It’s that time of year again. In the words of the Coca Cola company, “Holidays are coming” and so what better way to get into the festive spirit than with a seasonal article about intellectual property rights and prospective claims (I know right but stay with me!)
Christmas is an important time for many reasons but there is no hiding from the fact that it is also a time of excessive consumerism and so is important to companies too. In fact, many companies will spend vast amounts of time, resources and money on marketing themselves to encourage you to shop in their stores or buy their products over the coming weeks. The motivation for this blog came in the form of Lidl’s marketing strategy this year.
For many, I am sure, seeing the Coca Cola advert signifies that Christmas really is on its way. Somehow, through brilliant marketing and a catchy song (we all know the one) a red truck with Santa on the back and Coca Cola emblazoned down the side has secured its place in Christmas tradition, rightly or wrongly. It is an iconic image and so no one else would dare use it, would they? Well, Lidl has its own brand of cola called “Freeway”. This year they have come up with their “Freeway on the freeway” initiative. In preparing this article I notice that Lidl’s website includes a page with the phrase “This year holidays are coming in under budget!” [my emphasis]. They will be sending an American style red truck, towing a red tanker sporting the words “Freeway Cola”, on a tour of Britain. Such a marketing stunt probably has nothing to do at all with selling its own brand cola but, rather, to get consumers to include Lidl as part of the Christmas shopping conversation.
But surely Lidl cannot do this? After all, Coca Cola must have rights in this area? In truth I do not know what rights they have but I can speculate. For instance, it is possible to register a trademark to protect a colour (Heinze for example have done so successfully in the past with the turquoise they use on their baked bean tins as an example) but it seems very unlikely that they would be able to prevent the use of red lorries at Christmas time. To do so would be totally unreasonable. I am sure they will have protected their own logo but Lidl is not, of course, using that.
It is also interesting that Lidl has used the phrase “holidays are coming” which is, of course, one we all know from the Coca Cola advert. The publicly available trademark register reveals that the Coca Cola Company owns the trademark “Coca Cola Holidays are Coming”. That means that any other company who uses that mark, or a similar mark in respect of similar goods or services may be infringing on Coca Cola’s rights. Clearly the wording is similar as are the goods.
Whether the Coca Cola Company does anything to enforce its rights in this area remains to be seen.
Lidl is by no means the first company to take something from popular festive culture and use it themselves. You only need to look at Aldi’s Christmas adverts following the adventures of a pair of Carrots called Kevin and Katie. If their adventure this year seems familiar that’s because it might be. The spirit of Christmas has been stolen (it channels similar energies to the film “How the Grinch Stole Christmas”) and it’s Kevin and Katie’s job to rescue it. I wonder if you can spot the franchise that may have inspired the rescue attempt?
In English Law, stories and films will have copyright protection if they are original artistic or literary works. This will, therefore, prevent the copying of the works in an advertisement context although there is a defence to doing so. That defence is that the advertisement was a “parody” of the original material. This is, however, not as straightforward to prove as one might think. There is strict criteria for the parody copyright exemption to apply. This was tested in the Shazam -v- Only Fools Dining Experience [2022] EWHC 1379 (IPEC) which is a case I have commented on in a previous article and so shall not elaborate further here. Simply, to apply the parody must target something and be more than mere imitation of the targeted subject matter. It must be an expression of opinion, usually through the medium of humour or poking fun at the source material. There is also a requirement that parody must not be at the expense of “fair dealing”. This means that the use of the copyright material, albeit in a manner which was parody, cannot allow a person to use the protected material in a way that would compete with the copyright owner’s interest.
The problem with parody in an advertising context is the purpose of the parody is primarily commercial. For the exemption to apply the primary purpose must be the parody itself. It is, therefore, going to be difficult to argue the defence in many circumstances.
Not all advertisements, however, rely on humour to get the point across. Some rely upon well-known or reputable characters to tell a heartfelt story. Take Sainsburys as an example. The BFG features prominently in their advert this year. That is a literary character created by Roald Dahl and so Sainsburys will likely have had to have been granted permission (and probably paid a not inconsiderable premium) to use the character in their advertisement.
This licencing arrangement will extend to music too. John Lewis has a real talent for using music to add emotion to their Christmas adverts in recent years. Songs like Gabrielle Aplin’s “Power of Love”; Lily Allen’s “Somewhere Only We Know” and Elton John’s “Your Song” are all great examples of this. The melody and lyrics that make up those songs will all have copyright protection as original artistic, literary or musical works and so I expect John Lewis will have had to pay an extraordinary premium to licence the right to use them. (And before anyone says anything – I know, “The Power of Love” is based on a song by Frankie Goes to Hollywood and so there are probably other licences involved in covering it but let’s not overcomplicate things).
In all of this you can probably begin to see how claims can and do happen when advertisers get it wrong. John Lewis fell foul of this last year in fact. You may remember their 2019 advert which told the story of Edgar the dragon who was so excited for Christmas that he could not control his fiery breath. Edgar lived in a human world and in his excitement for Christmas he turned a snowman and ice rink into puddles and burnt down a Christmas tree much to the annoyance of the locals.
John Lewis began selling the Edgar in their stores to go with the advert if my memory is correct.
This story caught the attention of children’s author Faye Evans. One of her books is called “Fred the fire sneezing dragon”. Like Edgar, Fred lived in a human world and accidentally set fire to things when he sneezed. Ms Evans contended that that book was made available to the public on 7 September 2017 and so before the John Lewis ad aired by 2 years. She contended that Edgar contained “striking similarities” to Fred in both appearance and narrative. These similarities Ms Evans’ contended were evidence of copyright infringement [Faye Evans -v- John Lewis PLC [2023] EWHC 766 (IPEC)].
The Copyrights, Designs and Patents Act 1988 provides that an owner’s copyright is infringed if a person without licence does or authorises someone else to do any act restricted by the copyright. John Lewis did not dispute that Ms Evans owned the copyright in her book. It presented evidence, however, of a 2016 outline for the advert showing that the idea was conceived before the Ms Evans’ book was published. The court determined, therefore, that John Lewis cannot have copied Ms Evan’s work.
This is a salutary tale to any and all who wish to rely on copyright to properly document their creative process. You never know, it may help in a claim.
Out of curiosity I have searched the trademark register which has revealed that there are registered marks which incorporate the words “Happy Christmas”, “Merry Christmas” and “Father Christmas”. So, as it turns out, it is possible to protect Christmas in a way.
So, what can we learn from this? Christmas is big business and will stay that way. It can (to some extent) be protected and recent cases of infringement on intellectual property rights may mean that companies will see further challenges in the future if they get things wrong. It is recommended that the creative process behind any work, advertisement or otherwise, is documented so that it can be called upon in the event dispute should such occur.
I told you it would be a festive read! Now, let’s all reward ourselves with a lovely mince pie! Happy Christmas one and all!