Strange Bedfellows: On Guerilla Marketing and Trademark Protection

Does “Guerrilla Marketing” render the legal protection of trademarks nugatory? This paper explores the concept of guerrilla marketing as it relates to trademark protection. Specifically, the hypothetical situation on the use of competing trademarks in a sponsored sporting event, as seen from the vantage point of a spectator, will be reviewed. To sufficiently address this issue, we must first understand the following:

  1. What is “guerrilla marketing”?
  2. What is a “trademark” and how does the law protect trademarks?
  3. What is the legal framework that operates in a sponsored sporting event?
  4. In the Philippine context, what laws apply and how will such a problem be resolved?

At the end of this paper, it will be shown that guerrilla marketing is a stark reality that practitioners of trademark protection must be able to recognize, and as such, demands foresight in the preparation of contracts and other agreements to sufficiently protect trademark investments, as spectators will never be active stakeholders in trademark protection in a sponsored event.

Guerrilla Marketing, explained

Guerrilla Marketing is a term coined by marketing guru Jay Conrad Levinson in his book, “Guerrilla Marketing.” The concept was invented as an unconventional system of promotions that relies on time, energy and imagination rather than a big marketing budget. Typically, guerrilla marketing campaigns are unexpected and unconventional, potentially interactive, and consumers are targeted in unexpected places. [1] The idea is to catch increasingly finicky and jaded consumers unaware through highly unconventional- and sometimes shocking- means, including blanketing city landmarks with stickers of a company logo or using graffiti to paint a brand name. [2] “Guerrilla marketing” is not just an opportunity for a brand to get into the paper – it is a way for a fledgling company to take advantage of a situation swiftly without spending heavily. Guerrilla tactics are, by nature, supposed to be clever, memorable, original and, crucially, cheap. But the term itself is somewhat of a misnomer for a series of marketing tactics that are now in everyday use in many integrated marketing campaigns, for big or small businesses.[3] It can thus be seen that guerrilla marketing has the following elements:

  1. Promotion of the brand (or concept) at the least possible cost;
  2. “Strike-anywhere” mentality; and lastly,
  3. Maximum impact in favor of the brand

Let us characterize guerrilla marketing campaigns and cite examples to show how this concept is applied in the Philippine context.

Types of Guerrilla Marketing Campaigns

There are ten (10) methods of guerrilla marketing recognized among advertising and communications practitioners. They are briefly explained below, with an example given for illustration. [4]

