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 Advertising: Transactional & Regulatory: NationwideAdvertising: Litigation: Nationwide 

National : An Introduction

Contributed by Davis & Gilbert LLP

The business of advertising, marketing, promotions, and public relations has changed drastically over the years. Advertisers now work with various specialized agencies providing services on integrated marketing campaigns covering the full panoply of media. In that vein, the use of traditional media such as print, television, radio, and direct mail has ceded ground to newer marketing platforms such as social media, mobile marketing, search engine marketing, and word-of-mouth marketing.

The complexity of the legal and regulatory issues faced by advertising agencies and their clients has changed as well. Relatively simple compliance obligations under Section 5 of the Federal Trade Commission Act (which prohibits unfair or deceptive acts or practices) and its state analogs have evolved to encompass an array of specialized regulations and self-regulatory initiatives, aggressive state Attorneys General, and an active class action bar, all overlaid by an extremely competitive marketplace. Advertisers and their agencies must also be wary of third party rights and the risk of infringement of copyright, trademark, and rights of privacy and publicity.

The Regulatory Landscape

The advertising industry is dealing with an increasing array of new regulations and guidance. Both state and federal legislatures and regulatory bodies work quickly to deal with perceived new threats against consumers.

Given the broad authority wielded by the Federal Trade Commission (“FTC”), Congress rarely gets involved in consumer protection issues. However, the global economic downturn seems to have provided an increased impetus to ensure consumers are protected. In December 2010, Congress passed the Restore Online Shoppers’ Confidence Act, which imposes certain disclosure requirements on the online marketing practices of membership club sellers and their online retail partners.

The FTC has brought several enforcement actions arising out of its recently-revised Guides Concerning the Use of Endorsements and Testimonials in Advertising (“Endorsement Guides”), which require the disclosure of material connections for bloggers and word-of-mouth marketers who endorse or review advertisers’ products. In a settlement with Reverb Communications, Inc., a public relations agency and its sole owner were found in violation of the Endorsement Guides for instructing employees to post what appeared to be consumer reviews of video games online without disclosing their relationship with the video game company.

Another settlement involving guitar tutorial company Learning Legacy Systems, Inc. made clear that not only must advertisers and their agencies instruct affiliate marketers to make disclosures in their online posts about products, but they must also monitor the activities of affiliates and terminate any non-compliant affiliates.

The FTC announced in May 2011 that it will update its guidelines regarding disclosures in Internet advertising (“Dot Com Disclosures”) in effort to stay current with the ever-changing online world, online behavioral advertising, and online affiliate marketing.

In fall 2010, the FTC released proposed revisions to its Guides for the Use of Environmental Marketing Claims (the “Green Guides”), which would update the current Green Guides and also provide new guidance on claims that are not currently addressed. Notably, the proposed revisions offer new guidance on the use of claims about renewable materials, renewable energy and carbon offsets while updating guidance dealing with the use of terms such as “recyclable” and “biodegradable.” It is expected that the revised guides will be issued some time in 2011 after the FTC evaluates public comments received.

Lanham Act Litigation and NAD Challenges

Competitors have long had the ability to challenge each other’s advertising practices, either through litigation under the federal Lanham Act, or through the National Advertising Division of the Council of Better Business Bureaus (the “NAD”). The NAD is a self-regulatory organization formed with the cooperation of the advertising industry that can bring challenges against advertising it believes to be deceptive or misleading.

The global recession has spurred competitors to take advantage of the NAD’s benefits. In fact, the NAD handled 145 challenges in 2010 alone. The vast majority of advertisers comply with NAD decisions, since advertisers who fail to comply often have their advertising referred to the FTC for further review.

The types of challenges brought before the NAD are extensive, involving industries as diverse as pharmaceuticals, nutrition, food, pet care, telecommunications, and automotive. Most simply challenge the extent and sufficiency of support advertisers have for the claims being made.

Attorney General and Multi-State Attorney General Actions

State Attorneys General have increasingly been using their power to reign in practices believed to be deceptive, misleading, or unfair under state consumer protection laws. In December 2010, a multi-state investigation involving all fifty states was brought to a conclusion with a settlement with DirecTV relating to unfair and deceptive business practices in the marketing of its cable subscription services.

Promotion Marketing

Using promotions to market goods and services continues to be popular for consumers and profitable for marketers, but promotional techniques can also be risky if state and federal regulations are not followed. The extensive array of regulations at both the state and federal level in this area make running national promotions not impossible, but certainly problematic for those who are unaware of the coverage of such laws. Taking a promotion global only increases the complexity, requiring the advice of local counsel to ensure compliance with the applicable laws.

