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Are your newly designed sports games protectable under Hong Kong laws?

2020-09-01

Introduction

The sports industry has been one of the fastest growing industries globally and new sports formats have been emerging and gaining popularity. In England, “The Hundred” is a game evolved from the traditional cricket in order to fit for a shorter version of it. “The Shoot-Out Tournament”, a professional ranking snooker tournament, also shortens the traditional snooker game to 10 minutes per frame and introduced new rules to the game. Initiated in Australia, “Fast4 Tennis” varied the rules in traditional tennis to create a new form of the game. These new sports formats are actually works of innovation and creativity which may involve substantial investment and will bring about business opportunities, thus some important issues then arise – in particular, are newly designed sports protectable under the current framework of intellectual property law in Hong Kong?


What are the available options?

There are many forms of intellectual property rights, the most common ones being patents, trademarks and copyrights.

Patents protect inventions, that is products, substances, or processes which are new and inventive. To be eligible for the grant of a patent, there are four basic requirements under s.9A of the Patents Ordinance (Cap. 514), including the requirement that the innovation must not fall within one of the excluded categories in s.9A(2) of the Patents Ordinance. Pursuant to s.9A(2), “a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer” is not to be regarded as an invention for the purposes of a patentable invention. As a newly designed sports game is in essence a set of rules originated from the ideas of the game creator, it will likely fall within one of the excluded categories in the Patents Ordinance and thus would not be a patentable invention.

A trademark is a sign that distinguishes the product or service and trademarks are governed by the Trade Marks Ordinance (Cap. 559) in Hong Kong. A trade mark can typically be words, characters, designs or some form of indications and it must be capable of being represented graphically in order for it to be registered as a trademark. As such, a sports game in itself cannot be a trademark and falls out of the ambit of trademark protection as well.

The most relevant form of intellectual property rights which may be able to protect new sports games is likely copyright. Copyright is an automatic right arising from creation of a work which is given to the owner of an original work. It requires no prior registration in order to be protected under the laws of Hong Kong. However, generally, copyright only subsists in a work if the work (1) is original, (ii) is recorded, in writing or otherwise, (iii) falls within particular descriptions of work and (iv) is created by an author who satisfies the qualification requirements, or is published in Hong Kong or elsewhere, or in the case of a broadcast or cable programme, is made or sent from Hong Kong or elsewhere. According to the Copyrights Ordinance (Cap. 528), copyright subsists in the descriptions of work including (1) original literary, dramatic, musical or artistic works; (2) sound recordings, films, broadcasts or cable programmes; and (3) the typographical arrangement of published editions. On a plain reading of the provisions, it seems that a format of a sports game, primarily consisting of the set of rules employed in the game, can hardly fall within the ambit of “work” as required under the Copyright Ordinance.

However, the situation might be different if the sports concerned can be distinguishable from purposive sports and aesthetic sports. The former includes sports that have little aesthetic considerations and emphasize direct competition, such as football or tennis. In contrast, the latter are the ones that involve aesthetic and artistic components such as acrobatic gymnastics and figure skating. It is suggested by some commentators that an analogy can be drawn between an aesthetic sporting event and a “dramatic work” and it seems that aesthetic sports can be protected as dramatic works as defined under the relevant statutes in certain common law jurisdiction such as the UK and India. In the English case of Norowzian v Arks Ltd (No. 2) [1999] All ER (D) 1214 which concerns copyright of a film, the Court stated that a work of action that can be performed before an audience can fall within “dramatic work” as defined under s.1(i) of the Copyright, Designs and Patents Act 1988 and is therefore eligible for copyright protection. In light of this decision, it is commented that aesthetic sports can be seen as a work of action which is capable of being performed before an audience and is thus a “dramatic work”. In contrast, in Canada’s Copyright Act, dramatic work is defined as “any piece of recitation, choreographic work or mime, the scenic arrangement or acting form” and it is ruled in the Canadian case of FWS Joint Sports Claimants v Canada (Copyright Bd.) [1992] 1 F.C. 487, 501 (C.A). that a football play is inconsistent with the concept of choreography since it is mostly a random series of events. While the organisers of sports events may stop any unauthorised broadcasting, filming or recording of the events on the basis of copyright, the formats of the purposive sports games themselves will unlikely be entitled to copyright protection.


What can be done?

It seems that a form of sports cannot be directly recognised as an intellectual property right protectable under the current Hong Kong laws regarding intellectual properties. Nonetheless, new sports games creators may try to protect the derivatives of their creations. For instance, sports games creators may try to register the names, logos, or even slogans of the games they invented as trademarks, which may in turn enable the creators to build brands and to distinguish themselves from other competitors in the sports market. Sports broadcasts are also protectable pursuant to the Copyrights Ordinance. Merchandises that were designed pursuant to the games can enjoy copyright protection or may become a registered design, while certain sporting equipment and the relevant technologies may be registrable as patents. For example, the English case, Football Dataco Ltd v Brottens Pools Ltd [2010] RPC 17, illustrates how intellectual property rights can be utilised to protect interests in relation to sports games. In the case, the English court ruled that the claimants’ football fixture lists of football leagues are protected by “database” copyright under English law as the selection and arrangement of the contents constitutes the creator’s own intellectual creation.


Conclusion

Although the current intellectual property laws in Hong Kong do not seem to be readily applicable for the protection of sports games in itself, creators are still advisable to make the most out of the existing law and protect their creations and interests as far as possible.




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Important: The law and procedure on this subject are very specialised and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.

Published by ONC Lawyers © 2020


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Ludwig Ng
Ludwig Ng
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Lawrence Yeung
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Ludwig Ng
Ludwig Ng
Senior Partner
Lawrence Yeung
Lawrence Yeung
Partner
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