Frightful Intellectual Property Lawsuits – Does Your Costume Violate Someone’s Intellectual Property Rights?
We all know it is time to begin selecting our Halloween costumes when we see Spirit Halloween stores popping up in every vacant structure around us. Shopping can be a frightful task especially for those of us who refuse to spend $100 on a store bought costume. But, should selecting a killer costume be our only concern? Or is the task made all the more frightful by the potential of selecting a costume that infringes someone’s intellectual property rights?
Copyright law provides protection for original works of authorship including literary, musical, dramatic, and artistic works.[1] It gives an owner of a work the exclusive right to reproduce and make copies, prepare derivative works, distribute, perform, and display the work.[2]
Traditionally, clothing and costumes have fallen under the category of “useful articles” and have been excluded from copyright protection.[3] Under the Copyright Act of 1976 (the “Act”) a “useful article” is defined as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”[4] Clothing and costumes have typically fallen under this category because they serve the utilitarian function of clothing the body, but the Act also provides that useful articles are entitled to copyright protection “only if, and only to the extent that such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”[5]
In 2017, the Supreme Court shed light on what type of useful article design is entitled to copyright protection in Star Athletica, L.L.C. v. Varsity Brands, Inc. when they extended protection to designs on cheerleading uniforms.[6] The majority stated that in order for an artistic feature of a useful article to be copyrightable it must (1) “be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work –either on its own or in some other medium of expression – if it were imagined separately from the useful article….”[7] The Court found the stripes of the cheerleading uniform could exist separately from the clothing – like a painting, and this painting could also be independently copyrightable.[8] Thus, the design on the cheerleading uniform was copyrightable.[9]
If the stripes, chevrons, and zig-zags of a cheerleading uniform are copyrightable, it is easily conceivable that the pattern on Marvel’s Captain America suit, the Harry Potter house crests on a robe, and various other aspects of Halloween costumes are copyrightable even though they serve a utilitarian function of clothing the wearer. For example, a Harry Potter house crest can exist separately from the clothing in the form of a painting and this painting could also be independently copyrightable. But, how far does this new regime go?
In 2019, the Third Circuit applied this standard to two banana costumes in Silvertop Assocs. Inc., v. Kangaroo Mfg. Inc.[10] Silvertop, through plaintiff Rasta, owned a copyright in its full body banana suit costume, and found its former partner, Kangaroo, selling a very similar banana costume without a license.[11] Rasta sued for copyright infringement.[12] The court held that the banana costume was a useful article because it served the utilitarian function of clothing the body.[13] But, in applying the Star Athletica precedent, the court found the banana costume could separately be perceived as a sculpture of a banana, and the artistic elements of that sculpture – the “colors, lines, shape, and length” – met the minimum level of creativity required for copyright protection and would be independently copyrightable.[14] Thus, the banana costume was entitled to copyright protection.[15]
The Third Circuit acknowledged that in a pre-Star Athletica world, the banana suit costume would likely not be copyrightable.[16] Given that this is no longer the standard, costume designers and manufacturers should take note of this shift in copyright protection as it seems that Star Athletica and its progeny will open the door to copyright protection for Halloween costumes and articles of clothing.
We have already begun to see the impact of these decisions outside of the Halloween costume context.[17] But, do these decisions open the door to institutions, like movie studios, suing Halloween costume designers for copyright infringement if they create costumes of their characters without a license?
Assuming a costume meets all the requirements for copyrightability, costume designers and manufacturers might have a defense to an infringement claim. One such defense is fair use, which is the right to use a copyrighted work under certain conditions without permission of the copyright owner.[18] To determine whether a given use is a fair use, courts typically consider (1) the purpose and character of the use, (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used, and (4) the effect of the use upon the potential market for or value of the copyrighted work.[19]
In looking to the purpose and character of use, courts will consider how transformative the work is- if it adds something new with a further purpose or different character and is not a substitute for the original work-and if the use is for commercial or noncommercial purposes.[20] The more transformative a work, the less it matters that it has a commercial use.[21] Costume designers have a good argument here. Although the use is commercial, it is transformative and does not substitute for the original work. Instead, it involves individuals dressing up as and celebrating their favorite characters for a holiday. It almost can be argued that it is a commentary on the original work, which is an example of a likely fair use under the statute.[22] The tension between the commercial use and the transformative nature leaves it unclear whether this factor weighs in favor or against fair use.
The second factor involves considering how close the copied work is to the intended core of copyright protection.[23] Where the work in question is more utilitarian, like computer code, there is thinner copyright protection.[24] Unlike musical works or books, costumes are further from the core of copyright because they involve the utilitarian function of clothing the body. It is likely a court will consider this factor to weigh in favor of fair use.
The third factor calls courts to consider how much of the original work is used in the allegedly infringing work.[25] A costume designer will likely copy the entirety of the costume, so this factor would weigh against fair use.
The fourth factor focuses on the effect on potential markets for the copyrighted work, including licensing markets. [26] It is not readily apparent if this will impact the potential market for the copyrighted work. The original copyright owner argue that this factor weighs against fair use because owners of the original work could lose the opportunity to enter into potential licensing agreements with institutions or individuals who will instead chose to license the costume from the Halloween costume designer.
Given that the fair use analysis involves weighing all the factors above, it is unclear whether a court will hold in favor of fair use. It will primarily depend on the whether costumes are considered to be sufficiently transformative and how much emphasis is placed upon their functionality. Although the status of a Halloween costume designer’s infringement defense remains unclear, it is very clear that they need one under Star Athletica if they proceed in making costumes of characters without licenses. While the masses begin to done costumes this coming week, costume businesses should [be]ware-y of the change in tide, and possibility of suit.
Footnotes
