Anita Gogia is a IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On on the intriguing case. engages novel issues of trademark infringement, trademark dilution, and cybersquatting (MetaBirkin.com domain name in this case) by artists in the metaverse.

Rothschild that depicted the Hermès Birkin bag in digital fur instead of leather, seemingly present in luxury handbags. The NFTs were on every further sale. After Hermès took down the NFTs from OpenSea, Rothschild moved to a different marketplace and “MetaBirkin” on Discord. Rothschild argued that “” and that the NFTs were a “” under First Amendment protection. Essentially, he argued that “MetaBirkins” were .

The jury found that Rothschild’s “MetaBirkin” NFTs . The key issue was whether the “MetaBirkin” was artistic expression under First Amendment protection, or a commercial product that causes consumer confusion. The jury concluded that while artistic expression was present, Rothschild intended to confuse consumers.

During the trial, Hermès provided evidence of actual consumer confusion which included about if “MetaBirkins” were connected to Hermès. Rothschild rejected these claims by providing that he to his website clarifying that the “MetaBirkins” were not connected with Hermès in any way and that his .

The jury was also influenced by Judge Rakoff’s reasons to deny the motion for summary judgment, and his exclusion of expert testimony. Judge Rakoff held that the test for artistic works applies where the key inquiry is This test was applied as opposed to the test, . Thus, Judge Rakoff held that the artistic relevance was present. Blake Gopnik provided expert testimony that Rothschild brought forth in this case. Had this been admitted, the jury ; thus aligning them in the artistic expression context.

Following the decision, Rothschild’s legal team that the dispute is “.” The team also pointed out Hermès’ hypocrisy as a luxury fashion brand who claim they care about artists but “.” This case has been followed by many to observe how the court resolves the issue of NFTs using intellectual property for the purpose of artistic expression. It is unknown whether this decision stands as precedent since intellectual property right disputes are significantly context-based. After this decision, artists can only conclude for certain the importance of obtaining legal advice before using IP in their NFTs, even if it is in the name of artistic expression.

The post Bad Day For Artists! Updates To The Hermès v Rothschild Dispute appeared first on IPOsgoode.

Anita Gogia is a IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On May 25, 2021 the Japan Patent Office (JPO) Nobuaki Kurokawa a trademark for his apparel brand named “CUGGL” for class 25 (clothing and footwear). This year, when the t-shirt design ��for CUGGL was released, the Italian fashion brand Gucci tried to get the trademark cancelled.

Fast forward a few months, on July 26, 2021, Gucci filed an opposition against the “CUGGL” mark with the JPO. Gucci argued that CUGGL t-shirts would confuse customers because of the font and style of the design. Gucci cited of the Japan trademark law in support of their claim.

Gucci that Kurokawa obtained the trademark with malicious intent to take advantage of the luxury Italian brand’s goodwill and reputation as customers would recognize his design to say “GUCCI” even when they can only see the top half of the word. Even though half of the word “CUGGL” is covered with hand drawn paint, anyone familiar with Gucci’s brand might assume at first glance that the shirt says “GUCCI” underneath the paint.

Unfortunately for Gucci, its claim was not successful. As of July 12, 2022, the JPO found that the two brands were distinct and . Even though the decision makers Gucci’s popularity and reputation, they of a resemblance between Gucci and CUGGL based on visual, phonetic, and conceptual considerations. Overall, the low degree of similarly, according to the JPO, is not enough to accept that consumers would be confused between Gucci and CUGGL.

Kurokawa has other successful trademarks and pending applications for brands that potentially confuse consumers (for , “AZIDES” and “PAPAGORIRA”).

Some that the JPO’s decision against Gucci is a win because large companies have manipulated the law to prevent harmless parodies of their brands and the public would not be confused by such parodies. This decision illustrates that the result of a trademark infringement allegation is not so predictable in Japan as it may be in other jurisdictions.

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Serena Nath is an IPilogue Writer and a 2L JD candidate at Osgoode Hall Law School.

