1.- The definitions of 'creativity' and 'originality' have always given raise to intense debate in the context of IP rights' protection.
The advertising industry has to deal with an additional aspect of the problem: that of how to offer suitable protection to concepts, ideas, projects, claims or slogans prepared for campaign pitches or client evaluation. Far too often agencies and their creative people are facing the unpleasant fact that one of their brilliant ideas, conceived and proposed for a campaign project, turns out to be used by others. Sometimes such outcome occurs in relation to campaigns successfully performed and later on shamelessly 'replicated' by competitors.
The key problem lies with the fact that one of the basic principles commonly applied to IP rights sets that you cannot protect (e.g. through copyright provisions) 'ideas', but only the tangible results of their execution.
2.- What can agencies and practitioners active in the advertising industry do in order to achieve some level of protection for their 'creative work'?
In Italy a specific ethic code adopted by the local industry self-regulation1 sets (in Article 13) as a general rule of good business practice that: "Marketing communication should not copy or slavishly imitate that of others even if it concerns non-competitive products, especially if there is the risk of generating confusion with the marketing communication of others. Moreover, any exploitation of the name, trademark, notoriety and corporate image of other marketers should be avoided, if it is intended to generate an undue advantage".
Violations of such rule can therefore be flagged to the attention of the IAP by filing a complaint, which, if found grounded, may lead to a halt and desist order, issued against an infringing campaign.
Thus, whoever is familiar with the needs of businesses exposed to the frantic rhythms of the advertising industry will hardly consider the possibility of filing a complaint against an infringing campaign as a satisfying solution. To agencies and their creative people such possibility is likely to resemble the recommendation of "shutting the stable door after the horse has bolted".
Therefore a specific section of the local self-regulation code provides for a deposit procedure2 with the aim of granting protection to: (a) creative projects, prepared for tenders, pitches or selections performed by advertisers in order to assign advertising budgets (the protections covers a three years period from the moment of filing and applies to proposals not selected or rejected), (b) advertising ideas conceived in anticipation of a planned ad campaign (the protection refers to specific, isolated messages – i.e. slogans, payoffs, tag lines - and lasts for eighteen months), and (c) marketing communication performed abroad (by depositing a copy with the IAP, advertisers can prevent imitation in Italy and benefit from a five years protection period).
3.- Nevertheless, even in the context of the (deposit) protection system offered by the Self-Regulation Code an 'originality' requirement has to be fulfilled.
Earlier in 2014 the Jury – i.e. the IAP's dispute resolution body - had to handle a complaint filed by a renown local internet access provider against a competitor's commercial. The plaintiff had been using in its own commercials the claim "Imagine, you can" since January 2012 and therefore objected to the competitor airing a campaign with a payoff stating "With provider X's network, you can". In the plaintiff's view, such 'imitation' resulted in passing off, as the competitor was taking undue advantage of a widely known and successful campaign, performed for two years, associating himself with a well-established brand having a sound reputation in the market of high speed Internet access.
The Jury dismissed3 the complaint finding that the mere use of "imagine, you can" lacked of any originality and distinctive character, resulting in an absolutely common expression. In addition, the Jury also held that both providers were well known in the market for their Internet services, to a point that no prevailing reputation (and therefore no undue association) could be assigned to one or the other company.
4.- The obvious problem therefore consists in individuating the minimum requirements an advertising campaign must fulfill in order to be able to claim 'originality' of its creative ideas.
4.1.- A recent decision of a First Instance Court in Naples4 has tried to offer some guidance for addressing the problem. In the context of a dispute on assumed passing off between an author of books for elementary school students and a publishing house offering similar educational material, the Court proposed a legal definition of the concept of 'creativity'.
According to the Court the creativity requirement set by the local Copyright Act5 may not be intended as reference to something 'original' and 'new' in absolute terms. The provisions rather consider as suitable for protection - within the categories listed in the Copyright Act - the 'results of a personal and individual expression', meaning that 'creativity' may not be automatically excluded with respect to an opus resulting from the execution of a very basic idea and benefiting from notions pertaining to common knowledge. Therefore, 'creativity' never consists in a certain idea, but relates to an idea's 'execution', where the latter can give origin to different "protectable" works, based on different levels of subjectivity used by the authors in transforming the idea into reality. Each of such different levels of subjectivity spent in execution may therefore result potentially suitable for protection.
On such premise the Court found that while the 'educational idea' behind the two books was quite identical, nevertheless the graphical structure, the colors and the drawings were significantly distinct. The plaintiff therefore resulted unsuccessful with his claim.
