Of late, Fantasy Sports has gained immense popularity in India. This stupendous rise can be attributed to the growing number of cricket matches due to the IPL, a deluge of t20 and t10 leagues around the globe, and India’s obsession with cricket. As the sports broadcasting and the merchandising industries keep thriving, trademark assets and brands like names and logos of teams, leagues, and players also keep rising in value. Since, it has become inevitable for these platforms to use the registered and unregistered trademarks of players, teams, leagues etc., it is important to look into the legal validity surrounding these – whether they are committing trademark infringement/passing off in case of unauthorized use or does such usage qualify for fair use exemption?
Section 29 of the Trade Marks Act, 1999 states that a registered trademark is infringed by a person:
o Not being a registered proprietor or a permitted user
o Uses in the course of trade a mark which is identical or deceptively similar to the trademark in relation to goods or services in respect of which the mark is registered.
o In such a manner as to render the use of the mark likely to be taken as being used as a trademark.
Thus, to constitute infringement, in addition to using an identical/deceptively similar mark, the impugned trademark must also be used in the course of trade. This means that the impugned trademark must have a connection to the course of trade of the registered trademark in order to infringe the latter. In other words, the deception created by the impugned mark should be such that a reasonable person should believe that it is indicative of the registered trademark.
However, Section 29 also provides the concept of “Trademark Dilution” wherein the test of “likelihood of confusion” takes a back seat. According to Section 29(4) a mark not used in the course of trade can still constitute as infringement if the “registered mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.”
In Ford Motors vs. CR Borman [2009 (39) PTC 76 (Del.)], the defendant was accused of using the registered trademark “FORD” for footwear products. The Delhi High Court ruled that the use amounted to infringement as “FORD” was a highly reputed mark and the defendant was taking unfair advantage of the reputation. 2 years later in a similar case of Tata Sons vs Manoj Dodia [2013 AIR CC 2061 (DEL)] wherein the defendants were accused of using marks identical and similar to the well-known mark “TATA” for pressure cookers, the Delhi High Court held them guilty of trademark dilution for “free-riding” on the goodwill of the plaintiff.
From the above, it can be said that the Indian Trademark Law cannot hold the use of names, logos, etc in fantasy sports as trademark infringement as they don’t fulfill the criteria of being in or having a connection in the “course of trade”. However, stating that the use of marks causes trademark dilution will certainly posse a stronger argument. But to argue so it will be obligatory to prove that the impugned use is detrimental to the distinctive character and repute of the registered trademark. Such a claim is hard to make as the use of names and logos by fantasy sports does not bring disrepute to teams or players in any way. In fact, in practice, fantasy sport has proved to be beneficial for sports leagues, players, and teams in a lot of ways.
In addition to trademark infringement, it is also pertinent to look into the issue of Passing Off while discussing about fantasy sports. The law of passing off disallows passing off one's goods or services as being that of another. In ICC Development International Ltd. vs. Arvee Enterprises [(2003) 26 PTC 245 (Del.)], the Delhi High Court held that the act of the defendant of promoting its business in such a manner so as to create an impression that it is approved, authorized, or endorsed by the plaintiff, or there is a connection in the course of trade, amounts to passing off. In D.M. Entertainment Pvt. Ltd. v. Baby Gift House [2010 CS (OS) 893/2002 (Del)], the defendants were selling Daler Mehendi dolls without any authorization from the plaintiff which owned the personality rights of the famous musician. The Delhi High Court opined that the public will be misled into believing that the products of the defendant are endorsed by the plaintiff and thus, held the defendant guilty of false endorsement and passing off. However, in a case filed by cricketer Gautam Gambhir against DAP & Co. [CS (Comm.) 395/2017 Delhi H.C.] wherein the name of the cricketer was being used as the tradename of the defendants, the Delhi High Court held that the mere use of the name will not amount to passing off unless there is an overt act on behalf of the defendant to exhibit to the public that the products/services were endorsed by the same. From the principles of Passing-Off as set by the judiciary, it can be said that the use of names and logos in fantasy sports do not amount to passing off as there is no overt act on behalf of them to make people believe that they have been endorsed or sponsored by the players or the teams.
At this point it is also pertinent to look into the fair use exemption of Trademark Law. With respect to Trademarks, fair use can be broadly classified into two categories:
a. Descriptive Fair Use: This is covered under Section 30(2)(a) of the Trademarks Act. Descriptive fair use concerns the use of a registered trademark in a descriptive manner, in a way that indicates “the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services.”
b. Nominative Fair Use: This is covered under Section 30(2)(d) of the Act. Nominative fair use as stated under 30(2)(a) concerns the “use of trademarks by a person in relation to goods adopted to form part of or to be accessory to other goods or services in relation to which the trademark has been used without infringement of the right given by registration under this act or might for the time being be so used, if the use of the trademark is reasonably necessary in order to indicate that the goods or services so adapted, and neither the purpose nor the effect of the use of the trademark is to indicate, otherwise than in accordance with the fact, a connection in the course of trade between any person and the goods or services, as the case may be.” Examples of nominative fair use are news, parody, commentary, comparative advertising, etc.
The defense of nominative fair use is used in cases where a third party uses a registered mark merely for the purposes of identification. Thus, it can be argued that the use of logos and names by fantasy sports platforms can qualify for this defense. The Courts in India have also recognized the principle of nominative fair use. The Madras High Court in Consim Info Pvt. Ltd. vs Google [2013 (54) PTC 578 (Mad)], held that nominative fair use is applicable in cases where the impugned mark is only used to the extent that is reasonably necessary to identify the product and which would not be readily identifiable otherwise. In another case of Tata Sons Ltd. v. Greenpeace International [178 (2011) DLT 705], the Delhi High Court held that the parodical use of the plaintiff’s trademark did not amount to infringement as the defendant’s only intention was to draw the attention of public towards the activities of the plaintiff.
The landmark judgment of Justice KS Puttuswamy vs. UoI [(2017) 10 SCC 1] gave personality/publicity rights the status of fundamental right under Article 21 of the Constitution. This also raises a debate on its interplay with the fundamental right under Article 19. With respect to this, D.M. Entertainment Pvt. Ltd. v. Baby Gift House [2010 CS (OS) 893/2002 (Del)] has stated that the publicity/personality rights of famous personalities must not have a chilling effect on the freedom of speech and expression.
In the US, there have been a few judgments on this issue of the interplay between the freedom of speech and the publicity rights of the players, especially in relation to fantasy sports. In CBS Distribution and Marketing vs. Major League Baseball, [505 F.3d 818 (8th Cir. 2007)], the Eighth Circuit Court categorically held that the use of players’ names in the fantasy sports league of CBS was protected under the First Amendment rights of freedom of speech, even if it violates the players’ publicity rights. This was also reiterated by a Minnesota Court in CBS Interactive Inc vs. National Football League Players Assn. [2009 WL 1151982 (D. Minn.)] which expressly stated that the First Amendment overrides the right of publicity under the state laws.
From the above discussion, one can conclude that while the usage of names
of players faces limitations due to publicity/persona rights, nominative use of
names will not amount to a violation of the same. The use of names and logos in
fantasy sports is necessary for it to function and it can be argued that such
usage is Scènes à faire, as is the case with
news reporting. However, using the names or logos of players, teams, or leagues
in a manner that is promotional is unlikely to enjoy any defense under the
nominative fair use principle.