IP Rights in Halloween Costumes

When I was growing up, I, like many children, wore homemade costumes of my favorite characters for Halloween – saving my parents money versus the store-bought alternatives, but certainly costing my mother time.  With a rise in intellectual property protection efforts by companies large and small in recent years, you may be wondering if your handmade creations might put you at risk for an infringement claim from one of the more over-zealous intellectual property enforcers (here’s looking at you, Disney).  As a lawyer, I am nigh physically incapable of saying “have no fear,” but I think I’m comfortable with a reassuring “have very little fear!”

The four areas of intellectual property protection that could apply to a Halloween costume are publicity rights and trademark, copyright, and patent protection.  I will address each in turn:

Publicity Rights

Should your costume include elements that could be used to identify a particular person, you may be violating such person’s publicity rights.  For example, a costume of Albert Einstein was the subject of a publicity rights lawsuit in 2010.  Publicity rights laws vary from state to state, and typically prevent unauthorized reproduction or use of a person’s likeness (which may include name, image, portrait, picture, signature, or other identifying elements) for commercial or advertising purposes.  The purpose of such laws is to prevent unauthorized parties from trading off the likeness of others without fair compensation.  Therefore, unless you plan on using your homemade costume in an advertising (e.g. in an advertisement for your small business) or commercial (e.g. manufacturing, producing, or selling your costumes) sense, you are likely not at risk for violating your costume subject’s publicity rights.

Trademark

Trademark owners have an affirmative duty to police their marks against unauthorized use by a third party.  However, trademarks by their definition are used as source identifiers for goods or services being sold in commerce.  Like the commercial and advertising aspects discussed above regarding publicity rights, trademark protection seeks to prevent parties from benefiting or trading off the trademarks of others for financial or reputational gain.  Thus, recreating a protected design, logo, image, etc. in a homemade costume that will be used for personal use only (and likely for one night only), presents very minimal risk of liability for trademark infringement.

Copyright

Unlike publicity rights and trademark laws, federal copyright protection extends to any reproduction of a protected work.  However, the Copyright Act specifically carves out exceptions for “fair use” reproductions.  Surprisingly, Halloween costumes are not directly addressed; however, the statutory factors to be considered in determining whether or not a fair use exception applies include “the purpose and character of the use, including whether such use is of a commercial purpose;” and, “the effect of the use on the potential market for or value of the copyrighted work.”  17 U.S.C. § 107(1), (4).  Again, the law focuses on commercial, rather than personal, use of the potentially infringing work.  Also, practically speaking, damages in many copyright claims are based on lost profits to the copyright owner, meaning sales of the infringing work that should be attributed to the rightful copyright holder.  Again, so long as your costume is made and used for your or your family’s personal use only, your use of the copyrighted material is very likely a “fair use.”

Patent

Patents prohibit any recreation of the patented design and, in general, apply to innovative designs.  This may sometimes apply to costumes.  For example, a patent exists for a costume that can be modified for comfort according to the outside temperature.  The U.S. laws concerning patents also consider what are known as “design patents.”  Design patents lack the exception of fair use but are only in effect for fourteen (14) years, and only protect unique and original designs separate and apart from a functional aspect of a costume.  This mains that no one can have a patent on a purple suit, but could have a design patent on a distinctive and ornamental patterned suit.  While it is unlikely that your recreated costume would run afoul of a design patent, the possibility is higher than in the other areas discussed above, particularly as there is no exception or commercial requirement.  The practical risk is even lower, as patent owners are unlikely to be patrolling neighborhoods (outside of their own trick-or-treating efforts) looking for infringers.  Furthermore, design patents are not the preferred method of protection in many cases, as the protection expires after a much shorter period (consider the fact that patent protection for designs is only 14 years, versus the “lifetime of author plus 75 years” protection applied to copyrights).

Conclusion

Avoid the urge to market, mass produce, and sell your wonderful homemade “wears” and devote the energy you may have used worrying about infringing on Marvel’s intellectual property to how many candy corns you can fit in your mouth at one time!  This author is pro-candy corn, but if that offends you to your core, consider Skittles and/or M&Ms instead.  Happy Halloween!

-Fred Freeman, Esq.

West End law firm sweeps into N.C. with new attorney

Gavin Law Offices, which handles intellectual property matters for clients, earlier this month opened an outpost in Raleigh, North Carolina, after picking up attorney Alan Etkin. It’s the firm’s first office outside of Virginia.

Founder Pam Gavin said the expansion is similar to its January push into Charlottesville when longtime solo attorney Elva Mason Holland joined the fold.

“This is very much a similar story,” Gavin said of Etkin.

Etkin, who earned his law degree from Emory University, handles a variety of business law issues for closely held corporations.

