Legal Issues You Need to Consider as a Marketing Agency

Authors: Zeinab Farhat & Nikita Chikohwa, Progressive Legal

 If you are a marketing agency in Australia, it is likely the case that you are not completely aware of the various legal issues that can arise for you or how to address them should they eventuate.  

There are a wide range of legal considerations that any marketing agency in Australia should consider, including but not limited to: intellectual property, the Australian Consumer law, commercial law and disputes. It is advisable that any marketing agency has a trustworthy law firm with whom they can regularly consult with should they require. Given the nature of the services offered by a marketing agency, this is essential to minimise legal risk and ensure compliance.  

This article will consider intellectual property, obligations under the Australian Consumer Law (ACL), commercial agreements and key takeaways.  

Intellectual Property issues commonly arising with marketing agencies 

A key aspect of any marketing agency is the creation of creative content or material. This includes, content which is posted on a clients social media account(s) and websites, as well as branding material such as logos, taglines and any other features intended to distinguish the goods or services of a trader in the market.

Below is a list of some common issues that commonly arise for marketing agencies who are otherwise unaware of the basics of Australian intellectual property law, particularly as provided for under the relevant pieces of legislation such as the Trade Marks Act 1995 (Cth) and Copyright 1968 (Cth): 

1. Failure to conduct simple clearance searches in order to ensure a trade mark is available for use

When creating a brand for any client, it is essential that a marketing agency undertakes any relevant due diligence to minimise the risk of any registered trade mark owner pursuing an action for a claim of trade mark infringement under the Trade Marks Act 1995 (Cth) against their client. 

Example: If Party A has a registered trade mark in class X for certain goods and services, and the client of a marketing agency uses a mark which substantially identical or deceptively similar to Party A’s registered mark in the same or similar services, then subject to any available defence, this can be considered an infringement of Party A’s mark.

Implications for a marketing agency

A failure to conduct a simple clearance search and provision of correspondence in relation to your clients’ branding may have significant reputational ramifications for you as a marketing agency, as it may demonstrate a lack of attention to detail in creating the branding for your client. This is where having a referral partnership with a law firm always comes in useful. A law firm can assist you in conducting these searches, or otherwise guide you on how to complete them.

2. Failure to inform their clients on the benefits of obtaining a registered trade mark

While a marketing agency is not expected to advise their client on the importance of a registered trade mark in the same fashion that a lawyer would, many marketing agencies themselves are not aware of the importance of registered trade marks so as to convey this to their clients, to the extent they can.

At a general level, a registered trade mark is a type of intellectual property which distinguishes the goods and services of a trader from others in the market. A registered trade mark lasts 10 years, and can actually last in perpetuity subject to the renewal fees being paid. Trade marks can be a range of things, including but not limited to: a logo, name, phrase, letter, colour sound etc.

Implications for a marketing agency

A failure to inform a client on the importance of a trade mark may mean that the client of a marketing agency is falsely misguided that they have the exclusive rights to use that mark in connection with their business.

For example, we often see marketing agencies ask the question of why their client could obtain registration of a business name despite that name being unavailable for use (due to later being made aware of a registered trade mark). This is because a trade mark alone provides a party with an exclusive right to use that mark, and acceptance of a business name registration is simply a result of algorithms by ASIC. In other words, obtaining that registration alone is not sufficient for the purposes of total brand protection.

3. Failure to inform their clients on the nature of copyright ownership where contractors have been involved in the creation of a work

Where a marketing agency uses contractors to help with content creation or any type of work that would fall within the ambit of a copyright protected work as defined within the Copyright Act 1968 (Cth) (i.e. a artistic work such as a photograph, logo etc), it is important to note that the default presumption under the Copyright Act 1968 (Cth) is that the contractor owns the copyright in that work.

Implications for a marketing agency

A failure to understand that the client of a marketing agency may not have full ownership in a copyright protected work may have significant implications, both on your reputational image as a creative agency, and the client themselves. This is because unless an assignment has been made which transfers ownership of the copyright to your client, the contractor actually retains ownership of that work and is free to use it as they wish.

It is essential that any marketing agency regularly engages with intellectual property lawyers to ensure they understand the basics of copyright so they can consider informing their clients of any legal documentation that may need to be drafted, such as a deed of assignment of copyright.

4. Using images sourced online to create content

Many marketing agencies are now receiving correspondence from copyright enforcement agencies such as PicRights. These agencies are legitimate and will continue to send correspondence should it be ignored.

As noted, many agencies do not understand the basics of copyright and as such, are of the false view that freely available content online means that content can be used for the purposes of content for their client (e.g. blogs, website posts etc). Unfortunately, this is not the case.  

Obligations under the Australian Consumer Law  

Part of a marketing agencies role is to obviously promote the goods or services of their client.  

As such, the provision of material must at all times be considered in the context of the ACL, including but not limited to: 

1. whether the material could be classified as misleading or deceptive, or likely to mislead or deceive consumers in contravention of s 18 of the ACL;
2. whether the material constitutes false or misleading representations being made about the goods or services in contravention of s 29 of the ACL.  

Given the integral position a marketing agency has in content creation and marketing strategy for a business, it is advisable that advertising advice is provided where there is any hesitation regarding the applicability of the ACL in order to minimise risk.  

Furthermore, if you are assisting your clients in running competitions (i.e. giveaways on social media etc), you/ your client should obtain legal advice from a lawyer who will be able to research and advise you on the applicability of any further considerations. For example, a permit may be needed for such trade promotions where they are a game of chance (i.e. participants have an equal chance of winning randomly).  

Commercial agreements and documents  

Marketing agencies should also consider what commercial documents they require within their own business. A marketing business should have a clear set of terms and conditions which clearly identify the types of services being offered, any deliverables being provided, fees, exclusivity (if required) etc. Having such a document in place ensures that you and your clients are sufficiently aware of each parties’ respective obligations. 

Other relevant documents include contractor agreements, website terms of use, privacy policies etc.    

Key takeaways

If you are a marketing agency, it is strongly advisable that you consider creating a referral relationship with a law firm. This is because due to the nature of the services provided by a marketing agency, a seasoned law firm with expertise in intellectual property, commercial law and general disputes can assist with advising you (or your clients) in how best to approach certain issues as identified above.