ANALYSIS: Doing battle with copycat ads

As Sony threatens action over O2's ads, Ravi Chandiramani looks at how brands have settled clashes on copyright issues.

"The first time I saw that O2 ad I thought it was one for PlayStation," proffers easyJet's head of corporate affairs, Toby Nicol. His view is not untypical - anecdotally, at least.

Sony Computer Entertainment Europe (SCEE) was concerned O2's current ad employing neon symbols risked confusion with the brand icons for its PlayStation games console - a registered trademark - and threatened to take its grievance against O2 to the third place: the courts.

As well as alleging copyright infringement, trademark infringement and passing off against O2 and its advertising agency Vallance Carruthers Coleman Priest, it was seeking an injunction against the advertising running again.However, as this article went to press, the parties and their legal representatives were working toward an out-of-court settlement.

So, did Sony have sufficiently strong grounds for its grievance or is its threat of legal action a symptom of marketers becoming more litigious?

"Rights owners are anxious not to see the value of their intellectual property diluted. That is one of their main reasons for taking legal action," says Vanessa Hall-Smith, partner at legal firm Harrison Curtis.

Nick Johnson, a partner at Osborne Clark who specialises in advertising and media law, adds: "If you see the O2 ad from a distance you might well think it is the PlayStation symbols and that there is some kind of link. But that probably wasn't O2's intention."

However, another legal source does not give the mobile firm such benefit of the doubt. "It is clearly an imitation of the PlayStation logo. It must have reckoned that people would be reminded of it. It's not simply a ripping-off, it's more like a witty parody or allusion to PlayStation."

In O2's defence, the 'Talk Simple' execution in question does carry a plausible business explanation. The four symbols are meant to represent the four major mobile networks to promote to customers that they can use the minutes and texts in their monthly allowance to call any other network.

"I don't think there is a question of copyright infringement here," says Charles Swan, partner at media law firm The Simkins Partnership. "To win a trademark infringement case, Sony has to prove there exists a likelihood of confusion on the part of the public and the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark."

Swan points out that while O2 is a telecoms company, the advent of gaming via mobile phones narrows the distinction between the companies and their target audiences.

This is not the case with The Economist's very recent complaint to the Advertising Standards Authority that an easyJet ad copied an execution it first used 17 years ago - the companies here operate in very different sectors.

Taking ideas

The easyJet ad features a suited man described as 'George Smith - management trainee, aged 47,' pictured along with the comment 'I would never fly easyJet'. The Economist ad by Abbott Mead Vickers BBDO had carried the slogan: 'I never read The Economist' which it attributed to a 'management trainee, aged 42'. The complaint has not been upheld.

"The ads look very similar," admits easyJet's Nicol. "By taking an advertising idea you might be infringing somebody's copyright or denigrating their brand, but we did neither."

Copyright infringement in ads is difficult to prove, since rights owners need to show reproduction of their work or a substantial part of it. Other recourses to legal action are the grounds of trademark infringement and passing off.

"There are very few examples of passing off claims succeeding in advertising," says Swan. "To win a passing off claim you have to prove that because the ad is similar, consumers believe the two companies concerned to be linked. The Sony case is a brand identity issue rather than an advertising issue and is easier to attack as a rights owner."

Rights owners' grievances have been most commonplace when they perceive their advertising or branding to have been parodied.

Nike threatened legal action last autumn against Scottish Courage over use of the slogan 'Just 'ave it', which it alleged infringed copyright of its 'Just do it' slogan, and a version of the John Smith's horseshoe magnet that resembled the famous Nike swoosh. Scottish Courage brands director John Botia said the parties came to an "amicable situation".

The brewer also narrowly avoided legal action over a Newcastle Brown ad featuring a drinker in overalls and workboots reclining in the position adopted by Sophie Dahl in the poster campaign for Yves St Laurent's Opium.

A dispute between Interbrew and HSBC bank over HSBC's use of the phrase 'The world's local bank', which the Belgium brewer considered to be too similar to its slogan 'The world's local brewer', was ultimately settled out of court. The agreement meant both brands would share their 'world's local' lines.

But the brand ads perhaps most parodied are Levi's - most recently in the case of Lilt's version of 'Odyssey'. But Levi-Strauss has never had a problem with this and has not considered action.

"In order to infringe a trademark, just to parody it is not enough," says Swan. "You have to prove confusion in the minds of the public or that the trademark has been associated with a product that might be deemed to damage its reputation."

Osborne Clarke's Johnson says: "No piece of advertising exists in a vacuum. There are all kinds of cultural reference points. Ideas tend to resurface in certain forms either accidentally or on purpose."

Trading on familiarity

It's a view echoed by Hall-Smith: "Advertisers will call on ideas that people are familiar with because a commercial message needs to have resonance with the public."

She says advertisers and their agencies must be fully aware of potential risks and seek legal advice early on. "If you are planning to run a campaign for several weeks you have to be watertight, because being forced to pull it could be disastrous. It's a risk assessment job. You need to anticipate a rights holder's motivation for complaining."

In addition, clients need to clearly delineate the boundaries of responsibility with their ad agencies. "When a brand owner signs a contract with its ad agency, it needs to be clear who takes responsibility for these issues, as well as financial responsibility for any damages claims," says Johnson.

"Often the agency will pledge to do its utmost, bearing in mind what it knows about the industry, to ensure its work is compliant. If it is shown to be negligent it will take responsibility and should have professional indemnity insurance."

Hall-Smith advises aggrieved rights owners to act quickly, since any delay might weaken their cause if they want to issue an injunction.

But the start of legal proceedings does not necessarily mean a case will be heard. "Disputes get aired when a rights owner fires off a letter triggering further correspondence and meetings, often involving a robust response from the advertiser and agency," says Hall-Smith. "They may reach a settlement where a sum of money changes hands, but that settlement is kept confidential."

Johnson adds: "We deal with dozens of advertising and marketing disputes, but they nearly always get settled out of court. Brands and agencies don't like the publicity of court cases."

While aggrieved rights holders might not have their day in court, the publicity such cases generate in the media often enables them to seize the initiative and reaffirm their brand identities. After all, if you weren't familiar with PlayStation's brand icons, you will be now.

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