Anita Gogia is a IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On on the intriguing case. engages novel issues of trademark infringement, trademark dilution, and cybersquatting (MetaBirkin.com domain name in this case) by artists in the metaverse.

Rothschild that depicted the Hermès Birkin bag in digital fur instead of leather, seemingly present in luxury handbags. The NFTs were on every further sale. After Hermès took down the NFTs from OpenSea, Rothschild moved to a different marketplace and “MetaBirkin” on Discord. Rothschild argued that “” and that the NFTs were a “” under First Amendment protection. Essentially, he argued that “MetaBirkins” were .

The jury found that Rothschild’s “MetaBirkin” NFTs . The key issue was whether the “MetaBirkin” was artistic expression under First Amendment protection, or a commercial product that causes consumer confusion. The jury concluded that while artistic expression was present, Rothschild intended to confuse consumers.

During the trial, Hermès provided evidence of actual consumer confusion which included about if “MetaBirkins” were connected to Hermès. Rothschild rejected these claims by providing that he to his website clarifying that the “MetaBirkins” were not connected with Hermès in any way and that his .

The jury was also influenced by Judge Rakoff’s reasons to deny the motion for summary judgment, and his exclusion of expert testimony. Judge Rakoff held that the test for artistic works applies where the key inquiry is This test was applied as opposed to the test, . Thus, Judge Rakoff held that the artistic relevance was present. Blake Gopnik provided expert testimony that Rothschild brought forth in this case. Had this been admitted, the jury ; thus aligning them in the artistic expression context.

Following the decision, Rothschild’s legal team that the dispute is “.” The team also pointed out Hermès’ hypocrisy as a luxury fashion brand who claim they care about artists but “.” This case has been followed by many to observe how the court resolves the issue of NFTs using intellectual property for the purpose of artistic expression. It is unknown whether this decision stands as precedent since intellectual property right disputes are significantly context-based. After this decision, artists can only conclude for certain the importance of obtaining legal advice before using IP in their NFTs, even if it is in the name of artistic expression.

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Nancy Chen is an IPilogue Writer and a 2L JD/MBA Candidate at the University of Toronto.

In a battle of the stripes, athletic fashion giant Adidas went head-to-head with American luxury fashion brand Thom Browne in a that tested the delicate balance between protecting a company's branding and allowing for creativity and competition in the marketplace.��

At the heart of the case was Adidas' iconic three-stripe design, which the company claimed was being infringed upon by Thom Browne’s four-striped signature. The sportswear giant argued that the stripes were crucial to its brand identity and that Thom Browne's use of similar stripes would dilute the distinctiveness of its trademark and cause confusion among consumers. If successful, Adidas sought and profits earned by Browne’s use of the stripes. However, , a jury rejected Adidas’ allegations, finding no infringement or dilution.

The case can be traced back to 2005 when Browne debuted his “Three-Bar Signature” motif. This prompted Adidas to reach out to the designer in 2007, citing the similarity between the two brands’ designs. In response, Browne added another stripe to his design and launched his “Four-Bar Signature.” Adidas seemingly approved this design, as the sportswear giant stayed quiet for the next decade while Browne produced jackets, ties, socks and athletic wear bearing the Four-Bar Signature.

However, in 2018 Adidas approached Browne about his use of the stripes, claiming that they only became aware of the infringement at that time. Settlement negotiations began but ultimately fell through, and Adidas filed an .

The proceedings of the case were extensive, with both sides presenting a large amount of evidence supporting their respective positions. Adidas presented evidence of the widespread use and recognition of their three-stripe design, and survey evidence suggesting that consumers were likely to be confused by the stripes used by Thom Browne.

Thom Browne, on the other hand, argued that the decade-long delay in bringing forth an allegation was unacceptable. Furthermore, the brands served different markets; Adidas is an affordable sportswear brand, whereas Thom Browne is a high-end luxury brand not centered around sportswear. “Adidas does not own stripes,” said Robert T. Maldonade, Browne’s attorney. The jury ultimately sided with Browne’s arguments.

