Double, double, toil and trouble. The Halloween season is upon us. Pumpkins, skeletons, witches and ghouls have filled the streets, while candy has filled the grocery stores. While collecting your treats, don’t be tricked by the intellectual property behind all the Halloween fun. From costumes to candy, there is a lot of legal hocus pocus that goes into the Halloween we love today.
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. Masquerade Novelty v. Unique Industries 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, Pyrrha Designs Inc v 623735 Saskatchewan Ltd. (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 Star Athletica, LLC v. Varsity Brands, Inc. 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 Canadian Copyright Act, 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.
There are a number of Canadian patents covering all aspects of Halloween. The Evil Eye (Patent 2440684) is a Halloween mask that has voice activated light-up eyes. There are even patents on your trick-or-treat bags! Patent 2335455 is a trick-or-treat bag with a light in the handle. The Halloween Bag with Pop-Up Surprise 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 Pumpkin Décor Kit 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.
In 2019, Statistics Canada 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 $613.2 million. 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 candy corn is protected by trademark. Hershey’s Chocolate has numerous trademarks, such as the classic Hershey’s Kiss or the Sealed with a Hershey’s Kiss phrase. In fact, even the iconic shape 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 Mars’ Maltesers and Hershey’s Whoppers. This isn’t the first time that Hershey and Mars have been at odds. In 1998, Hershey’s claim 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 dropped the suit in 2011.
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.
Maddie’s blog, on how different kinds of intellectual property interact with the Halloween season, reminded me of a case mentioned in the news last year regarding Silvertop Assocs. v. Kangaroo Mfg. Here, a banana costume was the subject of dispute between the costume designer “Rasta Imposta” and “K-Mart”, which took precedence from the Star Athletica, LLC v. Varsity Brands, Inc decision mentioned by Maddie. After Rasta Imposta was granted a preliminary injunction against K-Mart, on appeal it was found that the “sculpted banana, once split from the costume, is not intrinsically utilitarian and does not merely replicate the costume, so it may be copyrighted”.
The argument from K-Mart was, in part, that the scenes à faire doctrine – where features are so common or necessary to expression of an idea that copyrighting the expression would be akin to copyrighting the idea itself – would make the banana costume ineligible for copyright protection. In response to this, the court found that although a banana costume would likely be yellow, curved, and have ends similar to a natural banana, it need not have these features and therefore the scenes à faire doctrine would not apply. While the legal analysis looked at the record before it – which included over 20 examples of banana costumes that would not be infringing – I find it strange that the typical, bog-standard, banana consisting of a yellow, curved shape with black ends, could be afforded copyright protection. I find it to be quite bananas honestly.