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.

Source: Screenshot of Night of the Living Dead (1968) opening credit / Public Domain

Natalie Bravo is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

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Halloween season is just around the corner and who doesn’t love a good zombie movie? While many might rather shy away from frightening films, dedicated modern-day zombie enthusiasts live among us. The multi-billion-dollar zombie craze in horror today was popularized by George A. Romero’s Night of the Living Dead, an independent film released in 1968. The film curiously entered the public domain due to a slight error, allowing widespread accessibility and reproduction. The film made over , with the creators seeing little to no share of the profits. The release, paired with the copyright error, changed the horror movie genre and the independent film industry forever.

At the time of the film’s theatrical release, the US required notice to maintain enforceable federal copyright protection. The original distributor, The Walter Reade Organization (WRO) from Night of the Flesh Eaters to avoid confusion with the 1964 film . In doing so, WRO accidentally failed to add the copyright indicator (©) onto the prints. The symbol was not in the opening credits of the movie, the image above - that’s it. Imagine that! Without the symbol and the year of publication, the law specified that you lost copyright and the work enters the public domain forever. While a first print with the original name included the symbol, it was lost in a . Romero later attempted to sue the original distributor who made the error, but the organization declared bankruptcy in the 70s and dissolved. Today, copyright notices are no longer required thanks to the (US); sadly for Romero though, the act does not extend protections to his 1968 film.

Due to the oversight, anyone could copy and distribute the film for free. Hundreds of copies of the film were manufactured in different formats, ranging from VHS, Betamax, LaserDisc, DVD, and Blu-ray throughout the years. (A lifelong Living Dead fanatic and collector, Geoff Turner, has created a project called , in an effort to catalogue all of the releases of the film. Over a hundred fans donated almost $20,000 in a campaign to assist Turner. He even has checklists available for download on his webpage for those with the spirit and the storage!)

Before Night of the Living Dead, zombies were – they were typically only seen in Caribbean folklore, and not portrayed in the way they are today. Romero’s film created a , a re-imagined, brain-eating, re-animated corpse who could be quite literally anyone unlucky enough to be bitten. Romero’s specific traits and rules associated with his zombie characters that have lived on through the years. The film’s entry into the public domain allowed it to be licensed free of charge to any distributor. It also allowed non-affiliated remakes and sequels to follow. Romero could not own the copyright in his specific zombie caricatures due to the mistake, and therefore could not stop anyone from including the same interpretation in their own films. The Walking Dead, Game of Thrones, Zombieland, and many more could not exist in the same way today – or would have had to be licensed by Romero, had the distributor correctly added copyright notice. and would have been completely free to do so, without having to pay Romero anything.

While Romero and his team expressed regret at the error, they subsequently agreed that the mistake allowed them to garner popularity and recognition. In a , Romero stated “But that film really gave us our careers. I have no complaints.” The filmmaker passed away in 2017, but not before creating official zombie sequels and . Suffice to say, public domain means the zombie genre refuses to die. If interested, check out Night of the Living Dead for on most streaming platforms, or the .

The post Public Domain of The Living Dead appeared first on IPOsgoode.

Beware of the copyright

Generally, Halloween costumes are not protected by copyright as articles that serve a utilitarian function (i.e. clothing) are not eligible for protection when produced in quantities greater than fifty. However, not all aspects of a costume qualify as useful. For instance, masks are not considered to serve a utilitarian function and can indeed be protected by copyright in the United States. held that nose masks were not useful articles, and thus entitled to copyright protection. While there may not be an equivalent Canadian case regarding novelty masks, (c.o.b. SpareParts), a jewellery case, stated that “[i]t is not enough to hold without evidence that because jewellery is worn it is ipso facto useful.” This would suggest that the mere fact that something is worn, such as a mask, would also not be automatically considered useful and could be protected by copyright.

More recently, in the United States Supreme Court held that “the design of a useful article is eligible for copyright protection… if the feature (1) can be perceived as a two- or three- dimensional work of art separate from the useful article, and (2) would qualify as protectable pictorial, graphic or sculptural work – either on its own or fixed in some other tangible medium of expression – if it were imagined separately from the useful article into which it is incorporated”. The Supreme Court determined that the design on the cheerleading uniform could be protected by copyright as separate from the clothing itself. This could have wide-reaching implications beyond Halloween costumes, as it would be beneficial to the fashion industry’s war against knockoffs.

Although this was a US decision, it helps to shed light on the potential scope of fashion copyright infringement. The protection of a design, be it fashion or Halloween costume, would extend protection beyond masks and jewellery. A specific design of colours and shapes, such as those on Varsity Brands cheerleading uniforms, are now eligible for protection. This would mean United States fashion designers could apply for copyright protection on stripes, buckles and many other artistic combinations.��

Under section 29.22(1)(e) of the , it is not an infringement of copyright for an individual private use. While big box stores selling Marvel superhero costumes likely have a licence to do so, those putting together their costume at home need not worry. There is no need to fear the legal boogeyman, your homemade Halloween costume is unlikely to land you in a courtroom.

