Spooky Stories of Useful Bananas, Judicial Intervention in the Candy Aisle, and the Urge to Run Away and Join the Halloween Circus
It’s the most wonderful time of the year! Whatever the intent of the original song, I find it resonates most for me when cold air is just starting to move in rather than when it’s fully settled, and when yards are merrily bedecked in zombies rather than reindeer.
So pop in some fake fangs, curl up next to the candy bowl with a glass of cider, and await the trick-or-treaters. Here are some terrifying tales to enjoy while you do.
Have the Courts Gone Bananas?
We’ve reported before about the efforts of Rasta Imposta to enforce the copyright in its banana costumes, but the previous case settled before a court could weigh in. In a more recent case, the District Court for the District of New Jersey and the Third Circuit Court of Appeals preliminarily sided with Rasta.
This time, Rasta brought suit against a competitor for copying its banana suit. Kangaroo, the competitor, acknowledged that the costumes were substantially similar, but invoked the useful article doctrine as a defense, taking the position that, like other articles of clothing, the plaintiff’s banana costume was intrinsically utilitarian, and therefore not protectable by copyright.
With all due respect, and as a lover of costumes, I find the word “useful” to be somewhat comical in this context. But if the banana costume were useful, copyright – whose purpose is protection of creative works – could not protect it. The court acknowledged, fairly, the utility of certain features, including “the cutout holes for the wearer’s arms, legs, and face.” But, following the test for utility set forth by the Supreme Court in Star Athletica, the court found that it could imagine the banana as a “sculpture” apart from the utilitarian elements. If a creative element of apparel is so severable from the useful elements, copyright is back in play. As a result, a banana “sculpture” as part of a costume could be protected by copyright.
Kangaroo’s next line of defense was to argue that this particular banana sculpture was not protectable, because its elements were scénes á faire, or “standard, stock, or common to a particular topic, or that necessarily follow from a common theme or setting.” In other words, how can you depict a banana without the shape, color, and lines that make up a banana? If that’s all your sculpture has to offer, then protecting it would allow you to monopolize the very concept of a banana sculpture (and what a glorious concept it is!), which would be clear overreach from the perspective of copyright law. By reference to over 20 (20!) other banana costumes on the market, however, the court decided that Rasta’s version wasn’t so “stock” as to be unprotectable.
As a result, the district court decided Rasta was likely to prevail, noting in a top-notch judicial pun that Rasta should be able to protect “the veritable fruits of its intellectual labor.” The Third Circuit affirmed the preliminary injunction, but the banana battle rages on. Perhaps we’ll have a final decision by next Halloween.
How the Courts Impact the Candy Aisle
Litigation may be the farthest thing from your mind as you survey the dwindling candy options in the supermarket leading up to the big night, but at least one judge has impacted what you’ll see this year.
In 2018, Tootsie Roll Industries changed the packaging for its CHARM MINI POPS lollipops. Spangler Candy Company, makers of DUM DUMS pops, was not pleased. Both brands of lollipops had been sold in yellow pallet boxes, but the bags inside were different colors – until Tootsie Roll switched to red bags that Spangler considered too close for comfort to its own.
Earlier this year, a Northern District of Ohio judge agreed with Spangler, finding that it had acquired distinctiveness in the red bag, white lettering, display window, and blue-and-yellow elements identifying the number of lollipops in the page. As a result, he granted a preliminary injunction requiring Tootsie Roll to change its packaging.
The parties settled soon thereafter, so if you’re shopping for mini-lollipops in the post-Halloween clearance section, you’ll be able to choose between DUM DUMS in red and CHARMS MINI POPS in a fetching blue bag.
How Inspiring is the Halloween Season?
Around this time of year, I often experience flashes of brilliance that cause me to consider quitting my job (I tell you this in confidence) and devoting my life to various and sundry ingenious business endeavors involving some combination of costumes, sugar, and fake spider webs.
Wondering if others were so inspired, I checked to see if any HALLOWEEN-formative trademark applications had been filed this October. As of this writing, I found only two. HALLOWEEN INCORPORATED, for “Clothing and Footwear – Halloween Costumes and Accessories,” and THE OFFICIAL WAGON OF HALLOWEEN by Radio Flyer, Inc. A few applications were filed in September, but those involve too much advance planning to qualify as the true spur-of-the-moment seasonal inspiration I had in mind.
“Halloween” appears in the goods and services description of over 50 applications filed this month, but many of those include “Halloween costumes” in very broad apparel descriptions and don’t appear holiday-specific. A few are promising, though. Rubie’s Costumes (makers of some of my very favorite hats!) has recently applied to register EERIE EYES and ASYLUM, fittingly spooky brands that I hope will grace my costume closet in the future. Halloween is right in Rubie’s wheelhouse, so it’s less of a sudden, drastic change of direction than it would be for a trademark attorney to be reborn as a purveyor of fine Halloween couture… but it’s something.
What about other classic Halloween terms? Channeling Tracy Jordan, I checked WEREWOLF (no filings this month), BAR MITZVAH (one, though any Halloween connection remains purely hypothetical), SPOOKY (none), and SCARY (also none!).
Perhaps Halloween isn’t as inspiring as I like to think, or perhaps the type of people who are ready to upend their lives at the first scent of autumn in the air aren’t the same type of people likely to focus on registering trademark rights.
I suppose I’ll keep my job after all. But, on October 31 at least, I plan to do it in costume.
Photos of the author in October 31 business casual.