Outfits for attending the planet’s annual dressing-up party do more than conceal people’s identities. They also harbour their own unique set of copyright, trademark and image-rights issues, writes Matt Packer
Halloween, it’s fair to say, has got out of control. Once, it was a simple celebration of spooks, ghouls and things that go bump in the night. No one took it too seriously, and the notion that the whole world was invited to a horror-themed costume party for one night per year was like a giant in-joke. People knew where they stood with it.
Over the past 10 years, though, the horror theme became a spoke in a much larger wheel as revellers began to dress up as anything. Before long, Halloween was a night of cartoon characters; superheroes; multiple Elvis Presleys. In short, Halloween underwent an aggressive expansion and steered on to fresh turf. And as intellectual property (IP) experts well know, an occasional by-product of expanding on to fresh turf is infringement.
Such is the case with Halloween costumes – and in efforts to meet the demand for an increasing variety of disguises, some companies have had scrapes with rights-protection mechanisms designed to prevent the very thing costumes aim for: imitation. Here are some cases from the past decade of Halloween’s transformation, where costumes spooked into being copyright, trademark and image-rights disputes.
Lions, orang-utans and bugs, oh my…
Of creatures and copyright
As NewLegal Review has already discussed this year, trademark laws typically exclude functional features from the scope of registration. The exclusion helps to distinguish between different types of IP protection: if you want to protect a function, that’s a job for patent examiners. But the trademark system takes care of non-functional names or symbols.
In the US, a similar distinction in copyright law excludes ‘useful articles’ from protection. But in 1991, that distinction was revised for costumes. That year, the US Copyright Office – part of the Library of Congress – issued a directive stipulating that ‘fanciful’ outfits, as opposed to ‘garment designs’, are useful articles, therefore ineligible as whole objects. However, elements of said costumes may be eligible, as long as they can be proved to have ‘physical or conceptual separability’. Hold that thought.
Some eleven years on from that directive, leading US Halloween costume maker Chosun sued its rival Chrisha in the Southern District of New York for copyright infringement of lion, orang-utan and bug designs. Following initial proceedings in which Chosun won a temporary injunction on Chrisha’s products, the District Court moved to dismiss the lawsuit in 2004 – arguing that Chosun had failed to lodge a proper infringement claim. Explaining its move, the Court said that the US Copyright Act’s ‘useful articles’ exclusion invalidated Chosun’s grounds for complaint.
‘A costume’s utility is in allowing the wearer to pretend to be something else – often a caricature of something else,’ it said. ‘It is impossible to say whether the utilitarian predominates over the artistic, or vice versa. Until a more coherent distinction is drawn by Congress, district courts can do little more than attempt to be consistent with precedent.’
The trouble was, a distinction had already been drawn – not by Congress, but by the Copyright Office. Chosun appealed, and in June 2005 the Court of Appeals for the Second Circuit admonished the District Court for overlooking the costume-specific directive of 1991. ‘It is at least possible that elements of Chosun’s plush sculpted animal costumes are separable from the overall design of the costume, and hence eligible for protection,’ said the Appeals Court. ‘It might, for example, be the case that the sculpted heads of these designs are physically separable from the overall costume, in that they could be removed … without impacting the wearer’s ability to cover his or her body. Similarly, it could be that the heads (and perhaps hands) are conceptually separable [from] the costume’s “clothing” function.’
It had taken 14 years to figure out how the Copyright Office costume directive should be applied in practice – but this case cracked it.
Mad science and image problems
The perils of cloning Einstein
No country in the world has a statutory system for image rights, complete with a national registry. Earlier this year, NewLegal Review highlighted Guernsey’s efforts to pioneer such a system, but the Channel Island has yet to finalise the appropriate legislation. So as it stands, the most common form of recognition for image rights exists in contracts between well-known personalities and media groups – such as when actors in films or TV shows sign over their facial likenesses for use on merchandise.
The practical result of that shortfall in statutory IP laws is a condition long known to be a litigation trigger: ambiguity. In the case of US company Forum – a manufacturer of Halloween costumes for four decades – that condition spawned a legal battle with the most unlikely foe of peace-loving scientist Albert Einstein’s estate.
