LICENSING ISSUES IN
ADVERTISING
Presented By
Kevin J. McDevitt
Neal & McDevitt, LLC
kmcdevitt@nealmcdevitt.com
© 2008 Kevin J. McDevitt. All Rights Reserved
Celebrity Talent Agreements
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Advertising Medium/Media
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Territory
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“All, whether now known or hereafter devised,” is the most desirable
Short of all, Agreements should be specific – television, radio, Internet, print, etc.
Worldwide is essential if advertisements will be used on the Internet
Provide for versions to be translated into different languages if applicable
Approval Rights for Talent
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Talent is generally given approval rights of campaign concepts, scripts,
photographs and other promotional materials featuring talent
Avoid granting approval rights to components that do not specifically pertain to
talent’s participation (e.g., trademarks, slogans, tag lines, etc.)
Approval over wardrobe, hair and make-up is common
Insert a “reasonableness” standard
Celebrity Talent Agreements
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Compensation
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Specify total amount payable to talent and timing for payment
Indicate whether payment is guaranteed or contingent upon number of
advertisements utilized
Factor in SAG/AFTRA Pension and Health Fund contributions to be paid by
advertiser
Specify portions of compensation applicable to television broadcast, radio
broadcast and non-broadcast
Specify that talent is responsible for any payments owed to talent’s agent or
other representatives
Address other benefits talent shall receive, if any
Exclusivity
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Clearly define limits placed on talent
Keep in mind that certain exclusivity arrangements may be outside of
talent’s control due to employer, union or other agreements
Require immediate disclosure of conflicts that arise during the term of the
Agreement
Celebrity Talent Agreements
Behavior/Morals Clause
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Essential to reserve right to terminate if talent engages in any
immoral, unethical, illegal, offensive, shocking, scandalous or
otherwise embarrassing behavior
Impose penalties if possible
Ownership of Materials
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Clearly define what, if any, materials talent shall own
Typically, advertiser owns all materials created from the relationship
Personal Guarantee
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If talent is entering into the Agreement via a corporate entity, make
certain that an express condition precedent to the effectiveness of the
Agreement is the execution of a Separate Agreement (usually
included as an attachment) personally binding talent to all terms of
the Agreement
Potential Causes of Action
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Breach of an advertising license, or
failure to obtain a proper license, can
give rise to various claims against a
party, including:
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Trademark Infringement (federal law, state
law, common law)
Unfair Competition/False Advertising
Trademark Dilution
Right of Publicity
Laws v. Sony Music Enter., Inc.,
448 F.3d 1134 (9th Cir. 2006)
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By agreement, Plaintiff singer, Debra Laws, granted Elektra
Records the “sole and exclusive right” to copyright, lease,
license, and convey Laws’ master recordings
Elektra granted Sony a non-exclusive license to use a sample
of a Laws song titled “Very Special” for use in a
performance by Jennifer Lopez and L.L. Cool J.
Plaintiff sued, alleging that the performance violated her
right of publicity under California law
The Ninth Circuit held that the valid license of a copyright
recording precluded Laws’ right of publicity
The Court reasoned that Laws should have retained the
copyright or contracted with the copyright holder to have
control over its licensing
BeeCeuticals v. Dreamworks, et al.,
No. 0:2007cv61563 (S.D. Fla.)
BeeCeuticals v. Dreamworks, et al.,
No. 0:2007cv61563 (S.D. Fla.)
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Plaintiff claims right in GIVE BEES A CHANCE
mark for honey-based cosmetic products
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Plaintiff has pending federal registration for the mark
Parties discussed joint marketing strategy, but
Dreamworks proceeded to use the slogan, without a
license, in advertisements for A Bee Movie, and
Plaintiff sued for trademark infringement
Case is pending in USDC Southern District of Florida
Paris Hilton v. Hallmark Cards,
No. 2:2007cv05818 (C.D. Cal.)
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Paris Hilton sued Hallmark for using her
image without her permission, including her
catch phrase, “That’s hot”
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One card featured Hilton’s actual image, while two
others used caricatures
Hallmark claims its use is merely parody
Case is currently pending in USDC Central
District of California
Bonner v. Fuji Photo Film U.S.A., 461
F. Supp. 2d 1112 (N.D. Cal. 2006)
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Plaintiff had participated in a national magazine
photo shoot at the age of 7
Her mother had signed a consent form giving the
photographer the irrevocable right to use the photo
11 years later, plaintiff brought suit after seeing the
image on a Fuji camera package
Claims included right of publicity, common law
appropriation of likeness, negligence, invasion of
privacy, intentional infliction of emotional distress
Bonner v. Fuji Photo Film U.S.A., 461
F. Supp. 2d 1112 (N.D. Cal. 2006)
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Court granted summary judgment for Fuji on
all counts
The consent agreement was valid and
enforceable because it was understandable to
an ordinary person
C.B.C. Distribution & Marketing, Inc. v. Major
League Baseball Advanced Media, L.P.,
505 F.3d 818 (8th Cir. 2007)
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Plaintiff produced fantasy baseball games that
used MLB players’ names and statistics
Defendants owned an exclusive license for
interactive entertainment programs
Plaintiff sought declaratory judgment that it
had not breached contract and that its first
amendment rights trumped any right of
publicity concern
C.B.C. Distribution & Marketing, Inc. v. Major
League Baseball Advanced Media, L.P.,
505 F.3d 818 (8th Cir. 2007)
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Eighth Circuit held that right of publicity
interests were outweighed by Plaintiff’s first
amendment rights under Missouri law
Court also held that Defendant’s exclusive
agreement provisions that allegedly prevented
Plaintiff from using or challenging the
Defendant’s agreement with MLB was
unenforceable as against public policy
Player Spokespersons
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Player controls different rights
Contracting with player does not automatically
give you the right to use league and/or team IP
in advertising
Player Spokespersons
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NFL and NFL Properties, Inc. v. Coors Brewing
Company and NFL Players Incorporated d/b/a
Players, Inc., 205 F.3d 1324 (2d Cir. 1999)
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Coors enters into marketing agreement with Players, Inc.
Launches promotional campaign describing its beer as
“The Official Beer of the NFL Players”
NFL files suit
Preliminary injunction issued enjoining Coors and Players,
Inc. from continuing with the campaign.
“Coors and Players intentionally entered into this
promotion with the principal purpose of adopting the NFL’s
mark to capitalize on its reputation and goodwill.”
NFL and Coors Today
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Coors is sponsoring a “Who Wants It More”
Contest with a grand prize of tickets to the
Super Bowl
“Official Beer Sponsor” of the NFL
Coors offers a series of spoof commercials,
featuring current and former NFL coaches
Coors obtained the right to use the footage of
the coaches
Don Newcombe and Coors
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Newcombe v. Adolf Coors Co., 157 F.3d 686 (9th Cir.
1998)
Retired baseball pitcher Don Newcombe claimed
violation of publicity rights due to illustration in
Killian’s Red ad
Court held that whether Mr. Newcombe is readily
identifiable from illustration, based on decades-old
photo, which shows his distinctive wind-up, uses
similar number, and matches his skin tone, is a
question of fact for jury