After a lengthy 22-year trademark battle with Chinese businessman Fang Yuzhou, London-born shoe company to use their name in China. Manolos have never been sold in mainland China because Yuzhou registered the trademark “Manolo & Blahnik” in 1999 in China. ��If Manolo Blahnik had attempted to sell their shoes in China, they would likely face legal consequences from Yuzhou and be unable to fight counterfeit products sold ��there. In the subsequent two decades, Manolo Blahnik repeatedly appealed the decision. However, these appeals were dismissed as the courts ruled that Manolo did not present sufficient evidence of adequate sales in mainland China prior to 2000. Resultantly, Manolo Blahnik has lost significant sales, as China is the fastest growing luxury market.

China’s Trademark System

Historically, China’s trademark system was based on a , meaning that the exclusive right of a trademark is awarded to the registrant who first applies. As such, no prior use, good faith, or intention for real use of the trademark is required to acquire the exclusive rights over a trademark. Here, although Yuzhou had no intention to use the registered trademark, because he had applied before Manolo Blahnik, and was hence awarded exclusive rights to use the trademark “Manolo & Blahnik.” This is in to other jurisdictions, such as Canada, where the exclusive right to a trademark is not necessarily awarded to the first registrant, and prior use or intention to use is considered. However, in 2019 amendments to China’s trademark legislation resulted in drastic changes for trademark disputes.��

The 2019 amendments focused on “bad-faith” trademark filings, specifically that “[a]pplications made in bad faith for trademark registrations that are not intended for use shall be rejected.” Additionally, trademark agencies are prohibited from representing clients if the agency is aware that it is a “bad-faith” filing, and the penalty for filing a “bad-faith” trademark is either warning or fine. Based on these amendments, then, the Supreme People’s Court of China finally ruled in Manolo Blahnik’s favour.

Future Implications of Trademark Legislation Amendments

The 2019 amendments will likely aid in fighting against “bad-faith” filings. However, as observed with the Manolo Blahnik case, the amendments are also likely to ensure increased brand protection for foreign entities who otherwise are not able to register trademarks due to the “first to file” rule. of the amendments resulting in victories for foreign companies include a lawsuit won by athletic apparel and footwear manufacturer New Balance, and another won by former NBA star Michael Jordan, where Chinese companies imitated and used these entities’ logos. Despite recent victories, some foreign companies still face an uphill battle. In 2021, Japanese retailer Muji against a “copycat” Chinese company. It is clear that further amendments are still necessary to overcome the “first to file” rule.

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Anita Gogia is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

The by Judge Rakoff for a motion to dismiss in the case of clarified the applicability of and the on NFTs containing trademarks for artistic expression. ��This case has significance in the application of our current understanding of trademark infringement in the metaverse.

Suggested reading: The March 2, 2022 article titled written by Jasmine Yu was posted on IPilogue and covers the early developments and key legal issues of this case.

Background

In brief, on January 14^th, 2022, Hermès filed a complaint against Rothschild for his use of Birkin bag trademarks in his NFTs. This case differed from other counterfeit trademark infringement cases because Rothschild’s work (100 NFTs of various Birkin bags) has no physical form. Hermès these “MetaBirkins” diluted their trademarks and goodwill contrary to s. 43(a) of the and are commercialized similarly to their valuable real-life products.

The Arguments

On February 9^th 2022, Rothschild submitted a motion to dismiss. On March 21, 2022, Rothschild , where he argued that ��his MetaBirkin commented “on the animal cruelty inherent in Hermès’ manufacture of its ultra-expensive leather handbags, and that the MetaBirkin is speech, art, and expression protected by the First Amendment. Harvard Law School Professor Rebecca Tushnet, representing Rothschild, .

the Rogers test from a 1989 2^nd Circuit ruling— those using trademarks for artistic expression which doesn’t explicitly mislead consumers are protected from infringement claims. The bar is high, and a slight risk that the use of a trademark suggests endorsement or sponsorship is “outweighed by the danger of restricting artistic expression”. Tushnet has also stated that anything but a dismissal of the case may have a on artists.

