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 memes 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 Mario to Video Game Guy and Aladdin to A-Lad-In A Costume 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 Copyright Act, 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, the useful article doctrine, to exclude jewellery and masks. In Pyrrha Design Inc. v 623735 Saskatchewan Ltd. (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 Canadian Intellectual Property Office 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 sculptural or pictorial works. Fortunately for trick-or-treaters, most jewellery designs are not “sufficiently creative or expressive” 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., masks have been held 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 held 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 York ruled 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, Star Athletica, LLC v Varsity Brands, Inc., 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 Silvertop Associates Inc. v Kangaroo Manufacturing Inc. 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. Trademarks 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 The Addams Family and Beetlejuice) 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 sued by Versace over the iconic Jennifer Lopez dress. The central argument lies in trademark law—that the clothing has acquired the requisite distinctiveness such that it is strongly associated with the brand or designer and copycats would create a high likelihood of confusion 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, section 29.22(1)(e) of the Copyright Act 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 generally accepted 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!