Campaigns need eye-catchers, brands thrive on a memorable image. So you use a photo of Madonna or a statement from Walt Disney for your advertising, design an eye-catching logo - and success is pre-programmed. Celebrities attract attention and arouse emotions, smart icons remain in the memory. There is no shorter way into the hearts of buyers.
But the matter is more complicated: images, statements and works by well-known personalities are protected by copyright. The rights holders are usually the celebrities themselves or their relatives, represented by a specialist lawyer. Trademarks are a hive of activity: in Switzerland alone, there are over 470,000 registered trademarks. So it's no wonder that when setting up a new trademark, you have to be careful not to infringe the rights of the owners of existing trademarks. Because that can be expensive. If you want to be on the safe side, it is best to consult experts, such as Greenlight or the Swiss Federal Institute of Intellectual Property (IPI).
Professionals check celebrity rightsGreenlight is a company of the Corbis picture agency. The globally active service provider clarifies for companies and agencies whether they are allowed to use intellectual property for their advertising measures or in media, for example in TV formats. Intellectual property includes images and quotes from celebrities, well-known pieces of music, but also company logos and jingles. With 18 offices in more than 50 countries, Greenlight is one of the world's leading service providers in this field.
Logos and trademarks are also part of the IPI's area of expertise. The IPI informs companies throughout Switzerland about why and when it makes sense to protect intellectual property such as trademarks, designs or patents. The IPI is also the only institution in Switzerland where you can have a trademark examined and registered. Protecting your trademark can bring a company economic success. "Nevertheless, trademark protection does not always make sense. And it is not always possible," emphasizes Dr. Eric Meier, Deputy Director of the IPI and Head of the Trade Mark Division. "We can help companies with detailed information or a professional trademark search."
My logo belongs to meThe case of the Gelsenkirchen furniture chain Roller shows what can happen if intellectual property rights are disregarded: in 2007, the company advertised a competition with the slogan "Roller is looking for Germany's ugliest teenage bedroom". The words were combined with a logo that looked similar to the trademark of the RTL series "Deutschland sucht den Superstar". The broadcaster saw its brand discredited and sued for injunctive relief and damages. With success. The Cologne Higher Regional Court found Roller guilty of having "unjustifiably and unfairly exploited the reputation of the trademark protected by RTL". Roller must now disclose the extent of his advertising campaign so that RTL can calculate the damage it has suffered. Even if some things sound absurd or all too humorless - caution is advised in the slippery legal arena.
Green light for Laurel and HardyBut if you follow a few rules, you can give your creativity almost free rein: Commerzbank, for example, is allowed to decorate its credit cards with images of Marilyn Monroe and the comedy duo Dick and Doof, while Toyota can use a quote from Einstein in its new commercial for Europe and Asia. In both cases, Greenlight obtained the rights to the images and words. "We approached the executors of Marilyn Monroe and Laurel & Hardy, with whom we have had close relationships for many years," says Jan Taubert, rights clearance specialist at Greenlight. "It took a total of five days to clear the celebrities. Quite a short period of time. Some other requests to well-known personalities that you want to use for advertising purposes take considerably longer." Licensing the Einstein quote was also no problem. Greenlight represents Einstein's estate itself, as well as copyrighted material by Maria Callas, Steve McQueen, Andy Warhol, Sigmund Freud, Gloria Swanson, Buzz Aldrin, Mae West, Liberace and the Wright brothers. "We have many good contacts with agents and decision-makers at film and television studios, record labels, publishers and other rights holders," says David Reeder, Vice President of Greenlight. "The contacts have grown over a long time. In the Einstein case, for example, we represent the Hebrew University of Jerusalem and therefore have a direct connection." Greenlight reviews intellectual property rights in more than 5,000 cases a year for clients such as Hallmark, Screenlife, Sony, American Express, Procter & Gamble, Young & Rubicam, BBDO, DDB, Publicis and TBWA/Chiat/Day. With each audit, the service provider weaves its network of contacts.
If a company gets permission to advertise on a poster with the Empire State Building, for example, it has to pay for it. How much is determined by the rights holder. The context in which the intellectual property may be used also varies depending on the motif, personality depicted, quote, brand or music title. Of course, Greenlight's service also costs money. The service provider negotiates what agencies and companies have to pay for rights clearance with its customers on a case-by-case basis. "The initial consultation, which includes the identification of third-party rights and an estimate of the duration and costs of a clarification, is free of charge," says Reeder. "We recommend that our clients involve us as early as possible in the planning of a campaign. This is because we have a wealth of experience and know in advance which ideas might work with which celebrities and which might not. We are also liable for the legal cases that we have clarified."