The trial has set an important precedent in shaping the future of trademark protection and its impact on the fashion industry. The verdict showed that the legal system recognizes the potential for stifling creativity and competition if trademark protection is extended too far, emphasizing the need for a nuanced approach that balances the interests of trademark holders and the wider creative community. The in Adidas' bid to extend its Three-Stripe trademark in 2019 further reinforced these limits, as the court ruled that the trademark lacked "distinctive character". This underscores the importance of being cautious when granting trademark protection for non-distinctive marks to ensure that it does not infringe on the creativity and competitiveness of the marketplace.

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Ariel Goldberg a 1L JD candidate at Osgoode Hall Law School.

French fashion brand garments featuring Botticelli’s Birth of Venus are heading off the rack and to legal battle. (“Uffizi”), based in Florence, Italy, are pursuing legal action against Jean Paul Gaultier for “illicit” unauthorized use of Botticelli’s Birth of Venus which violates Italy’s (Code of the Cultural and Landscape Heritage )(the “Italian Code”). The Code of the Cultural and Landscape Heritage’s legal force is separate from copyright laws and remains in effect when copyright protection does not.

Jean Paul Gaultier’s “Le Musée” capsule collection uses Botticelli’s Birth of Venus on including a scarf, skirt, sleeveless top and trouser. Jean Paul Gaultier originally used Birth of Venus in its S/S 1995 Collection on a sheer mesh top. In , Uffizi sent a cease-and-desist in response to Jean Paul Gaultier’s current use of the Birth of Venus, but the fashion brand never replied and continued its unauthorized use.��

(Photo Credits: ; )

The Italian Code , which came into effect in 2004 and was updated in 2016, . The Italian Code protects which can be historical, artistic, ethno-anthropological and archaeological. , objects require authorization and a licence fee to be used commercially by third parties regardless of whether the work is in the public domain. of the images by private individuals for the purpose of creative expression, study, research and enhancing cultural heritage are excluded from these legal obligations.

The refers to works not protected by copyright, which means the works can be used without acquiring permission or paying a fee. Generally, copyright protection expires after a period following the death of the author. In Canada, under the copyright protection remains for the life of the author and 50 years following the end of the calendar year the author died in unless otherwise stated within the Act. ��

The Birth of Venus is in the public domain because it was created by Botticelli in the mid-1480s. However, Gaultier allegedly violated Italy’s Cultural Heritage Code by proceeding with commercial use of the image without authorization and paying a licence fee. Jean Paul Gaultier’s use would not likely qualify for ��creative expression exception because of its commercial nature and because Jean Paul Gaultier is a fashion brand rather than private individual. , a lawyer and comparative cultural heritage, art and fashion law scholar, states that Jean Paul Gaultier could argue that some uses are of Botticelli’s Birth of Venus which would exclude the use from the ��

Uffizi’s Director Eike Schmidt commented that such as Leonardo da Vinci, Caravaggio, Titian, Raphael and Giotto di Bondone. The prevalent use of Uffizi’s artworks despite Italian law led to to police whether artworks are used to sell products, especially on social media. This hyperfocus on social media reflects the double-edged nature of social media, providing a greater connection through increased sharing and platforms while also allowing easier access and subsequently, easier appropriation of works.

Last year, a similar conflict emerged from the use of the Birth of Venus. online guide to erotic art which used the artwork. Hopefully, the Birth of Venus does not birth more legal issues in the immediate future. ��

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Anita Gogia is a IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On May 25, 2021 the Japan Patent Office (JPO) Nobuaki Kurokawa a trademark for his apparel brand named “CUGGL” for class 25 (clothing and footwear). This year, when the t-shirt design ��for CUGGL was released, the Italian fashion brand Gucci tried to get the trademark cancelled.

Fast forward a few months, on July 26, 2021, Gucci filed an opposition against the “CUGGL” mark with the JPO. Gucci argued that CUGGL t-shirts would confuse customers because of the font and style of the design. Gucci cited of the Japan trademark law in support of their claim.

Gucci that Kurokawa obtained the trademark with malicious intent to take advantage of the luxury Italian brand’s goodwill and reputation as customers would recognize his design to say “GUCCI” even when they can only see the top half of the word. Even though half of the word “CUGGL” is covered with hand drawn paint, anyone familiar with Gucci’s brand might assume at first glance that the shirt says “GUCCI” underneath the paint.

