Know Your Rights – Don’t Let the Grinch Steal Your IP!

By Patrick B. Monahan

Intellectual property rights are important but often overlooked business assets. Every operating business will generate some type of intellectual property, and legal protection is available through options including copyright, trademark, patent, and trade secret. Knowing what these rights might be is an important step to making sure those IP rights are protected. As an example, let’s consider a “business” currently at the peak of its busy season – Santa’s workshop – and what overlooked IP rights there may be.

Copyrights: A copyright protects the creative expression in a work and gives the owner an exclusive right to copy and display the work, make derivative variations of it, and authorize others to do the same. Every year Santa’s elves make thousands of different toys and many aspects of a toy can be covered by copyrights. The graphic designs on a board game (art), the look of a doll (sculptural work), and the software in a programmable device are all things subject to copyright. While toy designs from the early to mid 20th century have likely fallen into the public domain, copyrights in newer original designs, or derivative variations of old designs, would be copyright eligible.

Trademarks: A trademark is a word, design, or combination of these that serves to identify the source of particular goods or services. Trademark rights can be enforced against others who later start using the same or similar mark in a way that can confuse customers. Santa is known by a variety of names, including Santa Claus, Father Christmas, St. Nicholas, Saint Nick, and Kris Kringle. Each of those names could potentially be eligible for trademark protection if they are used in connection with the goods and services provided. Toys could be branded as coming from “Santa’s Workshop”. In the off season, Santa could market his sleigh and reindeer as an express delivery service. Trademarks don’t have to be brand or product names, they can also be slogans or taglines. For example, children (and former children) have come to associate “HO HO HO!” with Santa and this could also be subject to trademark protection.

Patents: Patents protect new and non-obvious inventions and give the patent owner the right to exclude others from practicing the covered invention. Utility patents cover machines, processes, or manufactured items. Design patents cover ornamental designs of or applied to a manufactured item. There are many inventions associated with Santa, from flying sleighs, to improvements in manufacturing toys, to new toys themselves. A patent must be filed within one year of public use. Santa has publicly used his sleigh for centuries, ruling out patent protection on the existing flight technology, but any future new and non-obvious upgrades to the sleigh’s functionality or ornamentation would be protectable, provided a patent application is filed on or before the next Christmas Eve (assuming Santa is willing to disclose the details to the public in the patent filing). Inventions made with future toy designs can also be eligible for patents, with utility patents covering technical aspects and design patents covering how the toys look.

Trade Secrets: A trade secret is information that gives a business an advantage over its competitors because they do not have that information. Trade secrets must be protected by reasonable efforts to maintain their secrecy. This is Santa’s sweet spot. The mysterious techniques Santa uses to manufacture presents for children all over the world and deliver them all in one night, out of one sack, likely make even Amazon green with envy, but since Santa is not telling, they are trade secrets. Another example is the Naughty and Nice List. Companies could use the list to identify parents of nice kids and parents of naughty kids and send them advertising accordingly. Every child would love to be able to check their status and, if needed, get back in Santa’s good graces, but they have to wait until Christmas morning to find out, making that information a trade secret.

Based on what we know about Santa (and a brief search of court records), we can assume he is not particularly litigious. That said, infringers whose hearts don’t grow three sizes should still prepare for coal in their stockings. Even if Santa himself doesn’t sue, he could still rely on the Krampus to go after misbehavers.

The best way for any business owner to understand and protect their IP rights is to consult with counsel – if we can be of any assistance, do not hesitate to contact us! In the meantime, Happy Holidays!