Clothes make the man – and lawsuits?

Clothing with motifs – a patchwork of rights

A motif on an article of clothing can undoubtedly be protected by intellectual property rights. While it is common to have significant paperwork in place when haut couture is on display, the wardrobe of the high street characters is usually not given the same clearance attention. From the more practical examples, a t-shirt bought at a fast fashion store does not usually require clearance, but it is far from unusual that even the most generic stores sometimes require a keen clearance eye to satisfy the E&O insurance.

As a typical example, our hero walks down the street, smoking a cigarette while wearing his favorite band shirt featuring a picture of the band. Under most copyright laws in the Western world, photographers of band photos (as well as other types of photos) hold copyright to their images. Generally, incorporating a copyrighted work into a production requires clearance, consequently the producer must obtain the photographer’s or rights holder’s consent.

In some jurisdictions, such as Norway, the concept of personal image rights applies. This means that identifiable people in a photograph need to consent prior to making such images publicly available, which is the case when a production is made available to the public by a broadcaster or an OTT.

If the band shirt also features the band’s name, the use may have a trademark aspect, and it must be assessed whether the specific use infringes the trademark holder’s exclusive rights.

Clothing with patterns – design or no design?

If the band shirt contains additional patterns such as graphics from the band’s latest album, another layer of rights might need to be examined. Simple patterns on clothing items are usually not protected by copyright, as originality is a requirement for copyright protection, but the threshold is not high. Design rights hold a supplementary protection.

Evening dawns and our character’s band shirt comes off while a fashionable suit comes on – maybe from Burberry or Missoni? As these brands hold certain design registrations, uncleared use might take us from suit to lawsuit. As a main rule, a registered design cannot be exploited without the consent of the rights holder. Consequently, use of the Burberry suit might in fact warrant clearance.

Can an article of clothing in itself be protected under IP laws?

Our character goes dancing and throws the jacket, revealing a crisp, white t-shirt. Stripped from any logos, brands and designs – can the t-shirt itself be subject to intellectual property protection? All or parts of a garment can be protected as a design, if the design is considered new and of individual character. If the item is sufficiently original, copyright protection may apply. However, a piece of clothing is often created based on technical considerations and limitations that do not allow much room for creative freedom. The ordinary t-shirt for example can hardly be considered a work of art as the holes intended for the arms and neck are dictated by technical functions. Our character can therefore dance the night away without worrying about legal repercussions. On the other hand, we have artistic creations made for the catwalk where the item is clearly an expression of the artist’s free and creative choices and thus may enjoy copyright protection. Dancing the night away in such creations may warrant clearance. 

US courts have found that cheerleader uniforms might be copyright[1] and trademark[2] protected. Banana costumes might be copyrighted works[3] and the same applies to Freddy Krueger’s glove from ‘Nightmare on Elm Street.’[4] Well-known costumes from film and TV may in other words be subject to copyright protection, which leads us to out next topic.

Use of famous costumes in film and TV – ‘let’s go’ or ‘let it go’?

It is time for Halloween and our hero wants to dress up. Dracula, Alice in Wonderland, Pippi Longstocking, Captain Sabertooth, Elsa – any preferences?

When choosing a costume, a safe place to start is to pick a costume which is no longer protected by copyright. In most countries, copyright expires 70 years after the year of death of the copyright holder. Consequently, our hero may freely dress up as the original Dracula or Alice in Wonderland, but not necessarily as Disney’s versions of these characters.

What if the costume originates from a newer film or novel still subject to copyright? Is permission always required when such costumes are to be used? Under Norwegian copyright law the scope of protection of costumes is closely linked to the topic of legal protection of fictional characters and fantasy universes. This is a complex topic, but in short, external and internal characteristics and elements play a role in the assessment of whether the character in question is considered a copyright protected work. For instance, a character from a novel may enjoy protection as a literary work.  

Copyright applies as far as the individual creative effort goes. If our character has dressed up in a well-known character’s costume, one must assess to which extent protected elements from the original character (including the costume) has been utilized by our hero.

In 2013, the German Supreme Court concluded that the use of a Pippi Longstocking costume in marketing material did not constitute copyright infringement.[5] The advertisement had made use of certain external characteristics, such as Pippi Longstocking’s red hair and stockings. However, original elements were not used to an extent that constituted copyright infringement.

Dressing up our character in a standard blue princess dress and blonde wig without additional references to ‘Frozen’ is not enough to infringe Disney’s copyright. Using a replica of the ‘Frozen’ dress on a character named Elsa who lives in Arendelle and can manipulate ice and snow, is a different situation. One can imagine all the situations in between and what constitutes an infringement in each case must be specifically reviewed.

Unsurprisingly, local legislation does not always hold all the answers. If costumes from American films are used in a Norwegian drama series which is distributed to the US, one might be met with arguments that US law applies, adding another layer to the assessment.

If recognizable or well-known costumes are to be used in a film or TV production, we recommend obtaining a prior assessment of the specific use.

You can contact our entertainment team for any inquiries. 

_____________________________________________________________

[1] 15-866 Star Athletica, L. L. C. v. Varsity Brands, Inc. (03/22/2017)

[2] Dallas Cowboys Cheerleaders, Inc., Plaintiff-appellee, v. Pussycat Cinema, Ltd. and Michael Zaffarano, Defendants-appellants, 604 F.2d 200 (2d Cir. 1979) :: Justia

[3] https://law.justia.com/cases/federal/appellate-courts/ca3/18-2266/18-2266-2019-08-01.html

[4] New Line Cinema Corp. v. Russ Berrie & Co., 161 F. Supp. 2d 293 (S.D.N.Y. 2001) :: Justia

[5] Urteil des I. Zivilsenats vom 17.7.2013 - I ZR 52/12 -