Unfortunately for Gucci, its claim was not successful. As of July 12, 2022, the JPO found that the two brands were distinct and . Even though the decision makers Gucci’s popularity and reputation, they of a resemblance between Gucci and CUGGL based on visual, phonetic, and conceptual considerations. Overall, the low degree of similarly, according to the JPO, is not enough to accept that consumers would be confused between Gucci and CUGGL.

Kurokawa has other successful trademarks and pending applications for brands that potentially confuse consumers (for , “AZIDES” and “PAPAGORIRA”).

Some that the JPO’s decision against Gucci is a win because large companies have manipulated the law to prevent harmless parodies of their brands and the public would not be confused by such parodies. This decision illustrates that the result of a trademark infringement allegation is not so predictable in Japan as it may be in other jurisdictions.

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Serena Nath is an IPilogue Writer and a 2L JD candidate at Osgoode Hall Law School.

After a lengthy 22-year trademark battle with Chinese businessman Fang Yuzhou, London-born shoe company to use their name in China. Manolos have never been sold in mainland China because Yuzhou registered the trademark “Manolo & Blahnik” in 1999 in China. ��If Manolo Blahnik had attempted to sell their shoes in China, they would likely face legal consequences from Yuzhou and be unable to fight counterfeit products sold ��there. In the subsequent two decades, Manolo Blahnik repeatedly appealed the decision. However, these appeals were dismissed as the courts ruled that Manolo did not present sufficient evidence of adequate sales in mainland China prior to 2000. Resultantly, Manolo Blahnik has lost significant sales, as China is the fastest growing luxury market.

China’s Trademark System

Historically, China’s trademark system was based on a , meaning that the exclusive right of a trademark is awarded to the registrant who first applies. As such, no prior use, good faith, or intention for real use of the trademark is required to acquire the exclusive rights over a trademark. Here, although Yuzhou had no intention to use the registered trademark, because he had applied before Manolo Blahnik, and was hence awarded exclusive rights to use the trademark “Manolo & Blahnik.” This is in to other jurisdictions, such as Canada, where the exclusive right to a trademark is not necessarily awarded to the first registrant, and prior use or intention to use is considered. However, in 2019 amendments to China’s trademark legislation resulted in drastic changes for trademark disputes.��

The 2019 amendments focused on “bad-faith” trademark filings, specifically that “[a]pplications made in bad faith for trademark registrations that are not intended for use shall be rejected.” Additionally, trademark agencies are prohibited from representing clients if the agency is aware that it is a “bad-faith” filing, and the penalty for filing a “bad-faith” trademark is either warning or fine. Based on these amendments, then, the Supreme People’s Court of China finally ruled in Manolo Blahnik’s favour.

Future Implications of Trademark Legislation Amendments

The 2019 amendments will likely aid in fighting against “bad-faith” filings. However, as observed with the Manolo Blahnik case, the amendments are also likely to ensure increased brand protection for foreign entities who otherwise are not able to register trademarks due to the “first to file” rule. of the amendments resulting in victories for foreign companies include a lawsuit won by athletic apparel and footwear manufacturer New Balance, and another won by former NBA star Michael Jordan, where Chinese companies imitated and used these entities’ logos. Despite recent victories, some foreign companies still face an uphill battle. In 2021, Japanese retailer Muji against a “copycat” Chinese company. It is clear that further amendments are still necessary to overcome the “first to file” rule.

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Ariel Goldberg is an incoming 1L JD candidate at Osgoode Hall Law School.

On June 21, 2022, the U.S. Patent and Trademark Office (“USPTO”) granted The Ohio State University trademark protection for the most common English word: . However, the fashion house Marc Jacobs has a pending trademark application for an identical “T�ᷡ” mark. Both “T�ᷡ” marks are filed under the under the Nice classification system, which specifies trademark protection for uses on clothing and headwear. The “T�ᷡ” marks created a ‘the’ mess and a concern about enforcing trademark rights for a common word.

