Outdoor advertising and intellectual property

By Victor Nzomo

A variety of intellectual property rights subsist in and protect works in the constantly evolving outdoor advertising industry.

Businesses often spend much time and money to create a successful advertising campaign. It is important to protect your intellectual property assets, so that others do not unfairly copy or free-ride upon your innovative creations.” – Lien Verbauwhede, World Intellectual Property Organization

Like in many parts of the world, the advertising sector in Kenya is the new battle-ground upon which businesses compete to creatively and uniquely pass on relevant information to customers so as to facilitate and positively influence their buying decisions. It is generally agreed that for an advertisement to be effective, it must first get noticed, and then be remembered long enough to persuasively communicate the unique selling proposition of a product or service, so as to make potential customers into actual ones. Outdoor advertising, in particular, is considered a cost effective way of giving messages the maximum exposure. Outdoor advertising includes billboards, outdoor signs, printed messaging, street banners, posters, brochures etc.

There has been a steady increase in the number of creative new outdoor advertisements by both medium-sized and large companies leading to a surge in the number of billboards along streets and highways in urban areas. Billboards appear to be by far the preferred medium for outdoor advertising. There are several types of intellectual property (“IP”) rights that are involved in billboard advertising. For instance, most of the creative content on the billboard (text, images, art, graphics, lay-out) may be protected by copyright along with any advertising slogans which may also be protected by trademark law.

In addition, industrial design law may be crucial for protection of billboards. Industrial designs cover the three dimensional form of billboards provided that such form gives a special appearance to a product of industry and can serve as a pattern for a product of industry. In the case of ENG Kenya Ltd v Magnate Ventures Ltd (2009), both the plaintiff and defendant carried on business in the outdoor advertising sector and the plaintiff alleged that the defendant had infringed on the plaintiff’s design for ‘suburban signs’. The court held that the registration of the plaintiffs’ design at the Kenya Industrial Property Institute (KIPI) was proof enough that the design was unique and capable of registration. The plaintiff could therefore claim exclusive right to the design. The court further stated that the defendant had copied the plaintiffs’ design in bad faith.

For printing and branding companies, it is important to be conscious of IP issues that may affect their various advertising solutions provided. In this regard, the case of Alternative Media Ltd v Safaricom Ltd (2004) is instructive. The plaintiff, who is in the business of advertising, graphic design and media communication solutions, sued the defendant claiming copyright infringement of the plaintiff’s design that it had submitted to the defendant as a proposal to be used on prepaid airtime scratch cards. The court held that the defendant had indeed infringed on the plaintiff’s rights under copyright law because the design they used on their airtime scratch cards was substantially the same as the one submitted by the plaintiff to them as a proposal.

Another interesting area of outdoor advertising is transit advertising or media. As an example, projects which involve advertising fused with custom-made audio and audio-visual content that play in public service vehicles (PSVs) countrywide, as well as other public places including supermarkets, malls, banking halls, bars, clubs and restaurants, to name a few. Apart from that, there are also promising innovations such as LCD displays that display scrolling advertisements and are installed in PSVs. These LCD screens are fitted with global positioning system devices and the advertisements are programmed to be location specific. This means that it is possible to program a commercial on a supermarket to run when the PSV is within its proximity, which will broadcast special offers, promotions and goods available. Although geo-local transit advertising may not meet the threshold of absolute novelty required for patent protection in Kenya, there may be other aspects of this innovation that may be eligible for patent or industrial design and utility model protection.

About the author

Victor Nzomo
Victor is a qualified Kenyan attorney who has studied and worked in Kenya, South Africa and Switzerland. His specialties are intellectual property (IP) and information technology law. Victor is a Research Fellow at Strathmore University’s Centre for Intellectual Property and Information Technology Law (CIPIT) and a member of the Creative Commons (CC) Kenya Public Lead Team. Victor is also a co-founder of IP Assets Consulting, a specialist firm providing a range of IP-related professional services to both private- and public-sector clients, including IP registrations, training and mentoring, and advice on asset management and enforcement. He may be reached at victor[at]ipassetskenya.com.