4.2.- Back in 2011 a First Instance Court in Turin6 had already expressed similar views when called to resolve a dispute between an advertiser and an agency. The agency then claimed that the advertisers had collected several competing proposals for a new campaign, but then – after assigning the campaign to a competitor - had clearly made use (in the campaign's execution) of indications and suggestions provided by the plaintiff, therefore taking undue advantage of creative material submitted in the course of the pitch procedure.
The Court held that, while it was true that the plaintiff had offered some suggestions as to the new campaign's structure, such initial cooperation resulted in an activity typical for a consultant, but not in an expression of creative material. According to the Court advertising campaigns are based on a certain 'concept' or 'objective', which not necessarily will be new and original, but may relate to notions easily common to most of the practitioners active in the advertising industry. Therefore, 'creativity' and 'originality' (as well as undue imitation) will necessarily pertain to the context of the questioned campaign's execution. In the specific case, the Court found that the plaintiff's initial suggestions and indications had never been transformed into an 'executed opus', suitable to be considered for protection under the provisions of the Copyright Act. The case was therefore dismissed and the plaintiff had to take care of all the legal costs.
4.3.- The same First Instance Court in Turin reached a different conclusion7 in relation to the slogan "You are, We car" used by an agency in an advertising campaign to promote a new model of a local car manufacturer.
The case was brought before the Court by an advertising practitioner, previously cooperating with the agency in several campaigns, who found the slogan invented by him used in ads without his consent.
The defendants – the agency and the advertiser – argued that the tag line had absolutely no 'artistic value' and therefore could not benefit from protection under a copyright perspective.
The Court took a different view and held that:
- 'creative advertising work' as such is definitely not excluded from copyright protection, provided it is sufficiently supported by characteristics such as 'creativity', 'originality' and 'executive completeness',
- none of the defendants appeared before the Court had disputed that the specific slogan was sufficiently creative and original,
- it was therefore up to the Court to assess whether the tag line presented also 'executive completeness',
- in advertising such requirement had to be identified in the slogan's potential of delivering a message easy to identify and immediately comprehensible (even without any express reference to the advertiser's brand or to the promoted product), where such requirement was properly fulfilled any time a certain tag line, even if very synthetic, proofs its capacity to draw the targeted public's attention and to influence – by strengthening or modifying it – consumers' opinions,
- the specific slogan did succeed in presenting all the elements set by the Italian Copyright Act for granting protection to the results of 'creative inventiveness'.
Therefore, the Court accepted the plaintiff's claims and also established that a summary of its decision had to be published in two newspapers diffused nationwide.
5.- To conclude, advertisers and agencies should consider the deposit procedure offered by the local Self-Regulation Code for efficiently protecting their campaign projects as well as specific slogans, payoffs and tag lines.
Aside from such procedure, they will also need to consider that challenging a competitor' campaign8 in Court or before the IAP's dispute resolution bodies with a passing off claim, requires to provide adequate substantiation as to the sufficiently completed execution of the concepts and projects they would like to protect. Simple 'creative ideas' - irrespective of how brilliant and unique they may appear – will hardly succeed in receiving consideration by a local Court or by the IAP's Jury.
1. The system is administered by the Istituto di Autodisciplina Pubblicitaria – IAP ("Institute for Advertising Self-Regulation", a private organization, which the entire advertising industry, inclusive all major media companies, adheres to) and is based on the provisions of a specific Self-Regulation Code – CAP (recently re-branded as 'Codice di Autodisciplina della Comunicazione Commerciale', i.e. the Code of Marketing Communication Self-Regulation), which becomes applicable through standard clauses contained in all contract forms used by the advertising industry.
2. IAP charges administrative fees for performing the deposit procedure. According to statistics available on the IAP's web site (http://www.iap.it ) in 2013 a total of 260 deposits occurred, while in 2012 a total of 237 deposits were registered.
3. Reference is to decision no. n. 7/2014 of February 11th, 2014.
4. Special Section competent on IP disputes, judgment dated February 27th, 2014.
5. Law no. 633 of 1941, as amended and integrated in the following.
6. Special Section competent on IP disputes. Reference is to judgment dated May 27th, 2011.
7. Again the Special Section (9th Civil Chamber) competent on IP disputes. Reference is to judgment dated June 11th, 2010.
8. The same goes obviously for find their own advertising campaigns, when opposed by third parties.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.