Santa Claus is a beloved figure around the world who is associated with the holiday season. While many people now associate Santa with the commercialization of Christmas, the origins of Santa Claus can be traced back to European folklore and traditions. The story of Santa Claus has evolved over time and has become a part of global culture. The law provides rights to creators and owners of certain images: copyright and trade marks can provide protections for creative ‘works’, and commercial ‘signs’. The idea of Santa has had many interpretations, so how can depictions of Santa be used by some and not others, when Santa belongs to us all?
Copyright
Under the Copyright, Designs and Patents Act 1988, creators can benefit from copyright in their ‘works’, which restricts anyone else’s use of those productions. In order for something to gain copyright protection, it has to:
- be a type of work listed in the 1988 Act, such as literary works, artistic works, or sound recordings etc.;
- be original, meaning it has to originate from someone’s intellectual creativity; and
- be ‘fixated’, meaning it has to be recorded in a permanent or semi-permanent way.
Copyright does not need to be registered in the UK and is granted as soon as a work is created. So, if someone created a painting of Edinburgh Castle, they could stop someone else from using that painting, or license its use immediately.
What if someone else makes a painting of Edinburgh Castle at exactly the same time, from the same angle, using the same materials? In that case, a separate copyright in that painting would also exist. Copyright protects the expression, not the underlying idea. Even in very similar circumstances, each artist will have used independent judgement to create each painting.
How does this apply to Santa? Because the underlying idea of Santa is part of our cultural heritage an artist could not stop another person from benefitting from their own intellectual creations that use the elements commonly associated with Santa. However, they could stop someone from using a substantial part of the artist’s intellectual creation. The Coca-Cola company has famously used the image of a jolly, red-suited Santa Claus drinking Coca-Cola in its advertising campaigns since the 1930s. When the ‘Coca-Cola Santa’ was created, copyright subsisted in that specific version. There has been separate copyright in each illustration created by Coca-Cola since then. If someone uses a ‘substantial part’ of any of the Coca-Cola Santa depictions to create another image, that qualitative similarity could infringe Coca-cola’s copyright. If they poured their own creative endeavours into an illustration of Santa, even if it turned out as a jolly, red-suited man with a white beard, there is no causal link between the Coca-Cola Santa and their own, so no infringement of Coca-Cola’s copyright. This causal link means that the idea of Santa can be more easily reproduced than other illustrations. It is not likely that someone could prove that they independently came up with a painting that happens to look the same as one created last month; It is far more likely that someone independently create an illustration based on the idea of a character that has been around for centuries. However, that public knowledge could have an opposite and more restrictive effect in trade mark law.
Trade marks
Words or images associated with Santa Claus can also potentially be protected under the Trade Marks Act 1994. Unlike copyright, trade marks can be registered. Not all trade marks will be accepted for registration by the regulator, the Intellectual Property Office. A trade mark has to:
- be a ‘sign’ (which includes words and/or images);
- be capable of being represented graphically; and
- be capable of distinguishing the goods or services of one business or organisation from those of another.
Trade marks are useful tools to signal the origin of a product. They can be extremely valuable commercial assets. Some trade marks are recognised across the world. Coca-Cola’s registration of their Santa as a trade mark means that it could stop third parties from using a confusingly similar image of Santa in respect of similar or identical goods. Coca-Cola’s interest is in people having a good opinion of its offerings, which could be damaged by lower quality products being tied to their brand. It also has an interest in its marketing strategy promoting values, such as Santa’s representation of generosity and the spirit of giving. Competitors could freely benefit from Coca-Cola’s marketing expenses if Coca-Cola were not able to control the branding they associate with those values.
That does mean that another business could use another version of Santa to promote their goods or services. In order for a trade mark to be registered, it will be examined by the IPO to ensure it is capable of registration. The use of an identical or similar mark for an identical or similar product could be prevented from being registered if challenged by the existing owner.
So, a beverage company which tries to trade mark Santa Claus would have to make sure the image they use is not similar enough to give consumers the impression that they are associated with Coco-Cola. The fact that the ‘Coca-Cola Santa’ has become so synonymous with Christmas makes this all the harder, and in fact, increases the value of the trade mark itself.
However, a legal services company which also tries to trade mark an image of Santa Claus would not have to contend with the same level of consumer awareness, as the possibility of people confusing their legal services with a soft-drink is lower.
Despite the potential legal complexities surrounding the ownership of specific versions of Santa Claus in the UK, it is clear that the idea of the character has become a global cultural icon that belongs to everyone. The story of Santa Claus has been passed down through generations and has been adapted and reinvented by various cultures, communities, and companies. It is that reach that companies can try to leverage with copyright and trade mark law.
How can Thorntons help?
If you or your business would like to discuss protecting the works or branding you use, get in contact with our specialist Intellectual Property team on 03330 430350 for advice.
