Inspiration vs. Infringement: Avoiding Liability in a Social Media World

March 15, 2018

Candice Kersh, a partner at Frankfurt Kurnit Klein & Selz, and Deidre Richardson, lead counsel at Restaurant Brands International, offered best practices for understanding and adhering to copyright law. Their recommendations included advice on how to encourage pertinent teamwork and communication among different parties, both inside and outside of the brand’s organization.

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Avoiding copyright infringement has become an especially pressing challenge in the digital age. The internet and social media expose marketers to an immense amount of inspiring material, but receiving inspiration can lead these marketers into inadvertent violations of intellectual property. To help prevent such violations, Candice Kersh, a partner at Frankfurt Kurnit Klein & Selz PC, and Deidre Richardson, lead counsel for Restaurant Brands International, suggested an array of best practices. (Richardson, however, was careful to indicate that she was not speaking on behalf of her employer.) Their discussion explained important aspects of the law as well as ways of cultivating the necessary relationships among internal and external stakeholders to cooperatively adhere to it.

Adopt and adapt “scenes à faire.” The legal concept of “scenes à faire” asserts that details of a creative work are not protectable when they are essential to the treatment of a particular topic, or to a particular genre. This principle offers marketers working in a genre some safety; however, it should also prompt creative exploration, as it urges them to adjust nonessential details to tell their own specific story.

Beware of the litigious celebrity. When evaluating the risk posed by marketing materials and considering an unflattering reference to a celebrity, a brand should bear in mind the celebrity’s demonstrated appetite for lawsuits.

Beware of foreign jurisdictions. A brand and its counsel should be mindful of the differences in copyright law between regions such as the U.S. and China.

Stay up to date. To accurately evaluate the legal risk that marketing materials pose with their similarities to other creative works, counsel should attempt to maintain a current knowledge of popular culture.

Communicate with leadership. Counsel should convey to leadership the legal risks that marketing materials pose, as well as measures that can lessen those risks. These measures should be sensitive to and attempt to preserve the marketing benefits that the materials offered in their original form.

Medium-specific guidelines. Marketers’ uses of pictures and music can prompt their own specific legal anxieties. In response, a brand should keep the following things in mind:

  • A pose by any other name…. A pose cannot be copyrighted — only the way it’s captured can be. In a photograph, the way the image is captured is defined by details such as the camera angle and shutter speed that the photographer chooses.
  • Learn to love a different voice. To avoid expense, a brand may choose to license a piece of music for an ad, but not its most famous performance. To err on the side of legal caution, the brand should re-record the piece with a musician who sounds different from the original artist.
  • Consult outside professionals. A brand should consider working with a musicologist to determine if a piece in the marketing materials bears too close a resemblance to a copyrighted work.

Cultivate a productive relationship between legal and in-house creatives.

  • Conduct training. A brand should encourage its legal department to develop training for employees to teach them how to identify marketing content that could mislead or confuse the consumer, or infringe a copyright.
  • Synergize counsel’s work with the creatives’. A brand should develop procedures that enable the legal department to begin advising the creative process from its early, conceptual stages.
  • Promote creative transparency. A brand should ensure that its creative team shares its sources of inspiration with the legal department to facilitate an accurate risk assessment.

Cultivate a productive relationship between legal and external creatives.

  • Secure contractual protections. Counsel should negotiate a contract with its brand’s agency that protects it from obligations regarding clearances, third-party rights, and potential violations of intellectual property.
  • Conduct training. Just as counsel should train in-house creatives, so too should it train the brand’s agencies and freelancers. Such training should include education on the proper processes for securing approval for creative work, thereby ensuring that submissions receive appropriate oversight.
  • Urge brand and agency counsels to collaborate. The two counsels should work closely together. They should establish open lines of communication early in the relationship between the two organizations and maintain a cooperative dialogue as relevant issues arise. In fact, the counsels are sometimes the parties best-suited to resolving organizational differences, including those that originate in creative differences.

Q&A with Candice Kersh, Partner at Frankfurt Kurnit Klein & Selz PC; Deidre Richardson, Lead Counsel, Marketing and Trademarks at Restaurant Brands International

Q. How important is it for brand counsel to have a direct working relationship with an agency’s or a publisher’s counsel as opposed to having all communication go through the marketing teams?

A. Deidre Richardson: It’s important — not for everything submitted to the brand, but for riskier things, things that raise questions about the sourcing for material, or what approvals or clearances have been gotten. In those cases it’s important for the two counsels to be in touch.

Q. Do you enter into joint defense agreements with an agency pre-litigation, on an ad-by-ad basis, or in general?

A. Richardson: We don’t do it in general. We have some joint defense agreements with organizations that are using our counsel for things like trademark searches related to our brand. But other than that, if we know a topic is going to be risky, we may enter into these, or if we receive a claim on something, we may enter into a joint defense agreement.

CLE Materials


"Inspiration vs. Infringement: Avoiding Liability in a Social Media World." Candice Kersh, partner at Frankfurt Kurnit Klein & Selz PC; Deidre Richardson, Lead Counsel, Marketing and Trademarks at Restaurant Brands International. ANA Advertising Law & Public Policy Conference, 3/15/18.

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