, Ohio State University began using ‘the’ to avoid the acronym “OSU”, which was identical to Oregon State University and Oklahoma State University. To avoid confusion, Ohio State University rebranded itself as The Ohio State University. Due to the humorous nature of the rebranding, The Ohio State University began being referred to as “T�ᷡ” including on .

The Ohio State University’s trademark protection for the “T�ᷡ” mark was not an easy feat — it took three years. , The Ohio State University filed a trademark application for the “T�ᷡ” mark with the USPTO. However, the USPTO initially rejected the trademark application for two reasons. the USPTO argued that the “T�ᷡ” mark was not functioning as a trademark because it was used by The Ohio State University ornamentally on clothing rather than as a source indicator. the USPTO highlighted a potential refusal on likelihood of confusion because Marc Jacobs filed a trademark application for an identical “T�ᷡ” mark on clothing items earlier than The Ohio State University. A full breakdown of these refusals and the corresponding responses can be read in the IPilogue article by Claire Wortsman.

While The Ohio State University secured a trademark win, there is now a concern about enforcing trademark rights over such a common term. In theory, the trademark protection grant broad enforcement over the term ‘the’. Instead, the trademark protection to unauthorized uses of the mark that confuse consumers of source. Further, the trademark protection exists with other trademarks that include the term ‘the’. Therefore, The Ohio State cannot prevent the use of ‘the’ in and including those in the collegiate clothing market like .

On the other hand, trademark bullying is a widespread tactic to enforce and maintain trademark rights. The USPTO defined as the practice of using trademark rights to intimidate businesses beyond what trademark protection allows. While trademark enforcement is necessary to avoid a , there is a fine line between suitability and aggression. For example, trademark professor Alexandra J. Roberts the drink company Monster’s tendency to stop any use of the word “monster.” ��Therefore, The Ohio State University could aggressively and overbroadly target uses of the term “T�ᷡ”.

Moving forward it will be interesting to see how The Ohio State University enforces their trademark rights. Hopefully, the trademark registration marks the “T�ᷡ” end.

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Ariel Goldberg is an incoming 1L JD candidate at Osgoode Hall Law School.

While Hailey Bieber’s new skin care brand promises “” the brand itself has a blemish: . On June 21,2022, Rhode-NYC, LLC. (“Rhode-NYC”) in the U. S. District Court for the Southern District of New 91��ɫ against Hailey Bieber and her companies RHODEDEODATO CORP. and HRBEAUTY, LLC for trademark infringement. Rhode-NYC is a founded by two women entrepreneurs in 2014, whereas Hailey Bieber’s launched in June 2022 during .

Rhode-NYC that Hailey Bieber’s use of her middle name “Rhode” as the name of her skin care brand is creating market confusion and potential harm to its goodwill and reputation. ��Rhode-NYC claims that for “rhode” were immediately populated by Hailey Bieber and her companies’ brand as evidence of source confusion. consumers are tagging the wrong Rhode brand on Instagram content. This is a case of where the junior user of a similar mark, usually with more resources, creates confusion that a senior’s goods and services originate from the junior user. Hailey Bieber d her fame and social media following, and that of her husband Justin Bieber’, to immediately establish her brand.

Hailey Bieber and her companies’ trademark applications’ history suggests an awareness of Rhode-NYC’s prior trademark rights and the brand confusion that would result from the existence of both brands. , Hailey Bieber and her companies attempted to purchase the RHODE mark from Rhode-NYC after filing an application with the US Patent and Trademark Office (“USPTO”) for the use of “Rhode” on clothing. Then, , Hailey Bieber and her companies filed an intent-to-use trademark application for RHODE as a word mark and stylized word depiction for use in skin care. Notably, Rhode-NYC the 2020 application.

While the two brands registered the RHODE mark for different uses under the system, that expansion of either brand increases the potential for harm because the uses are in adjacent industries. �� Hailey Bieber and her companies are filing trademark applications outside cosmetics and promising Rhode clothing. Following the of celebrity brands, Hailey Bieber’s Rhode is unlikely to remain in the realm of skin care. For example, the beauty brand developed the line which includes apparel and accessories such as a hoodie. In addition, that Hailey Bieber and her companies’ use of the RHODE mark prevents Rhode-NYC’s own intentions to enter the beauty and lifestyle market.

