Michael F. Snyder of Volpe and Koenig ()
This article reviews the television show “Shark Tank” on a weekly basis, with a focus on the intellectual property (IP) embodied by the products or business ideas each contestant pitches on that show. As always, keep in mind the following types of IP protection:
• A utility patent is used to protect the functional aspects of an idea, and this is what the Sharks (judges) are for the most part referring to when they inquire into how contestants have protected their idea.
• A design patent protects the ornamental appearance of an article.
• A trademark protects any word, symbol or design that functions as a source identifier. This is generally what the Sharks are referring to when they discuss “branding.”
• A copyright protects a work of authorship (e.g., writing, sculpture, artwork, software). This is not often discussed on the show, but is a strong form of protection for certain works.
One of the interesting pitches this week was made by Naturally Perfect Dolls, LLC. That company is dedicated to creating a line of multi-cultural dolls that embodies a full spectrum of beauty.
With so many toy dolls available in the marketplace, what is the best way to protect the design of a toy doll? From an intellectual property standpoint, an issue is whether it is possible to protect these types of toy doll designs through copyright protection.
As a starting premise, the Copyright Act states that copyrights cannot be used to protect a “useful article.” A “useful article” is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. Examples of “useful articles” include the overall shape or design of a car, an airplane, clothing, a toaster, a television set or a golf ball.
Since a toy doll (or any toy for that matter) serves a utilitarian function—it is provided for a child’s play—is a toy doll then a “useful article” that cannot be protected by copyright? As one court stated, “children need toys for growing up … a toy airplane is useful and possesses utilitarian and functional characteristics in that it permits a child to dream and to let his or her imagination soar.”
Thankfully for toy designers and the toy industry in general, many types of toys have been found to qualify for copyright protection, in whole or in part, as “pictorial, graphic or sculptural works” as defined by the Copyright Act, 17 U.S.C. Section 101. In recent years, we have seen copyright litigation relating to the “BRATZ” line of dolls, G.I. Joe dolls, and the frizzy-haired “troll” dolls. Even doll clothing was found to be protectable by copyright.
Many other types of toys have been found to be protected by copyright as “pictorial, graphic or sculptural works,” including puzzles, board games and toy vehicles.
For those out there who have an idea for a toy and are looking to pitch it to a toy manufacturer, you may wish to file for copyright protection on your toy design before sharing your idea. Copyright registration is fairly straight-forward, although there are some technical traps, and it is always a best practice to work with a copyright law professional.
In addition, as discussed in prior articles, it is possible to seek overlapping intellectual property protection on the same design or invention. For example, in addition to copyright protection, toy dolls can also be protected by design patents, although a separate design patent would have to be filed for each distinct toy doll. Some board games are protected by utility patents. The overall look and packaging of a toy or game can be protected by trade dress.
Naturally Perfect Dolls eventually landed a deal with “shark” Daymond John.
That wraps up Episode 12 of this season of “Shark Tank.” Check this post next week when we see who swims with the Sharks, and who sinks.
Bio: Michael F. Snyder, as shareholder at Volpe and Koenig, focuses his practice on assisting clients with overall intellectual portfolio management including patent, trademark and copyright prosecution and litigation. He also assists clients with due diligence matters including intellectual property licensing and acquisitions.