Holmes, How … Do I Reduce Advertising Risks and Should I Get Model Releases?

Great advertising strengthens brands. Whether your campaign is online, distributed through social media, or in traditional print, there are important legal watch-outs to consider. Identify and consistently protect your trademarks, be careful snagging pics from the internet, and get Kate Upton’s autograph (so to speak). Let’s get started.

1. Don’t “Google” it! – We’ve become accustomed to “running a search online” and “Google it” meaning the same thing. From a trademark perspective, that’s dangerous. Although it’s great for Google’s recognition, when a brand name becomes synonymous with an action or a product type, there’s a risk of “genericide”. That occurs when a trademark looses its unique association with a company’s products or services, and instead becomes a common word in our language. “Zipper”, “aspirin” and “yo-yo” were all once brand names, but each of them lost trademark significance. Given the substantial investment dedicated to building brand awareness, be careful that advertisements don’t inadvertently sabotage your trademark rights. Simple practices like adding the symbols ® (registered mark) or TM (unregistered mark) help to distinguish brands from common nouns and verbs. And don’t substitute your brand name for your product type or an action. So, for example, it’s “run a Google® search”, not “Google it.”

2. The Not-So-Public Domain – Social media encourages photo sharing. But, it’s important to ensure that you have the right to use an image before including it in ads. A word of warning – not every photo online is “in the public domain”. Generally, under US copyright law, a photographer immediately owns the copyright in their image and maintains that right for several years. Using a photo without the photographer’s consent (or the consent of the subsequent copyright holder) could constitute infringement. To reduce this risk, consider incorporating images available free to the public under the Creative Commons Zero (“CC0”) license. They can be found on various websites like Stock Up, but be careful to read the relevant license details, as attribution is sometimes requested even for CC0 photos. And, to avoid running afoul of rights of publicity and/or privacy, it may still be necessary to obtain consent for use of the images of the people appearing in the photos. This leads us to …

3. Can I take your picture? – If you plan to use images of people in your ads, it’s a good idea to consider obtaining an advance “model” release. For better clarity, model releases are for anyone appearing in your ads – not just the beautiful and famous, such as the likes of Kate Upton. When obtaining a model release, think ahead. Initial plans may be to use a photo solely on a finite social media post. But, some campaigns go viral. (YAY!) And, marketing strategies can quickly evolve beyond initial intentions. Obtaining a broadly worded model release up front can afford the freedom to adapt your use of a model’s image across media platforms. And remember to obtain written consent from a parent or guardian for any minors appearing in your advertising. Keep copies of all releases for your records.

Given the quick pace of social media advertising, consider developing brand and advertising guidelines that will help streamline approvals in advance. That way, you will have guardrails for consistently presenting and protecting your brands. Use those guidelines to set standards for sourcing images, as well. Have legal counsel review and approve the guidelines up front, and share them throughout your marketing team, as well as with outside agencies developing your copy. And, should you happen to come across Kate along the way, send me a selfie. She seems pretty cool.

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JoAnn Holmes ("Jo") is the founder of HOLMES@LAW, LLC. She serves as Outside General Counsel to select, intimate management teams for midsize companies. Likewise, Jo provides strategic support for lean law departments.

Jo founded HOLMES@LAW to provide agile, result-driven legal solutions. Beyond risk management, we help identify opportunities. The firm's focus areas are business law and strategy, commercial contracts and global intellectual property management. We build long-term relationships as trusted collaborators, and our flexibility consistently yields great value for clients.

HOLMES@LAW is also committed to service work, including through supporting local schools and leadership groups, as well as domestic and international charities. Since its founding, the firm has dedicated more than 200 hours to community service.

Contact Us to discuss how we can work together for your business success. HOLMES@LAW - Your Business Ally™.

Holmes, How … about the Disclaimers?

Information shared by JoAnn Holmes and/or HOLMES@LAW, LLC ("We or Us") is for educational purposes only. It is not legal advice. Each situation is unique, so the information We share may not be relevant to your circumstance. Until you enter a formal engagement agreement with Us, We are not your legal counsel, and no attorney-client relationship exists. So, please do not share any confidential information with Us, and please only interact with Us if you agree to these ground rules. Thanks!

© 2015 HOLMES@LAW, LLC. All Rights Reserved.

#branding #trademark #advertising #socialmedia #copyright #infringement #modelrelease

Holmes, How … Do I Clear My Brand Name and Avoid Trademark Infringement?

Is it OK to just pick a brand name that you like and start using it to identify and sell your products and services? Maybe, but I wouldn’t generally suggest that. The problem is that you might infringe someone else’s trademark.

