The answer may scare you …

Dressing up for Halloween is something of a new thing for Aussies.  Not until recently did hordes of kids start knocking on the doors of our suburbs nervously seeking candy.  But it has really taken off big time in recent years, with parents and their kids due out in force again this Saturday trick or treating or heading to Halloween parties.  I was out there with my own kids last year and I have to say I was impressed with the costumes I saw roaming the streets. I saw good ol’ standards like Darth Vader, a stormtrooper and the Wicked Witch of the West.  There were also heaps of hip celebrity costumes like Miley or RedFoo and clever ones like Pharrell’s Hat or Shia LaBeouf’s “I am not famous anymore” mask.  I also have a few friends who were considering attending parties in bad taste costumes like Rolf Harris, ISIS, Ebola and MH370.

But you wanna know something really scary?  Your home-made Halloween costumes could maybe/possibly/theoretically drag you into a legal hell.  Cue blood-curdling scream.

Let’s take a closer look at 3 of these costumes.

  1. Could your Darth Vader costume get you into legal trouble?

Wow, you made a Darth Vader costume?  Props.  (Pun intended.)  That’s some serious Halloweening.  But have you, in designing such an awesome costume, infringed Lucasfilm/Disney’s intellectual property rights?

The short answer:

Possibly, yes.

The long answer:

Copyright law is full of muddy waters, and surprise surprise, the whole realm of copyright and fictional characters is a Dagobah swamp of muddy waters.

Let’s start with the basics.  Copyright may subsist in, among other things, a literary work, a dramatic work, an artistic work or a cinematograph film.  So presumably Lucasfilm/Disney would argue that copyright subsists in: the original screenplays in which Darth Vader features; the drawings/designs made for the original Darth Vader costume(s); all the photographs taken by their employees/contractors of the costumes; and the films in which Darth Vader appears, etc.  They would also likely want to argue that copyright subsists in the costumes themselves, or perhaps the original drawings of the costume designs.

This latter approach was the one taken by Lucasfilm in the famous stormtrooper decision from 2011 where the UK High Court ruled that a stormtrooper helmet was not a sculpture but part of a production process, it being a mixture of costume and prop in order to contribute to the artistic effect of the film as a film.  As a result they held that the stormtrooper helmet was not protected under English copyright law.

This point has yet be tested in Australia.  Under the Copyright Act 1968 (Cth), artistic works include sculptures, whether or not the work has any artistic quality or merit, but the courts in Australia have yet to consider whether a costume designed for a movie would be considered a sculpture in its own right. There is also the question of whether the unauthorised manufacture of the helmets amounts to a substantial reproduction of the original design drawings for the helmet.

However, even if copyright was found to subsist and a substantial reproduction was held to have taken place, the case could still fall over in light of section 77 of the Copyright Act.  Under that section, copyright protection is generally lost if an artistic work is applied industrially ie 50 times or more, which seems likely in this case.   This may knock out any claims based on the copyright in the original sketches or designs for the costume.

However, section 77 does not cover a certain subset of artistic works, namely “works of artistic craftsmanship”.  Is the Darth Vader costume a “work of artistic craftsmanship”?  It’s arguable. The key question here is whether the work is purely functional or has an element of real artistic or aesthetic quality as required by Cuisenaire v Reed [1963] VR 719; IB IPR 235.  While the UK Supreme Court’s position was that the stormtrooper helmet was primarily functional, it would be hard to deny that there is an element of artistic or aesthetic quality to the costume.  Artistic vision was exerted in its creation, that much would be hard to deny.  However, until the courts consider the matter, the issue is a live one in Australia.

Now, whether LucasFilm/Disney would actually go after you for copyright infringement is another question.  Lucasfilm has had a very flexible approach to copyright even holding fanfilm awards.  Disney too has taken a more flexible approach to copyright recently with the success of Frozen.