On the other hand, that Rogers does not apply because Rothschild’s actions of setting up an online store and the marketing materials support a goal of selling a digital good. To this, Tushnet that artists are protected in marketing their work to make a profit. Hermès also argues that in which he said that there wasn’t “much difference” between having the crazy handbag or “now” bringing that into the metaverse illustrates that the MetaBirkin NFTs are a commodity. that the court should apply the Polaroid factors to evaluate whether the use of the trademarks confuse the public.

The Decision

In May, Judge Rakoff Rothschild’s motion to dismiss, releasing detailed for his decision on May 18^th, 2022. that the Rogers test applies in this case because the MetaBirkin NFTs “could constitute a form of artistic expression”. Using the NFTs . .However, the motion was ultimately denied because the Court held that the MetaBirkin does not satisfy the Rogers test at this stage as Rothschild intended to associate the NFTs with the goodwill of their Birkin marks. that Hermès made sufficient allegations of “explicit misleadingness” and so denies the motion to dismiss. Rothschild’s argument that the court should not follow the Polaroid likelihood-of-confusion factors in assessing whether MetaBirkin explicitly misleads per Rogers.

It is notable that Judge Rakoff was influenced by Rothschild’s marketing efforts and commercial actions — this casted doubt as to whether the NFTs were meant only for artistic expression and not as commercial goods.

Although freedom of artistic expression varies globally, the inherent idea that art is interpretative and holds meaning beyond a superficial level is arguably a universal truth. The metaverse allows artists to explore a new source of income, undoubtedly increasing the volume and popularity of NFTs and other virtual commodities. Such a cultural movement illustrates the significance of this case; and while it originates in the US Southern District of New York, the importance transcends borders. This decision has important implications as to how courts may interpret metaverse-related trademark infringement claims moving forward.

The post What’s New in the Metaverse? The Line Between Artistic Expression and Commercial Goods May Soon Exist! appeared first on IPOsgoode.

Photo by Wen-Cheng Liu ()

Jasmine Yu is an IPilogue Writer and a 1L JD Candidate at the University of Toronto.

The Hermès Birkin is undoubtedly among the most iconic bags in history. Most of us can recall Samantha from Sex and the City being told: “it’s not a Bag, it’s a Birkin.” The Birkin has become the ultimate status symbol: its limited production makes it incredibly . The bag is immediately recognizable due to its timeless silhouette, features in TV shows and movies, and popularity with .��

The Birkin’s distinctive shape has acquired a secondary meaning, such that its trade dress has a with the US Patent & Trademark Office. The Birkin’s hefty price tag — a Diamond Himalaya Birkin for over $400,000 in 2017 — has made it a . Hermès is embroiled in constant defending the Birkin against trademark infringement and passing-off.

Recently, Hermès has tested out the scope of their intellectual property rights in the metaverse. On January 14, 2022, Hermès a trademark infringement and dilution lawsuit against Mason Rothschild, the designer of MetaBirkin Non-Fungible Tokens (NFTs), a collection of 100 fur-covered Birkin-shaped bags, which launched in December 2021 on the NFT exchange platform .��

Hermès’ Action

Hermès claims that beginning on December 2, 2021, Rothschild’s advertising of his MetaBirkin NFTs infringed Hermès’ “globally recognized” “BIRKIN” trademark and Birkin bag trade dress. They claim that Rothschild’s usage of their marks was likely to cause confusion in the minds of the purchasing public and create a false impression that Rothchild’s NFTs were authorized, sponsored, or approved by Hermès.��

Hermès claims trademark infringement, false designation of origin, and trademark dilution. They seek monetary damages, an injunction to bar the further use of Hermès’ marks, a transfer of Rothschild’s metabirkins.com domain, and delivery of all unauthorized products and advertisements.��

On December 16th, 2021, Hermès sent a cease-and-desist letter to both OpenSea and Rothschild, notifying them of the “blatant violation of intellectual property.” While OpenSea, the NFT exchange platform, removed the NFTs, Rothschild still advertises and offers his NFTs. However, Rothschild has since added disclaimers on his website, stating “We are not affiliated, associated, authorized, endorsed by, or connected with HERMÈS,” and provides a link to the official HERMÈS . Hermès notes the absence of these disclaimers from all other channels that sell MetaBirkins, creating confusion among consumers.��

Trademark Protection in the Metaverse��

Rothschild addressed the cease-and-desist letter in an Instagram , claiming that in creating��MetaBirkin NFTs, he “re-interpreted the form, materiality, and name of a known cultural touchpoint” and that selling his MetaBirkin NFTs was “akin to selling them as physical art print��.”