The lawsuit over the RHODE mark demonstrates the trademark implications of the rise of celebrity brands. Specifically, how celebrities’ existing fame impacts secondary meaning and the importance of considering trademark rights in industries that would be a natural extension of a brand. Ultimately, Rhode-NYC co-founders are only attempting to protect their brand, not to harm Hailey Bieber. They explained in an Instagram statement,

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Photo by Francois Le Nguyen ()

Emily Chow is an��IPilogue��Writer and a 1L JD Candidate at Osgoode Hall Law School.���� �� ����

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2022 is primed to be an important year for humanity’s actions against global warming. COP26 (Conference of Parties) . It generated momentum that must continue to meet the goal of the by 2050: to reduce the Earth’s temperature by 1.5°C. 196 Parties adopted this internationally binding treaty. With the additional challenges brought forth by COVID-19, (net)zero-carbon solutions urgently need to be implemented across all levels and structures. The from this collective responsibility to reduce greenhouse gas emissions. It has the capacity to usher in radical, life-saving changes. One way is through the

According to the World Economic Forum, eight industries generate : agriculture, construction, fashion, fast-moving consumer goods (“FMCGs”), electronics, automotive, professional services, and freight. This article discusses the role of fashion in climate change, and more importantly, highlights some textile innovations and organizations demonstrating the core values of circular economies.

Circular Economies: An Overview

A “circular” economy is more than a corporate citizenship buzzword or a . The three key pillars, or goals, supporting circular economic systems are: to. True circular production generates products and materials that can be reused, repaired, or remanufactured, thereby eliminating the concept of “waste” generated through consumer capitalism. These systems emulate what is inherent within nature’s ecological systems, such as and or cycles.

The Case for Fashion

Fashion, and by extension any forms of creative self-expression, potentiate important sociopolitical spaces for and individuals. Fashion can be , and . It can be responsive to or representative of . Fashion coalesces and will continue to so long as culture exists. It is also plain fun to feel good in what you’re wearing and for your clothing to represent you.

The fashion industry has roots across including (pun intended), retail, , , . Remedying the supply chain can , which struggle to fund expensive decarbonization efforts given their low profits relative to high emissions. Consumer-facing industries like fashion generate higher profits per ton of emissions, and thus can pass along decarbonisation costs in .

Along with the benefits of a circular economic system come concerns of and the privilege inherent in purchasing an expensive item upfront. Not to mention, the capacity to make climate-informed decisions further depends on sizing and access inclusivity for all ���ǻ徱���— of the fashion industry. However, many and have demonstrated the power in , , to one of slow fashion. , much of which is spurred by and a culture of consumption (think of TikTok or , hauls, ‘shop with me’ videos, negative associations of wearing something twice, etc.).

While the solution isn’t perfect, as an individual starting point, we can begin to unpack the small ways we as individuals can reassess our spending habits. Some mindfulness questions we can make a habit of asking ourselves are: What about [item] do I like or dislike (e.g., price, fit, colour, material)? Do I have anything similar? Can I get this second-hand? Will this material/style last several seasons? Do I see myself wearing this a few years from now?

Ultimately, structural change from the top-down must also occur to remedy our current climate. Yet investments made towards technological innovation and zero-emissions solutions have already proven to be profitable, sustainable, and . Furthermore, the collective push towards , , business certifications (such as , ), and is extremely promising.

Fashion’s Patented Innovations

I am really looking forward to seeing how the above movements evolve and respond to the coming year ahead. I am also excited about the increased adoption of patented materials and products! The production of synthetic textiles, garment-making, and the supply chain generates . Introducing nature-based solutions in agriculture and textile processing will be key to reducing greenhouse gas emissions.

, , , and are a few companies building towards a circular economy in an exciting way.

Mycoworks is a San Francisco-based company with a for Fine Mycelium that has developed a called REISHI: a made-to-order, vegan, and biodegradable yet durable leather. Last year, they made headlines with their , whose classic “Victoria” style was remade with Fine Mycelium and named .