Recent federal legislation in this area adds an additional regulatory burden in connection with the use of gift cards, while keeping state regulations on the same topic in tact. For example, class action lawsuits recently brought against online coupon retailer Groupon allege that its online discount coupons are subject to the five-year federal minimum expiration period for gift cards under certain federal laws, such as the Credit Card Accountability Responsibility and Disclosure Act and the Electronic Funds Transfer Act, as well as to relevant individual state expiration requirements.

Privacy, Data Security, and Behavioral Marketing

Nowhere have legal risks recently increased more than with respect to the use and security of personally identifiable information for marketing purposes. Because of the panoply of state laws and the FTC’s stance relating to data security and breach notification, most regulatory actions in this area have centered on data security breaches, which could have a far-reaching impact on business practices and advertisers’ bottom lines. Among other recent data security breaches, Sony shut down its Play Station Network for a prolonged period of time due to hacking of its online entertainment and game systems, and Epsilon Data Management experienced hacking of its database, exposing the e-mail addresses of millions of customers of twenty well-known companies.

Several data privacy bills, including a “Do Not Track” proposal, have been introduced in Congress while the industry continues to advocate for self-regulatory measures such as tracking opt-out buttons in order to preserve the practice of online behavioral advertising.

In December 2010, the FTC issued a preliminary staff report on consumer privacy and data collection practices for businesses. The FTC’s privacy “Framework” seeks to protect consumers through the principles of “privacy by design,” simplified consumer choice, and increased transparency. A final report based on public comments received is expected sometime in 2011.

Class Action Lawsuits

The plaintiff’s bar is another potential hotbed for legal risk in the advertising category. In certain states, individuals have a private right of action for violation of the state’s consumer protection laws, leading to class action lawsuits for alleged false or misleading marketing practices. Consumer class action lawsuits for false and misleading marketing practices may be prompted first by a regulatory inquiry, or independently by the plaintiff’s bar.

For example, in 2010, a federal district judge ordered Dannon to pay up to $45 million to settle a consumer class action lawsuit for deceptive advertising in connection with its Activia and DanActive yogurt products.

Children’s Advertising

Regulation of children’s advertising is an area where both regulators and self-regulatory organizations are active. The FTC continues to protect children’s interests and is currently reviewing its rules relating to the Children’s Online Privacy Protection Act to ensure they provide adequate protection for children’s online privacy and safety, especially in light of the explosion of the mobile marketplace.

In 2011, an interagency working group comprised of the FTC, FDA, CDC, and USDA published proposed guidelines for the nutritional quality of food marketed to children and adolescents ages 2 to 17.

The Children's Advertising Review Unit (“CARU”) is the children's arm of the advertising industry's self-regulation program and evaluates child-directed advertising and promotional material in all media. CARU is an active force in monitoring advertising for compliance with its guidelines, pursuing advertisers for violations relating to privacy issues, promotions, and false advertising. In 2010, CARU handled 65 challenges, one third of which involved Internet-related issues.

Intellectual Property Litigation

The creation of advertising and marketing materials relies heavily upon the use of external talent, as well as intellectual property created internally or licensed from third parties. Aside from the regulatory issues addressed above, working in a creative industry brings with it risks of claims relating to infringement of third party intellectual property rights (such as trademark, copyright, and patent), as well as claims relating to the violation of a person’s privacy and publicity rights.

For example, S. Victor Whitmill, a tattoo artist and the creator of Mike Tyson’s well known face tattoo, recently sued Warner Bros. Entertainment, for copyright infringement in connection with the creation of a nearly identical tattoo on the face of one of the main characters of the recently released film The Hangover Part II, a use which was featured prominently in both the movie’s plot and its marketing materials. Though a federal district court judge denied Whitmill’s motion for a preliminary injunction enjoining the release of the film, the judge stated that tattoos were entitled to copyright protection and that Whitmill was likely to succeed on the merits.

CONCLUSION


The advertising business is a highly regulated industry with complex and continually evolving legal issues to contend with. As new technologies and advertising platforms vie for consumers’ ever-dwindling attention, a comprehensive compliance system and knowledgeable team of legal professionals is more important today than ever in order to maintain appropriate risk tolerance levels.

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Advertising: Nationwide

Due to the number of tables in this section, the editorial is in alphabetical order by firm name.


