The donning of costumes on Halloween is a long but increasingly risky tradition. The possibility that a particular costume might insult or offend another person’s religious, cultural, racial, ethnic, sexual orientation, disability status, or political sensibilities has led some schools to simply ban Halloween celebrations and/or costumes altogether.1 Despite these developments, surprisingly little attention has been given to the question whether donning a costume that displays another person’s trademark image, logo, or fictional character creates a risk of trademark liability.
What is a trademark?
A trademark is any word, typographic character, symbol or device, or combination thereof, that is used in commerce to identify the source of goods or services, and to distinguish them from goods or services manufactured or sold by others.
A cartoon character can be a trademark. Batman, for example, is a trademark owned by DC Comics. Many other cartoon and fictional characters displayed on Halloween costumes are protected trademarks.
Is it infringement to go trick-or-treating using another person’s trademark?
The answer, generally, is no. Both at common law and under the Lanham Act, a trademark infringement claim requires proof that the complained-of use creates a likelihood of confusion as to the source of goods or services. Children generally are not attempting to peddle anything when they go trick-or-treating. To the contrary, they are usually trying to acquire goods, not market them.
In addition, using a Halloween costume to go trick-or-treating would probably quality for the referential fair use defense. Merely referring to a trademark, as distinguished from using it in a way that suggests particular goods or services come from a different source than they actually do, is not infringement.
An infringement claim might be a possibility in the rare case where a child in costume offers to go trick-or-treating on someone else’s behalf. In this case, the child may be seen as using the costume to market a trick-or-treating service. Even in this situation, however, wearing the costume would not be infringement unless it can be established that doing so creates a likelihood of confusion about the source of the service. To be liable to DC Comics for infringement for wearing a Batman costume while offering to go trick-or-treating for others, DC Comics would need to prove that consumers are likely to believe that DC Comics sponsored or endorsed the child’s activity.
Of course, additional facts can change the analysis. If, for example, an individual dresses up in a Batman costume and falsely represents to other people that DC Comics has sent him out to offer trick-or-treating services to children, or that DC Comics specifically endorses or sponsors his activity, then there may be liability. It is unlawful to make false statements in connection with an offer of goods or services. Doing so is prohibited by Section 43(a) of the Lanham Act and various state and federal consumer protection and false advertising laws.
Can I modify or make a costume that displays another person’s trademark character image?
The answer to this question is not quite as simple. The probability of liability for infringement is not high (subject to the qualifications noted above.) Replicating a trademark without the trademark owner’s permission, however, implicates more than the possibility of an infringement claim. It also creates a risk of liability for trademark dilution.
Dilution means the unauthorized use of a strong or famous mark in way that weakens the distinctiveness of the mark, or tarnishes it. As one court put it, it is the “gradual diminution or whittling away of the value of a trademark, resulting from the use by another.”2
Unlike infringement, no proof of a likelihood of confusion is required. A person may be liable for dilution even if no one at all believes the product was made or distributed by the trademark owner. The purpose of protecting trademarks from dilution is not to protect the public from confusion as to source, sponsorship or endorsement. It is to protect a company’s investment in the distinctiveness of its trademark as a source identifier.
The two principal forms of dilution are blurring and tarnishing.
Blurring means using a mark in such a way as to diminish its association with a particular source. For example, making a costume that displays the word ROLEX on it would tend to diminish the association of that mark with watches, and therefore could be dilution.
Tarnishment means causing negative associations with a mark. This may occur as a result of the unauthorized use of another person’s mark on poor quality or hazardous goods, or in a disreputable context.
Fortunately for most trick-or-treaters, Section 43(c) of the Lanham Act3 establishes liability only for those who make a commercial use of the mark. Making a costume for your own use, or for your own children, probably would not qualify as a commercial use. Making and selling costumes to others, however, could put you at risk, if in so doing you use someone else’s trademark logo or image without permission.
Referential fair use is a defense to a tarnishment claim. A costume that is a parody of a famous cartoon character trademark might qualify for the protection of this defense.
Other potential legal risks
This article focuses exclusively on the trademark risks associated with wearing a costume on Halloween. The reader should be aware that this activity may implicate other kinds of legal risks, as well. For example, wearing a costume that states or implies something that is not true about a person, business, product or service, might expose you to liability for defamation, trade disparagement, fraud, misrepresentation or unfair competition, depending on the circumstances. In some cases, displaying a costume that communicates a private fact about a person could result in liability for invasion of privacy. Appropriating a person’s likeness without permission may result in liability, in some circumstances. And copying or modifying copyright protected artwork raises the possibility of liability for copyright infringement.
Moreover, it is not inconceivable that an especially scary or offensive costume might generate a tort claim for negligent or intentional infliction of emotional distress, at least in some states.
On the criminal side, a number of jurisdictions have imposed prohibitions against the wearing of masks, at least in certain places and/or at certain times. Some of these expressly make an exception for Halloween, but not all of them do.
This is not a exhaustive list.
Should you be afraid? Maybe so. But isn’t that what Halloween is all about?
- See, e.g., Carlson, Suzanne, “Religious Roots, Secular Festivities: Halloween Takes A Hit In Schools,” Hartford Courant (October 26, 2014); Brown, Matthew, “Religious overtones scare school into canceling Halloween celebration,” Deseret News (October 18, 2013), retrieved from http://national.deseretnews.com/article/487/religious-overtones-scare-school-into-canceling-halloween-celebration.html on October 31, 2015. ↩
- Plasticolor Molded Prods. v. Ford Motor Co., 713 F. Supp. 1329, 1342 (C.D. Cal. 1989). ↩
- 15 U.S.C. § 1125(c) ↩