Ip issues in advertising

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INTELLECTUAL PROPERTY ISSUES IN ADVERTISING

E. SHELLEY



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

EMAIL

[email protected]

WEBSITE

www.altacit.com

INTRODUCTION

• For most enterprises, especially small and medium-sized enterprises, advertising can be a costly affair.

• On the one hand, customers are getting bombarded with ever more information about new and allegedly superior goods and services, while, on the other hand, cash-starved enterprises need to be more and more creative to be cost-effective in advertising their wares.

• To be effective, an advertisement must first get noticed, and then be remembered long enough to persuasively communicate the unique selling proposition of a product or service, so as to make potential customers into actual ones.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

EMAIL

[email protected]

WEBSITE

www.altacit.com

Intellectual Property Rights Involved in Advertising

• Creative content, such as written material, photographs, art, graphics, the layout of an advertisement, music and videos, may be protected by copyright;

• Advertising slogans and sounds may be protected, under circumstances, by copyright and/or by trademark law;

• Business names, logos, product names, domain names and other signs used in advertising, may be protected as trademarks;

• A website design is likely to be protected by copyright;



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

EMAIL

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WEBSITE

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Cntd..

• Geographical indications may be protected by laws against unfair competition, consumer protection laws, laws for the protection of certification marks or special laws for the protection of geographical indications or appellations of origin;

• Computer-generated graphic symbols, screen displays, graphic user interfaces (GUIs) and even webpages may be protected by industrial design law;

• Unfair advertising methods, including false advertising claims, false endorsement of products, deceptive packaging, dishonest promotions or marketing, are prohibited by unfair competition laws.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

EMAIL

[email protected]

WEBSITE

www.altacit.com

Cntd..

• Some forms of advertising techniques or means of doing business may be protected by patents or utility models;

• Distinctive packaging, like the shape of a bottle or container, may be protectable as a trademark, industrial design or, in some countries, as a trade dress;

• A person’s identity, such as his or her name, photograph, image, voice or signature, may be protected by publicity or privacy rights;

• Databases, for example of consumer profiles, can be protected by copyright or by sui generis database laws;



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

EMAIL

[email protected]

WEBSITE

www.altacit.com

Protection of relevant IP rights

• While the advertising guidelines raise compliance issues, advertisements must also be looked at from the perspective of value creation and brand equity.

• It is first important to ensure that the content and confidential information used to create the advertisement or involved in the creation process are duly protected.

• Such confidential information may be protected through a variety of tools, including:• non-disclosure agreements; due diligence;

indemnity clauses; appropriate filings under relevant IP laws, including copyright and trademark filings; and general awareness of the confidential nature of any projects.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

EMAIL

[email protected]

WEBSITE

www.altacit.com

Usage of others’ materials in Advertising

• Current technology makes it fairly easy to use material created by others– Using technical tools and software owned by

others• a written license agreement.

– Using copyrighted works owned by others• legal obligation to respect the moral rights of the author

– Using photographs owned by others • separate permission to use the subject matter depicted

in the photograph In addition to the authorization of the copyright owner of the photograph

– Using material available in the public domain • advertisers often use material that is in the public

domain. There are numerous institutions (libraries, national archives, collective management organizations) and online portals that have databases of public domain works.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

EMAIL

[email protected]

WEBSITE

www.altacit.com

Usage of others’ Likeness in Advertising

• The presence of a celebrity seems to be an effective tool of quickly attracting consumer attention to a product or service and creating high perceived value and credibility.

• In many countries, the name, face, image, voice and other likenesses of an individual are protected by privacy and publicity rights.

• The right of privacy gives a person the right to protect their image from certain uses by others. The right of publicity is the direct opposite of the right of privacy.

