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Due diligence before using another’s content for advertising purposes

Posted by Giselle Ayala | Aug 07, 2020 | 0 Comments

Unless you are the creator, the author, or the owner of a piece of content (let's say a picture, a drawing, a song, a character, etc.) you need to practice some due diligence and be sure you have the authority to use that content for advertising purposes. Whether the use of any content is commercial or not has important legal implications. Especially, if you want to argue fair use. That said, when it comes to advertising, additional considerations are necessary.

Content is the name assigned to any work, creation, or piece of information that a person or an entity creates for purposes that may or may not be commercial. Content is protected by the laws of privacy, trade secrets, trademarks, patents, copyright, right of publicity, among others.

Before using content that was not created by you, it is especially important to go through a process of clearance. The first step is to define what kind of content you want to use as part of an advertising strategy. Then, you will be in a better position to determine who is the owner of the content and whether you have the authorization to use it.

What kind of content is this?

Personal information

Privacy laws protect especially personal information. According to the laws of the United States, personal information is information that identifies, relates to, describes, is capable of being associated with, or could reasonably be linked, directly or indirectly, with a particular person or household.

Personal information can be found in private or public databases. However, the fact that information is in a public database does not mean that you are free to use it for advertising purposes. Now, regarding the source of the information, personal information can also be privileged or not privileged. Privileged information is usually all the information that a party gets while providing services that involve trust and confidentiality.

Regarding the subject of the information, it is very important to distinguish between information about adults and information about minors. When it comes to information related to children, it is necessary to be incredibly careful. There are state and federal laws that protect minors and impose remarkably high fines in cases of noncompliance. Finally, for purposes of using private or personal information, it is worth considering in which jurisdiction is located the owner of the information as well as the location of the consumer-targeted by the advertisement.

In the case of personal information, usually, individuals are the owners of all information related to them. However, once they include their information in a survey, a social network website, a contest, or any other database publicly available, ownership and control may have been transferred to third-parties. When dealing with personal data what is most important to know is the source of the information, whether the party gathering that information has made proper disclosures (that the information will be collected, shared, use, etc.), and whether the information is so sensitive as to be protected even against those disclosures.

Trade Secrets

 

In general, competitors try to protect their information against others to have a better position in the market. This information, we could say, in general terms, that it is protectable. However, the definition of “trade secrets” is a legal definition. Thus, not every piece of information is protectable under trade secrets laws.

Information is categorized as a trade secret when it is related to the business or commercial activity of the owner, is of such importance that it gives an opportunity to obtain an economic advantage over competitors who do not know or use it, and the owner has taken reasonable steps to protect it from unauthorized disclosures.

Now, regarding ownership and permission to use trade secrets, it is important to understand that this is the kind of content that will be rarely shared with others. As a consequence, what many companies due are entering into strict and well-drafted confidentiality agreements, that define with detail what information will be shared, the time during which the information will be shared, and the necessary measures that must be taken once the purpose of sharing has been completed, this is, measures to secure the information and to avoid unauthorized disclosures.

Trademarks

Any word, symbol, sound, picture, or creative device can be protected under trademark law. As opposed to other jurisdictions, trademark rights in the U.S. are acquired by use in commerce. Thus, despite the multiple benefits of registration, the lack of it does not mean that you can use another's trademark without authorization. Accordingly, before using a word, hashtag, symbol, picture, or similar in advertising, it is a good practice to search the principal trademark registrars, as well as commercial search engines to know whether that content is being used by others.

That said, it is also important to understand that even if someone is using a word to identify a specific class of goods or services, it does not mean you cannot use it at all. Trademark rights are connected to the goods or services marked with the trademark. Then, if you want to use a word or symbol to advertise a totally different kind of goods or services, you might have the right to do it, just make sure it is not a famous trademark. Famous trademarks can be protected in a broader manner, so that their distinctiveness is not diluted, i.e. they do not become popular and lose uniqueness.

The owner of a trademark is the company who uses the trademark in commerce. However, if there are coexisting marks for different goods or services or if a trademark is registered, it is necessary to gather information about these market participants and to review all existing registration to know who is the owner. It is also important to look for any kind of disclaims in regard to ownership and make sure the business using the trademark is actually the one authorized to grant licenses or assignments.

Finally, if a party acquires authorization to use a trademark, the time, scope, and conditions of such authorization will be defined in detail. This important because the owner of the trademark wants to avoid dilution, confusion, misrepresentations, and risks of liability resulting from the wrong use of the trademark.

Copyright

Under the Copyright Act of 1976 the U.S. laws protect “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”

Copyright laws protect works of authorship that are original and have been fixed in a tangible medium. The requirement for originality is low, as a consequence, as long as a work is the result of the independent efforts of the author it is protectable. Additionally, copyright protects authors against the unauthorized use, copy, reproduction, display, distribution, and transformation of their work. That said, it is worth knowing that even though registration is not necessary to have the right, it is a requirement to start a lawsuit.

Regarding copyright ownership and authorization to use, it is important to keep in mind that the owner of a work is not always the one who performs. If a work is made for hire or within the scope of an employment relationship the creator of the work and copyright owner may not be the same person. Before getting permission to use another's work, it is important to get enough information about the author and owner of the copyright interest in the work.

To use a work of authorship or to create a derivative work, a license may be the right vehicle. Licenses can be exclusive or nonexclusive, and they can also be limited in time and geographic scope. Now, regarding the rights vested in a derivative work, copyright laws also give authors control over the use of their work to create derivatives. That said, if a derivative work created by a third-party is sufficiently transformative, it could be protected separately.

Right of publicity

The right of publicity laws protects people against the use of their characteristic features without authorization. Even though this is a right especially exercised by famous people, in the public eye, not famous people are also protected. The claims under the right of publicity are also known in several jurisdictions as "commercial appropriation of a person's identity".

It is important to understand that the right of publicity is protected under state law and the scope of protection depends on the jurisdiction. Some jurisdictions like California, Indiana, Massachusetts, and Tennessee, protect the right of publicity of a person after death.

Among the recognizable features of a person that are protectable we find:

  • Name

  • Voice

  • Image

  • Gestures

  • Likeness

  • Phrases

To use another's features or specific characteristics for advertising purposes, what many personalities from the entertainment world do is granting licenses. This means that the rights-owner grants permission to third-parties to use their voice, image, likeness, etc. If the rights owner is death it is necessary to know whether the estate still holds an interest under the laws of the right of publicity. Now, there is one instance when permission might not be required, when another's features are being used to make a critic. However, each case is different and it is always good to get legal counsel in advance.

In conclusion...

There are many rights involved in the use of the content for advertising purposes. It is possible to use third-party's content, just don't forget that a preliminary clearance process will put you in a better position to avoid risks and liabilities.

About the Author

Giselle Ayala

Giselle Ayala Mateus is a NY attorney with comprehensive experience in transactional law, creative agreements, business formation, and immigration law. She is also the founder of Focus Juridico a not-for-profit project focused on supporting Latin American entrepreneurs and artists.

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