Copyright, Patent Designs

& Other Intellectual Property Rights

on Creative Works in Advertising

ATTY. ELIZABETH R. PULUMBARIT University Legal Counsel

Technology Transfer and Business Development Office University of the Philippines

David Mackenzie Ogilvy

• “If it doesn’t sell, it isn’t creative.”

• “I do not regard advertising as entertainment or an art form, but as a medium of information.”

Outline

• Creative Works in Advertising

• Copyright and related rights

• Trademarks

• Patent designs & other IPRs

• Lessons from Bits of History

Advertising, Defined

• "Advertising is the non-personal communication of information usually paid for and usually persuasive in nature about products, services or ideas by identified sponsors through the various media.”

Bovee, 1992, p. 7, as cited by Richard Taflinger, “A Definition of Advertising”, 1996

Advertising Outputs CREATIVE WORKS

PRINT • Written material/content • Photographs • Drawings • Art graphics • Print layouts • Posters, billboards, signage • Pamphlets & door drops • Skywriting, air balloons • Trade dress, labels and

packages • Tee-shirts, corporate gifts,

and other branded merchandise

ELECTRONIC/DIGITAL • Music • Video • Websites • Banners • Graphic user interface • Computer generated imagery • Software apps • Databases • Email, SMS, pop-ups • Rich media ads (video

streams, pull-down menus, search boxes)

It is the LAW…

• Creative Works are Intellectual properties (IP)

• Creative works are works with copyright

COPYRIGHT, Defined

• Right granted by statute to the author or creator of original and derivative works (literary, scientific, scholarly, artistic), including software programs

• Right that attaches at the moment of creation of the original works, whatever the form of expression, quality, content, or purpose; Provided such works are fixed in a tangible or material form

• Author or creator is the copyright owner

Works with Copyrights

1. Original Literary and Artistic Works

2. Derivative Works

Original Creative Works with © (Sec. 172, IP Code)

Books, pamphlets,

articles, other writings

Periodicals & newspapers

Lectures, sermons, addresses, thesis & dissertations

Letters

Dramatic or dramatico-musical

compositions, choreographic

works

Musical compositions,

with or without words

Drawing, painting, sculpture, architecture, engraving, lithography,

models & designs

Ornamental designs or models for articles of

manufacture

Illustrations, maps, plans, sketches,

charts

and 3D works

Drawings or plastic

works of a scientific or technical character

Photographs

AV & cinematographic

works, AV recordings

Pictorial illustrations &

advertisements

Computer Programs

Other literary, scholarly, scientific and artistic works

Original Creative Works

Derivative Works with © (Sec. 173, IP Code)

• Dramatizations

• Translations

• Adaptations

• Abridgments

• Arrangements

• Alterations

• Collections

• Compilations

Economic Rights of © Owners

• Reproduction

• Rental

• Dramatization, translation, adaptation, abridgment

• Public Distribution/ display/ performance

• Licensing, Assignment, Sale, Transfer

MORAL Rights of © Owners

• Attribution of authorship

• Integrity of the works

(non-alteration, distortion, mutilation, other modification of or other derogatory action to work, restraint on use of work)

Periods Of Copyright Protection

TYPE YEARS

Broadcasts 20

Applied Art 25

Photographic Works 50

Audio Visual Works & Recordings

50

Published Works Author’s lifetime + 50

© Use Reminders

• An idea is not copyrightable; an expression of the idea is.

• Copyright is distinct from material object.

• Registration and deposit of copyrighted work with National Library, Supreme Court and IPOPHL is prima facie evidence of copyright ownership.

• Before the commercial use of copyrighted work, clear and seek permission/license of copyright owner.

• Fair use is a defense against copyright infringement.

• A commissioned work does not belong to author/ creator.

• After the protected period of copyright, the work becomes part of the “free use” public domain.

It is the LAW…

• Creative works which are works of applied art may be protected and registered as trademarks (TM) or patent designs (a.k.a. industrial designs), or both.

TRADEMARK or SERVICE MARK, defined

• A DISTINCTIVE and VISIBLE sign, symbol, emblem, or device used by the enterprise to differentiate its goods or products (trademark) or services (service mark) and shall include a stamped or marked container of goods.

