The advertising industry frequently has to deal with the problem of how to protect concepts, ideas, projects, claims or slogans prepared for campaign pitches or client evaluation. 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 ethics code adopted by the local self-regulation industry1 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).
Thus even in the context of such (deposit) protection system creative ideas must fulfill an 'originality' requirement.
In 2014 a complaint was filed by a renowned local internet access provider against a competitor's commercial. The plaintiff had been using in its own commercials with 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 and taking undue advantage of a widely known and successful campaign.
The Jury3 dismissed the complaint finding that the mere use of "imagine, you can" lacked 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.
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.
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', which should not be intended as reference to something 'original' and 'new' in absolute terms. In the Court's view, protection may be claimed – with respect to the categories listed in the Copyright Act – for 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' 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.
A First Instance Court in Turin came to a different conclusion5 in relation to an ad campaign promoting a new car model under the slogan "You are, We car".
An advertising practitioner, previously cooperating with the agency in several campaigns, found the slogan invented by him used in ads without his consent.
According to the defendants (agency and advertiser) 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, therefore remaining to assess whether the tag line presented also 'executive completeness',
- such requirement had to be identified in the slogan's potential of delivering a message easy to identify and immediately comprehensible, where such requirement was properly fulfilled any time a certain tag line is capable of drawing the targeted public's attention and of influencing 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.
Advertisers and agencies will therefore need to consider that challenging a competitor's campaign6 in Court or before the IAP's dispute resolution bodies with a passing off claim, requires you 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 The IAP's dispute resolution body. 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 Again the Special Section (9th Civil Chamber) competent on IP disputes. Reference is to judgment dated June 11th, 2010.
6 The same goes obviously for 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.