When trademark infringement occurs, a best-case scenario may be that you rebrand and negotiate a reasonable phase-out period that allows you to sell through your existing product inventory (instead of destroying it at your cost). Still, you loose the goodwill that you’ve built in the original brand, and there’s a larger risk of damaging the reputation of your company, product and service.

A worst-case scenario is that you’re deemed a “willful infringer”, and a court requires you to pay hefty damages. Let’s avoid the latter. In fact, let’s try to avoid infringement altogether.

To keep things simple, we’ll discuss three levels of trademark searches. They will vary in scope and cost. You can also watch our Trademarks for Business tutorial for more context.

1. Ask a Search Engine. Very informally, this can be as simple as typing Your Brand Name + Your Product or Service Type into a search engine (Google, Bing, Yahoo - take your pick). That’s essentially free, and it’ll give you a rudimentary early idea as to whether someone has already invented your wheel (although inventions are the stuff of patents, and we’re talking trademarks). The problem is that a simple search like this will not reveal actual trademark applications or registrations on record with the U.S. Patent and Trademark Office (“PTO”), or the trademark offices of the 50 states. They matter.

2. Consult an Attorney for an “Immediate Elimination” Trademark Search. These are also known as “knock-out” or preliminary searches. An attorney can conduct limited scope trademark searches to reveal marks at the PTO that might increase the risk of challenge during the trademark registration process, or result in a third party dispute. The value of the Immediate Elimination search is to identify potentially problematic marks as early as possible, before your investment in advertising, marketing and product packaging - and, before you encounter a legal dispute. Because an Immediate Elimination Search is a limited scope review, if the results are positive, the next step is to conduct a fuller review of the trademark landscape.

3. Go “Comprehensive”. A comprehensive trademark search includes evaluation of the PTO records, the 50 state trademark databases, corporate/trade name registries, domain names and search engine results. While it's impossible to guarantee that any trademark search will reveal every relevant mark, a comprehensive trademark search is the best available tool in the trademark industry to identify potential risks. Third party search firms conduct the search, and the resulting report is typically several hundred pages long. Trademark counsel can distill it down to what matters, and help assess the risk level of adopting your chosen brand. Costs will vary, depending upon factors such as the search scope, any design elements, how many “classes” of goods or services are evaluated, and the urgency of your search request.

Keep in mind, a trademark search is not a guarantee of non-infringement. This is, in part, because using a brand name can build “common law” trademark rights that may not be revealed in a trademark search. We’ll leave those details for another discussion. Suffice it to say, working with an experienced trademark attorney helps in evaluating brand adoption risks, like those posed by common law marks.

Also, know that trademark availability changes in real time because many (if not all) trademark offices (federal and state) in the US accept online applications. So, you can conduct a trademark search at 10am, but by noon, someone else may have filed a trademark application for the same (or similar) trademark, which prohibits you from using that brand name. Timing matters.

Your brands are your reputation. Whether your goal is to organically grow your business for the long term, attract investors, or exit the venture at a premium, sound intellectual property clearance is a prudent investment. Early trademark searches will allow you to fail an unavailable brand fast, and move on to the winners. And working with experienced trademark counsel provides the valuable judgment to help you to effectively navigate that process and avoid the costs of unnecessary risks.

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______________

JoAnn Holmes ("Jo") is the founder of HOLMES@LAW, LLC. She serves as Outside General Counsel to select, intimate management teams for midsize companies. Likewise, Jo provides strategic support for lean law departments.

Jo founded HOLMES@LAW to provide agile, result-driven legal solutions. Beyond risk management, we help identify opportunities. The firm's focus areas are business law and strategy, commercial contracts and global intellectual property management. We build long-term relationships as trusted collaborators, and our flexibility consistently yields great value for clients.

HOLMES@LAW is also committed to service work, including through supporting local schools and leadership groups, as well as domestic and international charities. Since its founding, the firm has dedicated more than 200 hours to community service.

Contact Us to discuss how we can work together for your business success. HOLMES@LAW - Your Business Ally™.

Holmes, How … about the Disclaimers?

Information shared by JoAnn Holmes and/or HOLMES@LAW, LLC ("We or Us") is for educational purposes only. It is not legal advice. Each situation is unique, so the information We share may not be relevant to your circumstance. Until you enter a formal engagement agreement with Us, We are not your legal counsel, and no attorney-client relationship exists. So, please do not share any confidential information with Us, and please only interact with Us if you agree to these ground rules. Thanks!

© 2015 HOLMES@LAW, LLC. All Rights Reserved.

#trademark #infringement #branding #clearance