For several years, Forum had made and distributed a Halloween range called the Heroes of History Instant Disguise Kit. One Heroes product consisted of a bushy grey wig and moustache, and a pack design that featured a photograph of the renowned physicist. In 2008, Forum had an email from New York-based rights agency GreenLight LLC that warned of potential litigation over the disguise. The email claimed that GreenLight was the exclusive US licensee of Albert Einstein’s image, with that right obtained in a deal with the Hebrew University of Jerusalem (HUJ) – the organisation to which Einstein bequeathed his assets.
Forum’s lawyer countered that position in a reply, saying that Einstein’s estate had no ‘right of publicity’ – as in the likeness-related type of contract agreed between actors and media outlets. Tensions between the parties escalated up to December 2010, when GreenLight’s corporate counsel hit Forum with a cease-and-desist letter demanding an immediate halt in production of the Einstein kit. Forum quickly decided that attack was the best form of defence, and named GreenLight and HJU in a complaint for declaratory relief at the Southern District of New York.
Concerned that full infringement proceedings could irreparably harm its business, Forum chose to probe the factual basis of GreenLight’s IP claims. In court sessions to test their validity, HJU revealed that it had obtained a trademark in 2009 for the written phrase ‘Albert Einstein’ – and had even registered it in US trading class 028, which covers ‘costume masks’. However, instead of emerging as HJU’s ace, the detail marked the point at which its claims started to unravel.
The court noted that HJU and its US licensee had never used the mark on any of the articles covered by class 028, so it had effectively lapsed in that class. As for the image-rights question, the court pointed out that Albert Einstein had never taken any personal steps to commercialise his image, and consequently no contractual ‘right of publicity’ had ever existed. HJU had assumed an entitlement to Einstein image rights on a false premise, based upon its inheritance – but the court stressed that, as Einstein had never sealed an image deal, there was no relevant asset to inherit. As such, the basis of GreenLight’s licence was null and void.
Supernatural legal powers
Dressing up for proceedings
In the ranks of global media moguls, the name Haim Saban may not be as familiar as the likes of Ted Turner or Oprah Winfrey – but the products of his imagination have all become household names. In the 1980s, Saban bestrode the world of Saturday-morning cartoons like a colossus, making shows such as Ulysses 31 and The Mysterious Cities of Gold at Saban Entertainment. Through that company, Saban also hired himself out as a soundtrack composer for other animations such as Inspector Gadget.
Saban’s golden era, though, came in the 1990s with the Mighty Morphin Power Rangers: a smash-hit multimedia concept embracing TV shows, toys and a plethora of other merchandise. Hands-on as ever, Saban also wrote the Rangers’ theme tune – another factor in his personal fortune’s rise above the $3 billion mark. That the Rangers were an overnight success – helping Saban to form his private-investment firm Saban Capital Group (SCG) – was probably something he hadn’t bargained for. But it is equally likely that he hadn’t predicted the Rangers would inspire a range of adultHalloween outfits.
A line of official, children’s costumes based on the Rangers had already been on sale for several years when it emerged in 2011 that the website mypartyshirt.com had been making and distributing versions with a more risqué slant on hemlines and necklines. For obvious reasons, Saban and Co were displeased and sued the site in the Central District of California.
In its trial request, SCG stressed that mypartyshirt.com had directly infringed a crucial area of the Power Rangers trademark registration: the visual appearances of the heroes. ‘SCG has … trademarks in the “Power Rangers” name and the Power Rangers character images,’ the request said. ‘[we allege] that Defendants’ use of the Power Rangers marks was wilful and intentional and designed to take advantage of the goodwill and public recognition of the brand created by SCG and its licensees.’
Not anticipating that the look of the characters had been infused with legal power, mypartyshirt.com saw that the party was over and settled with SCG, turning over all profits made from the adult outfits and cancelling the line. Saban may not have predicted this turn of events – but he had at least prepared.