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Saturday, 24 December 2011

'Twas the night before Christmas.co.uk ...


Santa Claus has come a long way since the start of the internet era
'Twas the night before Christmas and not a creature was stirring.  Well, maybe just the odd IP lawyer. Christmas is up for sale.  At least the domain name Christmas.co.uk is up for sale, according to a report in this week’s Financial TimesThe same report highlighted a business run from the website www.santa.co.uk, which offers greeting messages from Father Christmas and -- according to the FT -- does extremely well on it.  What is interesting from an intellectual property point of view is that the owner of this site also owns UK trade mark registrations for FATHER CHRISTMAS and for CYBERSANTA.  Indeed a quick (and fairly cursory) look at the UK Intellectual Property Office database reveals that there are a huge number of registrations for marks containing or consisting of SANTA CLAUS and FATHER CHRISTMAS.

Is this therefore a trap for the unwary business which sends out its festive greetings, making prominent use of these well known terms?  This is unlikely for a number of reasons, including the following;

  • Many of the registered trade marks are fairly intricate device marks or contain significant amounts of other text.  There is therefore unlikely to be sufficient similarity between these marks and the signs used by most businesses;
  • Many of the trade marks are for fairly esoteric goods and services and/or specifically include goods relating to “Father Christmas”. Again therefore similarity is likely to be a hurdle;
  • Validity: given the widespread and very generic use of names such as “Father Christmas” and “Santa Claus”, any attempt to register a mark which claims a monopoly over the use of these words for use on festive type goods or services is likely to fail or be hopelessly invalid.
Additionally any such infringement action against the use of festive terms such as SANTA CLAUS or FATHER CHRISTMAS would be unlikely to even get off the ground because the use of these signs in a Christmas card or other festive greeting would not be liable to affect or be liable to affect one of the essential functions of a trade mark following the reasoning of the Court of Justice of the European Union in Case C-206/01 Arsenal v Reed. 

Similarly an action for passing off on the same facts is highly unlikely to succeed because even in the unlikely event that a relevant and meaningful goodwill be proved, the hurdle of showing an actionable misrepresentation is likely to be virtually insurmountable where the use is simply “ordinary festive” type use on a Christmas card.

Would Coke run this ad today? Or would
the implication that it contributed to obesity
in the elderly be a matter of concern?
Of more serious concern to businesses sending out Christmas cards and the like is the use of images, symbols and other characters which are owned by third parties.  For example many large companies promote their brand by making full use of seasonally themed character images that are universally associated with their brand.  Some well known examples include; Coca-Cola’s ‘Santa Claus’ character and Disney characters dressed in Santa Claus and elf costumes.  These images are likely to be protected by both trade mark rights and copyright.

Numerous representations of the cartoon character Mickey Mouse are registered as trade marks and the extent of Disney’s reputation and goodwill in those marks is likely to give it every chance of success in trade mark infringements even if (as is likely to be the case) the registrations are not in completely relevant classes and similarly the fact that the image used is slightly different to the ones registered is unlikely to be insurmountable.  Indeed the trade mark use argument, i.e. that the use of the image on a Christmas card is not affecting or liable to affect the essential functions of the trade mark, will also be difficult to run in this scenario.

A passing-off action is also likely to succeed with goodwill/reputation in such cases almost a given and the misrepresentation being perhaps found in the fact that it will be assumed that the owner of the cartoon has endorsed the particular cards or business.

Even more difficult for the company who uses the image of a cartoon character on its festive greetings message will be copyright infringement. Assuming the cartoon character is still in copyright and the proprietor can establish ownership there is likely to be an irresistible inference of copying if the cartoon character is reproduced in any way. None of the obvious fair use type defences are likely to apply to use of an image on Christmas cards and it is unlikely that an incidental inclusion type argument would work in this context.

The real trap for the unwary is however in the use of images, symbols and characters that are not that well known as it seems unlikely that many businesses will decide to make use of Disney characters or other well known cartoon characters without first seeking the approval of the relevant proprietor. Indeed, this is where the real potential problem lies. 

It can be difficult to pin a Santa image to any
specific earlier IP right
Trade mark rights (registered or otherwise) may be a problem in this scenario.  Registered trade marks can of course be searched although it is notoriously difficult to search for a pure device mark. Passing-off type rights are more difficult although with both unregistered and registered trade mark rights the risk of infringement will generally decrease the less well known they are.  Arguably it will only be the use of marks that belong to businesses in broadly the same area (and/or which are registered for goods/services in broadly the same area) which will be of most concern here and therefore taking simple precautions such as ensuring that images and the like that belong to a business in the same or related field are not used will at least decrease the risk of a problem.

Potentially more problematic however is copyright infringement. Broadly speaking, and as briefly discussed above, if you use someone else’s copyright work on your Christmas message then that will be copyright infringement and it is difficult to think of any complete defences that will apply, although there may be arguments about knowledge in some circumstances.  Therefore, unless the business commissions a fresh piece of artwork for its Christmas message, licences the right to use an existing piece of artwork or takes care to select artwork which is sufficiently old not to be protected by copyright, there will always be a real possibility of copyright infringement.  Indeed most images that one finds on the internet are likely to be the copyright of someone and it may therefore simply be a question of waiting to see whether the copyright owner finds out and then whether he or she decides to take action.

Other than all that…..MERRY CHRISTMAS!


This item was kindly written for the IPKat by Nick Phillips (no relation), who heads the IP practice at Barlow Robbins LLP.

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