IP IN TOYLAND

By Adam Brookman and Keith Baxter,

Intellectual Property Lawyers, Boyle Fredrickson, S.C.

A great toy or game is founded on great ideas, but you can't own ideas, can you? Well, the answer is both yes and no and a basic understanding of IP (intellectual property) can be critical to success in the hyper innovative business of toys and games. The law provides a half dozen special forms of intellectual property rights relevant to the toy and game industry with widely varying eligibility requirements, ownership privileges, and, importantly in a fast-moving business, speed of creation.

Trade Secrets are the fastest and generally easiest form of intellectual property protection. They require simply making reasonable efforts to keep the critical information secret. While this is often impossible for toy designs where the materials and processes can be readily reversed engineered, trade secrets may be appropriate for toys or games with unusual components or manufacturing processes that cannot be easily figured out.

Copyright rights are formed automatically when text or pictures are fixed on the page or stored on a computer. These rights last for a long time and can be boosted with simple legal steps. However, copyrights only protect against copying and can often be avoided by a competitive product that uses the idea but not the exact expression of that idea. Game boards, instructions, toy and game images, and software are the best candidates for copyright protection.

Trademarks (brands) can be an extremely powerful form of protection and can last forever. But it takes time for the value of a trademark to grow as consumers associate the name with the underlying product. Unlike copyrights and trade secrets, it is relatively easy to unintentionally infringe someone else’s trademark. As such, searching prior trademark uses before adopting a brand name is a worthwhile exercise. Toy or game titles, figurines or models associated with trademark properties such as movies or literary characters, and the visual appearance of products such as automobiles may be subject to trademark rights. White Paper 2012 {00557143.DOCX / }

Design patents are a special form of patent that covers the ornamental aspects of a design. These patents are relatively inexpensive and quick to obtain and can be used for three-dimensional items. Flying toys, apparel, dolls, and product packaging may be the subject of design patents.

Utility Patents are perhaps the strongest way to protect an abstract idea regardless of the form in which it is implemented and independent of whether the idea was copied or not. Unfortunately, utility patents are expensive and can take years to acquire. Nevertheless, many successful toys and games are the subject of utility patents including the rules of board games and mechanical and electrical toys. Both utility and design patents have strict time limits governing when the patent has to be requested and patent rights can be wholly lost through early public disclosure.

Other property rights that may affect those in the toy and game industry include rights of publicity associated with famous figures and trade dress protection which can protect visual aspects of a toy design or package.

For more information about these and other IP rights, please contact Adam Brookman (alb@boylefred.com) or Keith Baxter (kmb@boylefred.com) of Boyle Fredrickson (414.225.9755).

(November 2012)