MERRY CHRISTMAS TO ALL!!!

The complex rules of copyright and trademark law are designed so that creators of popular expressive works and companies marketing authentic branded products are properly protected. This Christmas, we’re looking at a series of rulings from U.S. federal courts on intellectual property (IP) issues involving holiday ornaments, public displays with light sculptures, as well as one of the most popular Christmas songs ever. These cases don’t simply show that a Santa Claus can be designed with non-generic copyrightable elements; they also show members of the U.S. federal judiciary working diligently to properly dispense justice on IP questions between the adverse parties arguing before them.

TRO Against 2019 Holiday Light Show Lifted Over Thin Scope of Copyright Protection

Source: Enchant Christmas

Canadian light show developer Enchant Christmas went skating on thin copyright during the 2020 holiday season when it sued former employees who created a holiday-themed light show in Nashville. According to court filings from the Middle District of Tennessee and the Sixth Circuit, those employees had previously approached Enchant about a Nashville light show with music festival elements, but Enchant declined. Those former employees include a light sculpture designer who admitted to using Enchant’s three-dimensional design files to solicit manufacturer bids for the Nashville show. After those employees independently developed that show, the Middle District of Tennessee issued a temporary restraining order (TRO) three weeks before it was scheduled to open to the public.

On November 13, 2019, U.S. District Judge Aleta A. Trauger issued a memorandum opinion explaining why the TRO was lifted and not converted into a preliminary junction by the district court. Applying the Sixth Circuit’s two-step test for determining the scope of copyright in expressive works including non-copyrightable elements, Judge Trauger noted that Enchant only possessed a thin copyright interest in lifelike animal sculpture and generic winter scenes. The Sixth Circuit agreed in a ruling the following May, denying Enchant’s appeal from denial of injunctive relief and finding that the district court did not err in determining the scope of Enchant’s copyright in its light sculptures.

Holiday Sales Saved by Proof of Actual Copying in Bubble Santa Christmas Ornament

Conversely, courts have recognized copyrightable elements in otherwise unprotectable Christmas icons like jolly old Santa Claus. Months before the 1995 holiday season, holiday decoration company Kurt S. Adler, Inc., obtained injunctive relief preventing home furnishing importer World Bazaars from marketing an infringing Santa tree ornament. The Southern District of New York issued a preliminary injunction in August of that year after finding evidence that World Bazaars actually copied protectible elements of a Christmas Bubble Santa ornament marketed by Kurt S. Adler.

Former U.S. District Judge Peter Leisure published an opinion in August 1995 identifying several trade shows during the 1994 holiday season during which World Bazaars could access a paint master of Kurt S. Adler’s Santa ornament. Evidence produced to the court showed that World Bazaars first produced its own Musical Bubble Blowing Santa ornament in July 1995 from a paint master that was created no earlier than that April. The features of World Bazaars’ ornament bore several uncanny resemblances to Kurt S. Adler’s own Santa design, including a pear-shaped head, emphasized red underlip, skin tone bubble nose and a hooked bubble wand. While other evidence pointed to actual copying, Judge Leisure found a side-by-side inspection of the protectible elements of the two Santa ornaments to be decisive, leading to the grant of injunctive relief.

Upstate NY Company Protects 1972 Holiday Sales Against Imported Ornament Kits

In the summer of 1972, then-U.S. District Judge Charles L. Brieant of the Southern District of New York entered injunctive relief for a manufacturer that still maintains a significant presence in Utica, NY. Walco Products, a division of Utica Cutlery Company, had begun selling assembly kits for Christmas tree ornaments in 1965. Indeed, Judge Brieant noted that Walco’s ornament kits had gained popularity nationwide by the early 1970s. In 1971, New York-based importer Kittay & Blitz had begun distributing catalogs listing Christmas ornament kits displayed with pictures of Walco’s assembled ornaments.

Judge Brieant’s July 1972 order acknowledged that the initial fault of copyright infringement likely arose through the actions of a Japanese kit manufacturer producing the ornament kits imported by Kittay & Blitz. Still, visual comparison of the ornament kits by both parties made it “obvious… that the copy is an appropriation of the copyrighted work.” Judge Brieant noted that Christmas ornament kits often enter the stream of commerce during the summer months, making the timing of injunctive relief critical for Walco. Further, as Kittay & Blitz’s ornament kits were undisputedly inferior to Walco’s kits, there was a “substantial danger of a loss of good will and future sales in this seasonal market… which is likely to be exhausted within weeks.”

Heirs of Tin Pan Alley Songwriter Recover Copyright to ‘Santa Claus is Comin’ to Town’

J.F. Coots Source: Wikipedia

Although American songwriter J. Fred Coots created several popular songs during the first half of the 20th Century, the Christmas smash hit “Santa Claus is Comin’ to Town,” co-authored with lyricist Haven Gillespie, was by far his most successful. In the 2000s, Coots’ statutory heirs sent a series of termination notices to EMI Feist Catalog seeking to recover Coots’ copyright to the song pursuant to a 1981 agreement between Coots and EMI Feist’s successor, Robbins Music Corporation. However, the Southern District of New York court determined that a 1951 assignment of rights in the copyright renewal period by Coots controlled the dispute. The district court ruled that, under the provisions of the Sonny Bono Copyright Term Extension Act of 1998, copyright to “Santa Claus is Comin’ to Town” wouldn’t expire until 2029, and that EMI Feist was entitled to own copyright for the remainder of that period.

In October 2015, the Second Circuit decided on appeal that the district court had erred, finding instead that the 1981 assignment, while unrecorded at the U.S. Copyright Office, was nonetheless properly executed by Coots and replaced the 1951 agreement. Termination rights under Section 203 of the Copyright Act of 1976, which governed the 1981 agreement, are available 35 years after the grant unless copyright agreement covers “the right of publication,” which covers the right to the first public use of a copyrighted work. “EMI does not claim, nor could it, that the song was not made available to the public” until after the 1981 agreement, wrote U.S. Circuit Judge Debra Ann Livingston. The Second Circuit remanded the case to the district court with instructions to enter declaratory judgment finding that a 2007 termination notice by Coots’ statutory heirs would allow them to recover copyright to “Santa Claus is Comin’ to Town” in 2016.

Image Source: Deposit Photos
Author: stetsik
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