Curious Case of Prithvi Shaw vs Freecharge and Swiggy, Explained

The 18-year-old cricketer, Prithvi Shaw, with his backfoot punch as the inaugural shot, became the youngest Indian cricketer to score a century in his debut international match at Rajkot. Prithvi Shaw's immense talent at this age has always been praised and welcomed by the Indian cricketing legends like Sachin Tendulkar, Sunil Gavaskar, Rahul Dravid and Sourav Ganguly. But soon after his maiden test century, he (his sports management company) has jumped into a legal marketing tussle with the e-commerce company, Freecharge and online food delivery company, Swiggy. Prithvi's sports management company, Baseline Ventures, sent a cease-and-desist letter to Freecharge and Swiggy over the unauthorised application of a caricature similar to the young cricketer celebrating his ton. Baseline Ventures demands 1 crore each as compensation amount. Freecharge and Swiggy have taken their post down. 

What is a Cease and Desist letter? 

A cease and desist letter is the first formal step taken to ask a party to cut performing an illegal activity. However, it is not legally binding. The letter can be sent in four major areas: Intellectual Property, Harassment, Contract Violations, and Character Defemation & Libel.

According to Medianama, the Baseline Ventures, in its notice, said, 

“Our Client (Prithvi Shaw) has absolute and exclusive right to fully market and monetize all commercial rights associated with the Player in all territories globally including without limitation, media and broadcasting rights (on all platforms like TV, Radio, internet, social media, multimedia, books and publications, outdoor advertising, print, mobile phones, digital etc), sponsorship and advertising rights, licensing and merchandising rights, gaming rights, media footage rights, apparel rights, website rights etc.

“It is absolutely clear from your advertisement that you are encashing the name and fame of the Player without any authorization from Our Client merely to cause unlawful gain to yourself and unlawful loss to Our Client."

The alleged Trademark violation falls under Intellectual Property Rights, IPR.

Is there a genuine Trademark violation? 

According to an article published in Scroll, Roshan Gopalakrishna, Counsel (Sports and Entertainment) at LawNK, does not believe the case a Trademark violation. 

“I have not read the entire notice but from whatever has been reported there are lots of flaws in it,” he said. “The notice says the posts have violated the Trademarks Act, which is incorrect. There is no trademark here. A trademark is something like a logo. Unless Prithvi Shaw has his own personal brand, like Roger Federer’s ‘RF’ for example, it can’t come under a trademark law.”

But, in an explainer written by Vijay Pal Dalmia in 'Mondaq' titled as 'Intellectual Property Rights in Sports- Indian Perspective', he says, "Even the names of the players have acquired the status of trademarks due to their celebrity status. This popularity and brand image eventually converts into monetary profit through advertisements, brand ambassadors, goodwill and reputation of the sponsors etc."

"Domain Names in sports, which are also treated as trademarks by Indian courts, also play a substantial role in protection of intellectual property rights associated with sports."

"Under the (Indian) Trade Marks Act, 1999 both civil and criminal remedies are simultaneously available against infringement and passing off. It is interesting to note that for seeking protection under the Indian laws REGISTRATION OF TRADEMARK IS NOT MANDATORY, so even those who have not obtained any registration can enforce their rights in the court of law.

Where Baseline Ventures stands now?

Baseline Ventures may accept a formal apology if sent by Freecharge and Swiggy or they can go on fighting it in the court. However, experts believe that Baseline Ventures has only tried to position Prithvi in the marketing industry and sent an initial warning to the other market players felling prey to such activities. There are key potential stakeholders whose credibility will be tossed if such things happen frequently. Currently Prithvi Shaw is endorsing Nike, Protinex, MRF and Indian Oil. 

Baseline has signed Prithvi as its new client last year. It also manages shuttler PV Sindhu, Billiards player Pankaj Advani, cricketer Smriti Mandana, Himanshu Rana and some other international clients like Moto GP. 

Is Prtihvi's case unique? 

No! There have been instances in the past when famous personalities' pictures, caricatures, digital animations, styles and gestures have been used in various ads and social media online campaign as congratulatory messages and slogans. The most popular among them is the dairy giant, Amul. We all have seen the creatives by Amul in different newspapers. They come up with pun intended creatives on most of the occasions or newsworthy events in sports. Be it Rohit Sharma's 200 knock, Badminton star PV Sindhu olympic medal win, India's World Cup win or the various notebale performances by the sportpersons in the country, Amul has never backed off producing relevant creatives.

Now the obvious question is, did Baseline sue Amul for previous Trademark violations in the context of PV Sindhu or any other sportsperson whom they associate with? There is no such information so far. Even if it is there we haven't seen Amul being dragged to court or ends up paying compensation to any other company. 

Amul has been sent several defemation notices in the past. But nothing happened. Its latest creative on Prithvi Shaw's century was, "Prithvi ka favourite makhan” and “Shaw bash”."

(Sources: Scroll.in, Mondaq, Investopedia and Medianama.)