A small company is taking retail giant Kmart to court over Halloween costumes.  After Kmart decided to switch suppliers of the ubiquitous banana costume, Rasta Imposta decided to sue Kmart for copyright infringement.

Before 2017, experts of copyright law would generally have called this case a slam dunk for Kmart as it may have a clear-cut defense based on the doctrine of utilitarian function.  Specifically, Rasta Imposta’s banana costume would not be copyrightable because such wearables were ineligible for copyright protection due to the functional aspects of the costume being indistinguishable from the aesthetic portions.  In other words, because the functional components (e.g., color scheme, body cutouts, shape, etc.) of the banana costume could not be divorced from the aesthetic portion and overall look of the costume (e.g., colors scheme, etc.), Rasta Imposta should not be allowed to copyright the costume.

Although experts in copyright law acknowledge that some Halloween costumes may merit copyright protection based on unique or especially detailed features, Rasta Imposta’s banana costume appears to lack either.  Many argue that the Rasta Imposta banana costume and the Kmart banana costume are nearly identical because there is no other way to depict a banana as a Halloween costume.

If Rasta Imposta could copyright their banana costume, it would basically allow Rasta Imposta to copyright the functional features of the banana costume and grant them a virtual monopoly over Halloween banana wearables.  Such control has generally been frowned upon because it may harm consumers and grants unwarranted protection to fairly generic designs.

Copyright law regarding wearables was turned on its head earlier this year when the Supreme Court granted protection to chevrons and stripes arranged on cheerleading uniforms.  Previously, cheerleading uniforms were generally considered ineligible for copyright protection because their designs relied on elements that were previously considered utilitarian and functional.  In other words, because most cheerleading uniforms relied on the same elements of stripes, cutouts, chevrons, stars, etc., these designs could not be copyrighted.  Earlier this year, however, the Supreme Court disagreed, holding that the design of chevrons and stripes assembled in a particular way on a cheerleading uniform was indeed eligible for copyright protection.  This holding blew away previous readings of the utilitarian/function doctrine, and as such, litigation over generic Halloween costumes and uniforms are expected to rise.

Thus, it would behoove major manufacturers and retailers alike to consult experienced intellectual property counsel regarding potential copyright opportunities or litigation over such fashion and wearables.

For more information on this topic, please visit our Copyright Litigation service page, which is part of our IP & Business Litigation Practice.

About the firm:

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm.  We offer  comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution.  Additional information about the litigation law firm and its litigation attorneys may be found at www.klemchuk.com.

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