The days last session was moderated by: Paul R. Garcia (Kirkland & Ellis) featuring speakers Marc Groebl (Howrey LLP Rechtsanwaelte), and Christy N. Hurley (Expedia, Inc.). The focus was on a series of television commercials.

Ms. Hurley began by noting that it is important to define what the client’s goals as far as creativity vs. protection are, educating marketing teams, participating in the creative process (e.g., reviewing story boards at each phase), developing a timely internal review process (e.g., a checklist), and cultivation of strong working a relationship with outside advertising agencies. Mr. Garcia outlined the litigation aspects of trademarks and advertising, namely various types of comparative advertising (superiority, exclusivity, establishment: “tests show…”) and false advertising claims (literal false or misleading, materiality as to consumers, and puffery). Mr. Groebl next outlined the European view as to trademark advertising, reiterating Ms. Hurley’s point that it is important to be involved from the outset. He also made the fair point that humor does not necessarily translate across borders and cultures. He then highlighted the relevant provisions of EU Directives regarding the criteria which cause comparative advertising to be either lawful or unfair.

The first TV commercial example was Subway’s “cheeseburger combo meal with a spare tire, regret, loss of boyfriend, and side order of guilt…” ad, which from the U.S. perspective was fair use in that it did not specifically mention or target any fast-food competitor of Subway (whether by name or trade dress, employees uniform, etc.). The panelists noted that it would also be important for Subway to back up the nutritional claims. From the European perspective, the threshold question was whether the competitor was recognizable, in which case, the less likely that the commercial would be interpreted as targeting a specific competitor, the better from fair advertising purposes. Also, as in the U.S., the fact must be verifiable (which could be nebulous if there is conflicting or loose data).

The next TV commercial is Burger King’s “we switched the Big Mac for the Whopper for a day” commercial in which the commentator laments at the end: “Whopper: anything else is a freaking disappointment.” From the U.S. perspective, the first concern is that it uses hidden cameras, and requires such consent. One customer in the commercial says emphatically that he hates McDonald’s, and it would be important to clear this as fair use advertising as per FTC testimonial guidelines (note the screen caption was: “actual customer hidden camera”). Also, it was noted that this was not a traditional taste test, but was done to surprise the customer, and one must ask the question whether there is actually any bona fide chance of consumer confusion. From the European perspective, this commercial is clearly comparative advertising by statutory definition, and moreover, it €almost clearly does not create confusion as noted by the U.S. panelists. However, the “I hate McDonald’s” and “Whopper: anything else is a freaking disappointment” quotes would not pass muster in the E.U., as they were made to denigrate or disparage the competitor.

The third and fourth commercials, Pepsi’s showed a young boy buying two cans of Coke only to stack them up so he could stand on them to reach the Pepsi button on the vending machine. The next showed Jackie Chan doing a commercial where the Diet Coke can was the Pepsi stunt double. From the European perspective, the first commercial might present some cause for reservation, but would pass muster. Similarly, the U.S. perspective would approve the first commercial since it is really a grey are as far as comparative use as it is more in the line of a testimonial since the boy chooses the Pepsi. Turning to the “stunt can” commercial, the E.U. perspective in the panelist opinion would cross the line of fair advertising in that it denigrates the competitor and implies destruction of the Diet Coke can. The U.S. perspective was that the stunt double commercial was “fun and harmless” and in the end, fair use for advertising purposes.

The next TV commercial was an old Total vs. Cornflakes commercial in which a customer offers to “bet my shirt on it” that his is the most nutritious brand. From the U.S. perspective, the nutritional claims would need to be verifiable, and the claims of “best” and “better” taste are potentially problematic. On the same note, those terms might be seen as mere puffery. (On this case, one U.S. panelist would green-light the commercial, one would not). The E.U. perspective raised similar concerns regarding verifiability.

Next was an Audi TV commercial depicting a man waking form his bed to find the grill of his old sports car in bed with him (ala the horse in the godfather) followed by the new Audi. Next was the bride running off from her wedding to hop into the Audi with Dustin Hoffman who says to his daughter: “you’re just like your mother.” Finally was an ad for “Battletanks” for Nintendo 64 in which the tanks smashed and pillaged the snuggly fabric softener bear. From the E.U. perspective, the Nintendo ad was clearly not an acceptable fair use. Notably also was the issue that the use of the bear was not to parody the fabric softener, but solely to promote the unrelated products of Nintendo. As to the Audi godfather commercial, since the grill of the “dead” car was not identifiable, it would be fine. On the U.S. perspective, the Audi ads would likely be o.k. as far as fair use, but would require significant clearance from the movie’s owners. Similarly, the Nintendo commercial would likely be problematic in the U.S. (and indeed was since a preliminary injunction was granted in that regard) as to tarnishment.

In conclusion, the panelists mentioned that it is important for counsel not be known as the “sales prevention department,” and that often counsel would not make legal calls, but would provide buoys to chart the course for the client, i.e., have your ducks in a row, and to anticipate future comparative advertising developments (e.g., follow case law and legislation), especially in the areas of grey market goods and privacy protection regarding suggested online purchasing (e.g., the RFID chip in your phone would trigger an ad on a billboard as you walk by).