“Alan and I worked together for years. He was in house with a big client,” Gavin said. “The company he was with was sold and he was doing his own thing and I said, ‘Why don’t we tackle this together?’”

Gavin also liked the idea of having an office in Raleigh to tap into that area’s concentration of tech firms and startups, a ripe environment for the firm’s bread-and-butter IP practice.

“It’s a great market for tech and intellectual property,” she said.

The firm, founded about 15 years ago after Gavin’s stints at McGuireWoods and Reed Smith, now has an attorney headcount of seven.

Gavin said she’ll keep her eye out for future growth through similar deals with attorneys.

“I’m always plotting and planning,” she said. “I’m just going to continue to grow.”

Click here for the full article on Richmond BizSense

Gavin Law Offices expands into Charlottesville

A Richmond law firm that boasts clients in the entertainment industry has expanded its practice westward.

Gavin Law Office, which was founded locally in 2002, last month opened an office in Charlottesville.

The expansion was prompted by the addition of Elva Mason Holland, a Charlottesville attorney who had a longtime solo practice before joining Gavin.

Firm founder Pam Gavin said she’s had her eye on Holland for years.

“I’ve been trying to get her to work with me forever,” Gavin said. “She’s been solo. She needs more depth to the bench and I’m always interested in growing.”

Gavin said her firm’s practice and Holland’s book of business fit nicely together. Gavin Law represents musicians and a range of businesses, from startups up to large companies, in intellectual property matters. Holland represents talent in the entertainment business.

The new addition brings Gavin’s attorney headcount to six. Its local office is in Henrico County at 2229 Pump Road.

Holland has her bachelor’s and law degrees from UVA.

Gavin, also a UVA grad, began her career in bank marketing, before going back to law school at William & Mary. She started her own firm in 2004 after stints at McGuireWoods and Reed Smith.

Gavin has expanded the firm previously, including by adding a solo practioner in Bedford years back, before that attorney in that office decided to go back out on his own. She said this latest stop in Charlottesville won’t be the firm’s last.

“I’m always planning and plotting,” she said. “Continued expansion is on the horizon.”

Click here to read the full story in Richmond BizSense

Fluid Trademarks

Fluid trademarks are trademarks that change over a short period of time — not a careful, measured brand evolution, but a dynamic, shifting depiction of an identifiable trademark. For example, Absolut Vodka frequently utilizes its distinctive bottle shape as a platform for marketing campaigns that task artists and designers with creating unique variations on the underlying trade-dress-protected bottle shape, resulting in advertisements depicting the Absolut bottle as an Easter Island statue or an hour glass, as well as labels embellished with abstract paintings of New York City or stylized drawings of superheroes. In the digital realm, an example of successful fluid trademark use can be found in popular logo variants like Google® ‘Doodles’ — unique versions of the Google logo that commemorate holidays, anniversaries, and historical and cultural events.

Trademarks ordinarily derive strength from consumer identifiability, meaning how uniquely a word or design links a particular product to the source or producer of that product. Traditionally, trademark owners are counseled to use their marks in a consistent fashion to enable customers to automatically identify those marks with their source and the goods related to them. Abrupt and unmeasured changes to a mark can potentially weaken, dilute, or destroy the mark, narrow the scope of its protection, or subject the mark to the risk of abandonment or cancellation due to non-use.

Despite the risks posed by abruptly changing a mark, fluid trademarks are an innovative, engaging way for brand owners to connect with their consumer base. Their novelty commands attention, and their use can spur public interest and deepen consumer loyalty. In order to properly balance adequate trademark protection against the dynamic nature of fluid trademarks, the following measures are recommended when adopting a fluid trademark marketing strategy:

1. Ensure the Underlying Mark Is Suitable

The ideal candidate for fluid trademark treatment is a mark that is readily recognizable to consumers and/or a mark that is “famous.” To use Absolut as an example, consumers must be able to recognize that the bottle beneath an embellished label or within a stylized advertisement is identifiably an Absolut bottle. Similarly, Google can substitute dynamic Doodles for its conventional logo on a regular basis because the underlying mark is strong and easily identifiable to consumers. Consumers visiting Google’s homepage are generally well-aware of the services Google offers in connection with its mark, regardless of whether the day’s Doodle commemorates national women’s day or Maria Montessori’s birthday. In addition, Google’s Doodles consistently appear in the same location as the underlying Google mark, giving Google a “homepage advantage” that enables users to readily associate a given Doodle with the underlying mark, even when the visual connection is attenuated, as when Google adopts highly stylized Doodles to commemorate birthdays of modern artists like Jackson Pollock or Wassily Kandinsky.