Caution with capricious celebrities
If you decide to use a testimonial for your advertising campaign, you should weigh up the options carefully: On the one hand, it is important to meet the tastes of the target group exactly. On the other hand, you need solid stars who won't suddenly find themselves in trouble with the police, drug squad or vice squad - and then share the damage to their image with the brand or product they are advertising. Campaigns featuring Britney Spears or Paris Hilton, for example, were very popular for a while. Thanks to the capers of the two ladies, they are now a no-go. The most recent example of an unhappy union is singer Rihanna and her boyfriend Chris Brown in a Wrigley's commercial. After Brown beat up his girlfriend, the celebrity couple is no longer a good figurehead - even if the reconciliation followed hot on the heels. That's how bad things can go.
Greenlight also advises agencies on choosing the right testimonial. "We use customer-specific research to find out which celebrity is best suited to a particular brand," says David Reeder. According to Reeder, the top 3 most popular advertising subjects worldwide are Albert Einstein, the Empire State Building and works of art by Andy Warhol. Einstein is also ahead when it comes to quotes, while Armstrong's "What a Wonderful World" is the most popular music title. The use of well-known pieces of music is becoming increasingly popular with companies. Cover versions of old and new hits are used most frequently, while original jingles are rarely used.
Artists and celebrities can also commission Greenlight directly to represent the rights to their statements, images and works. Since the beginning of the year, for example, the company has held the rights to the Thunderdog Collective. This label brings together 16 illustrators, graffiti artists, toy designers and tattoo and skateboard artists. Their designs can now be used by advertising agencies or product manufacturers for their advertising, licensed by Greenlight.
Brand good, all good
While Greenlight obtains the green light for the use of intellectual property in advertising, the IPI specializes in the examination, granting and administration of rights to trademarks, designs and patents. The Bern-based IPI has been informing companies about the legal requirements that need to be taken into account when setting up a trademark and finding out whether there is anything to prevent a sign from being registered. The IPI is also the only institution in Switzerland that can register trademarks.
If you want to develop a trademark, you should first find out whether this or a similar sign already exists and whether registration would therefore infringe trademark or other rights. This search is best carried out in two steps: In a first step, the company itself can look on the free online databases "Swissreg" (for Swiss trademarks) and "Madrid Express" (for international trademarks) to see which identical trademarks already exist, which have been canceled and which applications for trademark registration have been filed with the IPI. A simple Google search is also important, but by no means sufficient. If nothing is found in the databases, this does not mean that the trademark is available. In a second step, a professional trademark search should be commissioned, either from the IPI or from another provider. A trademark search can also be helpful when creating a trademark. "In a trademark search, we provide all potentially problematic applied for or registered trademarks, but do not make any recommendations. Instead, we refer you to a trademark attorney," emphasizes Eric Meier. "When the Institute receives an application to register a trade mark, it does not automatically check whether earlier trade mark rights exist, it only checks whether there is a general interest against registering the sign applied for. Words that describe the characteristics of a product, for example, cannot be monopolized in favour of a company. 'Apple' cannot be registered for apples or fruit, but can easily be registered for computers." Even if the sign could mislead consumers, the IPI will reject the application: for example, if a chemical product is labeled "Bio" or the trademark contains a geographical indication such as "Swiss" that does not correspond to reality. The IPI only examines the infringement of trademark rights if the owner of an earlier trademark files an opposition against a new trademark registration. If the opposition is upheld, the IPI deletes the new trademark from the register.
Costs and benefits
The fact that the IPI does not make recommendations to companies has to do with its self-image. At a political level, the IPI advises the Federal Council and other federal authorities on all matters relating to intellectual property. "In the private sector, however, we do not want to intervene in an advisory capacity where the free market is already functioning," explains Ueli Buri, Head of the IPI's Directorate and Deputy Head of the Legal & International Affairs Division. "This is a principle of the IPI's market regulation policy." The IPI does not provide decisions, but it does provide the basis for decisions. For example, the Institute offers so-called monitoring searches: Who is applying for which designs? Which trademarks does Nestlé want to register? Which new signs could conflict with my company's trademark? The results give entrepreneurs a good overview of part of the market they are working in.
Incidentally, once the IPI has registered a sign, it is not necessarily protected. "The civil judge who ultimately decides on the protection of a trade mark is not bound by the IPI's decisions," emphasizes Eric Meier. "They can deny protection to a trademark or design." However, in order for the judge to decide whether a sign is worthy of protection, it must first be registered with the IPI. "Every company has to decide for itself when it makes sense to protect a trademark," says Ueli Buri. "Anyone who registers a trademark or other property right incurs effort and costs. These must be lower than the expected benefit. For a young SME that is aiming for the mass market and does not yet have much material value, it can make perfect sense to have its intellectual property protected. Not just the brand, but also designs or patents." In any case, the company then also has something to protect itself against brand and product counterfeiters.
To paraphrase Jesus Sirach: Anyone who goes out in public will die. Unless he prevents his neck from breaking in full view of everyone with an early professional rights check.
Anne-Friederike Wilhelm