Clowning Around and Reheating the Breakfast Wars
Taco Bell has joined the breakfast wars through the launch of its first breakfast menu. Taco Bell’s initial maneuver in this ongoing battle for breakfast customers takes direct aim at McDonald’s iconic breakfast menu. Taco Bell’s television commercials feature individuals named “Ronald McDonald” attesting to their “love” for “…Taco Bell’s new breakfast.” These commercials include the disclaimer: "These Ronald McDonalds are not affiliated with McDonald's Corporation and were individually selected as paid endorsers of Taco Bell Breakfast, but man, they sure did love it." The three versions of this television commercial are available here, here, and here.
Many viewers respond with a common inquiry: “Can Taco Bell do that?” Taco Bell’s reference to McDonald’s trademark-protected clown mascot and slogan (I’m Lovin’ It®)—as well as the thematic structure of these commercials—raise interesting questions under trademark and copyright laws.
Trademark laws permit companies to use their competitors’ trademarks in advertising under limited exceptions. For example, the use of a competitor’s trademark may be necessary to differentiate products or services. This is known as comparative advertising, which may be protected from trademark infringement and dilution claims under the rubric of “nominative fair use.”
Nominative fair use permits the unauthorized use of a competitor’s trademark in advertising, provided that such advertising does not contain misrepresentations, does not imply any endorsement or sponsorship by the trademark owner, there is no easier way to refer to the owner or its products, and only so much of the trademark is used as is needed to identify the trademark owner. These considerations with comparative advertising and nominative fair use are relevant to false advertising claims, which we addressed in a recent post.
McDonald’s responded to Taco Bell’s television commercials with a social media campaign, including a Facebook post with a picture of the Ronald McDonald® clown petting a Chihuahua, Taco Bell’s former mascot, and the caption: “Imitation is the sincerest form of flattery.” McDonald’s clever retort in place of legal action prevents a formal exploration of whether Taco Bell’s commercials fall within the permissible scope of nominative fair use. Nonetheless, Taco Bell’s commercials and the McDonald’s response serve as valuable reminders to all retailers that advertising campaigns must be vetted thoroughly so that the appropriate business units can weigh the potential risks and benefits.
Taco Bell’s television commercials also raise interesting copyright questions. Other companies have used the thematic structure of average-citizens-with-famous-names in commercials. In 2012, the sports network ESPN featured the pitfalls of an individual with the name “Michael Jordan” in a SportsCenter campaign (available here). Notably, in 2002, the fast-food chain Jack In The Box featured a commercial in which the “Jack” mascot delivered a burger to an individual named “Ronald MacDonald.” This commercial ends with the mascot stating: “Now my burgers are so good, even Ronald MacDonald likes them.” The similarities among these commercials can be analyzed under copyright laws.
Copyright protects original works of authorship, including television commercials and other forms of advertising media that feature literary, artistic, or musical content. Copyright does not protect ideas or concepts revealed in written or artistic works. Rather, it protects the way in which such things are expressed, i.e., the end product. Courts have explained that the essence of copyright infringement lies not in copying a general theme, but copying the particular expression of a general theme through similarities of treatment, details, scenes, events and characterization. The demarcation between ideas themselves and the tangible expression of those ideas is amorphous and requires a fact-intensive analysis.
Here, the similarities between Taco Bell’s commercials and its predecessors’ commercials raise interesting copyright questions. If Taco Bell’s commercials were challenged, a court would have to compare the style, structure, and other expressive elements of these television commercials to determine whether there are similar general themes or if actionable copyright infringement may exist. At the very least, this should remind retailers that they must be attuned to copyright and other intellectual property issues throughout the creative process of developing marketing and advertising strategies.