  1. Astroturfing, which is a kind of guerilla marketing that creates an impression of being spontaneous and dominating in the scene. Most of the time, astroturfing is present on blogs that are actually made by people paid by a company to make the product a hit on the huge internet surfers. The term was coined from “AstroTurf,” a brand of synthetic carpeting designed to look like natural grass. [5] Locally, astroturfing can be best exemplified by some political campaigns wherein web sites, blogs, and other social media tools that seem to come from grassroots movements endorsing a particular candidate, but in reality, are bankrolled by the political campaign itself.
  1. Viral marketing or “word of mouth” wherein social networks and potential existing leads are used in creating brand and product recognition. The process is seen as how computer viruses spread easily. Viral marketing can use some forms of mediums available now such as, video clips, advergames, software, flash games and even text messages. Examples of this kind of marketing campaign are the old platform games Pepsi-Man [6] and Cool Spot: The 7-Up Game. [7] Of more recent vintage are the iOS/Android games Minion Rush promoting Despicable Me 2, and Iron Man 3 promoting the movie of the same title, both of which are released prior to the cinematic release of the movies.
  1. Undercover/stealth marketing, which is a kind of guerrilla marketing that uses someone famous or influential in marketing. That individual is paid to use the product a company wants to advertise in public places. While in that place, the person is also expected to speak about the benefits he is getting from using that product. Slowly, he is creating an encouragement for the people to buy that product. A not-too-stealthy example is the Joy Dishwashing Liquid commercial, wherein Michael V shows up in the middle of a “man-on-the-street” type of interview with a housewife discussing the merits of his brand of dishwashing liquid.
  1. Tissue-pack advertising, popularized by the Japanese. The idea is to place the advertisement in tissue-papers, and since it is a very useful product, this most of the time, retains with the people until it is already consumed. It can be seen that local businesses in Japan typically print their business name and address on tissue packs, towels, and similar material. In the Philippines, we usually get personalized calendars every New Year from our local hardware shop, panaderya or other suking tindahan.
  1. Presume marketing. Where the idea is for the people to feel the presence of the product, and there is no other way but to make that product visible in the public. By being in the places where potential clients flocks in, the company advertising will get more exposure and recognition. This type of guerrilla marketing can be achieved during festivals, on TV shows, product placements in movies, and now even in Twitter updates. An example is the Oktoberfest of San Miguel Beer, which in reality happens during the month of September, and where the whole of Ortigas Center is festooned in beer-inspired regalia.
  1. Experiential marketing connects the people to the product by experience. The key in experiential marketing is to let the people interact with the product so as to know their responses about it right away. An example here is the Ford test drive campaign, where prospective automobile buyers are enticed into test drives to solidify their affinity to the brand.
  1. Wild posting, an inexpensive and in-your-face kind of guerrilla marketing. Wild Posting s very rampant during campaigns for election, everybody could see the faces of the candidates all over the streets. Most of the time, these posters are placed in building facades, in alleyways and construction site barricades.
  1. Grassroots marketing, where the idea is to get the consumers one-by-one and influences them by making them believe that your product is the best in the world to the extent of having them as your cheerleaders. So, the main component in achieving grassroots marketing is to build strong relationships, thus, this marketing emphasizes strong personal connections. If this achieved, the buzz about the brand will grow. This is best exemplified by the 143 Program of the Philippine Red Cross, especially in areas such as Marikina and Rizal, where much grassroots support is given to the movement.
  1. Ambient marketing is an effective way of creating brand recognition without pushing the company’s products to the public. This may also involve placing ads on unusual items or unusual places where an ad typically would not be seen. [8] An example here is Amnesty International’s ads where human hands are seen placed on sewer grates, as well as stickers on mall floors which point an arrow to specific establishments.
  1. Alternative marketing seems to be like a publicity that is out from the company making the product. Certain instances are made or accidentally made to promote the product which would appear, obviously, as not a form of advertisement but would definitely have an appeal to the people. This was used by movies such as Cloverfield, The Blair Witch Project, Paranormal Investigation, among others.

When Guerrilla Marketing backfires

While guerrilla marketing is viewed as a very cost-efficient and effective means of getting across to specific target markets, there are notable examples of guerrilla marketing campaigns that have backfired, either generating ill will or even legal and regulatory liability at times. In a paper published by the American Journal of Economics and Business Administration[9], the ethical implications of guerrilla marketing campaigns were dissected. The paper cited a report that one TV network in Belgium ran a guerrilla marketing campaign for the series “24” wherein posters prepared for the campaign showed traffic pullover in the city center of Antwerp, creating the sense that there is biological danger, and that there are pictures of men with masks and special uniforms distributing flyers that state the presence of a deadly virus. In these flyers, after the word “Caution” comes the statement “There is a fatal virus in the city. Go home now, close your windows and doors. Turn on your television.” Under the flyer, there is a logo of the TV channel and the series “24”. This brings to mind the radio show “War of the Worlds” wherein a news bulletin styled radio drama reporting on attacks from the planet Mars were misconstrued by a large number of people, and reportedly caused panic and alarm in some quarters. [10]

Trademarks in the Global and in the Philippine Spheres of Commerce

The rationale behind trademark laws is human nature. A buyer or user of a certain product will choose one known for quality and reliability, and these superior qualities are made known by means of a trademark. As defined by the World Intellectual Property Organization (WIPO), a trademark is a distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise. Its origin dates back to ancient times, when craftsmen reproduced their signatures, or “marks” on their artistic or utilitarian products. Over the years these marks evolved into today’s system of trademark registration and protection. The system helps consumers identify and purchase a product or service because its nature and quality, indicated by its unique trademark, meets their needs.[11] In the Philippines, Republic Act 8293, otherwise known as the “Intellectual Property Code of the Philippines,” defines a mark as “any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods.”[12]

Most jurisdictions require registration of a trademark to confer protection, and this registration and grant of rights are typically territorial in character. In light of this territorial limitation and the increasing globalization of commerce, the nations of the world have resorted to several international instruments that regulate trademarks as well as other intellectual property rights. The Philippines is a signatory to the Paris Convention as well as the TRIPS Agreement. A table summarizing how the two agreements stand vis-à-vis Philippine law is available at the end of this article.

