Katarina Klaric, Principal, Stephens Lawyers & Consultants
Marketing and advertising campaigns can play a significant role in building brand awareness, increasing sales and revenue and enhancing the value of company or business assets including intellectual property. In the e-commerce environment, marketing strategies are multi-faceted, involving advertising on different media including television, radio, websites, Facebook, Instagram and YouTube.
Marketing campaigns contain micro messages using a combination of graphic designs, visuals, photographic images, film, scripted dialogue, songs, music and other literary or artistic works. These creative elements may be protected by intellectual property laws – copyright, trade mark or design laws or by agreements between parties.
Common Misconceptions relating to Marketing campaigns and Intellectual property
There are a number of common misconceptions held by companies and individuals concerning intellectual property and marketing campaigns, these include:
- Where a company or individual engages or commissions an agency or third party to create a marketing campaign, they will own the content and intellectual property because they have paid for the work – NOT TRUE UNLESS YOU HAVE AN AGREEMENT TO THIS EFFECT
- You can avoid a copyright infringement claim by only copying a small part, changing some words or design elements or creating a new version of the original copyright work – NOT TRUE.
- Photographs, graphic designs, visuals, artistic works, films, videos, films, songs, music and other copyright material found on the internet can be copied freely and used in marketing campaigns without infringing copyright. NOT TRUE
Intellectual Property Protection and Risk Minimisation Strategies
Every marketing campaign requires careful consideration and scrutiny of intellectual property rights, at planning stage and prior to launch to ensure that:
- The marketing campaign is an original work and does not infringe the intellectual property rights of third parties.
- All clearances and appropriate licences have been obtained to use third party material and intellectual property rights in the marketing campaign.
- The company or organisation commissioning the marketing campaign retains ownership of the works and intellectual property rights created by third parties for their marketing campaign.
- The scope of rights granted in copyright licence agreements is adequate to give the commissioning party exclusivity in the commissioned works and intellectual property used for the campaign.
Intellectual property laws are complex and expert advice should be sought to minimise the risk of costly disputes involving marketing campaigns and intellectual property rights.
The recent Federal Court of Australia decision in State Street Advisors Trust Company v Maurice Blackburn Pty Ltd[i] provides an example of the importance of having the scope of rights in copyright works adequately specified in an exclusive licence agreement, where the commissioning party seeks to prevent others from using artistic works in similar campaigns.
State Street, as the exclusive licensee of copyright in artwork (being the visual art embodied in the statue named “Fearless Girl”) and the statue, was unsuccessful in obtaining an injunction to stop Maurice Blackburn from using the artwork and a replica of the statue in a marketing campaign to promote gender inequality issues in Australia. Maurice Blackburn had obtained sponsorship from a number of its superannuation clients in the financial sector to fund the purchase of a replica of the statue from the artist and to fund and be part of the campaign.
Maurice Blackburn admitted to reproduction of the artwork and/or communications to public, via Instagram and LinkedIn posts and tweets on Twitter, and in campaign launch invitations, on large electronic billboards and in newspaper advertisements[ii]. Maurice Blackburn did not dispute that it was not licensed by State Street to do the acts comprised in copyright, but claimed that it did not infringe State Street’s exclusive rights because the use of the artwork and statue did not come within the scope of State Street’s exclusive licence[iii].
The court found that Maurice Blackburn’s use of the artwork and statue in its campaign did not fall within the scope of State Street’s exclusive licence because the social media posts, invitations, billboard and advertisements did not refer to “gender diversity issues in corporate governance or the financial sector at all”, but were more generally directed to “gender equality” in Australia[iv].
Where copyright works are used without the licence of the copyright owner, this can result in court proceedings for copyright infringement and orders for payment of substantial damages. In the recent case of Universal Music Publishing Pty Ltd v Palmer (No.2)  FCA 434, Clive Palmer was ordered to pay Universal Music Publishing $1.5million in damages for copyright infringement of the ‘Twisted Sisters’ song by using some of the lyrics of the chorus of the song in his United Australia Party advertising campaign leading up to the 2019 election[v].
Authored by Katarina Klaric, Principal, Stephens Lawyers & Consultants
© Stephens Lawyers & Consultants. 24 May, 2021
This article is not intended to be a substitute for obtaining legal advice.
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[i]  FCA 137.
[ii] Ibid  -.
[iii] Ibid .
[iv] Ibid -.
[v]  FCA 434.