It’s worth noting too that you should be careful if you’re selling your Darth Vader costume.  If you include the name Darth Vader you could be breaching Lucasfilm’s trade mark.  If you sell something that reproduces Darth Vader’s heavy breathing, you could also put yourself at risk of trade mark infringement, as Lucasfilm has applied for a trademark in Darth Vader’s heavy breathing.  And if your costume and marketing are such that consumers are confused as to the source of the goods then Lucasfilm/Disney may also have an action in passing off or under the Australian Consumer law available to them.

2. Could your Pharrell’s Hat costume get you into legal trouble?

In case you’ve been living under a rock for the last year, the star of last year’s Grammys was a hat.  Specifically, Pharrell Williams’ hat.

You can even chat to Pharrell’s hat on Twitter.

That hat owned the night, and of course, was a popular Halloween costume this year.

Now the hat, it turns out, is a vintage Vivienne Westwood.

Click here to view the image

So, to be “Pharrell’s hat” for Halloween, you could have, if you had the spare dosh, bought an official version from Vivienne Westwood’s World’s End Boutique Shop in London or the Vivienne Westwood Online Store.

Or, you could have, like most people, made your own.  But if you did, could Vivienne Westwood successfully sue you for infringement of her intellectual property?

The short answer:

It’s not out of the realms of all possibility.

The long answer:

It’s clear that fashion designers can claim copyright in their sketches or diagrams or the patterns they design or the photos they take of their work.  However, as we mention above they lose that protection if they apply those artistic works industrially (ie 50 times or more), which Vivienne Westwood has probably done in the case of this hat.

However, as with the Darth Vader costume, an argument might be able to be made that the very first version of the hat that Vivienne Westwood created is a “work of artistic craftsmanship” for the purposes of the Copyright Act.  Again, a lot would depend on how the first hat was created and whether it has the requisite aesthetic qualities required under the Act.  Yes, it’s functional but its dimensions suggest that something else is going on here.  A question may also arise as to whether under the Act, the distinction between works of artistic craftsmanship and artistic works mean that the former was not intended to be the type of work that is industrially applied.  Assuming that it is possible to prove that the first hat Vivienne Westwood made was a “work of artistic craftsmanship”, then section 77 may not apply and the copyright subsisting in the work would theoretically be able to be enforced against anyone reproducing the work without Vivienne Westwood’s permission: see Drummond J in Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) 41 IPR 593.

Now Vivienne Westwood would need to be able to show that the “copy” you made resembles or is objectively similar to her work (something that could possibly be tested by the responses of people at the party you walk into – if they all say “Hey Pharrell!”, then she may have a case).  She would also need to prove that there was a causal connection between the work and the “copy”, ie she would need to prove you “copied” her.  Given that most people making a Pharrell hat for Halloween are obviously wanting to make a copy of the Pharrell hat, then we’re guessing that this causal connection wouldn’t be too hard to prove.

So, yeah, theoretically, she might have a case, assuming your Pharrell’s hat costume was awesome enough.  You could try arguing the parody defence, but this may require a fairly broad interpretation of what constitutes a parody.  Unfortunately, the courts in Australia have yet to define exactly what a parody is for the purposes of the defence under the Copyright Act.  But it is likely that it will involve an element of ridicule, it being the essence of the dictionary definition of the word parody.  Could you argue that the simple act of dressing up as someone else is a form of parody, whether you intend on taking the mickey out of Pharrell or just want to pretend to be him?  Maybe.  But, if your version of Pharrell’s hat is 10 times larger, then you’d be more likely to be able to rely on parody, because that would be hilarious and you would have officially won Halloween.

It is worth mentioning too that Vivienne Westwood may have been able to obtain design registration for the visual features of her hat (assuming that it was considered sufficiently new and distinctive in 1980 when she first designed it).  However, we’ve been unable to locate any such registration and even if one was located, design registration only affords protection to the owner for a limited period of time (10 years in Australia, up to 15 in the UK) and time has likely run out for Vivienne on this design.