Hermès, however, states that MetaBirkin NFTs’ success undoubtedly arises from the “confusing and dilutive use” of their trademark. MetaBirkin NFTs were even described as a “tribute to Hermès’ most famous handbag, the Birkin,” in its initial offering on OpenSea. Citing one commentator, Hermès claimed that but for the NFT being called a Birkin, Rothschild’s NFTs would not get any attention.

Is this Fair Use?

Several barriers may preclude Rothschild from successfully claiming fair use. His extensive use of Hermès’s trademarks — i.e., the name “MetaBirkin,” the metabirkins.com domain, the hashtags #MetaBirkins and #NotYourMothersBirkin — is likely commercial in nature, which conflicts with fair use claims.

Fair use also does not provide protection when the alleged infringer used the mark as a trademark of their own, which Rothschild has done by repeatedly complaining of ‘counterfeited’ or ‘fake’ MetaBirkins on NFT exchange platforms.��

In support of Hermès’ contention of commercial use, the 100 MetaBirkin NFTs for $42,000 initially, and have garnered re-sales of $1.2 million, of which, Rothschild is entitled to 7.5%. Rothschild has already earned over $120,000.��

Future of Fashion in the Metaverse

While trademark law has well been established for luxury fashion, the metaverse complicates existing law. This legal battle has raised the novel issue of whether Hermès’ trademarks extend to digital content. Other big-name brands are testing the waters of the metaverse, such as .

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Photo by Francois Le Nguyen ()

Emily Chow is an��IPilogue��Writer and a 1L JD Candidate at Osgoode Hall Law School.���� �� ����

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2022 is primed to be an important year for humanity’s actions against global warming. COP26 (Conference of Parties) . It generated momentum that must continue to meet the goal of the by 2050: to reduce the Earth’s temperature by 1.5°C. 196 Parties adopted this internationally binding treaty. With the additional challenges brought forth by COVID-19, (net)zero-carbon solutions urgently need to be implemented across all levels and structures. The from this collective responsibility to reduce greenhouse gas emissions. It has the capacity to usher in radical, life-saving changes. One way is through the

According to the World Economic Forum, eight industries generate : agriculture, construction, fashion, fast-moving consumer goods (“FMCGs”), electronics, automotive, professional services, and freight. This article discusses the role of fashion in climate change, and more importantly, highlights some textile innovations and organizations demonstrating the core values of circular economies.

Circular Economies: An Overview

A “circular” economy is more than a corporate citizenship buzzword or a . The three key pillars, or goals, supporting circular economic systems are: to. True circular production generates products and materials that can be reused, repaired, or remanufactured, thereby eliminating the concept of “waste” generated through consumer capitalism. These systems emulate what is inherent within nature’s ecological systems, such as and or cycles.

The Case for Fashion

Fashion, and by extension any forms of creative self-expression, potentiate important sociopolitical spaces for and individuals. Fashion can be , and . It can be responsive to or representative of . Fashion coalesces and will continue to so long as culture exists. It is also plain fun to feel good in what you’re wearing and for your clothing to represent you.

The fashion industry has roots across including (pun intended), retail, , , . Remedying the supply chain can , which struggle to fund expensive decarbonization efforts given their low profits relative to high emissions. Consumer-facing industries like fashion generate higher profits per ton of emissions, and thus can pass along decarbonisation costs in .

Along with the benefits of a circular economic system come concerns of and the privilege inherent in purchasing an expensive item upfront. Not to mention, the capacity to make climate-informed decisions further depends on sizing and access inclusivity for all ���ǻ徱���— of the fashion industry. However, many and have demonstrated the power in , , to one of slow fashion. , much of which is spurred by and a culture of consumption (think of TikTok or , hauls, ‘shop with me’ videos, negative associations of wearing something twice, etc.).