THE FIRM This New York-based group occupies a lofty perch at the zenith of advertising legal practice. It is preeminent for a number of reasons: it offers a remarkably high caliber of attorneys, fantastic client service and, perhaps crucially, complete coverage on advertising law issues. The team's exhaustive advertising expertise ensures that it can provide 'soup to nuts' coverage of the advertising industry for its clients. Its broad knowledge is echoed by the breadth of its client base, which includes major advertising agencies, advertisers and industry bodies, and household names such as Apple, Verizon Communications, Gap and Saatchi & Saatchi.

Client Service: "The group provides an extremely high level of service and is very responsive."

Commercial Awareness: "Very practical in their advice, which is based not only on extensive industry knowledge but also on general business judgment – we rely on them heavily to navigate difficult and complex situations."

KEY INDIVIDUALS Firm chairman Ronald Urbach maintains a hugely active practice, and counts a range of prestigious multinational, national and niche advertising agencies amongst his clients. Peers and clients alike are quick to salute his sky-high standing in the advertising sector, even suggesting he is "probably the best attorney in the field today." His counsel is so valued because of his ability to advise across regulatory, litigation and transactional matters, and because of his "incredibly practical business approach to solving problems." Joseph Lewczak brings abundant advertising expertise to the table, especially in the areas of contests, telemarketing, direct mail and charitable solicitations. Like Urbach, his clients are keen to highlight the value of "his constantly practical approach to our business problems." Richard Eisert works with a range of new media firms, telecom companies, publishers, advertisers and advertising agencies. He has been key in negotiating Version 3 of the Standard Terms and Conditions for Internet Advertising, which were facilitated and endorsed by the major advertising trade associations and web publishers. Howard Weingrad's expertise lies in issues surrounding the complex provisions of advertising and entertainment industry collective bargaining agreements. As one source stated: "He is incredibly astute and has a strong business approach to issues, and this has ensured we have come to rely on him for talent and union issues."

THE FIRM Debevoise & Plimpton's preeminence in IP litigation ensures the firm's prominence in the advertising sector. Its New York-based team is lauded for its expertise in false advertising cases, and its members are veterans of proceedings in federal and state courts, as well as appearing before the FTC and the NAD. The group has assisted a number of notable clients, including the NFL, Novartis and American Express.

Sources say: "A fantastic standard of lawyering."

KEY INDIVIDUALS David Bernstein is a leading advertising and trademark attorney, and is widely recognized for his expertise in Lanham Act and false advertising cases.

THE FIRM This highly respected New York-based group advises both leading brands and prominent advertising agencies. The team counsels its clients across the complete range of transactional and regulatory issues.

Client Service: "They provide a great combination of client service and expert knowledge – they get us the right answers, and get them to us quickly."

Commercial Awareness: "One of the group's greatest strengths is its understanding of the cutting edge areas of law."

KEY INDIVIDUALS Rick Kurnit brings more than 30 years of advertising law experience to the table. He has represented a wide range of clients, including advertisers, agencies and publishing companies. Peers concede that "it's difficult to find another lawyer who understands the whole industry as well as Rick does." Jeffrey Greenbaum is the firm's managing partner and is praised for embodying the client service the firm is known for: "He really is incredibly responsive and always responds immediately, no matter what hour." Other clients note his "mastery at communicating effectively with all levels of our organization," concluding that "he is extremely practical, experienced, and solution-oriented – just a great problem solver." Candice Kersh also scores incredibly highly for client service: "She brings a real passion – we know she will do whatever it takes to help us." Her impressive overall knowledge places her squarely "on the leading edge of the advertising industry." Terri Seligman is a hugely experienced advertising specialist. She advises clients across the full spectrum of issues arising out of both traditional and cutting-edge approaches to the advertising and promotion of products and services. Brian Murphy both surprises and delights his clients with "a rare quality for a lawyer: he can think like a business person." He focuses on copyright, trademark, false advertising and unfair competition issues, and is always "thoughtful, persuasive and meticulously prepared." Edward Rosenthal brings "terrific expertise and practical advice" to bear for his clients. He chairs the firm's IP and commercial litigation groups.

THE FIRM Kelley Drye's prominent billing in the advertising sector has its foundations in the group's considerable expertise in advertising litigation and NAD proceedings. The team's reputation for excellence has attracted a number of prestigious clients, including Burger King, Dell, Expedia, Kraft, Nestlé USA, Nike and Philip Morris USA. One recent highlight saw the team represent Walgreens in a settlement with the FTC regarding advertisements for a line of dietary supplements.  

