In order for a product to feature lawfully in audiovisual media, the placement must not affect the editorial freedom of the service provider, must not directly encourage the purchase and must be correctly identified.

Several years ago, we wrote about the major headaches faced by creative teams in the film industry when using third-party trademarks in the films, series and programs they produce: ‘Can my characters casually drink a beer on the beach without prior authorization from the trademark owners? Can they drive their new sports car to reach that beach without first having to stop by the factory to ask for permission?’

In that article we explained that although Spanish Law 17/2001, of December 7, on Trademarks, does not specifically address ‘incidental’ uses, there are legal arguments to support the idea that the use of registered trademarks in an audiovisual production does not infringe the owners’ rights – provided they appear incidentally or as part of the atmosphere.

However, we concluded that article by raising the opposite scenario: What happens that particular bear trademark appears in every single scene of the film, to the point where we wonder how the main characters maintain such perfect physiques with that daily alcohol consumption? Or when, upon reaching the beach, said characters excitedly comment on the wonderful journey they had thanks to their amazing new sports car, and proceed to list its merits and virtues?? In short, what happens when the trademark appears repeatedly and features prominently on the screen, even with the owner’s consent?

In this scenario, we could be dealing with a case of illicit product placement and surreptitious advertising.

Article 129.1 of General Audiovisual Media Law 13/2022, of July 7 (LGCA), defines product placement as ‘any form of audiovisual commercial communication that includes, features or refers to a product, service or trademark in such a way that it appears in a program or in a user-generated video, in exchange for remuneration or similar consideration.’

Article 129.3 also sets out the legal requirements that the product placement must meet, that is:

  • It may not influence the editorial content, the organization of the scheduling or the catalog, in such a way as to affect the responsibility and editorial independence of the media service provider;
  • It may not directly encourage the purchase of the products or include specific references to those products;
  • The products may not be given disproportionate prominence;
  • Viewers must be made aware of the use of product placement at the start, at the end and after a break.

Requirements (ii) and (iv) are understandable and not particularly difficult to implement, but requirements (i) and (iii) are more problematic: What does “editorial responsibility” mean? When is “editorial independence affected? And what does “undue prominence” mean?

The first question has an easy solution, as the LGCA itself defines ‘editorial responsibility’ as the exercise of effective control both over the selection of the programs and over their organization, whether in a programming schedule or a program ‘catalog (article 2.2. LGCA); ‘editorial independence’, on the other hand, is not defined.

When is “editorial Independence” considered compromised? Specialized doctrine holds that it is affected when the presentation of a product, service or trademark is not naturally integrated in the editorial content. In other words, it occurs when the editorial content is created or distorted in such a way that it becomes a pretext or mere vehicle for presenting the trademark, service or product (Sánchez Ruiz).

The Spanish courts have established a series of criteria to discern whether a program’s editorial content has been distorted by the placement of a product, service or trademark. Notable among these criteria are: (i) the relationship (or absence thereof) between the product and the action in the program in which it is inserted; (ii) the frequency of appearances; (iii) their duration (each one and if several, the total duration); and (iv) the prominence given to said product, service or trademark (e.g., Decogarden case).

In this regard, the National Appellate Court concluded in the Velvet/Coca-Cola case that the frequent appearance of the Coca-Cola bottles in the Atresmedia series was not unlawful, as the product placement was done naturally, without affecting the normal development of the plot. Although the bottles featured in several scenes and played a prominent role (serving as the means by which the protagonists communicated secretly), the court held that, within the overall context of the series, their use could not be deemed excessive, since (a) the bottles only appeared in three of the fifty-five episodes, and (b) their presence was limited to a few minutes in each of these episodes.

Conversely, this same court ruled in the Amantis case that the appearance of Amantis’ erotic products in the series La que se avecina did not meet product placement requirements. Instead, the court found a ‘clear advertising purpose, with the risk of misleading consumers, subtly and unconsciously leading them to purchase Amantis products’. Among other reasons, the court noted that, during a segment occupying twenty percent of the episode, the main characters not only handled a wide variety of Amantis products —praising them and even identifying one as the ‘star product’— but also browsed and exchanged a catalog of the brand, commenting on the extensive range of offerings. To make matters worse, the characters opened, closed and carried around a suitcase bearing the Amantis trademark; mentioned the website where the products are sold, and carried bags displaying this same website.

In light of the above, we can conclude that, when considering a product placement, it is advisable follow Mies van der Rohe’s legacy and apply the principle ‘less is more (safe)’; that the service, trademark or product in question should feature in a natural, discreet, and unobtrusive manner. In essence, the ideal product placement should emulate Harry Potter and stay in its bedroom, making no noise and pretending that it doesn’t exist.

Fernando Álvarez de Toledo

Garrigues Intellectual Property Department