AlgiKnit makes patent-pending kelp-based yarns and textiles in New 91��ɫ. Their closed-loop product life cycle allows them to break down end products to be remade into new ones. This seaweed-based yarn allows manufacturers to excise highly toxic chemicals from the treatment process, protecting workers from dangerous and . AlgiKnit produced a , and one can only imagine the streetwear implications this new material could have. Furthermore, the company announced the opening of an , where they will work with global brands to adopt new biotechnological textile innovations.

Lenzing’s TENCEL Lyocell and Modal fibres are fibres originating from responsibly managed forests in Austria. They use a non-woven spinning process that recycles the water and solvents at a rate of more than 99%. These fibres have been certified biodegradable and compostable

ALT TEX, a homegrown Toronto start-up, is a former client of the IP Innovation Clinic at Osgoode Hall Law School. Founders Myra Arshad and Avneet Ghotra have developed a novel bio-polymer technology that re-engineers sugars extracted from food waste into a fibre substitute to , which is made of plastic. ALT TEX’s closed-loop, biodegradable, and carbon neutral textile is a game-changer with the potential to replace polyester entirely, which makes up over 60% of textile manufacturing.

Further Engagement:

Aja Barber’s Consumed, a book on the textile industry’s racist, colonial, and exploitative history, and how to empower yourself by unlearning the mentality of mass consumerism:

Intersectional Environmentalist, a climate justice community centering BIPOC and historically excluded voices:

Social/climate activists Stevie (aka ), Summer Dean ()

Second-hand, Consignment and Thrift stores (to name a few!): , , Facebook Marketplace,

Fashion Impact Fund, supporting women entrepreneurs and the fulfillment of UN’s Sustainable Development Goals:

Ecologi, a climate-positive investment subscription where you can support environmental projects as a business or individual supporter:

The post Biotech of the Future: Fashion’s Role in Climate Change appeared first on IPOsgoode.

Photo by Seenbutnotsurd ()

Sabrina Macklai is an IPilogue Senior Editor and a 2L JD Candidate at the University of Toronto Faculty of Law.

Happy spooky season! From “Evil Midweek Cutie” to “Juice Demon”, the Internet has been buzzing with featuring hilarious knock-off Halloween costumes. But why do many retailers resort to using these creative names? Consumers can clearly identify the source material for these costumes (i.e., Wednesday Addams and Beetlejuice). Is changing the name from sufficient to escape liability?

Copyright Creeping into Costumes

In general, any clothing, including costumes, is not protected by copyright laws. In Canada, under section 64(2) of the , it is not an infringement of copyright to reproduce the design of a “useful article”, so long as more than 50 copies are made. The Act defines a “useful article” as having a utilitarian function, which encompasses most clothing.

There are notable exceptions. For one, section 64(3)(a) states that copyright may persist in graphic or photographic representations that are applied to useful articles. In other words, one cannot avoid copyright infringement by merely reproducing a copyrighted work on a shirt or other “useful article.” While this may not apply to most costumes, this can prevent retailers from replicating images of Disney princesses and other copyrighted characters onto their clothing. Another exception, section 64(3)(b), states that copyright infringement may still be found when reproducing an article that contains “a trademark or a representation thereof or a label.” This explains why retailers cannot use logos like the Star Wars logo on their unlicensed costumes.

Courts have interpreted the scope of section 64(2) and it’s U.S. counterpart, , to exclude jewellery and masks. In (c.o.b. SpareParts), the Federal Court of Appeal suggested that original jewellery designs may be subject to copyright protection as the mere fact that they are worn does not make it ipso facto a “useful article.” In a way, purely ornamental jewellery may be analogous to works of art. However, the case was settled before a trial of the issues. Nonetheless, the notes that those in the jewellery industry may be granted industrial design registrations, offering a different kind of intellectual property protection. This is contrary to the U.S. where original jewellery designs are automatically protected under copyright law as . Fortunately for trick-or-treaters, most jewellery designs are not to be registered with the U.S. Copyright Office. Wearing—or selling—a string of pearls to complete a Great Gatsby themed costume will not land anyone in a lawsuit.

