Legal Considerations for Video Marketing – Interview With IP Attorney Mark Rosenberg

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Mark Rosenberg intellectual property attorney and Search Engine Strategies Chicago conference speaker, shares with us the important legal issues that both companies and Video SEO professionals need to consider, especially before they even get started with making and promoting video content online.

Grant: First lets deal with the obvious question. Why should online marketers of video even consider potential legal issues involved?

Mark: Simply that if they don’t consider them and do them wrong, they could get sued. Forget about just the legal liability – you’d have to hire lawyers, your ad campaign is disrupted and maybe taken down, and at the end of the day you may end up owing the rights owner a lot of money. It can destroy the whole purpose of the video campaign, and can ruin your business.

What do you consider to be the most important legal issues, or potential legal issues, involving online video marketing and SEO?

The first part of that question is video in general. I’ve spoken to clients and friends who are doing video, and there’s a basic clueless-ness about it. They don’t realize that doing an online video advertisement is no different legally from doing a television ad.

The second issue is that they’re not getting proper releases from the people who are in the video. You just can’t stick a video on a website and use it for commercial purposes. You have to properly get the permission to video record people in the first place, and have their permission to use that video for commercial purposes. If you don’t get their consent via releases, the company using the video can be served with a restraining order and sued. People who are doing video online seem to forget that you have to always consider these copyright issues; its not just on the video content, but also clearance on music and talent, and any other copyright holders involved.

Just this week I prepared some contracts for a client that was doing a video advertisement. She intends to use it both on cable television and the Internet. Just the document that gets signed by the actors is 11 pages long!

In the process of getting waivers and handling other such legal issues, it sounds like they should first be working with legal counsel. So what should these marketers be looking for in an attorney to handle commercial issues with online video?

The first criteria is finding someone who’s had experience with advertising law, and especially someone who’s has experience and client work with Internet marketing and intellectual property issues.

Where are the legal issues between video for television versus video online, similar and different?

Where online video is different from traditional (television) video, is that online video comes with a search function. You can’t search for a television ad. With the search function, that’s where the trademark issue comes in, especially with how that trademark is not only being featured in the video content itself, but also how its being used in the video’s metadata and file names. That’s where a trademark aspect comes in with online video advertising that doesn’t exist with television advertising.

Unfortunately this is where the law is inconsistent between what’s permissible and what’s not between television video advertising and online video advertising. What is normally permitted in brick-and-mortar advertising in terms of trademark usage, doesn’t necessarily correspond in terms of Internet marketing.

What are the reasons for this inconsistency?

There’s really no good reason for it, other than judges today don’t really understand what’s going on in the Internet.

In the emerging industry of Video SEO, We’ve seen some companies advertising themselves has having a “Video SEO proprietary technology” – such as special tools or programming for what they promote themselves as getting top listings in the search results for their video content. Are there any potential legal issues when a company makes claims like these, and there’s no evidence to support it — especially when a client hire that company for their expressed services?

Yes. If they do not have a proprietary technology, that’s false advertising. It’s also an unfair business practice if they’re making false business claims. There are two different statutes that prohibit that. If such a technology doesn’t exist and is not theirs, then that’s false advertising, and there’s legal liabilities for doing that.

We’ve come across a Video SEO company featuring, in their own videos, a logo for their product or brand that have the same graphic design as the YouTube logo, but with a slight variation of their own name in place. Is this also a potential case of trademark infringement?

Yes. If they don’t have expressed permission from YouTube, then its out-and-out trademark infringement. Can the company say that they produce videos on YouTube? Sure, as long as its true. But once they take the next step and start using the YouTube logo without YouTube’s consent, then that’s clearly trademark infringement.

It sounds like it would create consumer confusion in that people would associate the company with the variation of the YouTube logo, as being a product of, or at least implying a special arrangement with, YouTube itself.

That’s right. You’ve just hit on the key aspect of what constitutes trademark infringement. If there’s a likelihood of confusion, then that’s an infringement. If the use of a similar marker or term is likely to cause confusion, then that’s considered infringement.

Are there any areas of trademark usage in online video that are acceptable when they’re not your own property?

The issue you have to ask and answer is, why are you using another company’s trademark without their permission? Is it to make a legitimate comparison between your product and another company’s product? That usage is probably okay; but, if the comparison is not accurate and legitimate, then its false advertising and illegal. Is it just to get attention, when someone does a search and capture people looking for another company’s popular trademarked term? That’s improper. And it goes to degree. Now you could say you’re selling a generic version of the trademarked product (e.g., “Viagra”) – that usage is permissible. But if you kept saying the word, “Viagra” many times in your video, that usage is not permissible. So it’s really a matter of the degree.

Since more and more online video is coming out by companies as the bar is being lowered in the ease of producing such video, do you see more legal issues and lawsuits arising? And, will people’s understanding of legal rights and responsibilities about online video match the rate of business growth?

I think more lawsuits will come out it, but first there will be more legal cease-and-desist letters. A lot of companies that are getting involved in online video marketing don’t have experience in television marketing, and haven’t made themselves aware of the legal issues required. I think a lot of people who are producing and using online video have no awareness of the magnitude of legal issues out there. Its not that most businesses don’t care, its just that they’re not even aware of them.

So your recommendation to website owners and companies involved with online video (especially when there are other people or brands involved)is to get professional legal counsel in advance.

Correct. For a web site with no video, the legal issues are much more fixed. As long as you’re not using someone’s trademark and what you’re saying is true, then that’s about the end of an issue if its just your website (with no video). But when you’re doing video, with it comes not just copyright and trademark issues, but publicity issues (i.e., the right to use someone’s image, voice or likeness in your video for commercial purposes). Video makes things much more tricky, and without expert counsel, your legal risk is much greater.

Mark Rosenberg is speaking at the Search Engine Strategies Chicago Conference on December 8, 2008, on the panel, Legal Issues and Trademarks – What SEMs Should Know.


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