Interview with Shwetasree Majumder
1. Shwetasree, could you tell us a little about your professional journey leading into your current position?
When in law school, I always knew that I wanted to work in the field of IP. After the Raj Anand Moot Court Competition win in my 4th year of Law School followed by a subsequent internship at the offices of Anand and Anand, I knew for sure that this was where my heart lay. At the time many friends thought I was being foolhardy that I neither sought out a corporate law firm internship nor appeared for the recruitment process. My mind was made up and I wasn’t getting derailed. Once recruited by the firm, I never looked elsewhere until I was made the youngest equity partner with the firm at the age of 28. Then on, the only thing that kept nudging me was the “What next?” question. I realized at that point that in a large firm set up despite having become an equity partner I wasn’t in an intellectual place that was remarkably different from where I was as a Senior Associate. I wanted the freedom to do things differently and carve out a niche practice in areas that were till then unexplored by traditional IP practitioners. I needed the independence of being able to explore more thoroughly the interface between IP and Commercial laws. Most importantly I needed to challenge myself creatively and see if I could pull this off! I set my 30th birthday as a cut off to get my own enterprise up and running. I achieved my goal well before my 29th and Fidus Law Chambers was born. Since its inception, Fidus has been providing legal services to all sectors which have an IP interface but our notoriety as a specialized sports law practice, has grown very rapidly.
2. What were your motivating factors in starting up and operating a firm that would specialise in IP and sports laws?
As I said earlier, I was itching to set up a practice that challenged the established models of doing business as a law firm in India without compromising on quality. I didn’t want to be an IP generalist and focussed instead on building up a niche practice to service an industry that despite being prolific from a commercial perspective, sadly lacked solid and dependable IP infrastructure. Sports Law expertise has always been lacking in India. There are very few specialists in the field and the lacuna translates into shockingly inadequate IP ‘cover’ for the biggest Indian sports brands. Sports law as a field involves understanding that the Sports related IP advice cannot be given in isolation. The advice must go hand in hand with the business of building a sports brand. My co-founder Anish Dayal is a commercial lawyer with strong sports and media focus who was one of the first names one would encounter in relation to the broadcasting rights issues that sports channels were litigating for years. Between us we knew that while Anish could contribute to overseeing the commercial side of sports and media issues I could provide the IP value add. Thus it was a great synergy for us to be starting up together and seeing it come this far in a short span of three years is very satisfying.
3. As an experienced sports and intellectual property lawyer, how do you think the field has changed in the last five years? As a student, did you expect these fields to experience such levels of growth?
In India, the whole branding and looking at sports as a business has been a rather recent phenomenon. It is incredibly short-sighted that no one saw this potential despite cricket being the national religion and cricketers being the speediest millionaires in our country. Despite the phenomenal success stories associated with the EPL in the UK and Major League Baseball in the US, no one thought owning a sports team was a viable business proposition. Perhaps the lack of infrastructure and a fear for government red-tape came in the way. Whatever the reasons were, the IPL came like a bolt of lightning and changed all that. It challenged all established bastions, grabbed eyeballs and suddenly it was viable for a corporate to own a sports brand in India! With the mad rush to acquire sporting teams (football and EPL promising to become the next big thing) there has been a deluge of branding and IP issues.
Five years ago, there wasn’t even the remotest connection being drawn between IP Rights and Sports branding. The traditional legal issues relating to sports and entertainment were broadly understood to mean broadcasting rights, on the one hand and player contracts and advertising concerns on the other. There was, and still is to an extent, a dearth of both statutory and judge-made laws expressly addressing issues like privacy rights of sporting personalities, comparative advertising, ambush marketing etc. resulting in a broad spectrum of contentious issues in each of these areas.
As a student, nobody ever considered even looking at the “law” angle to sports. The closest one would come to anything of the nature would be sports lovers hoping to somehow be able to mix their greatest passion with the study of law – but it remained just that - wishful thinking.
Today, a sports lawyer needs to not just be thorough with the IP laws especially Trade Marks and Copyright along with common law IP protection principles, but also be well versed with advertising laws, competition law, privacy issues, etc. So yes, the field has changed tremendously over the last few years and is sure to grow more with changing times and market structures.