• It recognizes that a person’s image has economic value that is presumed to be the result of the person’s own effort and it gives to each person the right to exploit their own image.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

EMAIL

[email protected]

WEBSITE

www.altacit.com

DOCUMENTATION

• Documentation of advertisements is extremely beneficial as it can be used in India and abroad as evidence to establish the brand’s:– transborder reputation;– goodwill; and – well-known status.Some examples of such documentation are:

• the protection of the Yahoo! yodel as a sound mark;• the colour combination of red and white for Colgate;• the colour yellow for Pedigree; and• Disney characters such as Mickey Mouse and Donald Duck.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

EMAIL

[email protected]

WEBSITE

www.altacit.com

Prevention of trademark dilution

• The dilution of trademarks can occur inadvertently through advertising. An advertisement which uses trademarks to advertise products should make certain that it does not dilute, reduce or blur the mark in any way. Such dilution may occur through:– tarnishment;– degradation;– parasitism; or– freeloading

Any unauthorised use by a competitor solely to benefit from the mark’s goodwill and reputation results in the dilution of the mark.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

EMAIL

[email protected]

WEBSITE

www.altacit.com

Comparative Advertising

• Comparative advertising can mislead consumers and can unfairly discredit the identified competitors. This is why many legislations place severe restrictions on comparative advertising.

• Comparative advertising may be direct or indirect.– In direct comparative advertising, the advertised product is

described as superior to named competitors on specific features or benefits.

– In indirect comparative claims, competitors are not named, and the advertised brand is simply described as being superior on specific attributes or benefits.

• Special caution must be taken in the following situations:– Derogatory or defamatory comparisons are not permitted. – Deceptive comparisons are likely to constitute

infringement. – Comparisons that are likely to cause confusion with the

competitor’s products or services are not permitted.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

EMAIL

[email protected]

WEBSITE

www.altacit.com

Cntd..

• Hindustan Lever Limited v Colgate Palmolive (I) Limited (AIR 1998 SC 526) and Pepsi Co Inc v Hindustan Coca Cola Ltd (2003 (27)PTC 305 (Del)(DB)),– Colgate and Hindustan Coca Cola Ltd were

both held liable for disparaging their competitors’ products.

– In both advertisements the competitor’s product name could not be heard but could clearly be made out from lip movement. Such a method of circumventing the law was held to fall clearly within the ambit of disparagement.

– The courts further stated that any claims made in comparative advertisements must be backed by verifiable statistical data.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

EMAIL

[email protected]

WEBSITE

www.altacit.com

Non-Disclosure Agreement

• A non-disclosure agreement (NDA), also known as a confidentiality agreement (CA), is a legal contract through which the parties agree not to disclose information covered by the agreement.

• An NDA creates a confidential relationship between the parties to protect any type of confidential and proprietary information or trade secrets.

• It is imperative that non-disclosure agreements be signed between parties to ensure that confidential information revealed to the advertising agency is protected.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

EMAIL

[email protected]

WEBSITE

www.altacit.com

Other Legal Issues

• General issues that needs to be considered while developing an advertising campaign include:

• Geographical indications– false indications of origin or source if used are

actionable, in some countries, under the trademark law

• Sensitive categories:– Most countries have special controls or

prohibitions on advertising for specific types of products, such as medicines, tobacco.

• Labeling– in some countries the legislation requires

labeling (and advertising) to be in the national language. Some countries have environmental laws, which affect product packaging requirements.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

EMAIL

[email protected]

WEBSITE

www.altacit.com

Cntd..

• Advertising and children– Most countries allow businesses to advertise to

children, provided a set of minimum criteria is observed.

• TV advertising– Many countries have some form of specific

legislation or code of practice for TV advertising. Fore example, there may be broadcast time restrictions for particular products.

• Marketing practices– some promotional methods, such as direct

marketing, unsolicited e-mails, free gifts and discounts, may be forbidden or restricted.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

EMAIL

[email protected]

WEBSITE

www.altacit.com

Cntd..

• Distance selling– “Distance selling” includes all forms of contracts

concluded where both parties do not meet face to face. Many national legislations give rights to consumers who buy goods and services at a distance.

• Sponsorship– a virtual advertising technique where the

broadcaster can change an advertisement from one moment to the next or choose the advertisement shown on the screen depending on where the target audience is. This form of advertising is banned in some countries, whereas it is allowed in others.

• Privacy – National Data Protection or Privacy laws may put

limits and obligations on the collection, use and disclosure of personal information.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

EMAIL

[email protected]

WEBSITE

www.altacit.com

CONCLUSION

• Advertising today is not limited to print and television; the importance of protecting a brand and other intellectual property over the Internet is becoming essential to prevent damage to goodwill and reputation.

• Today, it is impossible to be a successful advertiser, or run a successful advertising agency, without understanding the legal framework surrounding the business of advertising.

• Hence exercising caution to protect the content of an advertisement and to ensure that it is in line with the applicable laws is essential.

Documents

Ip issues in advertising