of protectable subject matter; whether the common law recognises rights of privacy; and whether baseball statistics somehow infringes on personality rights.’ Moreover, she observes: ‘The principles discussed are relevant, for example, to attempts by sports associationsand various sporting leagues and codes to assert control over athlete blogging, posting photographs, podcasting (audio online), vodcasting (video online), and the use of player statistics.’
Major sporting organisations have sought to utilise a variety of forms of intellectual property to protect sporting events. Sport has raised issues in respect of copyright law, trade mark law, personality rights, patent law, and sui generis legislation for major sporting events, like the Olympics and the Commonwealth Games. There has often been pressure by major sporting organisations to Australian government to provide for expansive and extensive intellectual property protection in respect of sport.
2. Copyright Law
Historically, sporting events were not protected as copyrightable subject matter. Nonetheless, major sporting organisations have since relied heavily upon copyright protection for television broadcasts. The internet has posed challenges for the traditional exploitation of television rights. The Coalition of Major Professional & Participation Sports — which represents AFL, Cricket Australia, NRL, Tennis, Rugby Union, and Netball Australia — have been an increasingly active lobbyist on copyright law and policy. The Coalition has been advocate of new copyright site-blocking and search-filtering laws, which have passed the Australian Parliament in recent years.
In 2019, there has been an interesting skirmish over copyright law, consumer law, and photography. The Australian Football League (AFL) issued a cease-and-desist notice for copyright infringement to League Tees over a line of T-Shirts and badges, featuring Tayla Harris’s iconic kick in the AFL Women’s Competition. The iconic original photograph, taken by AFL Media chief photographer Michael Willson, after Tayla Harris took a stand against online trolls who had written misogynistic comments on the picture.
The AFL’s general manager of inclusion and social policy Tanya Hosch said Tayla Harris wanted to use the image to raise money for charity:
‘As I understand it, what has occurred in that instance is that Tayla Harris is already in negotiations with the club to have some merchandise put together herself and intends for all of that to go to charity. So we just want Tayla to have the opportunity to pursue that in negotiation with her club and as I understand it, her intention is to make sure money raised go to to Our Watch.’
The intention of Tayla Harris to raise charitable donations for Our Watch, an organisation that aims to end violence against women and children. Tanya Hosch commented: ‘I guess what we are saying here is that Tayla has the right to make a decision about how that image of herself is managed and we want to support her in that opportunity’.
In response, League Tees issued a statement, denying copyright infringement: ‘Badges distributed by the AFL at the AFLW final on March 23 contain a silhouette representation of Tayla Harris that bears a likeness to art shared by social media users on the evening of March 18.’ League Tees maintained: ‘The Tayla Harris inspired artwork created by League Tees is substantially different to any of these designs.’ League Tees also denied that it had engaged in misleading and deceptive conduct:
‘The designs identified by your email first went on sale on leaguetees.com.au at 8:00AM Wednesday March 20. The AFL’s photo of Tayla Harris first came to media prominence on the evening of Tuesday 19. It is impossible to suggest that this image was in the public consciousness for a sufficient time period for it to create a reputation benefit for the AFL. In light of these clear disclaimers we do not believe there is any basis on which to allege that League Tees has engaged in conduct likely to mislead or deceive or conduct likely to be considered passing off.’
League Tees agreed, though, to withdraw the products: ‘Despite primarily being a charity fundraiser, we have decided to remove our Tayla Harris shirt and Tayla Harris badge from sale.’
3. Trademark Law
Sporting organisations have relied upon trade mark law to protect distinctive brands. WIPO has emphasized the important role played by trademark law in respect of marketing and sports sponsorship:
‘Sports sponsorship deals are underpinned by trademark rights and can be extremely lucrative. Recognizing its global appeal and power as a marketing platform, companies in many sectors are turning to sports to build awareness of their products among consumers, drive sales and stand out in a crowded and highly competitive market.’
WIPO reflects: ‘Many sports organizations also use their trademark and other IP rights to leverage the value of their brand by licensing them to third parties to produce merchandize, including apparel, accessories, footwear and more.’
