the legal hot buttons in adland...and how to handle them
DESCRIPTION
Sharon L. Toerek, Partner at Legal + Creative, shares "The Legal Hot Buttons in Adland...And How to Handle Them" at the BOLO 2013 Conference.TRANSCRIPT
The Legal
Hot Buttons:
Today’s Goals
• Discuss common legal threads that run
through client experience
• Focus on the value of a
preventative, proactive approach
• Minimize the involvement of
lawyers in your lives!
• Create some conversations
Disclaimer Technology leads…
Business adapts …
Law sweeps up behind.
The 5 Top
Industry Legal
Hot Buttons
1. Protecting IP in a Business Pitch
2. Using a Virtual/Freelance Workforce
3. The Rights to Completed Work
4. Selecting a Client Brand or Rebrand
5. Using Testimonials or Reviews
Legal Hot
Button #1
Protecting IP in
a Business
Pitch
The Business Issue: Constant tension in the pitch/
prospecting process
Your best creative foot forward vs.
Resources to generate work that may not lead to paying relationship
The Legal Hot Buttons: – Who owns the work if the agency doesn’t
get hired?
– What happens if the work gets implemented by someone else?
Legal Hot Button
#1 Protecting IP
in a Business
Pitch: Prevention
THE HARSH TRUTH:
NOBODY OWNS IDEAS!
Option 1: Get a confidentiality/rights ownership agreement in place pre-pitch
– Make the provisions mutual
Option 2: Forego the agreement and assume risk with open eyes
Legal Hot Button
#1 Protecting IP
in a Business
Pitch: Prevention
Alternative Prevention.…
Use copyright law.
- Express as much of your work in written form as possible (storyboards, memos, concept pieces, detailed proposals)
- Put rights ownership language in all proposals
- Use copyright notices on all work product (pre-engagement)
Legal Hot Button
#1 Protecting IP
in a Business
Pitch: Prevention
Further Consideration:Negotiate ownership in advance.
– Doesn’t make agency whole, but puts
everyone on same page
– An increasing trend in industry
Legal Hot Button
#1 Protecting IP
in a Business
Pitch: Reaction
Determine end goal before you pursue a remedy.
– Arrange a rights transfer/license arrangement
– Pursue legal claims for:
• Contract breach
• IP misappropriation
Legal Hot Button #2
Using a
Virtual/Freelance
Workforce
The Business Issue:Balancing the workload or need for expert resources by using virtual or freelance contractors
The Legal Hot Buttons:- Originality of Work
- Client Confidentiality
- Work Rights Ownership
- Restrictive Covenants
- Insurance Coverage
Legal Hot Button #2
Using a
Virtual/Freelance
Workforce:
Prevention
PUT IT IN WRITING
PUT IT IN WRITING
PUT IT IN WRITING…..
No handshake arrangements
with freelancers/creative
vendors/strategic partners!
Legal Hot Button #2
Using a
Virtual/Freelance
Workforce:
Prevention
Critical Contract Provisions:– Transfer of all IP and work rights
– Warranty of work originality– or a license to use or transfer the work
– Confidentiality
– Industry or Client Noncompetition and Non-solicitation
– Errors and Omissions Insurance Coverage
Legal Hot Button #2
Using a
Virtual/Freelance
Workforce:
Reaction
– Get a post-engagement work rights assignment/transfer
– Enforce your contract if it’s breached
– Make a claim on the errors and omissions insurance policy
Legal Hot Button #3
The Rights to
Completed Work:
The Business Issue: “What issue? We’re fine with our clients owning the work!”