Part of the rights granted both by local law, as well as the international agreements, is that the registered owner shall have the exclusive right to prevent all third parties not having the owner’s consent from using such trademark. [13] Further, a trademark owner is also allowed to license and assign the rights to a trademark, [14] which would allow a trademark owner added reach for his trademark, and allows for a trademark owner, for example, a beverage brand, to tie up with sports teams and even sports organizers. An example is Powerade and Gatorade being beverage sponsors for team sporting events. The use of their trademarks prominently displayed in beverage dispensers shown during games- televised of course- provide them added reach and exposure.

Legal Implications in Sponsored Sports Events

Organizing an event with “all bases covered” from a legal perspective requires a lot of foresight. A Google search regarding the legal requirements of organizing a sports event yielded a little more than a few industry-specific or association-specific guidelines in ensuring organized events are compliant with a barebones legal framework. A search of Philippine jurisprudence also proved unfruitful, as there seems to be no tangentially relevant cases regarding sporting event contractual breaches. We must, therefore, look to the West for insights.

English law does not recognize a proprietary right or interest in a sporting event per se. This was enunciated by the High Court of Australia in the case of Victoria Park Racing and Recreation Grounds Co. Ltd v. Taylor[15]  where the Court ratiocinated “A “spectacle” cannot be “owned” in any ordinary sense of that word.” In other words, the event organizer is not automatically protected from a third party who may wish to exploit the event. In order to receive the required level of protection, the organizer will have to use various mechanisms of law in order to ensure the event is not exploited without consent. For this reason, sports event management agreements (SEMA) are usually crafted with an extended definition of the ‘Venue’ for the sports event, which is useful to combat ‘Ambush Marketing’ situations that may take place around the ‘Venue’ as well as within the ‘Venue’.[16] However, given that the Victoria Park Racing case was decided in 1937, several years before 1948, the year Australia became a party-signatory to the GATT[17], it is respectfully submitted that under the principle of pacta sunt servanda, English common law countries who are signatories to the GATT-WTO TRIPS Agreement may be compelled, in the proper domestic case, to grant similar rights to organizers of sporting events as civil law countries.

In the US, property rights are more recognized. The organizer of a sports event owns a property right in that event that he or she is entitled to have protected from misappropriation by a third party. In short, the US system prevents a party from reaping where it has not sown – he who has fairly paid the price should have the beneficial use of the property.[18]

Applying what we have found out in common law and civil law systems from the West regarding sporting events, we can analogously apply contract law as defined in Title II, Articles 1305 to 1422 of the Civil Code. Sporting events, however, may be subject to such other rules, such as FIFA rules for football or soccer, FIBA rules for basketball, and so on. Assuming that such international federation rules are silent with respect to media coverage, sponsorships, and the like, then the contract between the sponsor and the sport event organizer would be the law between the parties, and they are free to stipulate the terms and conditions. A SEMA as used in US sports law would also be one of the industry best practices that can be adopted in local sporting events to ensure that all parties who are stakeholders to the event- from the sports organization, the teams involved, the media partners, and the sponsors- have their responsibilities, rights and obligations clearly set forth in black and white. What about the normal spectator?

A patron’s ticket to such a sporting event is a contract. It is a contract between a spectator watching the event live in the stands, and the organizer, who grants the ticketholder limited rights such as fair, non-commercial enjoyment and use (e.g. allowing a spectator to watch, to do a live Twitter feed of the events as he perceives the match, non-commercial photography of himself and his vicinity, etc). But what if the ticket holder is a guerilla marketer with a planned ambush marketing gimmick, to be executed in front of the cameras doing a live broadcast?

On competing trademarks in sponsored sporting events

The problem presented is similar to the Bavaria orange dress campaign in a FIFA World Cup match. In one World Cup match, pretty ladies clad in Bavaria orange mini-dresses were seated in one area of the stadium. The group was ejected from the stadium, the alleged organizers arrested, and the broadcaster alleged to have been the source of the tickets fired.[19] The resulting publicity, however, was priceless. Applying Philippine law in this scenario, would the organizer of such an ambush marketing gimmick be liable for trademark infringement?

The answer is a clear and unequivocal no. Trademark infringement, under Philippine law, is committed when any person, without consent of the owner of the mark, uses in commerce a counterfeit or imitation of such mark likely to cause confusion or to deceive the public.[20] An ambush marketer’s effort in a sponsored sporting event does not cause confusion nor deceive the public- the sponsor brand will never be confused with the ambush marketing brand, nor will the ambush marketer usurp the status of the sponsor brand with such efforts. It is therefore submitted that there is no trademark infringement.

