By Shane Wax
As another trick-or-treating season comes and goes, it is worth looking at the changing trends in copyright law that touch on Halloween costumes. For decades, it was accepted law that costumes are not copyrightable under the United States Copyright Act. However, this trend has been changing over the past decade, as evidenced by a decision by the Third Circuit Court of Appeals from this past summer.
In the United States, copyright protection extends to all creative works of authorship embodied in a tangible medium. This includes two- and three-dimensional works of fine, graphic and applied art such as paintings and sculptures. However, copyright protection does not extend to “useful articles” – for example, tables, chairs, lamps and vases. Of course, most tangible goods do not neatly fit into one category, as useful articles often have artistic or expressive elements, perhaps a fanciful design drawn, painted or engraved into a structural component.
In cases where a functional product incorporates artistic expression, the design element may be protectable on its own if it is physically or conceptually separable from the useful article, which remains unprotectable as a whole. Physical separability means that the design element “can actually be removed from the original item and separately sold, without adversely impacting the article’s functionality.” On the other hand, conceptual separability merely requires features that reflect “the designers artistic judgment exercised independently of functional influences.” In the absence of separability, courts deem the idea and the expression to have “merged” or, that the artistic features are so indispensable to the expression of the idea, they constitute “scenes a faire.” Thus, no copyright protection lies in a design whose visual appearance is necessarily connected to the article’s purpose, such as the anatomical appearance of a teddy bear.
For decades, courts have applied these principles to costumes and determined that they are not copyrightable because the artistic or expressive elements of a costume cannot “be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” In 1989, the Second Circuit Court of Appeals affirmed a lower court’s holding that the Halloween costumes at issue were not copyrightable as useful articles. As opposed to, say a unique imprint appearing on an everyday shirt, the Halloween costumes fell on the wrong side of the conceptual separability analysis because their artistic elements were “influenced by, and indeed advance, the utilitarian purpose of the items, which is to enable the wearer to masquerade.”
However, that view may no longer be fashionable. In 2011, when a lower court dismissed a copyright infringement complaint at the pleading stage on the grounds that a “costume’s utility is in allowing the wearer to pretend to be something else” and therefore “[t] is impossible to say whether the utilitarian predominates over the artistic,” the Second Circuit Court of Appeals reversed, stating that the relevant function to consider is a costume’s use as clothing to cover the body, not its utility in enabling the wearer “to masquerade.”
In 2017, the Supreme Court decided Star Athletica, LLC v. Varsity Brands, Inc., a case involving designs on cheerleading uniform, and clarified the “separability” test to be applied to articles with both expressive and utilitarian elements. The test has two prongs: (1) separate identification and (2) independent existence. The “separate identification” requirement is satisfied if a court is “able to look at the useful article and spot some two- or three- dimensional element that appears to have pictorial, graphic, or sculptural qualities,” while the “independent existence” requirement is more difficult to satisfy and requires that the expressive elements “be able to exist as its own pictorial, graphic, or sculptural work.” Thus, a two-dimensional artistic design with sufficient originality appearing on cheerleading uniforms is copyrightable because it could be reproduced in a separate medium, such as on canvas, rather than on a useful clothing article.
In August 2019, the Third Circuit Court of Appeals became the first federal appellate court to address the copyrightability of costumes since Star Athletica was decided. In affirming the lower court’s grant of a preliminary injunction, the Third Circuit not only held that the costume in question – a wearable banana “sculpture” – was copyrightable, but found that the plaintiff had established a likelihood of success on the merits of its infringement claim. Specifically, the Court found that “the banana costume’s combination of colors, lines, shape, and length (i.e., its artistic features) are both separable and capable of independent existence, and thus are copyrightable,” but that “the cutout holes for the wearer’s arms, legs, and face; the holes’ dimensions; or the holes’ locations on the costume” were utilitarian and not protectable.
The Third Circuit also rejected the defendant’s arguments that according copyright protection to this banana costume would effectively monopolize all banana costumes (under related doctrines of merger and scenes a faire), noting that “there are many other ways to make a costume resemble a banana,” citing the fact that 20 non-infringing examples were contained in the record. For instance, while “a banana costume is likely to be yellow, it could be any shade of yellow—or green or brown for that matter.”
What does this mean in practice? Generally, designers of costumes should feel more confident than ever that their works will be subject to copyright protection. First, the fact that costumes are specific type of clothing with a specific utility (masquerading) is no longer relevant to the infringement analysis. The old blanket rule used to uniformly prohibit the copyrightability of costumes under the merger doctrine, but now only costume features directly related to its wearability (e.g., locations of arm and leg holes) are considered utilitarian. For the purposes of copyright law, costumes are now just another form of clothing. To that end, Star Athletica instructs courts to take a broader view of whether a design is separable from the overall usefulness of costume. Presumably, any natural or commonplace thing can be drawn or sculpted in a manner than involves artistic choices, from shape, size and structure to color patterns and shading.
On the flip side, costume manufacturers should take care to ensure their designs are based on non-copyrighted subject matter – those commonplace useful articles found in nature or everyday life – and not upon previously existing costume wear. Most of all, costume designers should continue to avoid designing costumes based off of well-known and well-developed fictional characters, such as Disney or Marvel characters, as doing so may constitute an unlawful derivative work of the characters, which are themselves protected under United States copyright law.
 Silvertop Assocs. Inc. v. Kangaroo Mfg. Inc., No. 18-2266 (3d Cir. Aug. 1, 2019).
 See 17 U.S.C. § 102
 See Id. § 101; Heptagon Creations, Ltd. v. Core Group Marketing LLC, 507 F. App’x 74, 75–76 (2d Cir. 2013) (summary order); Chosun International, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 328 (2d Cir. 2005) (citing Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460 (1954)).
 Id. at 329.
 See Id.; Joshua Ets-Hokin v. Skyy Spirits Inc., 225 F.3d 1068, 1082 (9th Cir. 2000); Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1444 (9th Cir. 1994); Brandir Int’l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir. 1987)
 Baby Buddies, Inc. v. Toys “R” US, Inc., 611 F.3d 1308, 1317 (11th Cir. 2010).
 Whimsicality, Inc. v. Rubie’s Costume Co., Inc., 721 F. Supp. 1566, 1574 (E.D.N.Y), aff’d, 891 F.2d 452, 455 (2d Cir. 1989); see also Fashion Originators Guild v. FTC, 114 F.2d 80, 84 (2d Cir. 1940) (L. Hand, J.), aff’d, 312 U.S. 457 (1941).
 Chosun International, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 327, 330 n.3 (2d Cir. 2005)
 580 U.S. ___, 137 S. Ct. 1002, 197 L. Ed. 2d 354 (2017).
 Id., 137 S. Ct. at 1010.
 Silvertop Assocs., No. 18-2266 (3d Cir. Aug. 1, 2019).
 See Gaiman LLC v. McFarlane, 360 F.3d 644 (7th Cir. 2004); Nichols v. Universal Pictures, 45 F.2d 119, 121 (2d Dept 1930)