GossIP: Advertising, Trade Marks and Copyright

27 March 2017

New advertising guidelines from 1 March 2017
The Australian Association of National Advertisers (AANA) has added a new provision to its Code of Ethics in relation to Australian marketing and advertising communications.  From 1 March 2017, “Advertising or Marketing Communication must be clearly distinguishable as such to the relevant audience”.  For example, brands that use ‘influencers’ to promote their products on social media must disclose if money has changed hands or a free product has been provided to a third party in exchange for promotional content.
The AANA has also amended their Practice Note to provide further guidance.  The Australian Standards Board (ASB) will consider the Practice Note when making determinations about advertising standards and potential breaches of those standards. The guideline provides a few example scenarios including:
Image:  Extract from AANA Best Practice Guideline, page 3
The AANA guideline can be viewed here.


Kylie Minogue versus Kylie Jenner – the “Kylie” battle

In our April 2016 newsletter we mentioned that Kylie Jenner had applied to register the word mark “Kylie” with the United States Patent and Trademark Office (USPTO) to which Kylie Minogue had filed an opposition.  On 19 January 2017 the USPTO’s Trademark Trial and Appeal Board reported that Kylie Minogue withdrew her opposition which was dismissed “without prejudice”.  It has been reported in the media that Kylie Jenner and Kylie Minogue reached an amicable settlement before Kylie Minogue withdrew her opposition.

Australian law provides for opposition of trade marks where a trade mark is considered to be “too similar” to an existing trade mark and where it may cause deception or confusion (refer to IP Australia’s website for further information.)


Paul McCartney seeking to regain the rights to Beatles’ songs

Paul McCartney has filed a lawsuit in a US Federal Court seeking to reclaim copyright ownership of a collection of Beatles’ songs that he wrote with John Lennon. Copyright to the songs was purchased by Michael Jackson in 1985 (where he outbid McCartney) and then sold to Sony upon his death.

McCartney is seeking a judicial declaration for “unclouded title to his rights” citing a provision of the US Copyright Act where the copyright can be claimed back after a certain period of time. The first eligible song will be ‘Love Me Do’, becoming available in October 2018 followed by another 266 songs. The lawsuit will raise the question about whether US copyright law rights will supersede valid contractual arrangements to assign away musical rights.

In Australia, there is no ability or right which allows an author to reclaim copyright ownership. Accordingly, the current owner of the Australian copyright in “Love Me Do” and other Beatles songs cannot be forced to transfer the Australian Copyright in those songs to McCartney.

We will monitor the case and provide an update in a future newsletter.

Subscribe to HWL Ebsworth Publications and Events

HWL Ebsworth regularly publishes articles and newsletters to keep our clients up to date on the latest legal developments and what this means for your business.

To receive these updates via email, please complete the subscription form and indicate which areas of law you would like to receive information on.

Contact us