Commercial Awareness: "Practical, helpful and knowledgeable, they continue to provide common-sense, workable solutions to our advertising problems."

KEY INDIVIDUALS John Villafranco is an experienced advertising litigator and a veteran of representing clients before both the FTC and NAD. He and group chair Lewis Rose have been representing the country's largest supplier of pre-paid legal services, Pre-Paid Legal Services, in an FTC investigation regarding their advertising and privacy business practices. Christie Grymes chairs the firm's consumer products safety group. Clients are quick to praise her "client focus, responsiveness and pragmatic approach."

THE FIRM This group's advertising litigation capabilities are acclaimed by peers and clients alike. Its false advertising élan elicits instructions from a range of prominent advertisers, and particularly from big pharmaceutical clients. The team won a major false advertising victory for Bracco Diagnostics before the District Court for New Jersey, winning broad relief against defendant GE Healthcare.

Sources say: "There doesn't seem to be a single issue in this area which they haven't already dealt with."

KEY INDIVIDUALS Harold Weinberger is the head of the firm's advertising group and a veteran practitioner. Sources admire the "gravitas and experience" he brings, and dub him "one of the market's leading attorneys."

THE FIRM This New York-based team is noted for its considerable expertise in both transactional and regulatory advertising issues. This is a cross-disciplinary group, drawing on the firm's advertising and promotions, emerging media, and advertising regulatory groups, enabling it to provide clients with a wide range of advertising advice.

Client Service: "Their commitment to client service really makes them stand out – they absolutely go out of their way to do whatever it takes to make sure that the client is happy."

KEY INDIVIDUALS Kenneth Florin is highlighted by sources as "an incredibly impressive advertising attorney." He is viewed as "a great tool for in-house counsel – he provides top-notch substantive advice." Florin has been counseling Amazon.com on expanded promotional initiatives. James Taylor chairs the practice group and is admired for his expertise in a range of false advertising matters. He is currently counseling SC Johnson on social media and emerging media initiatives.

THE FIRM This firm's advertising expertise is sought after by clients looking for complete coverage. Not only do its attorneys cover the waterfront of advertising law issues, but the team is also able to offer truly national range, drawing upon experts in California, New York and Washington, DC. The team's ability to counsel its clients on day-to-day advertising and marketing issues, and to represent them in comparative advertising challenges and false advertising cases, has attracted a number of high-profile names to the Manatt stable, including DIRECTV, Expedia, Live Nation and Ticketmaster.

Sources say: "They have truly superior knowledge of the advertising law landscape."

KEY INDIVIDUALS Team chair Linda Goldstein is "undoubtedly in the major league." Clients view her as "an advertising pioneer," with "an unparalleled understanding of the industry." She has recently been leading the group providing legal and regulatory guidance to Sales Portal on its novel lead generation product. Thomas Morrison is "a wonderful advertising lawyer, with a great pedigree." He benefits from over 30 years of specialist practice in the trademark and false advertising area. The esteem in which experienced advertising litigator Christopher Cole is held by his peers is equaled by the praise he earns from grateful clients. Sources describe Cole as an "incredibly responsive, cost-conscious, high-quality advertising expert." Jeffrey Edelstein is roundly praised for his considerable expertise in handling false advertising issues before the NAD.

THE FIRM This 17-member team is recognized as one of the elite players in false advertising litigation. Its reputation is solidly anchored in its attorneys' tremendous expertise and industry knowledge, which has proved central to the firm's attraction of a glittering client base of prominent advertisers, such as Cola-Cola, L'Oréal and Johnson & Johnson. Recent highlights include representing online travel agency Priceline.com in a false advertising case brought by Expedia.

Sources say: "These lawyers are truly experts in this area, and this is arguably the number-one firm for NAD issues."

KEY INDIVIDUALS Steven Zalesin chairs the firm's 100-member litigation group, and is highly regarded for his achievements in representing leading manufacturing clients in notable false advertising cases. He successfully represented Coca-Cola in a false advertising suit brought by POM Wonderful.

THE FIRM Proskauer Rose maintains an eminent reputation for advertising litigation, and its renown is underscored by the number of leading advertisers on its client list, which includes Dyson, T-Mobile USA, PepsiCo and Diageo. Recent highlights include defending Church & Dwight in two ongoing false advertising cases against SPD Swiss Precision Diagnostics.

Sources say: "A clear leader in false advertising cases."

