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: Sharon@legalandcreative.com

Phone: 216.573.6000

Twitter: @SharonToerek

LinkedIn: http://www.linkedin.com/in/sharontoerek

Blog: www.LegalandCreative.com