By Joseph A. Farco, Esq. of Farco ToyCo LLC and Norris McLaughlin P.A
As a toy inventor himself, Joe has an extensive experience in advising clients on intellectual property in the toy and gaming space. Joe advises clients on different IP protection methods, such as obtaining the right type of patent on your toy, copyrights and trademarks for different types of toy branding, and licensing and manufacturing deals involving the same. Joe also provides guidance to clients seeking to enter the toy space or produce a particular toy but want to be respectful of the IP rights of others.
When it comes to the creation of toys, two terms often come into play: inventorship and authorship. While they may seem interchangeable at first glance, they carry distinct meanings and implications in the world of intellectual property, particularly concerning patents and copyrights, respectively. Whether you are one, the other, or both can have some major implications for you, the business, and others.
What is Inventorship?
Inventorship refers to the individuals who contribute to the creation of a new invention that may be the subject of a utility or design patent. In the context of toys, this could involve the design, mechanics, or functionality of a toy that introduces something novel and non-obvious (utility patent claim) or a new ornamental design for an otherwise useful article of manufacture (design patent claim).
Key Points of Inventorship:
- Legal Definition: An inventor is typically defined as someone who has made a not insignificant contribution to the conception of the invention. This means they have played a role in developing the core idea that qualifies for patent protection (not just the pair of hands that rendered the idea in a final form).
- Patent Protection: For a toy to be patented, it must meet specific criteria: it must be new, useful, and non-obvious. The inventor(s) listed on a patent application will hold rights to the invention, enabling them to prevent others from making, using, or selling the patented toy without permission.
- Collaborative Nature: In many cases, toy creation is a team effort. Multiple individuals may contribute to different aspects of the toy’s design or function, which complicates determining inventorship. To discern who contributed what and in what claim(s) of the patent that person’s contributions appear (if anywhere) requires the technical skillset of licensed patent attorneys.
What is Authorship?
Authorship pertains to the creation of original works of creative expressions, which can include artistic designs, illustrations, videos, and written content related to toys. Authorship is usually a concept relevant in the copyright law.
Key Points of Authorship:
- Creative Expression: Authorship focuses on the individual(s) who fixed the creative expression in a tangible medium. Unlike inventions, the creative expression need only have a modicum of creativity, namely, the creativity does not have to meet a lofty threshold as opposed to “invention.” For toys, creative expression can encompass everything from the artwork on packaging to the storylines developed for a toy line. In some cases, you can copyright the same thing for which you might be eligible for design patent protection.
- Copyright Protection: Unlike patents, copyright automatically protects original works as soon as they are fixed in a tangible medium. This means that the author of the artwork, the marketing materials, or any related narratives has the exclusive rights to reproduce and distribute those works UNLESS there is a writing under which the creator agrees to yield the creative expression at the request of a paying entity. In that latter scenario the owner of the creative work is the paying entity provided the agreement qualifies as a work-made-for-hire. Whether you or your company has engaged in a work-made-for-hire requires the input of a licensed copyright attorney.
- Distinct Rights: While inventors may hold rights over the functional aspects of a toy, authors may retain rights over the creative expressions. This separation can lead to complex ownership situations, especially if the same entity creates both the toy’s mechanics and its promotional materials.
The Interplay Between Inventorship and Authorship
In the toy industry, the lines between inventorship and authorship often intersect. For example, a designer may invent a new mechanism for a toy while also creating unique artwork for its packaging. Authors may sketch the idea of a toy, but an inventor has to fabricate its functional components. In such cases, understanding the distinction becomes crucial for intellectual property management.
Real-World Implications:
- Ownership and Profits: Companies must clearly identify their inventors and authors to determine profit-sharing and ownership rights. Without clear agreements to assign the rights of these individuals, a company may find itself lacking control of the very intellectual property created under its roof.
- Licensing and Collaboration: When licensing a toy, companies need to consider both the inventors and authors involved.
- Legal Protection: Understanding the difference is essential for protecting both inventions and creative works as well as the requisite steps to obtain, enforce, and license the same.
Conclusion
In summary, inventorship and authorship are fundamental concepts in the toy industry, each playing a unique role in the protection and commercialization of toys. Inventors focus on the functional and novel aspects of toy design that qualify for patent protection, while authors concentrate on the creative expressions that fall under copyright law. Recognizing these differences can help stakeholders navigate the complex landscape of intellectual property, ensuring that both innovative and artistic contributions are properly credited and protected.
