The large number of brand development projects I’ve managed in the past have made me at least a little knowledgeable of copyrights, trademarks & patents and their growing importance in the marketing process. That doesn’t mean I haven’t learned some expensive lessons along the way.
I was once handed a box of pictures by one of my managers who said, “You can do whatever you want with them.” So I did. In that pile of pictures was a great grand opening image—beautiful angle, tons of people coming in the doors. We used it everywhere, and it became our signature image. It was perfect....until I found out the she had not really obtained the permission required for us to “do whatever” we wanted, which in this case was using the image on almost every single piece of marketing. We paid the photographer simply to take pictures.
The negotiations were not the best. Who could fault the photographer? The lesson: don’t assume you can do whatever you want simply because you paid the photographer for the work.
In another life, I worked on a team that developed a campaign that used the style of a logo (which contained a period) to punctuate the end of a sentence. Unfortunately, when we added the period as part of the design, a national television network sent us a cease and desist letter because of the similarity to a logo they were using. To illustrate further how important it is that you are vetting these ideas, you should put into perspective that this campaign was being used in only one local market but it found its way to the desk of a national television network. The lesson: don’t think that you’ll get away with something because you’re only using it in a small market or to just a select audience.
Once, as the company I was with set about to re-launch an iconic brand, we learned what happens when you don’t protect your own trademarks. We had to issue cease and desist letters to a large number of businesses, many small, some (surprisingly) quite large, and one international in scale.
As these examples show, legal issues are intruding into more and more aspects of everyday marketing. Therefore, it’s important that you know the basics and that you partner with a legal professional specializing in intellectual property to help guide your way as you navigate some tricky areas that can become more a matter of interpretation than black and white rules. I’ve been lucky to work with some talented folks in this area. So I reached out to Abigayle Farris of Stone Pigman Walter Wittman in New Orleans, to help answer some questions and offer some advice. She’s a former casino marketer and is now practicing law, so she has lived both sides of this issue. Here are some excerpts from her responses:
What’s the difference between a copyright, a trademark and a patent?
Farris: A copyright protects original, creative works of authorship that have been expressed in a tangible medium. Copyright arises automatically when the tangible expression is created. Thus, when you write a poem, take a photograph, paint a portrait, or write or record a song, that artistic or creative work is automatically protected by copyright—upon the creation of the tangible expression—even if you never register the copyright. Copyright owners are granted a number of exclusive rights to their protective works, including the right to control reproduction, public performance and derivative works. This is one of the biggest considerations when creating advertising, especially advertising that contains music.
A trademark, on the other hand, is a word, phrase or design used to identify and distinguish the source of a product to the purchasing public. Similarly, a service mark identifies and distinguishes for consumers the source of a service. Thus, I find it helpful, if overly simplistic, to think of copyright as the protection afforded an artistic creation—protecting art for the artist’s sake, if you will—while trademark protection is available for product names, logos and other symbols used to signify the manufacturer, developer, brand or source of items offered for sale. Whether a trademark has been registered with the United States Patent and Trademark Office or not, the owner of the mark acquires trademark rights upon the first use of the mark in commerce (typically offering the product for sale to the public with its trademark displayed). Once you decide to name something or use a clever spin on an existing name, it’s important to search multiple databases...not simply a Google search.
A patent is an exclusive, limited duration property right in an invention. Anyone who invents an entirely new and “non-obvious” product or process may apply to the Patent and Trademark Office for a patent, which will “exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for up to 20 years. We all interact with patented products every day in our personal lives—the prescription you took with breakfast this morning, the retractable leash you used for your best friend’s daily walk and the smartphone you are using to read this article likely, are all protected by patents. In your professional life as a casino marketer, you will probably not deal with patents very frequently, but there are certain processes that may be patented. Again as you cleverly take a spin at something you’ve seen as a success, it is important to dig into possible considerations.
How does this impact daily marketing decisions?
Farris: As discussed above, you probably won’t often be faced with decisions related to a patent. Unless you are in a position to protect patents held by your company, patents probably aren’t something you, as a casino marketer, will have to deal with regularly.
Issues related to copyrights and trademarks, however, could pop up every day. Every time you ask your agency or creative director to create a new billboard, direct mail piece, television spot, or any marketing communication piece, you have to think about copyright. And, you may need to think about it at several different levels. Unless you or someone on your staff build your ads and collateral from scratch, someone else could hold the copyright not only to the finished creative, but to every copyrightable component used in it as well. Before you can safely use copyrighted photos, copy, recordings, illustrations and video, you must first get permission from the holder of the copyright.
You will also be faced with trademark issues regularly. First and foremost, you should work vigilantly to protect your company’s own marks. Brands, and the marks that identify them, are valuable business assets. When someone else appropriates your marks, and places them on products or uses them to promote services that are not related to your company, the meaning, efficacy and value of your trademarks are at risk. In fact, your entire brand identity could be at risk.
