By Richard J. Idell

Creating and developing an idea for an online marketing campaign that is fresh and sparks interest is, of course, of paramount importance to success. However, it is also only the first step and is subject to a series of rights and clearance issues to be sure the campaign is not only a marketing success, but legally permissible.

1. Trade Names, Trademarks, Logos and Slogans. Inevitably, beginning the campaign will invoke branding issues that may involve trade names, trademarks, logos and slogans (Marks). Ultimately, if you go through with the use of a Mark you may want to register the selected Mark(s) with the U.S. Patent and Trademark Office (USPTO). The rules on the ability to register a name are complex, and beyond the scope of this article, but in very general terms there are some general rules.

Generic terms usually cannot be registered. Sometimes, the USPTO will challenge registration of a trademark because it is merely “descriptive” of the nature or quality of the goods or services. That is, unless they have acquired a “secondary meaning,” whereas the Mark is identifiable in the minds of the public with a product or service apart from their descriptive nature. Suggestive Marks are strong because the Mark suggests, rather than describes, a quality or characteristic of the product or services.

Distinctive or arbitrary terms are the strongest Marks and generally can be registered if not in conflict with another registration.

An arbitrary Mark is unique and not descriptive. “Google” is a great example. It was completely arbitrary when first coined and thus immediately registrable. These legal rigors outline the importance of pre-campaign searches of the terms, phrases and logos that may be involved in your campaign. Such searches are available for approximately five to six hundred dollars from a variety of services and give you a complete picture of related and conflicting registered names, Marks, slogans and logos that may exist, as well as other uses not found on the registration roles. These search reports include registered Marks at both the State and Federal level as well as related or conflicting uses in general commerce. Generally, a thorough report and a keen evaluation and analysis of risks and issues can give great certainty whether Mark is worth pursuing or not. The last thing the CEO of your company wants to hear is that the marketing team has selected a brand, spent money on developing an advertising campaign, copy and ad space and time, only to find out that the Mark infringes on some existing trademark or other protected use.

2. Publicity Rights. Does your campaign involve the use of someone’s name, likeness, persona, image, biography or other identifier, such as voice? Bette Midler successfully sued Ford Motor Company over the use of a sound-alike singer after she had turned down an engagement with Ford to do a commercial. Without her consent, Ford had located and hired a sound-alike vocalist.

Many states have promulgated statutory protection including, in some states, post-mortem protection of publicity rights of celebrities. In addition, there is a provision in the federal trademark law known as the Lanham Act, that provides a federal cause of action for a false designation of origin.

How do you avoid these legal entanglements? On your checklist of legal clearances make sure that if you are or planning to utilize the name, image, likeness, biography or voice of an individual, obtain a clearance in the form of a release. Like all releases these must be obtained before you publish your marketing campaign.

3. Photographs. If a photographer takes a picture of a famous person, while there is a publicity right that may attach to the person(s) in the photograph, the copyright in the photograph belongs to the photographer. Thus, two clearances are required for the use of a photograph in an online marketing campaign containing the image of a person. One from the photographer or the owner of the copyright, and the other from the subject of the photograph for the publicity right issue. Be sure that there are adequate written releases and licenses to use these properties in your campaign.

4. Movie or Television Clips. The well known case Sony Corp. of America v. Universal City Studios, Inc. provided that videotaping television programming for home use was not a copyright infringement. However, that safe harbor does not apply to commercial use of movies, films and television content in your online promotional ad. You have to get permission from the copyright holder in order to have the right to use excerpts from such content. Typically, such consents are in the form of a license agreement for a specific use, for a specific period of time, at a specific rate. You want to be sure that the license contains a warranty and representation that the licensor owns or controls all rights necessary to your use. Some licensors might say, “Well I will license this to you as to the rights that we have.” However, this does not protect you from other copyrighted material that may be included in the overall clip — for example, a video clip with a trademarked item in the background.

Avoid licensors who are not willing to give the appropriate warranty and representation that the material can be used for your intended purpose; otherwise you will spend more time and money making sure that you have the rights you need.

5. Music. If you use music in your online campaign it presents some complex issues. The songwriter owns the copyright in the underlying song. Sometimes, a different person writes the lyrics and the melody, in which case there are two separate owners to deal with. If a songwriter has a publisher, sometimes permission is required from both the writer and the publisher. When a band (particularly true with rappers) collaborates with a number of people to create a song, there can be numerous authors of the song. Any songs used on your online marketing campaign would be a performance of the song, thereby implicating performance rights and royalty issues for both the songwriter and the record company, if any, under the provisions of the Digital Millennium Copyright Act. That Act created a performance right for record companies in sound recordings produced by the record companies. In addition, if you are utilizing pre-recorded music in an advertising campaign, under certain union agreements consent of the principal performer may be required.

6. Creation and Use of Audio-Visual Material. If you develop audio-visual material, rather than licensing clips, you need to have an agreement with the creator of the audio-visual material. If the creator is not an employee, then usually it is created under what is referred to as “work for hire” agreement. Alternatively, you can obtain an assignment or license of the material. If the material is created by an employee, the employer is the rightful owner.

7. Product Comparisons. If your campaign involves product comparisons, truth in advertising requires that the content not be false or misleading. Many states have consumer protection laws that must be adhered. In addition, competitors may have claims if there is false designation or origin or other misleading information.

8. Other Internet Issues. Have domain names been cleared to be sure that there is no risk that a trademark owner may assert superior claims? Be sure that your campaign does not infringe on another company’s trademark. Undetected, you could run a successful campaign just to have it challenged and lost at a later date.

Keep in mind that any website elements such as photos, video, or music require at least the same clearances as television or other broadcast or publication of the campaign.

9. Guidelines for Releases. All of the clearance issues set forth above require written documentation of same. Each license or other release should be clear and unambiguous as to the uses permitted under the license and the format of media to be used. Licensors should give representations and warranties as to the rights granted. Most importantly, all necessary licenses and other consents should be negotiated and executed prior to launch. Licensors should indemnify for claims arising from breach of the representations and warranties. Where possible, obtain errors and omissions insurance to back up indemnity obligations.

As a final step when your on-line campaign is complete, step back and ask yourself whether there is anything being used which is not cleared. While these clearance details are tedious, litigation over unauthorized use of content can be enormously expensive. Following these guidelines will minimize the risk of such disputes.

About the Author:
Richard J. Idell is a partner in Idell & Seitel LLP, a boutique San Francisco intellectual property and entertainment law firm with a practice emphasis on the convergence of technology and entertainment. (415) 986-2400 and richard.idell@idellseitel.com.