Businesses can easily but unintentionally violate the intellectual property rights of others through marketing materials or conduct. The safest way to ensure this is to use only native assets, i.e., content developed by or for the business itself. Below a brief overview of intellectual property considerations that can arise from use of third-party materials. If third-party materials are used this can create serious legal questions that our advertising and marketing attorneys can assist in navigating.
Trademarks
Trademarks are names, logos, or other indicia of the source of goods of services. Generally, a business should not use third party’s trademarks without the prior consent of that party. The major exception to this comparative advertising. This can be a direct comparison to a competitor, like “Tide cleans better than Gain.” It could also advertise compatibility or expertise, like “we repair Ford trucks” or “compatible with Apple iPhone.”
Comparative advertising is not an absolute defense and an experienced attorney can help evaluate the risks of a proposed comparative advertisement. In any case, a comparative use of another party’s marks cannot not create an implication that the third party has endorsed, approved or is affiliated with the advertised products. Any comparative claims must also be adequately substantiated.
Right of Publicity
Closely related to trademarks is the right of publicity. This covers a person’s name, images, likeness, voices, or other identifiable characteristics. Celebrity endorsements are common in the marketing world, and these are proper with appropriate licensing agreements. Where this becomes problematic is when a brand implies an endorsement or association with a person or uses their likeness to sell a product without the person’s permission. Particularly because of the value an endorsement contract can generate for a famous person, these parties are often litigious over unauthorized uses of their names, images, or other identifying features.
For example, Kim Kardashian West obtained a $2.7 million judgment for unauthorized use of her image in defendant’s marketing. West v. Misguided Ltd., No. 2:19-cv-01258 VAP JEM, 2020 U.S. Dist. LEXIS 251079 (C.D. Cal. July 16, 2020). Kardashian also settled on confidential terms with Old Navy when it used a lookalike of her in an advertising campaign. Kardashian et al v. The Gap Inc, No. 2:11cv6568 (C.D. Cal.). Other famous instances include Vanna White obtaining $400,000 award for Samsung’s unauthorized use of her likeness, and Michael Jordan suing a chain of grocery stores for using his image to promote a sale. White v. Samsung Elecs. Am., Inc., 971 F.2d 1395 (9th Cir. 1992); Jordan v. Jewel Food Stores, Inc., 743 F.3d 509 (7th Cir. 2014).
Copyright
Copyright is the exclusive right to make copies of creative works, such as photos, artwork, written material, music, video, or similar materials. Copyright owners also have the exclusive right to make modifications or variations of the copyrighted material, which are known as derivative works. This means that contrary to common belief, modifying copyrighted material for use in marketing content does not prevent finding copyright infringement.
Copyright applies to a work immediately when it is created and in most cases is owned by the person who created the material. This means any material that a business did not create or pay for the creation of should be presumed to be owned by a third party. Materials obtained from unknown sources or off the internet are likely owned by someone else. Even if material (like a popular meme) may seem to be “used by everyone everywhere,” this does not mean it is permissible to use. For example, the creator of the “Dude with Sign” meme frequently sues brands for using his meme template and images in their marketing.
Businesses who aren’t careful can even find themselves facing lawsuits by multiple parties. A photographer recently sued a shoe manufacturer for using photos of celebrities wearing the company’s shoes in ads. Stewart v. Tapestry, Inc., No. 1:24-cv-02988 (S.D.N.Y Apr. 19, 2024). The celebrities themselves could also have claims if their likenesses were used without authorization. Because using outside materials in advertising and marketing efforts creates substantial legal risks, businesses should consult with experienced advertising and marketing attorneys prior to launching campaigns.
