Where Are The Legal Lines When It Comes To Creativity In Marketing And Advertising?

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Where Are The Legal Lines When It Comes To Creativity In Marketing And Advertising
Zama Buthelezi, Partner at Spoor & Fisher South Africa.

Zama Buthelezi, Partner at Spoor & Fisher South Africa, asks: when it comes to intellectual property (IP), how do you avoid infringing someone else’s IP rights in your marketing and advertising? At the same time, how do you prevent someone else from infringing your rights?

Advertising is all about communicating a message in order to sell a product or service. The most successful advertisements are those that are creative and therefore memorable to the viewer. These kinds of advertisements often use material such as music, images and artwork in playful ways to ‘spice up’ the message. When it comes to copyright, here’s how marketers and advertisers can be creative within legal boundaries.

A quick look at copyright

Copyright protects specific categories of work, as soon as these works are expressed in material form. The works protected by copyright fall into these categories: literary works e.g. books; musical works e.g. songs; artistic works e.g. paintings; films; sound recordings; broadcasts; programme-carrying signals; published editions and computer programmes.

Once you know that a work fits into one of these categories, the work must still meet three requirements for copyright to subsist:

· It should be original (not necessarily novel or inventive),
· It must be in material form (that is, tangible and not just an idea) and
· The author must be a qualified person (in the case of a natural person, that is a national or resident of South Africa or a Berne Convention country and in the case of a juristic person, the author must be a body incorporated under the laws of South Africa or under the laws of a Berne convention country).

Artistic works, e.g. a logo created by a design agency

In this case, the ownership of the copyright automatically vests in the author or the agency itself, not in the person who instructed the agency. To transfer the copyright, a written assignment agreement must be entered into.

Where a logo is created by the agency and no assignment takes place, it must be borne in mind that the agency could step in to prevent a third party from registering (or even using) the logo as a trade mark.

Using songs in advertisements

Songs enjoy copyright protection as sound recordings and musical works. To get permission to use or sample music in an ad or piece of content, you’ll need to engage the copyright owner. Happily, most copyright owners are members of The Southern African Music Rights Organisation (SAMRO), which can assist you with licencing on the copyright owner’s behalf.

Here’s a hot tip: the channel or broadcaster through which you plan to advertise may already have a blanket licence with SAMRO, and so it may not be necessary for you to obtain a separate music licence. However, you must confirm this arrangement with the particular medium through which you will be advertising.

When it comes to using music in ads, you might learn a lesson from BMW, which caused an outcry on social media when its 2020 ad campaign for the BMW 330is featured a track that had perceived similarities to ‘Spirit’, a hit song by local artist Kwesta. The lesson: do not use music in ads without obtaining permission.

Featuring personalities in ads

Did you know that image rights or personality rights are protected under South Africa’s common law? These rights often come into play when using the identity or image of celebrities, brand ambassadors and even influencers.

Personality rights include the right of a person to control how their personality is commercialised. A couple of years ago, we saw Basetsana Kumalo enforcing her personality rights when Cycle Lab took a photo of her in one of their stores and the photo was published. Interestingly, Kumalo did not object to the photo being taken, but she did not give consent for its use in Cycle Lab’s advertising, so she took them to court, and won. The lesson to take from this is that permission must be obtained before using a person’s identity, name or likeness.

Considering contracts

Here are a few contracts that can go a long way in helping you avoid hot water.

Assignment agreements: these are used to transfer the ownership of copyright. These agreements must be in writing and signed by the assignor. It is important that these agreements define the copyrighted work. Be aware that moral rights, designed to protect the author’s honour and reputation, cannot be transferred, but they can be waived by the author.

Licencing agreements: these are relevant when the owner of the copyright wishes to retain ownership but wants to allow a third party to use the copyrighted work. These agreements are often relevant when it comes to using music and images – like the ‘stock images’ that come from image libraries. Among other things, your licencing agreement should stipulate how the work can be used by the licensee.

There are three types of licence: exclusive (only the licensee can use the material), sole (both the licensee and the licensor can use the material) and non-exclusive (the licensor retains the right to license the material to third parties).

Non-disclosure agreements: Let’s say you have a brilliant idea. Don’t disclose it to anyone without appropriate protection in place. An idea – in and of itself – is not protectable unless an NDA is in place between the parties.

Copyright exists on many mediums and platforms. We encounter it everywhere, every day. It is important to think twice when using any work that does not emanate from you, and most importantly: when in doubt, ask for permission.

SPOOR AND FISHER
https://spoor.com/