The Legal Hot Buttons:– Agency doesn’t actually own rights
(See Hot Button #2)
– A Payment problem or dispute
– Nothing in writing
Legal Hot Button #3
The Rights to
Completed Work:
Prevention
– Acquire rights to all 3rd party-produced work in writing
• Create an internal process to manage rights to all work in a client project
– Include rights transfer language in client contracts
• Trigger rights transfer to client on payment
• If you aren’t transferring ALL the rights, say so specifically
Legal Hot Button #3
The Rights to
Completed Work:
Reaction
– Get a post-completion assignment of rights from freelancers or third-party vendors
– In payment disputes between agency and client, intellectual property ownership can be a lever to help resolve the matter
– Negotiate broader license if the client’s desired use of work expands post-engagement
Legal Hot Button #4
Client Brand
or Rebrand
Selection
The Business Issue: Traveling too far down the path of brand selection before learning a mark is not available or will not “clear.”
– Brand mark availability
– Appropriate clearance of mark
Domain name availability and/or clean Google® results
Trademark Clearance!
Legal Hot Button #4
Client Brand
or Rebrand
Selection:
Prevention
Begin the trademark search/clearance process as early as possible
• Consider screening several alternatives simultaneously to save time
Start the trademark registration process immediately after selection/clearance
• Intent-to-use registration process allows you to apply while you’re implementing the mark
Legal Hot Button #4
Client Brand
or Rebrand
Selection:
Prevention
Try to steer away from the following:
– Marks that are very descriptive/generic
– Marks that are likely to cause confusion with others
Legal Hot Button #4
Client Brand
or Rebrand
Selection: Reaction
If client’s intended mark does not clear (after adoption):
– distinguish it (by industry/product/service)
– modify it with graphics or language
– acquire it
Legal Hot Button #5
Using Testimonials
and Reviews
The Business Issue: Testimonials and reviews offer credibility for client and/or the product or service.
The Legal Hot Buttons: Using testimonials in the following scenarios creates legal implications (for client and agency):
- Network marketing
- Product review placements
- Facebook “like” incentives
Legal Hot Button #5
Using Testimonials
and Reviews:
Prevention
– FTC testimonial rule updates require: transparency and disclosure
– Have a written policy of disclosure with blogger network members, affiliates, promotion partners, anyone who receives consideration for mentioning your product
– Have affiliates acknowledge the policy in writing and monitor compliance
– Require disclosure and transparency from your affiliates
• They need a prominent policy and must disclose it to consumers
Legal Hot Button #5
Using Testimonials
and Reviews:
Reaction
FTC and regulators still interested in
industry self-policing, only if they
see strong enforcement
– Correct violations when you
learn about them
– Terminate affiliates who don’t
comply with policy
Recent Legal
Developments/
Trends
New Top Level Domains
– Trademark implications for brandholders:
- Ton more real estate to monitor and protect on Internet
– Trademark lawyers are hoping ICANN
cautious about releasing new TLDs too quickly
Recent Legal
Developments/
Trends
Pinterest® & Copyright Infringement
– Every “repin” is a potential copyright infringement
• Jury out on whether image owners care in many cases
– Stakes higher in a commercial context• Where you disrupt commercial market for
an image
– Don’t “repin” in a commercial context without permission
Recent Legal
Developments/
Trends
Ownership of “Social Contact” Data
Who owns:
– Twitter handles that include brand names
– Twitter followers, LinkedIn links or Facebook fans
Recent Legal
Developments/
Trends
The Rise of Patent “Trolls”
- Creates liability questions for agencies
- Contract provisions need to address the patent liability issue
Recent Legal
Developments/
Trends
Taxation of Advertising
-Increasing pressure to eliminate tax deductability of advertising
-States looking at sales taxation of advertising services to raise revenue
Recent Legal
Developments/
Trends
Data and Privacy
-Regulators increasingly concern about use of big data and privacy issues
-One to watch especially with vulnerable audiences or in highly regulated industries
Legal Hot Buttons: Questions?
Top Legal
Hot Buttons:
Questions?
Thank You!!!!!!Reach me at:
E-mail: [email protected]
Phone: 216.573.6000
Twitter: @SharonToerek
LinkedIn: http://www.linkedin.com/in/sharontoerek
Blog: www.LegalandCreative.com