While the solution isn’t perfect, as an individual starting point, we can begin to unpack the small ways we as individuals can reassess our spending habits. Some mindfulness questions we can make a habit of asking ourselves are: What about [item] do I like or dislike (e.g., price, fit, colour, material)? Do I have anything similar? Can I get this second-hand? Will this material/style last several seasons? Do I see myself wearing this a few years from now?

Ultimately, structural change from the top-down must also occur to remedy our current climate. Yet investments made towards technological innovation and zero-emissions solutions have already proven to be profitable, sustainable, and . Furthermore, the collective push towards , , business certifications (such as , ), and is extremely promising.

Fashion’s Patented Innovations

I am really looking forward to seeing how the above movements evolve and respond to the coming year ahead. I am also excited about the increased adoption of patented materials and products! The production of synthetic textiles, garment-making, and the supply chain generates . Introducing nature-based solutions in agriculture and textile processing will be key to reducing greenhouse gas emissions.

, , , and are a few companies building towards a circular economy in an exciting way.

Mycoworks is a San Francisco-based company with a for Fine Mycelium that has developed a called REISHI: a made-to-order, vegan, and biodegradable yet durable leather. Last year, they made headlines with their , whose classic “Victoria” style was remade with Fine Mycelium and named .

AlgiKnit makes patent-pending kelp-based yarns and textiles in New York. Their closed-loop product life cycle allows them to break down end products to be remade into new ones. This seaweed-based yarn allows manufacturers to excise highly toxic chemicals from the treatment process, protecting workers from dangerous and . AlgiKnit produced a , and one can only imagine the streetwear implications this new material could have. Furthermore, the company announced the opening of an , where they will work with global brands to adopt new biotechnological textile innovations.

Lenzing’s TENCEL Lyocell and Modal fibres are fibres originating from responsibly managed forests in Austria. They use a non-woven spinning process that recycles the water and solvents at a rate of more than 99%. These fibres have been certified biodegradable and compostable

ALT TEX, a homegrown Toronto start-up, is a former client of the IP Innovation Clinic at Osgoode Hall Law School. Founders Myra Arshad and Avneet Ghotra have developed a novel bio-polymer technology that re-engineers sugars extracted from food waste into a fibre substitute to , which is made of plastic. ALT TEX’s closed-loop, biodegradable, and carbon neutral textile is a game-changer with the potential to replace polyester entirely, which makes up over 60% of textile manufacturing.

Further Engagement:

Aja Barber’s Consumed, a book on the textile industry’s racist, colonial, and exploitative history, and how to empower yourself by unlearning the mentality of mass consumerism:

Intersectional Environmentalist, a climate justice community centering BIPOC and historically excluded voices:

Social/climate activists Stevie (aka ), Summer Dean ()

Second-hand, Consignment and Thrift stores (to name a few!): , , Facebook Marketplace,

Fashion Impact Fund, supporting women entrepreneurs and the fulfillment of UN’s Sustainable Development Goals:

Ecologi, a climate-positive investment subscription where you can support environmental projects as a business or individual supporter:

The post Biotech of the Future: Fashion’s Role in Climate Change appeared first on IPOsgoode.

Photo by Artem Beliaikin ()

Meena Alnajar is an��IPilogue��Writer, IP Innovation Clinic Fellow,��and a 2L JD Candidate at��Osgoode��Hall Law School

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Following its worldwide premiere on November 24, 2021, the biographical film House of Gucci may face for its depiction of the Gucci family. The film is on Maurizio Gucci’s life leading up to his murder by a hitman hired by his ex-wife Patricia Reggiani, played by pop star Lady Gaga. The Gucci family’s heirs spoke out on how the film inaccurately represented the family members as The family stated that they would to protect their name, hinting at forthcoming legal action. Given that the film relies heavily on the Gucci name, there are concerns as to what legal ramifications director and the production company could face.

Who Owns the Name

Since the film discusses both the Gucci family and the Gucci brand, it may be helpful to examine each mark. The Gucci family is attributed to the family members and as such has no technical legal protection. The word ‘Gucci’ however, is also a fashion brand currently owned by the French corporation . Therefore, the family has no legal control or stake in the Gucci name as a brand. Gucci has been trademarking as a fashion brand , garnering over one hundred marks. In addition to registrations for the word Gucci, the brand has several design marks such as its renowned double Gs.