KEY INDIVIDUALS Brendan O'Rourke and Lawrence Weinstein cochair the false advertising and trademark group. O'Rourke's proficiency with false advertising and Lanham Act counseling garners him acclaim from clients. Weinstein is currently defending Church & Dwight in a false advertising lawsuit in which a key competitor is seeking to prevent the advertising of pregnancy test kits in a manner which has been expressly cleared by the FDA.

THE FIRM Reed Smith's advertising practice is international in scope and draws on attorneys from offices in New York, Illinois, California and London. Its work within the advertising sector is predominantly transactional and regulatory, and covers endorsement matters, M&A transactions and regulatory challenges before the NAD.

Sources say: "They are significant players in the advertising sector."

KEY INDIVIDUALS Douglas Wood chairs the firm's media and entertainment industry group, and is acknowledged as one of the advertising sector's leading lawyers, as demonstrated by his role as general counsel to trade organizations such as the Association of National Advertisers, the Advertising Research Foundation and the Advertising Council.

THE FIRM At Sheppard Mullin, the advertising, marketing and promotions team and its equivalent entertainment, media and technology group work in close collaboration. The firm is acknowledged as a clear leader for endorsement, sponsorship, and sports and entertainment marketing agreements. The group acts as counsel to MillerCoors in all of its sports marketing ventures, and represents ESPN in its sports programming initiatives.

Sources say: "Vast experience in advertising matters."

KEY INDIVIDUALS New York-based Ben Mulcahy and Los Angeles-based Robert Darwell cochair the advertising group.

THE FIRM The DC-based advertising group is one of this firm's largest teams and offers clients top-level expertise across the full range of advertising-related litigation, transactions and regulatory concerns. On the regulatory side, its members impress with the completeness of their command of the issues, including the regulation of behavioral advertising practices, of online marketing, and of issues relating to dietary supplements. Its litigators are similarly well versed and draw praise for their adroitness in direct response and new media-based advertising cases. The team's impressive client roster includes Johnson & Johnson, Verizon Communications and Marriott International.

Commercial Awareness: "Venable is a firm of top-quality lawyers who take the time to understand my business and my needs. When it comes down to it, no law firm I have found understands my industry like Venable does."

KEY INDIVIDUALS Roger Colaizzi is "tenacious and smart and just the best there is when it comes to advertising litigation." He cochairs the firm's national IP litigation group and is noted for his mastery of Lanham Act false advertising cases. Jeffrey Knowles is the chair of the advertising, marketing and new media practice, and hailed as one of the nationwide leaders in direct marketing issues. Clients believe that "Jeff's understanding of both the law and the business of marketing sets him apart from almost every other attorney in this space," and peers concede that "his knowledge, creativity and energy are unmatched." Knowles is one of the lead counsel to a number of prominent trade associations and companies with regards to post-transaction marketing practices, and led a group of Venable attorneys who ensured that Senator Rockefeller's Restore Online Shoppers' Confidence Act passed without the inclusion of onerous language affecting continuity marketers. Todd Harrison enters this year's rankings having earned significant praise from clients: "He is a trusted adviser – we can speak to him in plain terms, and he gives us straight answers that help us make quick and decisive business decisions." Harrison's practice is principally focused on issues relating to the marketing of foods and dietary supplements.

THE FIRM Winston & Strawn's advertising, marketing and entertainment law group provides clients with a full-service advertising offering. The group draws its client base from a variety of industry sectors, and offers a panoptic coverage that includes promotions law, sponsorship, new media law, privacy law, and IP and advertising-based disputes. The team was recently successful in representing Office Depot in two separate false advertising cases against its competitors before the NAD.

Sources say: "A strong regulatory team."

KEY INDIVIDUALS Brian Heidelberger is the lead contact at this team and has taken on chairmanship of the group following the retirement of Steve Durchslag.

Nancy Felsten of Davis Wright Tremaine LLP advises a broad range of advertising agencies and corporate entities on their advertising, marketing and promotional concerns. Andrew Lustigman of Olshan Grundman Frome Rosenzweig & Wolosky LLP earns exceptional praise from clients, who avow that "he's the one guy in the industry I'd go to. Every single issue in advertising, compliance, litigation, whatever – he does it all, and he does it well." His practice particularly emphasizes sweepstakes and competitions-based issues. Adam Solomon, also of Olshan Grundman, is praised for his expertise in sweepstakes and contest laws.

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7 June 2012: Launch of Chambers USA 2012


17 September 2012: Chambers Latin America Awards for Excellence 2012, Miami


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