Zorro vs. M&Ms: A Dumb Lawsuit, but a Reminder That You Must Own What You Advertise
Zorro Productions Inc.'s lawsuit against ad agency BBDO and Mars for dressing an M&M in a Zorro costume without its permission is yet another reminder that ad agencies must be absolutely sure that they legally own the ideas they're placing into ads.
It's a simple concept -- and yet folks in the ad biz get it wrong all the time.
BBDO and its parent company, Omnicom (OMC), have a bit of a history with this so you'd think they'd know better by now. BBDO has been sued for using other people's ideas in its ads for Chrysler's Dodge Ram and Adidas. Omnicom's TBWA/Chiat/Day unit was sued -- but found not liable -- for using a chihuahua in Taco Bell's ads in the 1990s. The client was left on the hook for $42 million in that case (the dog was someone else's idea that Taco Bell stole).
Elsewhere, Saatchi & Saatchi borrowed some photographs from Flickr without the permission of their owners for a Toyota web site. And American Apparel settled with Woody Allen over an ad that used his image as a parody on a billboard.
Like BBDO, Mars has no excuse here either -- it was sued by Times Square's Naked Cowboy for dressing an M&M in his costume, and the cowboy won a settlement.
The Zorro suit sounds ridiculous at first. It cites a Halloween ad for M&Ms in which an M&M appears in a flat Cordoba hat, black mask and cape -- his Halloween costume. But Zorro isn't a folkloric story, like the Easter Bunny or Santa Claus, that anyone can own. It's a piece of fiction owned by a company, and to use its images you need licensed permission. If you've ever dressed as Zorro at Halloween, the tag in the back of the costume ought to carry the trademark Registration No. 2,401,205, but I'm guessing that's probably not your top priority on Halloween. (Ladies, whether the "sexy Lady Zorro" costume is an infringement has yet to be decided by the courts.)
The bottom line for agency creatives is that if you're putting it into any kind of ad, it must either be absolutely original to you or you must have the permission of the person or company who created it. This concept becomes slightly tricky when your original idea relies on someone else's idea -- i.e. you've created an idea about an idea. Which I suspect is why BBDO failed to get Zorro Inc.'s permission in this case -- having created an absolutely original Halloween M&M's ad, no one realized that the costume was based on someone else's intellectual property.
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