INTA Daily News

The new clothes brand campaign would be “dynamite” in the style world: Inter-Galactic Apparel was launching a range of fashionable clothes for 18 to 49 year-olds, available next week. The range was called “Fiends” and featured actors, images and lines that would be familiar to viewers of a well-known TV series. 

“You said it was dynamite and it is,” said Carl Rohsler of Hammonds, one of two lawyers who reviewed the hypothetical campaign which was unveiled in a session titled "It Pays to Advertise" on May 4, 2004 in the Marriott Imperial Ballroom. Among the explosive issues the campaign threw up were questions of copyright and trademark infringement, personality rights, passing off and comparative advertising.

The panel started with Inter-Galactic Apparel creative director – played by Allan Feldman of LCMA – showing the panelists his proposed advertising campaign. It featured the actors Matthew Perry and Courteney Cox, as well as a coffee house that seemed to resemble Central Perk in the TV series Friends, and pictures of Manhattan. The Fiends logo also looked familiar.

As if that wasn’t enough, the campaign featured a derogatory reference to a rival clothes brand with the tag line “In a stylish world – it’s not hard to spot the Gap.”

Although the hypothetical campaign had agreed contracts with the actors, it had no license or permission from the maker of Friends, Warner Bros. There were therefore serious risks of an injunction for trademark and copyright infringement, said Brenda L. Pritchard of Gowling Lafleur Henderson in Canada: “Individually the references may be all right, but altogether they are not.” 

Under some countries’ laws, using pictures of Manhattan streets could also potentially infringe the privacy rights of any people depicted. And the images of the coffee shop, the arrangement of furniture and its name could all be protected under national copyright law in some jurisdictions. 

In addition, even if the actors have agreed to have their images used, any references to the characters they play could infringe the rights of the program’s producer. Rohsler commented that using one or two actors from a TV program out of character would normally be acceptable, but using more than that could suggest the program’s endorsement. 

The use of the name Fiends, and some other aspects of the advertising, could be justifiable as parody in some countries. Rohsler pointed out that both Germany and France have copyright laws that permit parody, but added: “U.K. law does not seem to have a sense of humor on parody.”

Other issues discussed included whether the reference to Gap amounted to comparative advertising, and when it is permissible to use the word “new” in promotions: in the United States, “new” can only be used for six months after the product’s launch.

The panel also considered a contingency campaign that did not refer to the TV program in any way, and used the phrase “fiendishly stylish” to justify the choice of the name. “It’s kind of dull but safe,” said Rohsler. 

A third campaign was a compromise that included Matthew Perry, clearly identified in his own right, and made use of the “fiendishly stylish” tag line. But all other references to Friends were removed. The panel thought that this would probably be acceptable before courts and advertising regulators in the United States, Canada and Europe. 

Rohsler acknowledged that the facts of the case study were “far-fetched” but added that similar issues regularly arise in the real world. Indeed, a European airline, easyJet, has recently been running a campaign using the name of another popular TV series, Sex And The City, to promote its flights.


  Top