Obviously too, if you start selling your Halloween costumes, you risk being sued for passing off or misleading or deceptive conduct under the Australian Consumer Law, assuming your designs and marketing are such that there is confusion in the marketplace

3. Could your Shia LaBeouf I-Am-Not-Famous costume get you into legal trouble?

While Pharrell may be one of 2014’s winners, it would be difficult to say the same for Shia LaBeouf.  Following his plagiarism issues, he famously declared that he was not famous anymore on the red carpet in Berlin (and as part of a performance art piece in Los Angeles).

Easiest Halloween costume ever.

But could Shia potentially get more publicity by suing Shia Halloween costumes?

The short answer:

Yes he could get more publicity by suing … but he would likely lose this one too. Not necessarily positive publicity.

The long answer:

It is often said that every war film is inherently an anti-war film.  We would argue that every I-Am-Not-Famous costume would be inherently taking the mickey (surely??).  So, you may be safe from Shia’s lawyers because the Halloween costume could be considered a parody.

But is it?  Maybe you’re a real Shia fan and swear by his artistic vision and want to share of that vision with the world on Halloween.  OK.  We’ll play.  Let’s assume it isn’t a parody.  Can he still sue?

Well, first, suing your die-hard fans is not a wise career move, so we wouldn’t necessarily recommend going down that route regardless.  Putting that to one side, we need to find something upon which he could base his claim on.

Copyright protects literary works.  But could I AM NOT FAMOUS ANYMORE be considered a literary work?  Generally, courts have held that short phrases do not involve literary composition that is sufficiently substantial to justify a claim to copyright protection: see for example Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd (2008) 172 FCR 580; 80 IPR 566; [2008] FCAFC 197 where t-shirt designs consisting of words and numbers were found to have conveyed insufficient textual meaning to be literary works (they were protected as artistic works though).  However, there is no reason in principle why they can’t.  In fact Justice Bennett acknowledged as much in Fairfax Media Publications Pty Ltd v Reed Int’l Books Australia Pty Ltd (2010) 189 FCR 109; 272 ALR 547; [2010] FCA 984 at [50] noting that there was no reason why individual headlines, considered in isolation, might not qualify as literary works.  It would come down to whether there’s enough skill or labour and judgment expended in the creation of the line “I am not famous anymore”.  We think we could make a go at arguing it, but it might be an uphill battle.  He’d probably have a better chance registering it as a trade mark, provided that it was distinctive enough in the class of good for which he applied, which from our searches he hasn’t done yet. (Memo to Shia: register it as a trade mark now!)

Ok, so the literary work angle may not succeed.  What about the “artistic work” approach that worked in Elwood Clothing?   Could the paper bag also be considered an artistic work?  Maybe. It’s definitely a stretch to consider it a “work of artistic craftsmanship”, but it could possibly be considered an artistic work.  What we have here is a bag with two holes cut (in and of itself, not that original), but it then has the line “I Am Not Famous Anymore” written in marker around the two holes, which is not something that we’ve seen before.  It may be possible to argue that it is a sculpture, given its three dimensional nature, but given the amount of effort applied to create it’s probably a stretch.  You might even be able to argue that it’s a drawing too, relying on the decision in Elwood Clothing.  Yes, it’s simple, but that in and of itself does not mean copyright can’t subsist in the work.  It might make it harder to prove infringement though, as relatively small differences between the costume and the real thing would could assist in a finding of non-infringement.

There’s also the personality rights angle in the US (misappropriation of his likeness).  Arguments like this are not unheard of though.  A few years back, the Hebrew university of Jerusalem sued a Halloween costume-maker for selling Einstein costumes.  They claimed the costumes breached his publicity rights, which they argued had been assigned to them under his will. However, this would only be a viable route for Shia in relation to unauthorised commercial activities with respect to his liekness.  We would question too whether you could claim that the costume would be appropriating his likeness?  That’s a tough sell.