‘At least Google it!’ Counsel give pre-launch Christmas advert tips

A loveable but mischievous dragon causes havoc in his village by accidentally setting things alight every time he breathes. Just when the locals’ patience is finally wearing thin, the dragon saves the day by lighting their Christmas pudding.

This heart-warming, if slightly twee, story is typical of the content in the annual Christmas advert for the UK-headquartered department store John Lewis.

The store’s Christmas campaigns are released around the end of November each year, amid much fanfare and expectation. They are often published on social media before their television launch.

The problem for John Lewis is that the tale of the dragon – used in the store’s 2019 advert – is not its original idea. At least not according to children’s author Fay Evans, who is seeking recompense from the retailer at the England and Wales High Court. The author filed a copyright claim at the Intellectual Property Enterprise Court (IPEC), a small claims division, on November 5.

In-house and private practice sources say this kind of seasonal disaster can be averted, however, and it may even be as simple for brands as performing a quick Google check.

However, they warn that new methods for artists to publish their content, including on social media, make due diligence much harder and that brands should also consider the publicity generated by a ‘David v Goliath’ battle, which will invariably benefit the smaller party.

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Evans is not the first person to make a copyright infringement allegation against John Lewis.

In 2017, author Chris Riddell alleged John Lewis borrowed concepts from his picture book ‘Mr Underbed’ in its advert that year, which depicted a monster living under a boy’s bed.

Even this year, singing duo The Portraits alleged that John Lewis lifted their cover of Philip Oakey and Georgio Moroder’s song ‘Together in Electric Dreams’.

However, Evans’ claim is the first to make it to court.

For its part, John Lewis says the concept was first pitched to it in 2016, the year before the author’s book ‘Fred the Fire-Sneezing Dragon’ was published.

But sources believe there is a balancing act to consider – between genuine claims and those that may be seeking to capitalise on the attention generated by the adverts.

Dan Smith, head of advertising law at Gowling WLG in the UK, says the John Lewis Christmas advert has become a national ‘moment’, attracting the kind of attention and engagement that brands dream of.

In recent years, other retailers and brands, including Aldi, Sainsbury’s and Tesco, have also made a point of releasing themed story-telling adverts around the festive season.

As a consequence, notes Smith, allegations of infringement have almost become a new tradition in themselves.

Matthew Sammon, director at Sonder IP in the UK, says it would be unfair to say these claims are a PR move, but that there is no doubt this kind of dispute would attract publicity for both parties.

This could particularly benefit the smaller party, who may not have the resources to market or advertise or publicise their work, he adds.

The IPEC, which has a £500,000 ($668,000) cap on the damages that can be claimed, can help parties in this regard as it allows those with fewer resources to bring a claim, Sammon notes.

Brands on the receiving end have a few options here, says one in-house source at a retailer. They can either try and transfer the claim to the High Court in the hope of pricing their opponent out, stick to the IPEC, or try to reach a settlement.

However, they warn that transferring the case to the High Court could end up costing more than losing a case in the IPEC.

Sammon says most brands will be keen to avoid a ‘David v Goliath’ narrative if the case does reach a full trial.

“Once something is public, a brand may feel it needs to stick to their guns about their rights, but that can sometimes backfire. It can be more worthwhile just to make the issue go away with a more than generous settlement. In a way, this helps out the smaller party at the same time.”

Smith at Gowling WLG notes that while the merits of infringement claims vary, there is still administrative burden in dealing with them which a brand’s legal team would prefer to avoid.

However, Sammon notes that while a brand would prefer to keep the issue under wraps, the publicity generated will result in more people watching the advert in question to check for similarities.

He notes that another intellectual property battle, between Aldi and Marks & Spencer over their themed caterpillar cakes, had the hallmarks of being as much about the publicity as it was a genuine, serious claim.

“Often there is a lot of fanfare when a claim is filed or after the conclusion of a case, but you often don’t see much of what happens in between,” he says, adding that quiet settlement is a common outcome.

Another stumbling block for a brand with almost unlimited resources (John Lewis has spent several millions on its adverts in the past) is that a copyright claim from a far smaller party may also cause a certain amount of embarrassment.

What, then, should brands be doing to stop these disputes coming to light?

Sammon believes it could be as simple as typing an idea into Google.

“It’s not an all singing, all dancing legal resource, but it is nevertheless pretty good advice to simply stick something into Google,” he says.

An in-house lawyer working for a consumer goods brand agrees: “It’s always worthwhile to have a look around and see what is out there with your own research before spending any money on due diligence and clearance, with the obvious caveat that this is merely a starting point.”

Smith says any brand expecting a high degree of exposure for its seasonal advertising should ensure that it has done the appropriate due diligence.

“Check creative agency inspiration – captured in moodboards (a collage containing images, text, and other objects that define a brand) – and consider the infringement risk in light of that source material,” he says.

This could include checking characters and scenes, confirming appropriate music licences and talent releases.

“All of this can help to mitigate the risk of a cease-and-desist letter arriving.”

Sammon says if brands are using third parties they can ask for warranties defining that a work is original, or agree an indemnities policy in the case of any legal claims.

The in-house lawyer says seeking a licence for content or themes is also a possibility, noting the 2015 Sainsbury’s advert featuring Mog the cat, which was based on the ‘Mog’ series of books by author Judith Kerr.

“Getting permission before you start the production process is obviously an extra cost but could save headaches further down the line.”

The same goes for licensing music content, says Sammon, referring to the claim by The Portraits. He notes that the songs used on Christmas adverts are often covers of existing music anyway.

Another source says there are many covers of the original versions of songs used on adverts and that royalties will have been paid to use the tracks.

The added conundrum in this case, says Leighton Cassidy, partner at Fieldfisher in London, is whether John Lewis could have heard The Portraits’ version, consciously or subconsciously, which then led to its own version.

“This is certainly an area which could lead to more claims in the future, especially as subconscious copying can be actionable in certain situations, but the content would probably need to be widely and easily accessible,” he says.

However, Cassidy believes it would be a high hurdle for The Portraits to prove copying rather than coincidence.

“Yes, both versions feature dulcet female vocals, piano accompaniment and a background choir, but this is nothing new for John Lewis. They are well-known for this sort of musical arrangement in their previous adverts.”

Whether or not John Lewis googled the concept of a dragon heating up food with its fire breath is unknown, but it certainly would have indicated whether anything similar was in the public domain.

However, sources note that the growth of the internet – and the ease with which content creators can post their songs and videos online – makes it tough for brands to perform an exhaustive search.

In turn, content creators can easily claim something is in the public domain and was likely to have been spotted had a brand searched properly.

“The fact there is no official register of copyright-protected content (at least not in the EU) makes it very hard to be as thorough in due diligence as you can with patents or trademarks, where there is a publicly available documentation,” says Sammon.

Nevertheless, Cassidy says he expects John Lewis, or its agency, would have a clearance strategy in place. “A simple internet search would definitely throw up some relevant results but may not capture everything, depending on the search term or search engine,” he adds.

Sammon adds: “The more content that is out there the higher the risk of being accused of copying. It’s quite a difficult process to come up with a completely original idea.”

Clearly, watertight due diligence will only get brands so far as they look to try and avoid seasonal calamities. If all else fails, Google may have the answer.