Australia’s major sporting codes — including AFL, Cricket Australia, NRL, Tennis, Rugby Union, and Netball Australia — have extensively relied upon trade marks in respect of competitions and teams. Sometimes, there has been conflict over ownership and exploitation of intellectual property. The A-League is seeking transform its model of governance. Apparently, according to The Sydney Morning Herald, ‘The issue of payment for the intellectual property of the club’s brand names and logos is also a major sticking point.’
In 2019, the Australian Trademark Office handed down an interesting decision in Comite International Olympique v Temptitng Brands Netherlands BV  ATMO 41 (25 March 2019). In this matter, Tempting Brands Netherlands BV sought to extend protection of the trade mark Pierre de Coubertin subject of International Registration 1293867 to Australia under the Madrid Protocol. The Olympic Movement objected to the trade mark extension because of the connection between the Olympic Movement and Pierre de Coubertin. The hearing officer ruled: ‘There is no doubt in my mind that there is a real tangible danger of deception or confusion arising out of the use of the Holder’s Trade Mark in connection with the Holder’s Goods.’ The officer declared: ‘I am satisfied that there are a significant number of people who would be aware of the, almost inextricable, link between Pierre de Coubertin, the Olympic Movement and the Opponent.’ The Officer concluded: ‘Pierre de Coubertin is anything but a nondescript name and will be instantly recognised as the name of the founder of the Modern Olympic movement by a large number of Australians.’ Accordingly, the Officer found that the Olympic Movement had made out its ground of opposition: ‘I am satisfied by the evidence before me that because of the connotation that the name Pierre de Coubertin has, the use of the Holder’s Trade Mark in connection with the Holder’s Goods would be likely to, at least, cause purchasers to wonder whether those goods are in some way sponsored or approved by the Opponent.’
4. Passing Off and Personality Rights
Australian sporting stars have played a key role in the protection of personality rights under the doctrine of passing off. The swimmer Tracey Wickham, the athlete Gary Honey, and the swimmer Kieren Perkins were involved in key test cases over sporting endorsements. Australia, though, has not recognised the United States doctrine of publicity rights.
As sports figures have become celebrities, sporting endorsements have become a big business. WIPO comments upon the significance of personal branding by elite athletes:
‘Top athletes are also getting in on the game. Many are leveraging their personal brands (built around their sporting success) to generate significant revenue through endorsement contracts with major sportswear and other companies. Recognizing the significant marketing potential of these superstars, companies often pay millions of dollars for sports (and other) high-profile personalities to endorse their products. Some even develop product ranges bearing the athlete’s name. That’s what Nike did when it developed its products ranges for basketball superstars Michael Jordan and Lebron James. Countless athletes in many other sports, for example, Lewis Hamilton (Formula One), David Beckham (soccer), Rory McIlroy (golf), Lindsey Vonn (downhill skiing), Maria Sharapova (tennis) and more have benefited from such endorsement deals.’
There has, though, been concern in intellectual property jurisprudence about how the expansion of personality rights has impacted upon consumer rights, freedom of speech, and journalism.
5. Patent Law
In the area of patent law, there have been patents granted in respect of sports equipment and sportswear. WIPO has emphasized:
‘Innovative technologies — typically protected by patents (or as trade secrets) — are taking sports to new heights. These technologies are transforming the sports experience from the training camp to the sports stadium to our living room, and are opening the way for new sports — think e-sport and drone racing — to emerge. Today sports tech is experiencing huge growth.’
In 2019, there has been a striking patent conflict over sportswear in the Australian courts. In March 2019, South Australian physiotherapist and lecturer Carolyn Taylor launched legal action against the retailer Lorna Jane in the Federal Court, alleging infringement of “a patent covering support and compression garments”. The statement observes:
‘[Ms] Taylor believes that Lorna Jane has infringed on the patent with many of their current leggings and shorts and may have done so for many years. The statement of claim filed with the Federal Court lists 68 styles which allegedly infringe. The reason I pursued a patent was because I believed I had an important and novel product. We have spent a lot of money in the patent application process. I wanted to protect our invention and have a unique product on the market. This was my concept and it is now being used by someone else.’
In response to the legal action, Lorna Jane CEO Bill Clarkson denied that the company had engaged in patent infringement: ‘Lorna Jane ha[s] been designing and manufacturing compressive and supportive activewear since 1989, when Lorna started hand-making leotards and short tights for herself and then the clients in her aerobics classes, in turn pioneering the activewear category.’ Clarkson maintained: ‘Compression and support tights have been part of our business for the last 30 years, over 20 years before this patent was lodged.’
