There are lots of benefits to using third party intellectual property (IP) in your advertising, whether you want to convey a theme through the use of music, conduct a comparative advertising campaign, use a competitor's brand as a keyword or simply bring your ad to 'life'. However, there are a number of stumbling blocks to using third party IP which should be avoided.
We’ve set out in this article some high-level practical pointers to think about during the creative process.
Brands
Generally, when creating advertising content, the main 'branding' that you will be using will comprise names (eg of a business, product or service), logos, slogans, colours, sounds, shapes (eg of products and packaging) and 'get up' (being the look and feel of a product). These elements are all potentially protectable in the UK by either registered trade marks or the common law right of passing off (which protects the goodwill attaching to particular goods and services).
Registered trade marks are generally given a broader scope of protection than unregistered rights (in the form of passing off). However, it's important to remember that, even if a brand isn’t registered, the owner might still be able to prevent others from using it.
Remember that there is also a range of rights similar to trade marks which protect certain products (eg geographical indications which protect certain product names, such as champagne). Registered and unregistered designs might also be used in advertising. These protect aspects of the appearance of the whole or a part of a product (including packaging and logos).
The first point to make clear is that you generally cannot use a third party's trade mark in your advert without their permission. There are some exceptions to this, the most notable for advertising being where your use:
- constitutes a comparative advert, which meets all eight conditions required by The Business Protection from Misleading Marketing Regulations 2008 (the "Regulations")
- falls within one of the defences to trade mark infringement, or
- is otherwise allowed eg non-infringing use of a third party trade mark in keyword advertising.
We discuss these below. If your use does not fall within one of the above categories, then it could lead to you incurring liability for trade mark infringement. This is separate to any liability for passing off, design infringement or a breach of applicable advertising regulations. Where there is infringement, you will likely have to immediately cease use of the infringing advertising and have to pay damages and costs, among other things. There might also be reputational consequences.
Comparative advertising
Comparative advertising is, generally, an advertisement for a particular product or service which specifically mentions a competitor by name for the purpose of drawing a comparison between that competitor's product or service and your own.
Whilst it can be a useful tool to help brands stand out in a competitive field, there are strict rules for comparative advertising which, if not followed correctly, can lead to complaints from both competitors, the public and the regulator (the Advertising Standards Authority (ASA)). They can also lead to liability for trade mark infringement and passing off.
We've summarised below some of the ASA's top tips for comparative advertising, but specialist legal advice on compliance with the Regulations should be sought:
What is the 'claim' you are making?
The claim you are making needs to be very clear and you should think about how it will be interpreted by consumers and your audience. If it is insufficiently clear, then you may mislead consumers. Make sure you have sufficient objective evidence to support your claim before running a comparative advert.
For example, if you are looking to portray your product or service as 'the best in the UK' or 'market leading' – which implies that your product or service is better than all others available – you would need documentary evidence to support that claim. You would also need to be clear on how it is best or market leading.
Are you making a comparison against an identifiable competitor?
It's worth noting that, even if you are making a claim about a class of competitors (rather than naming them all), then you are still subject to the rules on comparisons with 'identifiable' competitors. If you want to name a competitor in the advert, then you need to be very careful. There are some strict rules to follow here which are beyond the scope of this article, but for which there is helpful guidance on the ASA's website.
Do the competitor's products actually compete with your product or service?
The comparative product or service must have a degree of interchangeability with the product or service that you are advertising for the advert to fall within the rules. For example, comparisons between branded and non-branded versions of the same underlying product would be acceptable as they are interchangeable from a consumer perspective, meet the same need or are intended for the same purpose.
Are you able to verify and support the comparison?
As mentioned above, any comparative advert must be able to be objectively verified by identifiable features eg price. It is not sufficient to just have the verifiable information in your office drawer, the ad needs to give the consumer sufficient information in order to fully understand and verify the accuracy of any claims being made.
Defences
The most relevant defence in the advertising context is use of a third party trade mark for the purpose of identifying or referring to products or services as those of the proprietor of the trade mark. This might apply where it is necessary to use a third party's trade mark to indicate the intended purpose of your own product or service (eg as an accessory or spare part). However, the defence is applied narrowly, and the use must be in accordance with honest practices. Specialist advice should be sought before relying on this defence.
It should be noted that there is no defence of incidental use of a trade mark. Where the third party branding is background or incidental to the content then it may be possible to shoot the ad or edit the content in post-production in order to remove the branding.
