The COVID-19 pandemic has impacted our daily lives and how we spend our money. This has prompted a response from brand owners to keep pace with changing consumer behaviour while navigating this new reality. Brand owners have had to be innovative, with some altering their logos and even employing new and sometimes poignant advertising slogans to connect with their consumer base. In Brazil, at the start of the pandemic, McDonald’s separated its famous golden arches to promote social distancing and employed the tagline “Separated for a moment so that we can always be together.” (English translation). In Jamaica, Mastercard used the power of advertisement to communicate that “Though we are apart, we are united.” In the USA, Nike adopted the tagline “Play inside, play for the world.”
Most recently, fast-food chain Kentucky Fried Chicken (KFC) found itself in an unusual position, having to disengage arguably its most iconic slogan. KFC announced a temporary halt on the use of its famous slogan “Finger Lickin’ Good” amidst hygiene concerns and the realization that this message did not sit well amidst the coronavirus pandemic. The slogan has been removed from the KFC’s advertising campaigns.
The dynamic approaches by brand owners amidst the COVID-19 pandemic may be doing a whole lot more than just encouraging a sense of hope, giving us “the feels” and demonstrating social responsibility. In some cases, they gave and are continuing to give birth to new exploitable assets and enforceable intellectual property rights under trade mark and copyright law.
The Jamaican Trade Marks Act defines a trade mark as “any sign that is capable of being graphically represented and capable of distinguishing the goods or services of one undertaking from those of another undertaking”. “Sign” includes, among other things, words, designs, colours and combinations of colours. Based upon this definition, the possibility exists for brand owners to trade mark their Covid-themed logos and slogans but only if they are able to withstand the scrutiny of an examiner by passing the test for distinctiveness. The sign must be able act as a badge of origin, clearly communicating the source of the product or service to the consumer.
This not difficult in the case of an already established brand or new creative artwork used as a logo. Slogans however have notoriously encountered difficulties. This is because slogans typically serve a promotional function by commending the quality of the product rather than acting as an indicator of source. Slogans that are primarily comprised of promotional statements and laudatory terms are unlikely to be successfully registered as trade marks. However, a good advertising campaign with prolonged and sustained use of a slogan over time may be enough to secure trade mark registration on the basis that the slogan has acquired sufficient distinctive character to function as a trade mark.
Jamaica’s Copyright Act offers another potential avenue of protection for brand owners developing IP in the pandemic. Copyright can be particularly beneficial as, in Jamaica, there is no requirement for works to be registered to acquire copyright protection. Once the work is original and fixed, it is automatically protected. In the context of brands owners, they may be able to rely quite easily on the provisions of the Act which protect artistic works for their logos. For their slogans however, qualification as literary works is far more uncertain.
In the past, it was thought that slogans could not qualify for copyright protection as literary works because they did not employ sufficient skill and labour to be original. Our Copyright Act does not define what is meant by original, however it has been distilled by UK Courts in the cases of University of London Press Ltd. v. University Tutorial Press[1] by Peterson J as follows:
“The word “original’ does not in this connection mean that the work must be an expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of the thought, and in the case of “literary work”, with the expression of the thought in print or writing. The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in original or novel form, but that the work must not be copied from another work—that it should originate from the author.”
and in “Ladbroke v William Hill[2] by Lord Reid as follows:
“…Originality is a matter of degree depending on the amount skill, judgment or labour that has been involved…”In the present case, if it is permissible to take into account all the skill, judgment and labour expended in producing the respondents' coupon, there can be no doubt that it is “original”.”
There have been developments in the EU and the UK over the last decade which may have given slogans a voice. In the case of INFOPAQ[3] the Court of Justice of the European Union decided that the storing and subsequent printing out on paper of a text extract consisting of 11 words could amount to a reproduction, and thus be in breach copyright law even though the extract was just a small part of the overall work . This however was conditional on the elements reproduced amounting to “the expression of the intellectual creation of their author.” i.e. it being original. In the UK, this decision was considered by the Court of Appeal in Meltwater[4], which tackled the issue of whether a newspaper headline could be a literary work for the purposes of copyright law. It held that the effect of INFOPAQ is that “even a very small part of the original may be protected by copyright if it demonstrates the stamp of individuality reflective of the creation of the author or authors of the article.” [5]On that basis, the Court of Appeal found that newspaper headlines are capable of being original works, affirming the lower court’s decision which concluded that newspaper headlines involved “considerable skill” and were “specifically designed to entice by informing the reader of the content of the article in an entertaining manner.”[6]
In light of the foregoing, if newspaper headlines and 11-word extracts can be considered copyrightable, it is at least arguable that slogans can be protected in a similar way. It seems the pertinent question will be along these lines w - Is the slogan an unoriginal combination of commonplace words or has considerable skill and labour been expended in its creation such that it qualifies as an original literary work? Although INFOPAQ and Meltwater opened up the possibilities for protection, they did not provide much guidance on when the threshold will be met.
While progress has been made on vaccine development and distribution, COVID-19 is likely to be with us for the foreseeable future. The brand owners that have been effectively communicating with and pivoting for their customers during this pandemic will likely emerge as frontrunners. It is therefore important for brand owners to take stock of their intellectual property rights as their value and usefulness cannot be underestimated during these trying times. Certainly, brands that have used their IP to commiserate with their consumers and display solid ethics and social responsibility are the ones that will weather this global phenomenon through brand loyalty post pandemic. Therefore, it is imperative brand holders be aware and take full advantage of all avenues to protect and ultimately enforce their IP. After all, “thinking outside the box” under the pressure of a pandemic deserves reward.
[1] [1916] 2 Ch 601 at pages 608-609
[2] [1964] 1 ALL ER 465 at page 469
[3] [2012] Bus. L.R. 102
[4] [2012] Bus. L.R. 53
[5] [2012] Bus. L.R. 53 at page 72
[6] [2012] Bus. L.R. 53 at page 70