2. Ensure the Underlying Mark Is Protected

To ensure adequate protection for a fluid trademark, the underlying mark should be protected via trademark registration whenever possible. In most scenarios, the strongest form of protection is also the simplest: trademark registrations for word marks that make no claim to design elements, stylization of letters or numbers, colors, or size will arguably give you the greatest flexibility in using variants of your mark. To return to the Absolut example, because Absolut has the right to use the underlying, unadorned vodka bottle shape, the company can generally embellish the bottle as it pleases without forfeiting its rights in the underlying trade dress.

3. Ensure the Underlying Mark Remains in Use

Although the search engine frequently substitutes its homepage logo for Doodles, Google is careful to ensure that its underlying mark is discontinued on its homepage only for a brief period of time and remains in use concurrently with the Doodles. By doing so, Google keeps the underlying mark alive, prevents claims that it has been abandoned, and preserves the right to rely on the underlying mark’s priority dates. Like Google, you can use fluid iterations of your underlying mark without forfeiting your rights in the underlying mark if you ensure the underlying mark remains consistently in use.

4. Consider the Field of Use and the Protection Available for Fluid Mark Iterations

To ensure that the material you’re thinking of adding to your underlying mark does not violate the rights of a prior user, it’s advisable to preclear the material before you adopt it in connection with your underlying mark. In addition, the fluid renditions of your mark may be protectable in their own right under trademark law or copyright law — the unique design elements of an Absolut vodka advertisement depicting the bottle as a ski jump or a robotic dog might be protectable independently of the trade-dress-protected bottle shape it incorporates. An intellectual property attorney can assist you in preclearing fluid trademark material, determining what elements of your fluid trademark are independently protectable, and helping you craft a strategy to protect those unique design elements.

5. Be Prepared to Take a Non-Traditional Approach to Trademark Protection

Fluid trademarks are increasingly a public art affair and frequently inspire public participation and third-party creativity. As a brand owner, you must be prepared to craft a careful, non-traditional approach to policing trademark use that simultaneously protects your trademark rights and guards against the risk of alienating consumers.

By ensuring the underlying mark is suitable, protected, and adequately used, and by considering the field of use, the protection available for fluid mark iterations, and the need for a non-traditional trademark protection scheme, you can retain trademark protection for the underlying mark while adopting an innovative, engaging marketing strategy through use of fluid trademarks. — Mary Witzel

Britain’s High Court: No Break for Nestle

Nestle Cannot Trademark the Shape of the Kit Kat Bar

Britain’s High Court did not give Nestle a break. The court ruled that Nestle cannot trademark the “shape of a four finger chocolate coated wafer” that is reflected in the company’s Kit Kat bar. Nestle filed for a United Kingdom trademark protecting the shape in 2010. In a battle between Nestle and Cadbury that has been raging since then, the court determined last week that Nestle’s trademark cannot be registered.

Nestle’s attempt to trademark the shape of the Kit Kat bar has faced issues surrounding the acquired distinctiveness of the shape. The shape of the Kit Kat bar does not inherently distinguish it from another product. In order to obtain trademark rights to the shape, Nestle must show that the shape has acquired distinctive character.

The High Court found that to demonstrate that a trademark has acquired distinctiveness, the applicant must prove that a significant portion of the relevant consumers perceives the relevant goods as originating from a particular entity because of that trademark on its own, and not because of any other trademark which may also be present. Here, the shape of the Kit Kat bar, while it may be generally well-known and recognizable, is not used by consumers to identify the product in the store before they purchase it. Instead, consumers rely on the Kit Kat name and logo when making purchases. The shape of the candy bar is only visible to consumers after they take the treat home and open the wrapper. Additionally, Nestle did not provide evidence to the High Court that the shape of the chocolate bar has been featured in Nestle’s advertising for a long period of time or that the shape was featured on product packaging. Thus, the evidence Nestle presented to demonstrate acquired distinctiveness was not enough to prove distinctiveness in the shape itself.

Nestle intends to appeal this decision. The company will likely present new consumer surveys specifically tailored to address the evidentiary issues that the High Court highlighted in its determination. However, Nestle may still face hurdles as it is unclear whether other products on the market have featured the same shape and whether consumers have thought that such products are Kit Kat products, which will likely factor into the acquired distinctiveness determination.

U.S. trademark law has similar acquired distinctiveness requirements for product design. Hershey, the company that makes Kit Kat for the U.S. market, has secured federal registration of trademarks in the shapes of both the Hershey’s chocolate bar squares and Hershey’s Kisses. While Kit Kat’s advertising in the U.S. may emphasize the breakable pieces of the candy bar, the same may not be true for the brand’s U.K. advertising.

This is not the first time rivals Nestle and Cadbury have come to blows over trademark issues. Previously, the parties were embroiled in litigation that ultimately blocked Cadbury from trademarking its signature shade of purple. Cadbury now intends to break off a piece of the market by producing a candy bar similar to the Kit Kat. — Rina Van Orden