“Advertising and Branding Restrictions” was one of INTA’s last sessions on May 22 in Boston, where in-house counsel shared how they deal with challenges around IP in advertising.
Daniel Zohny, head of IP at FIFA in Zürich, Switzerland, said that his greatest challenge is identifying what the relevant restrictions are and communicating those internally, specifically to the marketing team. In the “worst case” of non-compliance with regulations, Zohny said, “the ad campaign is shut down, and there are fines.”
Denise Yee, California-based associate general counsel at Visa, disclosed that her main challenge is keeping up with social media: “Our clients are reacting to what’s happening in real time, but we need to ensure compliance with local regulations for each post.”
Social media has transformed consumers’ relationships with brands, but also heightened their expectations, according to Yee. “They expect a high level of relevance in content, and meeting those expectations is difficult,” she said. “We try to anticipate scenarios in advance of events and come up with posts for them, but it’s impossible to pre-create everything you want to react to. Ads and IP are so interrelated, it’s important to know the rights so you can make snap decisions.”
Ensuring compliance involves identifying each potentially protectable element included in marketing materials – slogans, logos, type font, 3D marks, personality rights, etc – and ensuring rights to those. “We constantly have to remind our marketing team that they can’t just license something from Getty Images,” Yee explained.
Marketing teams using images of people without their consent is a common issue that Zohny deals with. “Just because it’s FIFA footage,” he reminds them, “you can’t produce a campaign around those images.” Zohny also corrected a common misconception – curiously found only in the UK – that if there are at least seven players in a picture it is okay to use it. “I have no idea why there’s that misconception,” he laughed, “but it’s not true.”
Brands like FIFA and Visa are constantly involved in promoting events around the world, so in order to get a handle on all the jurisdictions they encounter, they recommend conferring with local counsel. Beyond the traditional restrictions around marketing alcohol to minors, Visa’s Yee drew attention to limitations around the commercial use of nationally significant symbols.
For example, Saudi Arabia, Mexico, Panama, Ukraine, and a number of other countries have restrictions on using their national flags for commercial advertising. In addition to protecting use of flags, countries often protect other symbols of cultural importance, such as Brazil’s Christ the Redeemer statue, or Japan’s Tokyo Tower. The Eiffel Tower in Paris even has copyright protection around its illumination at night, which FIFA must consider for its Women’s World Cup hosted there beginning June 7. These symbols are not prohibited from commercial use entirely, but the rights must be properly licensed.
Stopping an ambush
Another concern surrounding these events is ambush marketing – a practice in which companies unaffiliated with an event attempt to associate their products with it, in competition with official sponsors.
Many countries do not have specific legislation addressing this issue, so FIFA often works proactively with countries that host major events to create such commercial guarantees, according to Zohny. “We’re working on that for the next World Cup in Qatar,” he said. In non-host countries where tailored legislation is not feasible, unfair competition law will do in a pinch, said Zohny.
Getting legislation in place in the host country is only one proactive measure for brand protection. Companies can also obtain injunctions before events where counterfeit products are guaranteed to be found. They can then arm local law enforcement with seizure orders so that they can move on everything outside the designated area for authorised goods.
However, enforcement should be handled carefully in the age of social media. “We have to act on our feet in the spur of the moment,” said Zohny, “and it can be hard for us lawyers to do.” Many lawyers’ knee-jerk reaction of strong protective measures can backfire.
Consider the example of Dutch brewery Bavaria’s ambush marketing stunt in the 2010 World Cup in South Africa, which was highly publicised when several women were arrested. “With social media, it can spin out of control,” said Zohny, “and in the Bavaria case, it would have been wiser to let it go.”
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