Cutting an exclusive deal with Santa . . .

IN THE spirit of the season, we pose the question: Does anyone own ‘‘Santa Claus’’? More specifically, can you use Santa Claus to advertise or promote your business?

Is ‘‘Santa Claus’’ subject to copyright, has he been trademarked or is he the subject of a patent? Are you allowed to display a picture of Santa Claus in your shop window during the festive season?

Can you play Santa Clausthemed songs in your store to get prospective purchasers into the Christmas spirit? Can you sell Santa Claus products without fear of receiving a cease and desist letter?

Businesses have protected their intellectual property rights in a variety of Santa Claus products and brands throughout the world. The UK company Father Christmas™ Limited owns, according to its websites, trademarks in the UK and US for ‘‘Santa Claus’’, ‘‘Father Christmas’’ and (the slightly spooky) ‘‘Cyber Santa’’. A search of the UK and US trademark registers shows that ‘‘Santa Claus’’ is registered as a trademark in respect of online retail stores, beer, hard cider, trading cards and live ornamental plants.

There are a number of patents registered in the UK and US for inventions featuring Santa Claus. For example the Santa Claus Sensor, the Bubble Blowing Santa Claus and the Kit for Simulating a Visit by Santa Claus.

In this country, you can use the new ONECheck facility to search the availability of Santa Claus as a company name, domain name or trademark – see www.business.govt.nz/onecheck. A search shows that Santa Claus Limited is available as a company name and that there’s no registered trademark for the words ‘‘Santa Claus’’ on the New Zealand register.

So does this mean you can use Santa Claus in your business? Let’s look at a few situations.

You’ve found a picture of Santa on the web and want to use it on your business home page or in a window display. Beware. Merely because the image may be downloaded, doesn’t mean there is no copyright in that particular image. Before copying, printing and/or using the image, check that you have the right to do this. Some works on the web are available under ‘‘free licences’’, but don’t presume this is the case.

You’d like to play Santa-themed songs in your store to jolly up the festive atmosphere. In New Zealand, musical works, the lyrics and the sound recordings are automatically protected by copyright on recording. Unless you’ve permission from the copyright owner, the copyright has expired or you have a licence to play the songs from a licensing body (such as the Australasian Performing Right Association), it’s likely the rights of the copyright owner will be infringed. Merely purchasing the songs doesn’t mean you are the owner of the copyright in those songs.

You intend to manufacture and/or sell a new Santa Claus themed widget. Before manufacturing or selling any new product, do some background research to see if there are any patents, designs or trademarks which are the same or similar to the new product. Engaging in background research is good practice and could save you from defending against a potential infringement claim.

Clearly the festive season prompts businesses to want to own rights to Santa Claus in various ways, and, in doing so, create an asset from which they hope to earn a profit. Perhaps, however, it’s children (both young and old) who truly own ‘‘Santa Claus’’. Although, some intellectual property lawyers may wish to argue otherwise. Shelley Slade-Gully is an associate in Hamilton law firm Norris Ward McKinnon. Information in Your Law is no substitute for legal advice.