Trademark owners can to the use of their trademark in media and film and file a trademark infringement suit as a result. For the House of Gucci film, the fashion house with the filmmakers to let them use the Gucci wardrobe. There was evidenced consent in the matter, so the film is unlikely to face a trademark infringement suit. Further, most brands reject use of their registered marks because they worry people will get as to who owns the mark. Since the movie’s purpose is to detail Gucci’s ownership of the brand, there is little possibility that audiences would get confused as to who owns the ‘House of Gucci.’ However, the family may still be able to claim defamation for how their likeness appeared on the screen.

What Actions Could the Real Gucci Family Take?

The Gucci family felt in the film, and so they may have grounds for defamation, a civil lawsuit. Though its statutory definition varies between jurisdictions, is generally where one’s reputation has been harmed due to a negative depiction, such as a film that represents them in a negative light. A claimant needs to that the negative depiction is about them, that there were remarks that could cause them serious harm, and that these remarks were circulated to a wider audience. In response, a filmmaker must ground the representations in truth as best as they can. There should be some or fact that would support the claimant’s representation in the film. House of Gucci is based on a non-fiction book by fashion reporter , so the filmmakers could possibly rely on the book as evidence to explain the Gucci family’s depiction in the film.

Narrative films often embellish and exaggerate to captivate audiences, but the filmmakers for House of Gucci may face legal consequences for their creative decisions. The real Gucci family may not have grounds to sue for the Gucci mark, but they could move forward with a defamation suit for the many faces behind the double Gs.

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Tianchu Gao is an IPilogue Writer and a 1L JD Candidate at Osgoode Hall Law School.

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are legal mechanisms that serve to protect corporate identities by distinguishing the products of a particular business from others in the marketplace. They have become so fundamental and ubiquitous in the modern economy that you may think that trademark registration is a straightforward process. But there are unexpected complications—what should we do about trademarks that appear obscene?

Section 9(1)(j) of Canada’s prohibits the registration of marks that consist of or are likely to be mistaken for “” In their clarifies the interpretation of this provision:

• A scandalous word or design is one which is offensive to the public or individual sense of propriety or morality, or is a slur on nationality and is generally regarded as offensive. It is generally defined as causing general outrage or indignation.
• A word is obscene if marked by violations of accepted language inhibitions or regarded as taboo in polite usage. This word “obscene” is generally defined as something that is offensive or disgusting by accepted standards of morality or decency; or offensive to the senses.
• A word or design is immoral when it is in conflict with generally or traditionally held moral principles, and generally defined as not conforming to accepted standard of morality.

The test that determines if a trademark is “scandalous, obscene or immoral” depends on whether it “ The Manual further clarifies this standard through a review of the caselaw. Problematic trademarks discussed in the Manual include the word “HALLELUJAH” for offending people’s religious sensibilities, the word “OOMPHIES” which resembles “oomph,” the American slang for sex appeal (though the decision to deny registration was later overturned), and the representation of . These examples, although stemming from cases heard decades ago, illustrate what CIPO considers “scandalous, obscene or immoral.”

The American version of the law concerning obscene trademarks is already dead. The Lanham Act (or the U.S. Trademark Act) previously banned registration of marks that “” or contain “.” Both provisions were repealed a few years ago after a series of successful challenges launched by rock bands and clothing designers with trademark proposals like “,” “,” and “.” The U.S. Supreme Court held on separate occasions that these provisions were unconstitutional under the of the First Amendment. The public’s changing attitude toward vulgar expressions clearly inspired by rising pop culture may be equally important underlying these rulings. People, especially from younger generations, tend to accept these expressions and ��not see them as immoral or obscene. After all, the line that distinguishes the obscene from the non-obscene is usually thin and subjective.