For the same reasons, you also must work vigilantly to avoid infringing trademarks that belong to others. Your marks should be the unique, identifiable signifier of your business. Not only do you not want consumers to confuse your brand with another, you also do not want to end up in an infringement lawsuit in federal court. Every time you develop new trademarks to use in conjunction with your latest promotion, or a new retail outlet or restaurant, you must conduct a thorough search to make sure your new marks truly are new, and truly are yours. If someone else used the same or a similar mark in commerce first, it could be theirs.
Prize giveaways also create the possibility for trademark troubles. Just as you should protect your marks, the manufacturers and creators of the prizes you give away protect their marks, as well. Sometimes they have very strict guidelines as to whether and how their marks may be used. Before you create direct mail, posters and other communication pieces featuring someone else’s trademarks, be sure you are following their requirements to the letter. Otherwise, you could end up reproducing all of your collateral—or losing your promotion entirely.
What about agency work? Do we own that?
Farris: Maybe. What does your contract with the agency say? Unless you specifically negotiated with the agency that the creative they produce would be “works for hire,” the agency owns the work. Never assume that just because it’s your ad, it’s your ad. Double-check the language of your agency contracts. And, if you foresee the need in the future to use, modify or reproduce agency work on your own, be sure you work out that detail with the agency before you renew. Most agencies are, generally, open to negotiating a work-for-hire arrangement. But unless you negotiate it, the creative likely belongs to the folks who created it.
How about pictures on the Internet with no indication? Can I just take the photo and credit the source where I found the picture?
Farris: No way. Just because a picture is on the Internet does not mean it is there properly and with the permission of the photographer. Furthermore, even if the photographer granted permission for the website to use the image, that does not mean he intended for you to use it as well. And, if there are people in the photo, you could wind up reproducing their images without their permission—which presents another (but related) set of problems altogether.
If you are interested in using photos that are available online and for free, a great place to start is Creative Commons. Creative Commons is a nonprofit organization that makes hundreds of millions of creative works of all types available to the public for free, whether via the public domain or pursuant to specialized licenses with its many content contributors.
What if we saw something somewhere and liked it…could we change some things and use it ourselves?
Farris: Probably not. If the work you liked is subject to copyright, and you simply “change some things” about it, you may have created a derivative work. Derivative works are works that transform, adapt or somehow rework the original work’s creative expression. And the copyright owner has the exclusive right to create derivative works. If the holder of the copyright is able to show that you copied or without permission used a substantial, legally protectable portion of the original work, you could be found liable for copyright infringement.
Trademarks pose a similar problem. The test for trademark infringement is whether there is a likelihood of confusion among consumers as to the product’s source, sponsorship or affiliation. Thus, if the purchasing public confuses your modified trademark—no matter how or to what extent you modify it—with the original, you could be found liable for trademark infringement. Altering the design, changing the spelling or even translating someone else’s mark into another language can all land you in hot water, if there is a chance consumers will associate your mark with, or mistake it for, the one you “borrowed.”
What steps do we need to take for original work or to use someone’s work?
Farris: Never use someone else’s original, protected work without first obtaining the proper license or other right of use from the artist. Often, your agency will handle these steps for you. And, it can be as simple as paying a licensing fee while purchasing a photograph on the Internet. Sometimes, however, negotiating the use of copyright protected works can be a complex, and pricey, proposition. Acquiring the right to use musical recordings, for example, can be particularly expensive and complicated. Do not shortcut this step, however. Litigation will always be more expensive, and more cumbersome, than negotiating the use of the work. And, even if you do not end up in court, you will probably pay more to use the work after you’ve been caught . . . and lost any leverage to bargain for a lower price.
Can I just ask for forgiveness?
Farris: Sure, if you are willing to risk statutory damages, actual damages and the legal fees incurred by the trademark owner or copyright holder for enforcement of their legal rights. And that’s just the result of the legal proceeding. Practically speaking, if someone objects to your use of their trademarks or copyrighted work, you could be forced to kill an advertising campaign, destroy retail merchandise, cancel a promotion or worse.
Should marketing departments oversee these issues themselves or get a lawyer?
Farris: It depends on your needs. If you regularly require trademark searches, or need help consistently enforcing a family of trademarks, the help of a lawyer can be invaluable. Lawyers can also be helpful in negotiating significant licensing agreements. On the other hand, if you only rarely need to use someone else’s original artwork, and your agency manages the licensing for all of its creative, you may be able to navigate the legalities yourself. Either way, you will definitely need a lawyer if you wind up in court. Stay vigilant from the start, and you should be able to avoid that result.
As you can see, being a creative marketer takes more than just pure creativity. You must navigate some legal waters that you never expected, but partnering with someone who knows the way is always the key to success. Like most good things, it may take longer to get to your goal, but it will be well worth the effort.
Abigayle Farris is a casino marketer turned lawyer. In her marketing career she has worked on the brand development teams at Harrah’s Entertainment and Wynn Resorts. She joined Stone Pigman in 2010 and is an associate of the firm. Since joining the firm, she has primarily worked in the areas of gaming law, class action and mass litigation, as well as products liability.