Thursday, January 22, 2009
To protect all those involved, I've changed the names of the people and companies involved in this story.
Not long ago, I heard of a unique predicament that one of my former students, let's call him Sam, found himself in. He had just graduated with a great portfolio full of spec ads for a wide range of products, some which he'd been assigned by teachers and some which he'd selected himself. Like most students, he had a website displaying his book.
One day, Sam received an email from the president of a small candy company for which he had a spec ad in his book. Instead of complimenting the campaign (it was a nice one), the email claimed that Sam was illegally using the company's registered trademarks and must remove the campaign from his website.
Until this incident, I'd never heard of this before, but I did some asking around, and it's not completely unheard of. Typically, it's freelancers who find themselves in this predicament. Legally, companies that pay agencies own any work the agency does for them, even if they choose not to buy or run the work. So if a company doesn't buy a campaign, it's possible that the company doesn't want the campaign on the Internet either, not even on the freelancer's website. But a company coming after a student's portfolio? That seemed a little ridiculous.
Sam responded to the president of the company, explaining the nature of student portfolios, asked what specific trademarks he was violating and offered to include a disclaimer on his website. He had landed a job at a top agency by then, and he considered the matter over. But it wasn't.
The candy company actually went so far as to contact the powers that be at Sam's agency about the matter. Luckily, the agency backed Sam and agency lawyers sent a letter to the company, basically stating that they had no case. I've included an edited version of this letter at the bottom of this post.
This situation is pretty ridiculous. I would think that a company would have better things to do than chase after students. But the reality is that companies can be very protective of their brands.
Do I think you'll ever have to deal with this issue? I wouldn't bet on it. But if you do run into this, here are a few things to consider:
• A company might be able to, if they really wanted to waste a bunch of time and money, take you to court and make you take spec work off your website. But they can never monitor what's in your physical book, or the pdf of your book. What's more likely, though, is that a company might pressure their agency not to hire (or re-hire) a freelancer with "unauthorized" work on his site.
• When you're putting work on your website, don't include tags that include the product. Nobody will be searching for your portfolio by brand (but apparently, presidents of small companies have time to google their brands and harass students).
• IF a company does contact you, I'd suggest just ignoring them for at least the first few emails.
• If the company persists, you can offer put a disclaimer on your site.
• If the company still persists, temporarily pull the campaign from your site (but keep it in your book and minibook).
• You could change the campaign to a different, similar product (just as a matter of principle, I don't like this idea, but it would cover your butt).
• If the company still persists, call in the A-Team. Or steal some language from this letter, which is what the agency lawyers sent to to the company:
Dear Mr. President:
This firm represents Sam Student. We write in response to your e-mails to Mr. Student and Sterling Cooper in which you allege that certain materials posted by Mr. Student on his website, samstudent.com, violate your company's copyrights and trademark rights.
With respect to any copyright claim, you have not identified which, if any, of your company's advertising materials are substantially similar to the materials created by Mr. Student. In order to evaluate your company's copyright claim, it is necessary to compare the parties' materials. Accordingly, if you intend to press this claim, please send me copies of the advertisements that you claim have been infringed.
Your allegations of trademark infringement are without merit. The materials posted under the "Work" section of Mr. Student's website were created solely for certain college classes. As you may know, trademark law seeks to prevent consumer confusion. Here, no consumer would ever believe that Mr. Student is the source of your company's products, or that he is in any way sponsored or affiliated with your company. In any event, to address your company's concerns, Mr. Student has included a disclaimer in the Work section of his site to make it clear that the materials posted were not created or disseminated by your company or any of the other companies whose names appear on his site. We trust the inclusion of this disclaimer addresses your company's concerns. If you wish to discuss this matter further, please do not hesitate to contact me. Otherwise, we will consider this matter closed.
Nothing contained in, or omitted from, this letter shall be deemed a waiver of any of our client's rights, all of which are expressly reserved.