This topic was originally going to form the basis of my LLM dissertation, however, another student beat me to it. So, keen to produce a unique piece of work I changed my topic. Here is a short summary of some of the points which caught my attention when I first began researching the idea.
Kunstadt’s article “Are Sports Moves Next in IP Law?” (Nat’l L.J., May 20, 1996) was the starting point for this interesting question. His argument was that sport is big business, and as such it demands protection in all of its aspects including sports moves. However, he was writing mainly about copyright and trademark protection and from a US perspective where a more liberal interpretation is given to TRIPs and patentable subject matter. For example, the US has a range of sporting patents including the Dominant Hand Putting Method (D. Miller, US PAtent No. 5,616,089). The situation in the UK is not quite so clear-cut.
The term ‘invention’ (Patents Act 1977) is not defined and the UK courts have taken a narrow view of what will constitute an invention for the purposes of granting a patent. The Patents Act also sets out a non-exhaustive list of ‘things’ which it declares incapable of being an invention. Of particular relevance to the sports move debate is s.1(2)(c) which states that ‘a scheme, rule or method for … playing a game…’ are not inventions for the purposes of the Act. Reading this, it would be difficult to see a time when sports moves could be patented within the UK under the current system. It could therefore be suggested that a Sui Generis patent regime might be an appropriate means of protecting sports moves.
Some arguments in favour of protecting sports moves consider it an aspect of the sportsperson’s brand identity, which can be used as a marketing tool and should therefore be capable of patent protection. Their argument is based upon a connection between the sportsperson and their move which can be commercially exploited. However, this argument is flawed in so far as brand identity should be viewed within the Trademark system rather than patents, and any attempt to protect it should be more appropriately be applied for as a motion trademark. This was the situation with Jonny Wilkinson and his ‘cradle’ move. The UK Patent Office agreed with this, when approached for their opinion on whether or not he could protect the move, the Patent Office said that “although unusual, a gesture had already been used in this way as a motion mark by the Derbyshire Building Society.” (S. Coates and S. Lister, The Times, 25 November 2003)
The costs associated with obtaining a patent may be so prohibitively expensive that there would be little incentive for sportspeople to consider them viable. When combined with the problems associated with enforcing your patent right, many amateur sportspeople in particular might simply choose not to bother. Where a team or sportsperson has adequate funds to consider patenting their move, there are the hurdles of novelty, inventive step and being capable of industrial application to overcome. Novelty in particular poses interesting technical problems – individual sportspeople or teams working on a new move, for example a means of holding a cricket ball so that its spin is increased, will not know for certain how well it will work until they try it out on the field. One way of dealing with this would be to consider the use of Confidentiality Agreements, but that again adds further costs.
Patent protection could generate income for the sportsperson through licensing deals, however, would the costs be outweighed by the financial rewards of such a deal? Two moves spring to mind for being so unique as to have become synonymous with their creator: the Fosbury flop and Cruyff turn. Dick Fosbury said that his move was so revolutionary that elite athletes stuck with what they knew, and in fact it was ten years before the flop began to dominate the sport. Therefore, it is reasonable to suggest that if Fosbury had wanted to license his method, he would not have had any takers.
Further issues arise in terms of employee inventions. Where a coach or employed sportsperson creates a move he/she cannot use it for their own personal gain because they do not ‘own’ the invention. Whilst there are certain exceptions to this under the PA 2006 it is still a crucial point. Additionally, there is the question of where several team players or a coach and sportsperson co-create a move, how much input from either party will entitle them to be a co-inventor.
Other arguments against patenting sports moves centre on the viewing experience of the sports fan. By preventing others from using their move a sportsperson can dominate a sport to the extent that it ceases to be competitive, thus reducing spectator pleasure. Whilst leagues could consider licensing the move for the use of all players/teams within the league this would still result in problems for policing and enforcing the rights of the patent holder.
Patent law is at the forefront of innovation and development. As such it must respond to changes and technological advances before society has an opportunity to be able to accept or appreciate it. This inevitably leads to debate about the merits or otherwise of granting patents to particular inventions. Had Dick Fosbury tried to patent his method of clearing the high jump bar he would most likely have succeeded on both novelty and inventive step. Not only was he the only person at the time who performed the high jump in that way, he is also quoted as saying that others did not follow for a further ten years. He suggests that this was because the scissor jump was so ingrained in professional high jumpers that they were reluctant to give it up and try something new and experimental. This clearly defines the notion of inventive step by virtue of the fact that no-one else was likely to come up with the Fosbury flop because they were more than happy with the status quo. It is interesting that the only people whom he said were keen to try his new method were children and college kids, i.e. those not shackled by custom and practice.
Patents may really only be useful or possible for certain kinds of sports moves such as those which provide higher jumps. Applying UK law, sports moves should not constitute patentable subject matter for the reasons as follows: there are more appropriate and enforceable means of protecting the earning potential of sportspeople, namely contract law, copyright and trademark provisions. That being said, I would be in favour of a sui generis regime which could be crafted so as to afford adequate protection to the sportsperson without compromising the competitive nature of sports. If ballet steps can be protected by copyright there should be no reason why sports moves should not be able to acquire some protection, the trick is finding the right vehicle for that protection.
This blog post is a very edited version of a 5,000 word paper which I wrote in January 2009.
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