Perhaps more relevant to Halloween costumes, in the U.S., to fall outside of the “useful article” classification, as they are not considered to serve a utilitarian function. Therefore, they may be protected by copyright. Although Canada lacks an equivalent case, Pyrrha Designs Inc suggests a flexible interpretation for “useful article”. Even though masks may receive copyright protection in the U.S., they must still meet a threshold for originality. For example, the U.S. District Court for the Eastern District of Pennsylvania that the Michael Myers mask from John Carpenter’s classic Halloween (1978) lacked the requisite originality for copyright protection; the mask was just a mold of actor William Shatner’s head!

More recently, on September 27, the U.S. District Court for the Eastern District of New 91��ɫ that the parodical and satirical use of Fun World’s copyrighted “Ghost Face” mask was permitted under the fair use doctrine. American professional basketball player Terry Rozier, nicknamed “Scary Terry”, had launched a line of merchandise that included a cartoon image of him wearing the “Ghost Face” mask, as popularized by the Scream film franchise. While the decision does not support retailers wishing to sell their own Scream-inspired mask, with the court even stating that Fun World’s copyright registration gives rise to a presumption of validity, it does demonstrate that there are ways to legally use copyrighted works in one’s own design without seeking permission. Interestingly, the court noted that Rozier produced evidence which called into question whether Fun World’s mask possessed the requisite originality, given that a third-party created and marketed a similar “Wailer” mask several months before the “Ghost Face” mask was registered. Though not resolved in this case, the validity of Fun World’s copyright hangs in the balance.��

Outside of masks and jewellery, a 2017 U.S. Supreme Court case, held that aesthetic elements of useful articles could be copyrightable only if they can be perceived as a two- or three-dimensional work of art separate from the useful article and would qualify as a protectable pictorial, graphic, or sculptural work if it were imagined separately from the useful article. The decision was applied in the costume context, in the 2019 case . Here, it was held that although a full-body banana suit is a “useful article”, the sculpted banana design itself may be copyrighted. It appears in the U.S., copyrighting Halloween costumes is not as bananas as one may think!

Scary Issues with Licensing and Trademarks

Although costumes are generally not afforded copyright protection, trademark laws still prevent retailers from selling and marketing unlicensed versions of costumes using the names which they are based on. protect brands’ corporate image via a sign or combination of signs used to distinguish their goods or services from those of others. This can include words, designs, three-dimensional shapes, textures, etc.

To avoid trademark infringement, retailers will avoid using trademarked names (like and ) and opt to sell their unlicensed costumes under parodied titles that give rise to the comical memes on our social media feeds.

Even so, rights-holders have initiated lawsuits against copycat designs with changed names that do not infringe trademarked words. For example, Fashion Nova is routinely sued for copying iconic fashion designs, even being . The central argument lies in trademark law—that the clothing has acquired the such that it is strongly associated with the brand or designer and copycats would create a high amongst consumers. Although it is unclear how strong these claims are, there remains a risk of being sued and facing litigation costs for copying a well-known design, especially given the decision in Silvertop Associates.

DIY Tricks?

Luckily for at-home costume designers, making your own costume, even of a licensed character, is unlikely to provide grounds for copyright violations. In Canada, provides that an individual does not infringe copyright by reproducing an otherwise copyright-protected work if the individual only uses the reproduction for their own private purposes. Although the U.S. lacks an analogous statutory provision, it is that using copyrighted materials for personal, non-commercial purposes is permissible.

While the last-minute, homemade Supermans and Catwomans can breathe a sigh of relief, issues may still arise if one were to sell their homemade creations on a site like Etsy. Doing so would prevent the maker from claiming a private purpose.

Overall, DIY costume-makers and even commercial costume retailers are very likely safe from liability. Still, it may be better to err on the side of caution and ensure that any costumes created do not infringe copyright (as limited as copyright protection may be) or are sold under trademarked names. Ghosts and skeletons might be scary, but there’s nothing more terrifying than an intellectual property infringement suit!

The post The Hocus Pocus of Intellectual Property in Halloween Costumes appeared first on IPOsgoode.

