The Intersection of IP, Marketing Claims, and Data Ethics in Digital Campaigns
In a Nutshell:
Finnegan, Henderson, Farabow, Garret & Dunner, LLP and T-Mobile discussed the many ways brands can be liable for copyright infringement and explored how to avoid liability for using unlicensed content in digital campaigns.
Key Takeaways:
The litigation landscape related to third-party content is rapidly evolving, as demonstrated by several recent cases., including: Jangle Vision LLC v. Alexander Wang; Petunia Products, Inc. v. Rodan & Fields LLC; Sony Music Entertainment v. Vital Pharmaceuticals Inc.; and Nicklen v. Sinclair Broadcast Group. Each of these cases show the various ways that brands, talent, and influencers can be held liable for copyright infringement.
Jangle Vision LLC v. Alexander Wang Inc.
In this case, Claudia Diroma, a graphic designer, submitted her portfolio for a chance to be a photographer for fashion company Alexander Wang. Diroma also applied for a graphic designer position for the company. While she didn't win the contest and wasn't awarded the job, she was contacted by the company's talent director who requested she create a design more specific to the brand, which she did. Two years later, however, she recognized her design in an Alexander Wang ad on Instagram and Facebook, prompting her to sue for copyright infringement and over $75 million in damages. This case illustrated how brands can be liable for not explicitly stating contest rules and the implications of using content without a formal release.
Leveraging Influencer Endorsement While Avoiding Legal Action
Another concern for brands is how to avoid liability for trademark infringement when working with influencers. This concern was highlighted by court case Petunia Products, Inc. v. Rodan & Fields LLC.
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Rodan & Fields, a beauty company, paid blogger and influencer Molly Sims to endorse its "Brow Defining Boost." Shortly after Petunia, one of Rodan & Fields's competitors, sued Rodan & Fields for trademark infringement, as it owned the registered trademark for "Brow Boost." The brand also sued Sims for endorsing the infringed product, demonstrating how influencers can potentially be liable for trademark infringement, simply for endorsing products.
Embedded Videos and Copyright Infringement
The use of embedded content has also caused confusion in respect to copyright infringement. For example, conservationist Paul Nicklen posted a video he took of a starving polar bear on his Facebook and Instagram accounts. Soon after, Sinclair Broadcast, Inc., a news outlet, embedded the video in an article using Instagram's HTML code. Nicklen, who owned the copyright for the video, sued Sinclair for copyright infringement. Sinclair moved to dismiss the action, contending that embedding a video is not a violation of the copyright owner's exclusive right to "display" the copyrighted work.
The court ruled in Nicklen's favor, as a defendant-embedder is only liable for infringement if:
- The user had to click on the link to access the content. In this case the user could see the video as soon as they opened Sinclair's website.
and
- If the copyrighted images are displayed on a search engine. In this case the polar bear video was displayed on the defendant's website.
The Evolution of Talent Agreements
In recent years, talent contracts have evolved into "influencer agreements," which can be complicated due to issues around content ownership. For traditional personal services agreements, brands would own the content created, while still being subject to usage rights for the talent's likeness. Influencers, however, typically own their content, so brands still need to ensure they have the rights to that content. Influencer specific provisions include:
- Permission to use content
- Removal of content if asked by the brand
- Specific times and methods for posting content
- Quasi production agreements for separate content created by the influencer
- Whitelist, the right to boost post, and access to analytics
Action Steps:
- Tell influencers and talent that they cannot use unlicensed music for branded campaigns.
- Use short clips of license songs and make sure influencers have access to them.
- Use TikTok's library of music that is available for commercial use on their platform.
- Get permission and utilize formal written releases before using someone's content.
- Offer influencers indemnification to cover the cost of any potential legal action.
- Be careful with contest and submissions including how you approach rules, contracts, and how brands can approach contestants.
Source
"The Intersection of IP, Marketing Claims, and Data Ethics in Digital Campaigns." Anna Naydonov, partner at Finnegan, Henderson, Farabow, Garret & Dunner, LLP; Douglas A. Rettew, partner at Finnegan, Henderson, Farabow, Garret & Dunner, LLP; Jen Hurley, director of Legal Affairs at T-Mobile USA, Inc.; Brian DeCicco, executive director of customer strategy at Mindshare Worldwide. ANA 1-Day: The Intersection of Marketing Law and Intellectual Property. 9/14/21.