Halloween is one of our favorite holidays here at Martin IP Law Group. What’s not to like? Spooky decorations, apple cider, pumpkin carving and all of those creative costumes. Like other holidays in the United States, Halloween is big business for retailers. According to the National Retail Federation, total consumer spending this Halloween is projected to reach a new high of  $10.2 billion (up from the $9.1 billion in 2017 when this article first appeared in our blog), with 69% of Americans planning to partake in Halloween festivities. With all of that money at stake, it’s no surprise that retailers are increasingly seeking and enforcing the intellectual property rights associated with their Halloween costume designs. Copyright, trademark, trade dress and even patent protection exist for Halloween costumes. Does your costume infringe someone else’s intellectual property?

Creepy Copyrights

In general, Halloween costume designs do not qualify for copyright protection under US Copyright laws because, as clothing, they are considered to be “useful articles”. However, there are two exceptions where copyright protection has been found to apply to Halloween costumes, albeit in a limited way.

The first situation where copyright protection has been found to apply is for masks. In Masquerade Novellty v. Unique Industries, the court ruled that masks qualify for copyright protection because they broadly fall outside the “useful article”. This position was adopted by the U.S. Copyright Office with regard to registrability of masks in 1991. However, as is the case with any other work eligible for copyright protection, a mask must still have a certain required level of creativity to qualify for copyright protection. For example, in Don Post Studios, Inc. v. Cinema Secrets, Inc., a court has held that the iconic Michael Myers mask from the Halloween Movie Series, which by the way I will go out on a limb and predict that it doesn’t actually “End” this year, did not have adequate creativity as it was simply a mold of William Shatner’s head painted white.

Second, while functional elements of a Halloween costume (i.e., arm and neck holes) aren’t eligible for copyright protection, design elements that are “physically or conceptually separate” from the article can be protected. In 2011, SCG Power Rangers LLC had some limited success in a lawsuit against Underdog Endeavors, operators of MyPartyShirt.com, alleging copyright infringement of its Mighty Morphin Power Rangers costume. In 2017, the U.S. Supreme Court weighed in on the “useful article” debate in Athletica v. Varsity Brands. In a 5-2 decision, the Supremes extended copyright protection to cheerleading uniforms, calling into question copyright protection in the costume and fashion worlds. The majority opinion held that when a design can be “identified and imagined apart from the useful article,” it is eligible for copyright protection. Since the cheerleading designs could exist separately from the uniform—say, as a painting—they are subject to copyright protection.

Also, shortly before Halloween in  2017, Rasta Imposta, a New Jersey designer and manufacturer of Halloween costumes sued Kangaroo Manuafacturing (KMART) alleging that it’s Totally Ghoul Banana Men’s Halloween Costume infringed on Rasta Imposta’s copyrighted banana costume design, which was first introduced in 2001 and which K-Mart had previously distributed in its stores. The complaint alleged that K-Mart’s costume “has the same shape as the Banana Design, the ends of the banana are placed similarly, the vertical lines running down the middle of the banana are placed similarly, the one-piece costume is worn on the body the same way as the Banana Design, and the cut out holes are similar to the Banana Design.” In the 2019 decision Silvertop Associates Inc. v. Kangaroo Manufacturing Inc., the court applied the test outlined by the Supreme Court in Athletica and found that the combination of colors, lines, shape, and length (i.e., its artistic features) in Rasta Imposta’s banana costume’s were both separable and capable of independent existence, and thus were copyrightable.

Terrifying Trade Dress

Trade dress generally refers to characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers. Trade dress protection is intended to protect consumers from packaging or appearance of products that are designed to imitate other products – to prevent a consumer from buying one product under the belief that it is another. In order to make a case for trade secret infringement, a person is required to show that the trade dress is inherently distinctive or has acquired secondary meaning, and the junior user’s use of the allegedly infringing design would be likely to cause confusion among consumers. Rasta Imposta has also asserted claims of trade dress infringement against Kangaroo in that lawsuit.  While it would appear from the complaint that Rasta Imposta has a pretty strong argument that K-Mart’s new banana costume is designed to imitate their costume, it does not appear that the court addressed that issue in the Silvertop decision.

Thrilling Trademarks

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. Many Halloween costumes, particularly in the superhero arena, depict symbols and/or designs that are protected by the Lanham Act. Most notably, companies like DC Comics (Superman, Batman, Wonder Woman, Green Lantern) and Marvel (Captain America, Iron Man, Thor, Spider Man) use trademark law to protect their comic book characters, symbols and indicia. The primary issue in considering trademark infringement is whether there is a likelihood of confusion as to the source of the goods. Thus, if you are in the business or making or selling costumes, the unauthorized sale of a Batman costume, for example, would likely constitute trademark infringement as the customer would likely believe the costume was somehow endorsed or at least authorized by DC Comics. On the other hand, simply wearing you home made superhero costume would not likely constitute infringement absent some other representation that you are acting on behalf of the trademark owner.
Where a mark is so recognizable that it has acquired “famous mark” status, even in the absence of a likelihood of confusion, a claim could be made that a person wearing a home made or unauthorized costume bearing a trademark is diluting the distinctiveness of the mark. Dilution is the unauthorized use of a strong or famous mark in a way that weakens the distinctiveness of the mark or tarnishes it.

Some costume sellers like to see just how close they can come to infringing on the big Hollywood studio charicatures without being sued for infringement. Take for example the “Juice Demon” costume shown in this photo. Warner Bros. Entertainment owns several registered trademarks to the name Beetlejuice, including Registration No. 4,863,369, which covers the use in “Clothing for men, women and children… and masquerade and Halloween costumes and masks sold in connection therewith”. Clearly, had the seller of the costume shown in this photograph named the costume “Beetlejuice”, there would be a clear cut case of trademark infringement. However, by using the term “Juice Demon” instead, a case of trademark infringement is less clear. In that case, as will all cases of trademark infringement, the ultimate question is whether there is a liklihood that consumers will be confused as to the source of the product.

Petrifying Patents

A limited number of Halloween costumes are also subject to patent protection. U.S. Patent No. 6,904,612 issued to Chosun International is for a weather and climate adaptive Halloween costume. The owner of a patent has the right to exclude all others from making, using, selling, offering to sell or importing the patented invention. The claims of a patent, which appear at the end of the document, determine the legal scope of protection afforded to an invention. Properly drafted claims can provide broad protection resulting in a valuable asset to the owner, while poorly drafted claims can be like flushing money down the toilet.

So what’s a Ghoul to do?

Unless you are in the business of making or selling Halloween costumes, the chances that your costume would be considered an infringement is small. Still not sure? Still uncomfortable? Scared? Email us a picture of you in your Halloween costume and we will give you a FREE OPINION on whether your costume is infringing. Also, if you send us a photograph of your Halloween costume before November 4, 2022, you will be entered in a drawing to win a $50 gift card. Happy Halloween!