Photographer Douglas Kirkland has sued the Kfir Moyal Art Gallery Inc., in the Southern District of Florida (1:19-cv-20293-DPG), alleging that the Gallery copied and distributed Kirkland’ copyrighted Work for purposes of advertising and promoting Kfir Moyal’s business, and in the course and scope of advertising and selling products and services.

The courts have been accommodative of artists who use preexisting images in their work, as long as the use is “transformative.” The question is whether Kfir Moyal’s image on the left is in fact transformative of Kirkland’s 1965 photo of Brigitte Bardot on the right.

Kirkland’s lawyers are cleverly focus the Complaint not on the artistry of the Kfir Moyal’s image, but on its commercial use in advertising and promotion, hoping to avoid favorable treatment many courts give purely artistic works. It remains to be seen if this strategy is successful.

Advertising, press releases, and even product packaging all communicate the company’s value proposition to the consuming public, but occasionally they can do more harm than good. These items are a direct reflection on the company and its products and services, and need to be carefully vetted. This is more than just careful proofreading, but fully vetting the content to reduce the risk of embarrassment and even legal problems.

Here is a checklist of things go consider when reviewing advertising, press releases, and product packaging :

Ownership

• Did we create or obtain the right to use all of the text?
• Did we create or obtain the right to use all of the images?
• List all third party material used (including third party material we believe we acquired):
  • Do we have written permission to use the third party material, or has a Company lawyer concluded that the use is appropriate?

Publicity/Privacy

• List each person identified, mentioned, or depicted.
  • Do we have written permission/release to identify, mention, or depict this person?
• Does it appear that any person or entity is providing a testimonial or expressly or impliedly endorsing our products or services?
  • Do we have written permission/release to present this testimonial/endorsement?
  • Is the testimonial/endorsement accurate and fair?
  • If the testimonial/endorsement paid, is that fact disclosed?
• Is there any reason to believe that the person identified, mentioned, or depicted could be controversial or divisive, or otherwise impair our image or that of our products and services?

Content

•  Is the use of all unqualified superlatives necessary and justified?  (E.g., maximum, highest, lowest, critical, essential, important)
• Is the use of all absolute terms necessary and justified? (E.g., -free, -proof)
• Is the use of all terms necessary and justified? (E.g., -free, -proof)
• Are claims regarding “free” (i.e., no-cost) accurate?
• Are there any claims regarding safety?
  • Are they necessary?
  • Are they accurate?
• Are any claims regarding improved truthful?
• Have claims of improvement been vetted with legal (e.g. subsequent repair)?
• Are claims regarding place of manufacture (e.g. “made in USA”) accurate?
• If there are specific claims about our products or services (e.g. rankings or numerical data), are they accurate, provable, and documented?
• If there are comparisons with third party products, are they accurate, provable, and documented?
• If there are references to third parties or third party products, do we have express/implied permission, or are they otherwise legally justifiable?
  • Are all such references accurate, provable, and documented?
  • Are all such references not disparaging?

Our IP

• TRADEMARKS
  • Existing Marks
    • List all existing marks used.
    • Are our existing trademarks used correctly?
      • Used as an adjective?
      • Presented correctly (in compliance with existing usage guidelines) and consistently?
      • Identified with a TM, SM, or ®?
      • Displayed Distinctively?
    • New Marks
      • List all existing marks used.
      • Have our new marks been cleared?
      • Have we applied to register our new marks?
      • Are our new trademarks used correctly?
        • Used as an adjective?
        • Presented correctly and consistently?
        • Identified with a TM, SM, or ®?
        • Displayed Distinctively?
• Copyright Generally, press releases do not bear copyright notice as copying is to be encouraged.  However, packaging and advertising can and should be copyrighted.
• Trade Secrets
  • Are any of our trade secrets or confidential information mentioned?
    • Should they be?
  • Are any third party trade secrets or confidential information mentioned?
    • Should they be?
• Inventions/Patents
  • Are any of our inventions mentioned?
  • Has a patent application been filed?
    • Should the invention be mentioned/disclosed at this time?
  • Are any third party inventions mentioned?
    • Should the invention be mentioned/disclosed at this time?

Third Party IP

• Trademarks
  • List all third-party marks used.
  • Are all third party trademarks use truthfully?
  • Are the third party trademarks used correctly?
    • Used as an adjective?
    • Presented correctly and consistently?
    • Identified with a TM, SM, or ®?
    • Displayed Distinctively?
  • Do we identify correct owner of mark or at least disclaim we are the owner of the mark?
• Patents
  • Do we describe our products or services in a way that might indicate they are covered by a third party patent?
  • Do we make any claim about our product or service that might indicate they are covered by a third party patent?
• Copyrights
  • Do we have written permission to use third party works (text, images)?
  • Do we use correct copyright notice?
• Trade Secrets
  • Are we disclosing any third party confidential information?
  • Do we have written permission to do so? 

Disclaimers/Explanations

• Are any disclaimers or explanations needed?  For example, related to: third party uses, claims or statements made about the product, guarantees or warranties made, depictions of the product or service.

Its the start of a new year, and here are ten things that you should consider to enhance your intellectual property in 2019:

1. Revisit your employee agreement to ensure that the Company’s IP is adequately protected.
2. Update your invention disclosure form. Even though we are operating in a first to file system, record keeping is still important to be able to prove/disprove derivation. Make sure that your forms are up to date.
3. Take secrecy serious. Trade secret protection depends upon whether steps, reasonable under the circumstances, have been taken to protect the secrecy of the subject matter,
4. Track agreements more closely. Do you know when the confidentiality and license agreements you have entered expire? Do you a process to ensure performance of these agreements?
5. Evaluate inventions disclosures more critically. Not all inventions need protection — for example inventions that solve problems unique to your product are unlikely to be infringed by third parties.
6. Take copyright seriously. Copyright provides wide ranging protection for advertising, packaging, websites, and other works of authorship. These rights are enhanced by the application of proper copyright notice, and prompt registration of the works.
7. Make employee education a priority. Your employees are critical to protecting your intellectual property, and avoiding the intellectual property of others.
8. Create a brand guide. Establish clear rules for the proper presentation and use of your trademarks. Publish these rules so that everyone inside the company, and outside the company uses your marks correctly.
9. Create a social media policy. There are a surprising number of ways things can go wrong on social media, and some simple rules can prevent this from happening.
10. E-mail better. Make sure your emails don’t put you and your activities in an unfairly light if they are viewed by outsiders.