Keyword advertising
This is where an advertiser pays for its advert to appear based on the use of a specified word or phrase (a keyword) in an internet search. The keyword itself does not necessarily appear in the resulting advert. Generally, purchasing a third party brand as a keyword does not constitute trade mark infringement provided that the resulting advert does not cause consumer confusion (ie does not suggest a connection between the third party and the advertiser and is not otherwise so vague that it is difficult to tell whether there is such a connection) and otherwise does not impact the third party brand (eg by denigrating it).
It should be clear from the above that it is rarely legal to use a third party's brand in your advertising. The laws relating to trade marks (and similar rights), designs and passing off will all need to be considered depending on the use, as well as any relevant advertising regulations.
If all else fails, consider whether it is possible to ask for permission to use the third party branding. If you are obtaining permission, it goes without saying that it should be obtained in writing and from someone who has the appropriate authority to grant the permission!
Copyright
Copyright might subsist in any number of elements which make up your advert, including the text, graphics, artwork, images, photographs, sound recordings, lyrics and music, provided they are original and have been recorded. Copyright lasts for a long time – for the life of the author plus 70 years for most literary, dramatic, musical and artistic works.
As copyright is an unregistered right, it can be much more difficult to check whether or not your advert is making use of a third party's copyright work and to trace and seek permission from the copyright owner.
The owner of copyright in a work has the exclusive right to do certain acts in relation to the work, including to copy the work. A person infringes copyright if they do (or authorise another to do) any of these acts without the permission of the copyright owner. Even taking a small part of a copyright work can infringe. Again, where there is infringement an injunction preventing use of the infringing material, damages and costs (among other things) might be granted.
However, there are some exceptions to uses of third-party copyright constituting infringement, albeit they are very limited in the commercial context. (There is no general "fair use" defence in the UK as there is in some other countries such as the USA.) These exceptions include where the copyright work (or an extract of it) is:
- incidentally included in the advert (but only where it is an artistic work or sound recording)
- used for criticism or review and only a fair portion of the work has been taken for the purposes of the critique or review
- used to create a parody, caricature or pastiche (see our article on this here), or
- used for the purpose of illustrating an assertion, defending an opinion or allowing an intellectual comparison between the quoted work and the assertion.
Each of the uses falling with exceptions 2-4 above must also objectively constitute 'fair dealing' in the sense that the use must be fair and sufficiently acknowledge the author.
These defences are applied quite narrowly so specialist legal advice should be sought before relying on any of them. It should also be remembered that "moral rights" exist – a collection of rights including the right for certain persons (including the authors of literary, dramatic, musical and artistic works) to be identified as the author of the work and to object to derogatory treatment of the work. There are also "performers' rights" which restrict certain uses of performances.
As with brands, obtaining permission to use a copyright work is often the safest option. Sometimes permission can be obtained directly from the rights holder, but more often it is granted in the form of a licence from a licensing body (any organisation which offers licences for the use of copyright work eg MCPS or PPL for music).
Obtaining permission directly from the copyright owner can be complex, particularly in the case of a music track where there might be separate owners of copyright in the lyrics, music and sound recording. Even then, obtaining permission doesn’t necessarily protect you from all third party claims for use of the track, for example, if the track contains uncleared samples then you may be at risk of a claim from the rights holders to those samples.
What else?
In addition to the above, there are a range of other issues to consider such as the relevant advertising codes, which regulate issues such as the use of living people in adverts. The law of passing off has also been extended to cover situations of false endorsement: where a well-known person's name, image or other features are used to suggest that the person has endorsed a product or service when they have not.
Key dos and don'ts
- All IP rights should be considered including trade marks (and similar rights), designs, copyright (and related rights such as moral rights) and passing off rights. The applicable advertising rules might also be relevant. Remember that different IP rights can subsist in the same item.
- Remember that the rules apply to all forms of advertising and content including social media advertising (where the line between advertorial content and a private post can become a little more blurred).
- Don't attempt to suggest that your products or services are endorsed by or associated with any third party when they are not.
- Consider removing any third party IP from your advert in post-production – if use is incidental.
- Consider whether it is possible to ask for permission to use third party IP. If you are obtaining permission, make sure that it is in writing and from someone who has the appropriate authority to grant the permission.
- Consider IP issues early in the creation process and seek specialist advice before using any third party IP or relying on any permitted uses or defences. Remember that whilst you might have a defence to infringement of one type of IP right, that might not give you a defence to infringement of another type (eg there is no incidental inclusion defence for trade marks and similar rights).
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