It will be interesting to see how this action over patent infringement progresses in the Federal Court of Australia.
6. Sui Generis Legislation
There has also been sui generis legislation passed to protect major sporting events. Australia has passed special laws for the 2000 Olympics. There were significant issues with ambush marketing, the misappropriation of Olympic Insignia, and clean venues.
In the case of Australian Olympic Committee, Inc v Telstra Corporation Limited  FCAFC 165 (25 October 2017), the Full Court of the Federal Court of Australia considered an action by the Australian Olympic Committee over the alleged ambush marketing of the Olympics by the telecommunications provider Telstra. The Full Court noted the legal argument:
‘In summary, the Statement of Claim alleges that Telstra used one or more protected Olympic expressions in the Telstra advertisements in breach of s 36 of the OIP Act (OIP Act claim). The Statement of Claim also alleges that each of the Telstra advertisements conveyed a false representation, or had a tendency to cause people erroneously to assume, that Telstra or its products or services have some form of endorsement, sponsorship, affiliation or sponsorship like arrangement with the Olympic Games, the Olympic movement, the AOC or another Olympic body such as the International Olympic Committee (ACL claim).’
The Full Court of the Federal Court of Australia dismissed the action: ‘We have considered the materials afresh and conclude that the primary judge’s decision does not reflect the errors for which the AOC contends.’
The Commonwealth Games hosted in Queensland in 2018 were also buttressed by special legislation.
There have been concerns about whether such sui generis regimes impinge upon freedom of speech and news reporting. On occasion, there has been intellectual property actions over culture-jamming the Olympics.
7. Indigenous Intellectual Property
There have even been issues around Indigenous intellectual property and sport. In Australia, Indigenous artists in July 2000 objected to the International Olympic Museum reproducing their copyright works on its website without seeking their prior permission. The International Olympic Museum had been exhibiting the original works as part of its Aboriginal art exhibition in Lausanne, Switzerland. After legal objections, the International Olympic Museum took down the works in December 2000.
In New Zealand, Maori custodians have objected to the misappropriation of “Ka Mate”, a haka performance, which has been made famous by the All Blacks. It is notable that Article 31 of the United Nations Declaration on the Rights of Indigenous Peoples 2007 emphasizes that ‘Indigenous peoples have the right to maintain, control, protect and develop their cultural heritage, traditional knowledge and traditional cultural expressions, as well as the manifestations of their sciences, technologies and cultures, including human and genetic resources, seeds, medicines, knowledge of the properties of fauna and flora, oral traditions, literatures, designs, sports and traditional games, and visual and performing arts (my emphasis).’
Australia has a rich jurisprudence in respect of intellectual property and sport. There has been significant litigation in respect of copyright law, trademark law, personality rights, patent law, sui generis legislation, and Indigenous intellectual property. Moreover, there has been concerted efforts to persuade the Australian Government to provide extended intellectual property protection in respect of sport. There have been tensions, though, between the rights of intellectual property holders, the mass media, and the sporting public. There has also been an increasing concern over the commercialisation of sport — the transformation of various games from amateur, community activities into professional sport run for big business.
Dr Matthew Rimmer is a Professor in Intellectual Property and Innovation Law at the Faculty of Law in the Queensland University of Technology (QUT). He is a leader of the QUT Intellectual Property and Innovation Law research program, and a member of the QUT Digital Media Research Centre (QUT DMRC), the QUT Australian Centre for Health Law Research (QUT ACHLR), and the QUT International Law and Global Governance Research Program (QUT IL GG). Rimmer has published widely on copyright law and information technology, patent law and biotechnology, access to medicines, plain packaging of tobacco products, intellectual property and climate change, and Indigenous Intellectual Property. He is currently working on research on intellectual property, the creative industries, and 3D printing; intellectual property and public health; and intellectual property and trade, looking at the Trans-Pacific Partnership, the Trans-Atlantic Trade and Investment Partnership, and the Trade in Services Agreement. His work is archived at QUT ePrints, SSRN Abstracts and Bepress Selected Works.