Is section 9(1)(j) of the Canadian Trademarks Act also subject to a constitutional challenge? It’s hard to tell. As entertainment lawyer points out, the Charter protects people’s fundamental freedoms in “,” but it also gives the government the discretion to limit such freedoms to the extent “.” Social values clearly play a major role in deciding where the boundary lies, but courts also need to be vigilant in distinguishing social values from “��.”

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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 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 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 , 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, , to exclude jewellery and masks. In (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 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 . Fortunately for trick-or-treaters, most jewellery designs are not 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., 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 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 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, 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 . 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. 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 and ) 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 . The central argument lies in trademark law—that the clothing has acquired the such that it is strongly associated with the brand or designer and copycats would create a high 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, 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 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!

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Claire Wortsman is an IPilogue Senior Editor and a 2L JD Candidate at Osgoode Hall Law School.

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Which trademark battle? THE trademark battle—the one over who owns trademark rights in the word “THE”. In May 2019, Marc Jacobs Trademarks L.L.C. (MJT) to the United States Patent and Trademark Office (USPTO) seeking registration for use of the word “THE” on clothing, handbags, and related goods. Three months later, The Ohio State University (OSU) their own application for use of the word “THE” on clothing and related goods.

Although OSU claims to have used the mark in commerce since August 2005, MJT’s application was filed earlier. As a result, OSU was informed in September 2019 that MJT’s application may bar theirs from registration. In April 2021, OSU a Notice of Opposition claiming damages if the USPTO registered the mark “THE” to MJT. THE dispute between the two parties continued from there.

In August 2021, OSU withdrew their opposition proceeding. A university spokesperson that it was “pleased to have reached an agreement with Marc Jacobs,” noting that, “Marc Jacobs’ THE branded products are associated with high-end/contemporary fashion,” and would therefore be sold through different channels than OSU’s THE branded athletic and collegiate products. Likely connected to the agreement reached with OSU, MJT their trademark application in April 2021. They added the qualifier that their list of goods be, “promoted, distributed, and sold through channels customary of the field of contemporary fashion.” On the other hand, OSU’s application qualifies that their list of goods will be, “promoted, distributed, and sold through channels customary to the field of sports and collegiate athletic��.”��

OSU’s withdrawal of their opposition proceeding does not, however, guarantee the success of MJT’s application. OSU is not the only party to object against MJT. The USPTO previously problems with MJT’s application, particularly that the mark fails to function as a trademark, “indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from other��.” For example, in MJT’s most recently submitted trademark ‘’, the word “THE” appears ornamental.

The specimen, a red sweater, features “THE” in black lettering, “directly on the upper-center area of the front of a sweater where ornamental elements often appear,” rather than “on the pocket or breast area of a shirt,” where, “consumers may recognize small designs or discrete wording as trademark��.” OSU’s submitted , a red T-shirt, features “THE” in white lettering, also on the upper-center area. OSU’s T-shirt also features the Nike logo on the pocket or breast area as well as the Ohio State logo directly underneath the “THE” lettering. While a mark may be simultaneously ornamental and source-identifying, something merely ornamental may not be registerable as a trademark and will likely be refused for failure to function.

In my experience, both Marc Jacobs and OSU have several clear, source-identifying marks and “THE” is not one of them. While I might be able to tell that a high-quality sweater with “THE” lettering is a Marc Jacobs product, that does not mean that “THE” is source-identifying. Those interested in fashion could also likely identify a as an Alberta Ferretti product. Yet Alberta Ferretti likely would not successfully trademark “MONDAY,” “TUESDAY,” and so on.�� ��

The USPTO that OSU submitted many blog posts, articles, and comments as evidence which refer to “THE OHIO STATE UNIVERSITY” as a whole, not “THE” on its own. This is similar to the way in which “THE” sits on top of the “OHIO STATE” logo on OSU’s submitted specimen. In my view, “THE” alone would not be enough to indicate what the apparel represents, or even which university (The University of Oklahoma? The University of British Columbia?).

As a consumer, I find both THE applications puzzling as I fail to see how “THE” is source-identifying. That being said, the USPTO will have the final word—or already has in OSU’s case, if OSU fails to respond to their most recent Office Action by February 2022, in which case their application will be deemed abandoned. In the meantime, I will keep an eye out for more updates on THE matter.

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