Photo from Nike

Alexandria Lewis & Ian Rothweiler are JD Candidates at Southwestern Law School. This article was originally written as a requirement for Victoria Burke and John Begakis’ course on Fashion Law.

Trademark Infringement / Anti-Dilution – Nike v Warren Lotas

Warren Lotas partnered with Jeff Staple to "reinterpret" Staple’s original 2005 collaboration with Nike on the classic Nike Dunk shoe. Nike wasted no time and quickly filed a trademark infringement and anti-dilution lawsuit. The shoes and respective trade dress were nearly identical replicas of the original Dunks, so Nike had a strong case that the Lotas shoes were likely to confuse the general public as to their origin, source, sponsorship, or affiliation with Nike.

As a defense to the trade dress rights infringement claims, Lotas claimed that the tread on the sole of the shoes served a utilitarian function because they are essential to their use and purpose, and thus the quality of the sole.

Staple, who has a history of working for Nike and is the registered owner of the Staple Pigeon brand (seen on Lotas shoes), was left out of the litigation between Nike and Lotas. This is strange, as he was a co-partner in the Lotas product and his trademark pigeon is part of the trade dress of the allegedly infringing shoe. Lotas effectively received constructive approval from Staple to go forward with the Dunk lookalike.

Not only was Nike seeking injunctive relief to enjoin Lotas from selling the allegedly infringing sneakers, but also monetary damages. It is hard to imagine that the existence of these sneakers will damage Nike’s brand (worth $160 billion) enough to warrant monetary damages. The unfortunate reality for Lotas is that Nike has unlimited resources to take on nonstop litigation against designers, manufacturers, and distributors to protect their trademarks. This creates a chilling effect that moves up the supply chain, instilling fear of a pending Nike lawsuit among all involved parties. If trademark law ultimately serves to protect the consumer, do these disputes really put the consumer at risk or is Nike just flexing their muscles and depriving many would-be purchasers of new and potentially more appealing designs because they can?

Photo from MSCHF

Trademark Infringement - Nike v MSCHF

MSCHF, the Brooklyn-based art collective known for distorting the look and feel of well-known products and services, employs several risqué and even arbitrary design methods. Just look at its squeaking rubber chicken bong and YouTube channel presenting videos of a vat of mayo or a photograph of Pete Davidson. Needless to say, MSCHF reimagines popular items and brands to offend more conservative sensibilities.

In early 2021, MSCHF leaned into its disruptive attitude by collaborating with rapper Lil Nas X to craft 666 pairs of Nike Air Max 97 shoes with a Satan-themed twist. The expensive sneakers featured an inverted cross and a bronze pentagram charm embossed with “LUKE 10:18”, a Bible verse which reads “I saw Satan fall like lightning from heaven”. The design model was thought up to promote the Old Town Road artist’s devil-themed music video, Montero (Call Me by Your Name), as well as to increase awareness about MSCHF’s wicked genius.

Most Nike enthusiasts were bummed when the shoes sold out within 60 seconds. Religious or spiritual beliefs aside, so-called “sneaker heads” wanted a pair of rare 97s containing a drop of human blood in the sole.

While progressive critics praised MSCHF’s devilish design, Nike sued MSCHF for trademark infringement. Nike alleged confusion and deception surrounding the shoes’ source because MSCHF’s use of the iconic Nike swoosh implied authorization. Nike also alleged dilution by trademark tarnishment, as enraged customers boycotted original Nike products, hurting their pockets and long-held goodwill with consumers.

Nike obtained a permanent injunction order restricting MSCHF’s production, promotion, and sale of ‘Satan Shoes’. Nike also ordered all attorney fees and profits collected from shoe sales, reaping all the benefits of MSCHF’s creative, albeit mischievous work.

Unsurprisingly, Nike didn’t react with the same disapproval toward MSCHF’s ‘Jesus Shoes’ which had dropped earlier. Celebrities as well-known as Drake sported them. This seems to be due to Christian imagery not holding the stigma that Satanist imagery does today. Nike seems to sue for trademark infringement subject to society’s tolerance of alternative views, and MSCHF exists to push our boundaries.

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