4. Can you please describe some of the interesting legal issues you have encountered?
One of the major challenges we’ve faced as a sports law practice is convincing IPL team owners to protect their IP overseas. Most sports team owners do not consider it necessary to protect their marks in jurisdictions where they aren’t functioning or present. It was both interesting and challenging to convince them that sports merchandise and sports branding is going to become really big in the world market in the years to come. Take for example Hollywood production houses like Warner Brothers and Walt Disney. They realize that their merchandise is as popular as the movies themselves and expend significant resources in preserving and protecting their film titles and characters for a variety of merchandise. Curiously sporting brands in India are yet to cash in on the merchandising aspect of the business.
Securing protection for merchandise apart from being a good idea commercially, also makes sense because most would-be infringers would target the merchandise space. The line between out and out infringers and die-hard fans is also rather fine and the latter for instance often create websites and fan pages in the names of their favourite teams and even design ‘merchandise’ meant to be a tribute, genuinely believing that they’re doing the team a favour. Contrary to this belief and the tendency of sports team owners to overlook it as not being a ‘real threat’, unchecked usage and uncontrolled outreach of the brand across goods and services result in both its quality and exclusivity getting diluted, even if the brand is used with a view to flatter and not harm.
The biggest exercise thus, with the IPL teams was the ‘clean up’ job. There was this case of a registrant in South Africa that had sought registrations of names of all IPL teams as service marks in the name of a fictitious company with a fictitious address. He definitely wasn’t a fan trying to do the teams a favour! His applications for all 8 team names pre-dated the applications by any of the teams in the territory – in other words he got there before any of the teams realized it was prudent for them to register their trademarks overseas!
We were also successful in the UK against a party who applied for registration for the Rajasthan Royals mark and was hoping to strike a deal by being appointed as a merchandise partner in return for withdrawal of the registration sought by him.
5. In your opinion are Indian sports businesses sufficiently aware of the value and importance of their intellectual property portfolios?
The IPL experience has shown us that, despite big money spent on branding and corporatization of the teams, trademark protection issues have initially been low priority for most team owners. The simple reason for this is that sports and trademarks had been historically so far apart that it took a while for sports franchise owners to appreciate the value and the importance of focusing on a trademark protection programme for their teams and their brands.
As such, the adoption of brand names in India involves so many other considerations like consulting astrologers, numerologists, taking into account a family name, etc., that a Trade Mark attorney is rarely involved. A brand name is often adopted without proper TM Searches, and are more often than not, ends up not being a ‘good’ trademark in relation to the issue of its registrability. One may adopt the name of a place in a team’s name, but only a trademark attorney would know that such a choice without an additional inventive or arbitrary prefix or suffix will see several hurdles during the registration procedure under Indian TM law.
What brand owners need to understand is that earlier sports may have just been about the game and its telecast. Now the game itself is just one component of this huge sports business industry that’s come up. To attain commercial viability and even to have secure “value”-able assets (trademarks can be valued and loans, mortgages etc. sought using them as collateral just like tangible property) IP protection is the mandatory first step.
6. What would be the main bits of advice you would offer a sports client that is looking to register and enforce its intellectual property in India?
The first step that must be taken by a sports team/brand owner, before seeking protection of the intellectual property, is to consider the ‘protectability’ of its chosen name. Once a desirable name is settled on, a worldwide trademark clearance check must be conducted to rule out the possibility of an opposition from another jurisdiction in relation to registration of the name. Then one must take steps towards building the mark and its brand value, create a trademark portfolio – seek registration for various merchandise classes. It is important to understand that building up a portfolio of registered trademarks globally not only ensures that the sports brand remains protected; it is also much easier to take action against copycats who misuse the brand once it becomes popular by selling unauthorized merchandise or claiming other forms of association. The law frowns upon any and every form of trademark association, whether commercial and non-commercial by a person who is not authorized and when the brand owner is armed with trademark registrations, it is very easy for them to enforce their rights in a court of law.
Also, a good practice is to always make available sample merchandise such that one’s mark is not proceeded against for rectification due to non use etc.
7. Finally Shwetasree, would you have any advice for young lawyers who aspire to pursue a career path such as your own?
My advice to all young lawyers in the making out there would be to never lose one’s creative spark. If you aspire to be a sports lawyer you cannot just be armed with knowledge of the law. You must also really care about sports and understand the market, the economics, the priorities of the team etc. A sports lawyer’s advice cannot ever be template and precedence-driven with 5 year timelines. It must cater to the immediate needs of the business and provide for the development of the brand. A real estate lawyer can be very good at his job without a passionate love for buildings yes, but one can never be a top rung sports lawyer without truly caring for sports.