11.08.2011

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Updates

The winter holiday season poses high sales potential for most retail companies.  Your designers and marketing groups are likely already hard at work developing products and advertising campaigns to take advantage of the season and its opportunities.  That's great!  But this is also a good time to remind yourself and your design and marketing personnel to ensure that your products and advertising do not infringe on someone else's intellectual property (and that no one is violating your IP rights!).

The winter holidays are brimming with well-known symbols, stories, music and expressions.  But what can you use freely (and how can you use it), and what may require a license?  The answers invoke fundamental principles of copyright and trademark law as well as many of their unique exceptions.  The bottom line is, before investing in products or advertising for a winter holiday theme (or any holiday or seasonal theme for that matter), make especially sure that you have considered and cleared any issues related to IP rights.

The first question is always:  Are there protectable rights at issue, and does anyone else already own those rights?  Take Santa Claus for example.  Assuming, for argument's sake, that Santa Claus does not exist (and therefore setting aside potential publicity rights and personal privacy rights issues), are there any protectable rights in Santa Claus?  If so, who (if anyone) owns those rights?  Copyright law has recognized protectable copyright interests in unique characters.  Hence, there could be protectable copyrights at issue in Santa Claus.  However, copyrights do not last forever.  The Santa Claus character (as recognized in contemporary Western society since at least the late 19th century) has been around for so long that any copyrights in Santa Claus' traditional characteristics once held by the original creator would have passed into the public domain and are not owned by anyone today.  But that may not be the case with all familiar holiday characters.  (What about the infamous "Grinch"?  Does the Geisel family (Dr. Seuss' family name) continue to own the rights to this merry character or does he now belong to someone else or to everyone?)

Moreover, even if Santa Claus or your seasonal character of choice is in the public domain, does that mean you can copy any and all depictions of that character at your whim?  Make sure you check.  Don't let your company's holiday be ruined by a faulty assumption that results in a restraining order against your holiday advertising campaign.

Sticking with the Santa Claus example, whether you can copy depictions of the Westernized character is answered both yes and no.  Courts have pragmatically treated Santa and similar memorable holiday symbols as hybrids.  As is well known, copyrights do not protect ideas.  Consequently, characters that portray only an idea or little more than an idea are not protectable.  Within the context of characters, cognizable stereotypes and stock characteristics are classified as mere ideas and are typically unprotected.  In Santa’s case, the Western image of a jolly, rotund, elderly gentleman, wearing a red suit and floppy cap with white trim, and a black belt and boots, was determined by a federal court to be unprotectable because these characteristics were considered stereotypical elements of the Santa character.  Beyond these stock qualities, however, an individual expression of Santa may contain protectable features.  For example, the same federal court found, among other things, that the specific shape of Santa's head and mustache, the shape and color of his lips and nose, and the rounded boots on plaintiff's Santa tree ornament were protectable expression.  So you can use Santa in holiday products or advertising, but make sure the details of your Santa do not bear substantial similarity to individualized features of someone else's Santa.  If your interpretation of Santa too closely resembles another's depiction, you may face a lawsuit and motion for a preliminary injunction on copyright grounds and trade dress claims as well.

For example, in one case the plaintiff claimed that defendant's poseable Santa dolls violated copyright and trade dress of plaintiff's Santa dolls; however the court found a lack of substantial similarity sufficient for copyright infringement because defendant's dolls were half the size, had a different face, and had varying details, including different outfits and unique props, such as a list and pencil, a book of carols, a reindeer, etc.  As to the trade dress claim, the court found that the shapes of the face, beard and eyebrows were nonfunctional and therefore could collectively be entitled to trade dress protection, but that plaintiff had failed to establish that those features were sufficiently associated with the plaintiff by consumers (secondary meaning) to succeed on a trade dress claim.

Looking beyond Santa Claus, despite potential defenses (including the fair use, scènes à faire and merger doctrines), other "traditional" symbols of the season can form the bases for IP infringement claims.  Examples include:

  • A case that addressed greeting cards with holiday designs of "Wreath With Verse," "Pencil Sketch Farm," "Colored Presents," "Ribbon of Flags Around Globe," "Three World of Thanks Globe Ornament," and "Thanksgiving Cart," in which there was a finding of substantial similarity to uphold copyright infringement liability.
  • A decision that defendant's use of a pine tree shape did not infringe plaintiff's mark because the shape of the product referred to the scent of the product and the Christmas season, which were descriptive uses.
  • A finding that there was a genuine material issue of fact as to substantial similarity of plaintiff's and defendant's Christmas tree-shaped pins, which could result in copyright liability.
  • A court determination that plaintiff had a legitimate proprietary interest in his public personality, "Mr. New Year's Eve," which he had spent 40 years cultivating, and therefore the combination of New Year's Eve, balloons, party hats and "Auld Lang Syne" amounted to exploitation of that personality that might be entitled to protection.
  • And finally, last year's winter holiday was not very merry for the parties embroiled in a copyright infringement lawsuit over alleged unauthorized use of the popular holiday tune "Grandma Got Run Over by a Reindeer."

Take the time to make sure that your company is on the nice, not the naughty, list this season.

 

© 2011 Perkins Coie LLP


 

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