Rights of TM Owner (Sec. 147, IPC)

• To prevent all third parties not having the owner’s consent from using in the course of business identical or similar signs or containers for goods or services where such use would result in a likelihood of confusion

• Additional right for owners of well-known marks: Prevention extends to all kinds of goods and services that will indicate a connection with the registered mark

Trademark Do’s

• A critical input to corporate branding • TM rights are acquired thru registration

• Certificate of TM registration is valid for 10 years,

renewal for periods of 10 years ad infinitum

• Well-known or internationally known marks cannot be registered by non-owner; neither will an identical, confusingly similar mark, including translations/ derivatives

• Madrid Protocol allows filing of international TM application

INDUSTRIAL DESIGN

• Combination of lines, colors, 3D form

• Protects the new ornamental appearance of an article of manufacture.

Do’s and Don’t ‘s of INDUSTRIAL DESIGN

• To protect ID, register it with IPOPHL

• Certificate of registration is valid for 5 years, renewable for 2 consecutive periods of 5 years each or total of 15 years

• Application for registration must be filed within 2 years from its first commercial exploitation anywhere in the world

And one more thing…..

Here are little bits of history in advertising

APPLE INC.

• 1977: Rainbow logo was designed by Rob Janoff of Regis McKenna Advertising Agency for Apple Computers, Inc.

• 1997: Re-designed under direction of Steve Jobs

• 2011: Logo is No.1 most valuable brand world-wide with estimated value of $153B.

NIKE SWOOSH

• Carolyn Davidson, a student of Portland State University, was commissioned in 1971 by Phil Knight, to design logo that conveyed motion and will look good on a shoe

• For the swoosh design, she got paid $2.00/hour or a total of $35.00 for 17.5 hrs. of work

• In 1983, she got 500 shares of stock of Nike, Inc. as a gift worth $150.00

• 40 years later, in 2011, Nike stocks are worth $643K and Carolyn still likes the logo and never gets tired looking at it.

MANG INASAL

• 2003: Established by a 26 y.o. entrepreneur, Edgar Injap Sia III

• 2010: Bought by Jollibee Foods Corp. for P3B, P200M of which was paid front-end

• 2011: Jollibee is largest food service company in the country with system-wide revenues of P82B and net income of P3.2B; Sia is 40th richest Filipino worth$140M

No, No, Never….

www.nytimes.com/2008/10/07

1930s Marketing Advertisement of cigarettes in U.S.A.

And in the Philippines, know these laws: •Tobacco Regulation Act of 2003 •Milk Code •Generics Act of 1988 •FDA rules and regulations •Consumer Protection laws

Thank You for Listening.

ATTY. ELIZABETH R. PULUMBARIT Pulumbarit Law Office 1714 Westgate Plaza, 120 H.V. dela Costa St. Salcedo Village, Makati City 1227 Tel No. (632) 840-1909 Email: pulumbaritlaw@yahoo.com erpulumbarit@mail.up.edu.ph

References

• The 1987 Philippine Constitution • RA No. 8293 and IRRs • Robert Taflinger, “A Definition of Advertising”(1996)

http://public.wsu.edu/~taflinge/addefine.html • Lien Verbauwhede, “Intellectual Property Issues in Advertising”

www.wipo.int/sme/en/documents/ip_advertising.htm • World Intellectual Property Office (WIPO), “Managing Intellectual

Property in the Advertising Business-Creative Industries-Booklet No. V” www.wipo.int/ip-development/en/creative_industry/pdf/1021.pdf

• Brian Clark Howard, “I never get tired of looking at:”Woman who designed Nike’s swoosh explains how chance encounter with Phil Knight led to its inception 40 years ago”, Mail Online, 16 June 2011

www.dailymail.co.uk/news/article_2004273/woman-designed-Nike-swoosh

• Gallagher&Dawsey Co., LPA, “Is Advertising Art? Not Always in Copyright”, October 2003

• Lisa Ramsey, “IPR in Advertising”, 12 Mich. Telecomm, Tech.L.Rev. 189 (2006); http://www.mttlr.org /vol twelve/ramsey.pdf