Maybe it’s the opportunity to get creative for an upcoming party, an excuse to eat candy brought into the office days after, or maybe it’s just that it signals the unofficial end to our hellacious Summers. Whatever the reason, Halloween rocks IMO. Earlier this year, a client of mine that designs and sells Halloween costumes (in addition to their main lines of novelty costumes, inflatables, signs, etc.) wanted to know how best to protect one of their latest designs which had been big seller so far, and which the client was also considering using as the corporate logo. In this post, we take a very high-altitude view at some of the most basic ways you can help to protect your original Halloween costume design.
Copyright in Costumes
Copyright protection extends to original expression that is embodied in some tangible form. In other words, if your design is both original and fixed in a physical medium, Copyright (which are actually a bundle of several, potentially valuable rights) could extend to your costume design. There are a few problems with relying solely on Copyright law, however.
For one thing, copyright does not extend to useful articles. In other words, if your design cannot be separated from its utilitarian function, then it may not be protected by copyright. On the other hand, if your costume has a unique or original graphical element or pattern imprinted on its surface, that portion anyway may qualify.
As I wrote in this blog not too long ago, the larger problem with relying solely on Copyright protection is that copyright only protects the original expression of an idea or concept. Ideas or concepts in and of themselves are not protectable.
For example, my client’s design was based upon a, shall we say, mythical creature. The idea or concept of a colorful [the mythical creature] was not exactly something that’s terribly unique. I had to break it to the client that even having a registered Copyright in their costume design would not necessarily prevent others from creating costumes that are based on the underlying idea or theme–or even strongly resemble the design (they sell primarily through Amazon, after all!).
So, with all of that said, should you even bother to register your Copyright in your costume design? My answer is nearly always a resounding Y-E-S. This is for a number of important reasons:
For one thing, compared with Federal registration of, say, a trademark (see below) or a patent (see further below), applying to register your copyright with the U.S. Copyright Office is relatively inexpensive and also pretty straightforward (most of my clients can and do handle this directly with the USCO themselves).
Next, it is important that you as the designer or owner of the design at least attempt to register the design with the USCO since registration of your Copyright is now a precondition to being able to sue an infringer in Federal court. In other words, even if you have a copyright in a design, if someone duplicates it exactly and goes on to make a $1,000,000 off of it, if you can’t show it’s been registered, you won’t even be able to set foot in Federal court to pursue them. That fact will also make it a challenge to find an attorney or law firm willing to accept your infringement case.
Why is that? Registration of your work brings into play what could be considerable statutory damages (i.e., pre-set damage amounts that are codified in Federal statutes) and possibly even recovery of your attorney’s fees against a potential infringer, both of which tend to be very alluring to IP litigation lawyers examining your case and, as a result, can serve as a strong deterrent to potential and actual infringers, not to mention getting your cease and desist letters taken seriously, and possibly even compelling a favorable settlement with the infringing party before having to fire a single shot.
Trademark of Design
As mentioned at the top, my client was thinking about using their popular design as their new corporate logo. Anytime you want to use certain combinations of letters, words, numbers, symbols, or even a design as a brand identifier or something to help customers distinguish your products (or services) from that of your competition, you are talking trademark law.
If your business is considering using your design (unique or otherwise) as its logo and brand identifier across state lines (or even internationally), you should seriously consider applying to register your logo and even your company name as a trademark with the U.S. Patent and Trademark Office.
Successful Federal registration of your trademark (or just “marks” as we trademark lawyers like to call them) gives you essentially a monopoly on the usage of that mark in whatever categories of goods/services you’ve chosen, and in the specific manner you described, in your trademark application.
My client also brought up a question I sometimes get from business owners who come to see me. They had their design in several different color schemes and wanted to know if they should register each variation of the design. While I could not speak to the Patent side of things (see explanation below), I advised that, as far as trademark registration went, I would not bother registering all four colors.
Rather, I recommended simply trying to register the single design in black and white drawing, without a claim to any specific color. That way, whatever colors they later opted to use with the mark wouldn’t matter, so long as they were using the actual design itself as applied for. I said this for a number of reasons:
For one thing, you must register your logo design as you actually are using (or, if filing on an intent to use basis, plan to use) it in interstate commerce. In other words, if you apply for registration of a particular logo design but you are unable to show that you are using that identical design in commerce (even if you or your marketing team has made what might seem like an insignificant change to it), you run the risk of having the registration refused at best or being found to have committed fraud upon the USPTO at worst, which also means losing your registration for good.
Next, as a practical matter, it’s hard to build consumer recognition of your brand when its logo is changing all the time, even if such changes seem minor. Although you and your marketing folks may come up with multiple design options, most companies with valuable (and, more importantly, protectable) trademark portfolios will use just a single logo or stylized word mark design as their trademark at any one time.
Finally, applying for registration of your design as a trademark can be pricey. Even apart from the legal fees involved, trademark filing fees are anywhere from (currently) $250-350 per mark per category (technically known as an “International Class”) filed in, so even if it was a good idea for my client to register all four color variations of their logo design, it wouldn’t take too long for the TEAS filing fees to pile up.
Patenting a Costume
When the word “patent” comes up, most people (myself included) tend to think of very technical or mechanical inventions. However, protection for your costume design can possibly be achieved through patent (whether utility or design) depending on the design itself. In their discussion with me, my client raised having filed for a patent in China for their design and wanted to know if they should do the same here in the U.S.
Utility patents are intended to protect the usefulness of the specific invention patented; for example; my client might be able to patent the actual construction of the costume or how it actually functions.
Meanwhile, the purpose of a design patent is to protect the specific appearance of the article, as opposed to how it works. Put another way, a design patent refers to the ornamental design of the object, not its function.
However, as I explained to the client, I am not a member of the Patent bar and cannot advise on the issue of whether or not a design could be registrable as a patent here in the U.S. We work with several patent attorneys both here locally and throughout the United States, so if you have a costume creation or design that you might wish to patent, feel free to reach out to our office, and we’ll gladly refer you.
Most of us would be forgiven if we thought more about how/if our Halloween costume will fit or (at least those of us here in Arizona) will be too hot underneath rather than the intellectual property issues that come into play. However, for you highly creative and original types considering scaling up and taking your costume design (or, really, any design or artistic creation) to market this season and are interested in the best steps to protect your creation, contact our Phoenix law firm for an appointment with an intellectual property attorney to discuss how to best protect and monetize your valuable intellectual property rights.
Kids in Mummy Costumes by Daisy Anderson via Pexels (image cropped)
Ben Bhandhusavee is the Managing Attorney for BHANDLAW, PLLC, a startup, technology, and e-commerce law practice advising founders and management teams on company startup, corporate and technology transactions, e-commerce, as well as Internet privacy concerns. The firm serves corporate and individual clients throughout Arizona, the United States, and internationally. Our offices are conveniently located along the Camelback corridor in Phoenix’s financial district. For more information about our Intellectual Property practice, feel free to reach out using the contact form on the right or call us at (602) 222-5542 to schedule a meeting. Connect with Ben on LinkedIn or Avvo.