Spooktacular patents

There are a number of Canadian patents covering all aspects of Halloween. The Evil Eye () is a Halloween mask that has voice activated light-up eyes. There are even patents on your trick-or-treat bags! is a trick-or-treat bag with a light in the handle. The is another fun trick-or-treat patent to give unwary parents a trick in exchange for their treats. Even jack-o-lanterns are covered with the to make sure they are displayed for optimal spookiness. This year when you’re out collecting candy, take a second to look at all the inventive genius that has gone into Halloween over the years.��

Candy

In 2019, estimated there were 4 million children of trick-or-treating age (5 – 14 years old). With all those candy-hungry children, it’s no surprise that revenue from ��Halloween candy was . With so much at stake, candy makers are eager to protect their money-making trademarks. Most, if not all, of the candies you know and love are protected by trademark law. The classic love-it or hate-it is protected by trademark. Hershey’s Chocolate has numerous trademarks, such as the classic or the phrase. In fact, even the of Hershey’s Kisses are protected!

Hershey and Mars are two of the big players on Halloween night. However, when kids are sorting through their piles of candy, little do they know of the battle that has raged between these two candy empires. In 2015 Mars and Hershey settled their US case regarding . This isn’t the first time that Hershey and Mars have been at odds. In 1998, that Mars infringed upon the trade dress of their Reese’s Peanut Butter Cups was dismissed. Understandably, Hershey is very protective of their peanut butter cups, and again filed suit against Mars for trademark infringement, but

So next time you hear someone say Halloween was “invented” by the candy companies you can say, actually, Halloween was perfected by lawyers!

Written by Maddie Lynch. Maddie is a second year JD candidate at Osgoode Hall Law School. She is a contributing IPilogue editor, Intellectual Property Journal editor and IP Innovation Clinic Fellow.

The post Forget Ghosts, Goblins and Ghouls, Watch out for Patents, Copyrights and Trademarks this Halloween appeared first on IPOsgoode.

The , located in San Jose, California, was built at the behest of Sarah Winchester after the death of her only child and her husband, the late gun mogul William Winchester. Apparently, a medium told Mrs. Winchester to move west from New England and appease the spirits of those who were killed by the Winchester Rifle during the Civil War by building a great house for them.

The Plaintiff owns the registered word mark “Winchester Mystery House” and the design mark based on the Winchester mansion. The Defendant, , produced a film entitled “”. The DVD jacket contained the movie title as well as an image of a Victorian-style building, albeit not the same one as the Winchester Mystery House.

The Plaintiff originally sued on the basis of seven causes of action, three of which were at issue on appeal, namely, 1) use of its trademark (), 2) unfair competition () and 3) interference with contract and economic advantage. The Superior Court granted the Defendant’s motion for summary judgment. The Court of Appeal dismissed the Plaintiff’s appeal on all grounds, however this blog will only touch on the issue of trade-mark infringement.

The Plaintiff claimed that the use of “Winchester House” and the image of the Victorian-style mansion would cause confusion in the minds of the public by leading them to believe that the Plaintiff approved, sponsored, or associated itself with the Defendant. The Defendant argued that its right to freedom of expression provided an absolute defence to trade-mark infringement.

In the United States, freedom of expression is protected by the First Amendment of the U.S. Constitution and plays a major role in limiting the scope of intellectual property rights. The test that is commonly used for balancing the interests of trade-mark owners against those who use the marks in titles for artistic works in the name of freedom of expression arose from . The court in Rogers held that the (the federal statute governing U.S. trade-mark law) would apply to allegedly misleading titles only if the title has no artistic relevance to the underlying work whatsoever or if the title is explicitly misleading as to the source, even if the title has some artistic relevance.

In the Winchester case, it was held that where marks have historical significance and similar marks are used in the title of an artistic work, the Rogers test properly protects both the public interest in avoiding consumer confusion and the public interest in freedom of expression. The Court of Appeal found that the Plaintiff’s marks identify not only a world famous tourist attraction, but also the property of its former eccentric owner. Ultimately, the Court held that the use of the “Haunting of Winchester House” title and the Victorian-style mansion passed the two pronged test from Rogers in that 1) they had some artistic relevance to the underlying work and 2) that the title and cover picture did not explicitly mislead as to the source or content of the work; the Defendants did not use the marks as registered, the DVD cover attributed production to other sources and the title related to the content of the movie, which was the story of Sarah Winchester.

You can find a discussion of another case using the Rogers test to balance freedom of expression and trade-mark protection and a general discussion of trade-marks and freedom of expression .

It is well established that freedom of expression is more vigorously protected in the U.S. than in Canada. Nonetheless, courts in Canada have seen the importance of balancing freedom of expression against trade-mark protection (see, for example, , ). Freedom of expression was also at play in a case where a trade-mark for a book title was expunged because it prohibited the public use of the title after the copyright had expired (). As in Winchester, a Canadian court should allow trade-marks to be incorporated into titles when they relate to historically significant works.

Andrew Wayne is a JD Candidate at Osgoode Hall Law School and is currently enrolled in Osgoode’s Intellectual Property Law and Technology Intensive Program.�� As part of the program requirements, students are asked to write a blog on a topic of their choice.

The post Double, Double Toil and [Freedom of Expression] Trouble for Trade-mark Owners in the United States: A Halloween Tale of Trade-marks and Haunted Houses appeared first on IPOsgoode.