Back in 2005 I wrote an article on issues involved with protecting your valuable intellectual property, in particular marketing and advertising themes, trademarks and slogans. We continue to receive inquires from readers on copyright protection as well as other advertising law issues. I decided to ask a respected advertising law attorney, Jim Astrachan located in the Baltimore-Washington area for an update on these issues. Jim is a principal in Astrachan Gunst Thomas, PC and along with partner Donna Thomas, is the co-author of the six-volume treatise, The Law of Advertising, published by Lexis Nexis Matthew Bender. Jim is also an adjunct professor of law, teaching trademark, copyright and advertising related subjects at the University of Maryland and Baltimore Law Schools, as well as a national lecturer on advertising law subjects.
Dealer magazine: Jim, what is a copyright protection, and how it is used?
Jim Astrachan: Copyright is a creature of federal law and protects the author’s original expression. It can protect the composition of a photo, the layout of an ad, original copy and illustrations. Copyrighted material does not need to be federally registered for protection to exist, but registration before unauthorized use allows additional remedies to the owner. It should be mentioned that, in absence of a contract passing title, the work is owned by an independent contractor who authors it (an agency) or by the employer of an employee who created the work.
Dealer magazine: So you do not have to actually file a copyright with the federal government to receive copyright protection?
Jim Astrachan: That’s correct, however registration is a statutory prerequisite to filing a lawsuit in order to protect your copyright. And registration prior to
Infringement allows the owner to recover up to $150,000 in statutory damages plus legal fees.
Dealer magazine: How expensive is it to file copyright protection and can it be done without legal representation?
Jim Astrachan: Filing fees for copyright protection are under $50 and the application is just two pages, so it is relatively simple. However, if the application is being filed because litigation is a possibility, then it is a good idea to get help from an attorney.
Dealer magazine: What’s the difference between copyright and trademark?
Jim Astrachan: A trademark is a creation of state and federal laws that serves to protect a word, symbol or design that serves as an indication of a source of goods (such as FORD) from use by others in a way that is likely to cause confusion as to the source or affiliation. Some uses of another’s mark are permitted such as in a commentary, parody or comparative advertising. You are wise to federally register marks you intend to use in interstate commerce, as registration allows a national priority and creates certain presumptions as to the ability to protect the mark against infringement.
Dealer magazine: When would you advise a dealership or agency to get a legal opinion on preparation of creative?
Jim Astrachan: Whenever you are preparing an ad that is similar to ads of others, or uses another company’s trademark or creative ideas, it is a good idea to get a legal opinion from an attorney who knows advertising law issues. Especially an ad that uses artwork, music, or discernable references to any person to make sure those uses are covered by written permission by the subject or the author, and not just the photographer who took the picture. In addition, comparative ads and ads making objective claims should be reviewed to see whether the claims are substantiated.
Dealer magazine: How much would a competitor have to ‘change’ a copyrighted piece of work in order to legally plagiarize the idea?
Jim Astrachan: There really is no clear-cut answer to this question. A judge or jury compares the two works to determine whether there is a substantial similarity.
It is factual and based on overall impression (perception). The 90/10 rule is urban myth.
Dealer magazine: If you hear or see a competitor using something you have legally protected, what steps should you take to protect your interest and rights?
Jim Astrachan: A certified letter should be sent demanding cessation of the use.
The author might have additional rights following the end of the use, such as the right to the infringer’s profits attributable to the unauthorized use and the author’s monetary damages.
Dealer magazine: If a retailer is using a slogan, such as “The Best Darn Deals in Medford County”, is it possible to legally protect such a slogan? And if so, which protection process would you use?
Jim Astrachan: Trademark is the protection process in that case but you will likely need more than this descriptive term to protect a mark as trademark law does not allow monopolization of descriptive terms until they develop a secondary meaning…an association in the public’s mind with advertiser. This association can happen sooner, but federal law presumes it occurs after five years of continuous use. Until that does occur, a competitor is pretty much free to say the same thing.
Dealer magazine: What are the most important considerations to include in a contract to retain creative rights when a relationship is ended?
Jim Astrachan: You retain ownership with a contract. This is common approach. Once paid for, it belongs to the advertiser. Keep in mind some agencies and employees license the use of personalities, photos, art, etc. So the advertiser will have no more rights in those items than the agency did. Without a contract passing ownership, your agency owns the work although you may have a license to use the work. Don’t take chances. Use a contract.
Dealer magazine: If an advertising agency or graphic designer designs a ‘logo’ for a dealership, how can that dealer insure that the logo can be protected. What aspects of the logo can one actually protect? Is it style, design, color, tag line, etc.?
Jim Astrachan: All of the above are protectable under federal trademark law if the mark is not likely to confuse as to source with a competitor’s mark or dilute a non-competitor’s mark. For example, color may be protectable if it is not functional. This is a complex area and one where you should get competent legal consultation, especially if the logo is intended to be a long-term representation of your product or service. Also, before the work is paid for, and in its concept stage, it should be searched to see whether it can be used. Just because the design or slogan is thought to be an original does not make it so.
Dealer magazine: If a retail dealership employs an in-house advertising director, what precautions can that employer take to insure any creative design ownership is assigned to the dealer in the event the employee leaves?
Jim Astrachan: An employment agreement is always a great idea where an employee assigns all of his or her work for an employer, to the employer. It may happen as a matter of law, but a contract is your best protection.
Dealer magazine: What do you see as the most pressing legal issues for retail automobile dealers and their ad agencies in the next few years?
Jim Astrachan: Effective December 1, 2009, the FTC has come out with endorsement guides dealing with social media and traditional media. There is an indication that the FTC will step up enforcement of deceptive claims on all Internet, and social media activity. So all ads, including those on your web site and anywhere on the Internet, need to be carefully screened.
If you would like a free whitepaper prepared by Astrachan Gunst Thomas on new FTC guidelines concerning use of endorsements and testimonials in advertising, e-mail me: firstname.lastname@example.org
You can contact Attorney James Astrachan at email@example.com or visit their web site www.agtlawyers.com.