With respect to the earlier proposal that a SEMA be adopted, a SEMA may be crafted with such stipulations that the media partner shall not air or even acknowledge ambush marketing gimmicks by non-sponsor trademarks. This will allow the media partner to be informed of this contractual obligation prior to the event, limiting the potential reach of an ambush marketer in a sponsored sports event.

With respect to the spectator, it has been earlier submitted that the ticket represents a contract between him and the event organizer; however, as the owner of such ticket, he has the right to dispose of the same. He may sell the ticket in favor of a guerrilla marketer, and he will not incur any liability. In the event the guerrilla marketer takes possession and ownership of the ticket, he may then have valid means of entry to the venue of the event. Will the guerrilla marketer violate the terms of the contract, i.e. the ticket, if he stages an ambush marketing gimmick? It is submitted that yes, there will be a breach of the terms of the ticket but only to the extent that other spectators’ viewing pleasure is compromised. Earlier it was stated that the ticket holder is granted fair, non-commercial enjoyment and use of the spectacle, and part thereof is allowing others to do the same.  If the ambush marketing gimmickry results to diminished viewing pleasure of other spectators, the action no longer falls under protected free speech under the freedom of speech clause in the Constitution. It will be a different discussion, however, to determine whether or not such violation of the terms of the ticket is an actionable wrong, on account of the technicalities of the Philippine rules of procedure on proper parties to bring an action. It would take an extremely litigious and avid fan of the sport- not the corporate sponsor- to bring suit against guerrilla marketers who disrupted his watching, say, a tennis match.

Conclusion

 Sporting events are lucrative commercial investments that require a substantial amount of capital. The lawful return on investment of stakeholders in sporting events requires that the law operates in such a way that their investment is protected from unfair use and exploitation. A spectator’s interest is only the psychic return on the purchase price of his ticket; hence, an ordinary spectator cannot be expected to actively partake in trademark protection so that the sporting event remains a lucrative investment. It behooves guerrilla marketers to police their own ranks and ensure that trademarks from which they derive their profits remain valuable intellectual properties. Guerrilla marketing and trademark protection are strange bedfellows indeed, as guerrilla marketers should not dissociate themselves from trademark protection; else, they risk not only alienating the public, but also the companies whose trademarks they vigorously push.

* * *

Table 1. International Agreements on Intellectual Property

Name of Treaty

Date Entered into Force

Status vis-à-vis

PH Law

Pertinent Characteristics

Paris Convention for the Protection of Industrial Property July 7, 1884 In force,Ratified Sept. 27, 1965 – Persons (Natural and Juridical) who are nationals or are domiciled in a state party to the convention shall enjoy similar rights on trademark protection in all other countries of the union- Trademark law is to be determined municipally- Administered by the WIPO

– Prohibits use of state emblems in all trademarks

Source:

http://www.wipo.int/treaties/en/ip/paris/summary_paris.html

TRIPS Agreement January 1, 1996 In force,Ratified Jan. 1, 1995 – Adopts most provisions of the Paris Convention on comity and similar protection- Adopts the concept of “Most-Favored Nation” whereby any advantage granted to another country must be granted immediately and unconditionally to the nationals of all other parties even if such is more favorable to its nationalsSource: http://www.wto.org/english/docs_e/legal_e/27-trips_04_e.htm#2

[6] Pepsi Man™ stage 1-1 sequence, http://www.youtube.com/watch?v=YdqW9PAv5_M

[7] Cool Spot™ Intro sequence, http://www.youtube.com/watch?v=0iMM2vqrE08

[9] Guerilla Marketing Communication Tools and Ethical Problems in Guerilla Advertising. Canan Ay, et al., American Journal of Economics and Business Administration 2 (3): 280-286, 2010 ISSN 1945-5488. http://thescipub.com/pdf/10.3844/ajebasp.2010.280.286

[12] Section 121.1, RA 8293

[13] Section 147.1, RA 8293

[14] Article 21, URUGUAY Round Agreement: TRIPS

[20] Republic Act 8293, Section 155. Any person who shall, without the consent of the owner of the registered mark:

155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided, That the infringement takes place at the moment any of the acts stated in Subsection 155.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material.

One thought on “Strange Bedfellows: On Guerilla Marketing and Trademark Protection

  1. Pingback: Students’ Take: Contacts viz RA 10173 | Berne Guerrero

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