Father Christmas, his workshop and the risk of IP infringement
In recent months Santa Clause has received a large number of letters from requesting various toys for Christmas. However, if he’s not careful, it’s possible that in January he could receive a different type of letter, namely a cease and desist letter.
The problem Santa has is that children nowadays can be quite specific with their requests, I doubt very much that he gets many letters asking for a wooden train or a teddy bear (all of which his elves would be able to manufacture with ease) and instead he’s probably asked for a Barbie, something from Paw Patrol or life-sized Peppa Pig.
I don’t doubt the elves and their ability to manufacture such things, but the big man needs to be careful about what he delivers. Toys are big business, a quick look at my monthly bank statements can attest to that, and they each carry with them intellectual property rights. So, what to do? Should Saint Nick give up on the whole thing and retire to warmer climes? Luckily the answer to this is no, he just needs a bit of legal advice.
The law on IP infringement is essentially a line in the sand (or snow, as the case may be), it’s a point which, if crossed, has legal repercussions. But, if the law is respected, it’s perfectly permissible to be inspired by another product without actually infringing its IP.
In the interest of keeping my advice of FC brief (I know he’s got a lot on at this time of year), I will focus on the two IP rights which should cause him the biggest concern, namely registered designs and trade marks.
Registered designs, as the name suggests, are registered rights. This means that the owner has gone through an application process and secured a monopoly on their chosen design. In the context of a toy, this would be the shape of the toy and its surface decoration. To stay on the right side of the law, if Mr Clause is asked to produce a toy which is protected by a registered design (this can be checked in advance, and I’m sure one of the elves could be tasked with this research) he needs to make sure that what comes out of his workshop doesn’t create the same overall impression on the informed user as the registration. The informed user is someone who knows a bit about toys, not an average customer and not a complete expert, but somewhere in between. That hypothetical person needs to be able to look at the product in the workshop and not view it to be too similar in appearance to the registration. If that can be done, Kris Kringle is in the clear.
With regards to trade marks, unfortunately for Father Christmas, BARBIE, PAW PATROL and PEPPA PIG are all registered trade marks. Their registrations cover, amongst other things, the goods of toys in class 28 and so their use is a bit of a no no. Scribbling something like MARBIE on a doll is also not going to help him. An infringement claim can still be pursued if the marks are similar but not identical. On that basis, Santa is going to need to ask the elves to avoid trade marks altogether.
Of course, all of the above efforts may avoid a legal action against Mr Clause but he could end up with some confused children on Christmas morn, perhaps wondering if their letters actually made it to the North Pole. So, if he really does want to stick true to their requests then his best bet is to licence the IP that his elves are being asked to reproduce. Certainly it’s a more costly route for him but that would be preferable to a damages claim.
Hopefully the above was helpful and if anybody else needs some legal advice, the Easter Bunny for instance, please feel free to get in touch by emailing [email protected].
Written by Will Miles, Partner