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Konstantin von Werder is a counsel in the Intellectual Property practice of Mayer Brown´s Frankfurt office. He focuses on trademark and unfair competition law (UWG). He has extensive experience and expertise as a litigator and advises clients in legal disputes (warning letters, preliminary injunctions, actions on the merits). Konstantin also coordinates the infringement proceedings for his clients abroad. Furthermore, he advises national and international clients on patent, design and copyright law. Moreover, he has particular expertise and experience in drafting complex license and distribution agreements and in providing advice on research and development agreements. His clients include companies in the pharmaceuticals and automotive industry as well as in the hotel, catering and consumer goods sector.

Konstantin's full bio.

Christian Wulff, a former German Federal President who resigned in February 2012, caught the attention of the public in May 2015 with his announcement that he was back together with his ex-wife Bettina Wulff. Following this, the press published a photograph of him pushing a cart at the parking lot of a supermarket next to his wife, Bettina Wulff. Mr. Wulff felt hurt in his right to privacy. He filed a lawsuit aiming to prohibit the publication of this private photo. In first and second instance Mr. Wulff was successful; the German Federal Court now overruled the previous decisions and decided that Mr. Wulff’s right to privacy were not infringed by the publication of the photo.

Legal Assessment

The German Constitution protects both individuals’ private sphere and the freedom of press. Moreover, the German Copyright Act for Art Work and Photography (“Kunsturhebergesetz”) stipulates that the press may publish photos where the depicted person has agreed with its publication (Section 22). Without such consent, publication is only allowed if the image refers to history, and where no legitimate interest of the depicted person is infringed (Sections 23(1) no. 1 and Section 23(2) of the same law). The German Federal Court thus had to decide between the principles of the German Constitution, and whether the legal conditions for the lawfulness of publication of the photo without consent of Mr. Wulff were fulfilled in the present case.

On 6 February 2018, the German Federal Court ruled that the publication of the photo is lawful. The image refers to a historic figure and could thus be published without his consent, pursuant to Section 23(1) no. 1 of the German Copyright Act for Art Work and Photography. The interest in Mr. Wullf’s person has not expired with his resignation in 2012, but instead, Mr. Wulff remains a public figure, still attends public events and is recognized in his position as a former Federal President of Germany. Moreover, no legitimate interest of Mr. Wulff exists in avoiding the publication of the photo. The picture was taken in a public space and is to be attributed to Mr. Wulff’s social sphere. It does not show Mr. Wulff in an unkind or private way, but would rather convey the image of a providing father.

Another key reason for the decision of the Federal Court was the fact that Mr. Wulff informed the public himself about his private and family life not only in the past but also in the present, which shows his content to having these issues publicly discussed. Furthermore, the journalistic worth of the article is the discussion about the distribution of roles between man and woman and especially between husband and wife, which is a discussion of public interest.


Once a show-off, forever prey of paparazzi? Can – or should – the past consent of famous people to public discussions about their private life lead to their every step being followed and photographed? Most people would probably tend to answer negatively. In the present case, however, Mr. Wulff was the one who released to the press very private news about his relationship with his wife. This was the trigger to the paparazzi, as considered by the Federal Court. The present decision sends a clear sign: there is already a general public interest in following public figures; their privacy is thus already limited when compared to other people that do not occupy public positions. If they show they are open to being on everyone’s tongue, they shall carry the consequences.

Back in 2015 Constantin Film AG, the production company of the German movie „Fack ju Göhte“, filed an European Union trademark application (“EUTM”) for its movie title „Fack ju Göhte“ with the European Union Intellectual Property Office (“EUIPO”). The EUTM application was refused by the EUIPO based on an alleged infringement of public policy and common decency. On top of that, EUIPO was of the opinion that the title of the movie is an offensive insult that would damage the German highly respected writer Johann Wolfgang von Goethe posthumously. Constantin Film’s appeal against this decision was also not successful, so that they now brought that case before the General Court of the European Union.

The Facts: Protection of Word Trademarks

Since Article 7(1)(f) of the European Union trademark regulation (“EUTMR”) prohibits the registration of trademarks which infringe public policy or morality, the core key was whether the General Court of the European Union classifies the movie title as immoral in the sense of Article 7(1)(f)  EUTMR.  The purpose of Art. 7 EUTMR is in particular to ensure the public interest that adolescents will be protected from being confronted with words that are offensive or disturbing. Therefore the question whether or not immorality is given depends on the relevant public and that is the average consumer who the EUTM is meant to address.

Trademark registrations are prohibited for all signs that are degrading, vicious or racial. Since “Fack ju” can be understood as a misspelling of the expression “Fuck you”, an offensive expression that insults the dislike for another person which is usually used with the intention to hurt or degrade someone, examiners of the EUIPO saw the movie title and EUTM-application as an offensive insult of the German writer Goethe. In this respect the word „Fuck“ had already been confirmed as a violation of European trademark law in several other judgments. The EUIPO rejected in the past EUTM- applications like “fucking freezing!” and “FUCK CANCER”.

Constantin Film contradicted that the decision of whether the movie title actually conflicts with good morals or not has to be determined as a whole and not only by analyzing one part of it. They argue that the expression “Fuck you” has neither a sexual meaning nor can be considered as insulting in the present case, but is used as a synonym for school frustration in context with the word “Göhte”. It further argued that this understanding is confirmed by the cheerful and entertaining character of the movie which in no way refers to the writer in a disrespectful way.

The Ruling

As expected, the General Court of the European Union denied protection to the expression “Fack Ju Göhte” as a word trademark on 24 January 2018 and once again confirmed that immoral and degrading expressions cannot be protected by European trademark law.

The Court stated that neither the special spelling nor the intended irony can mitigate vulgarity. Moreover, a breach of public order or morality must be determined by the trademark itself and in connection with the goods and services for which it is to be registered. The goods and services in question are those of daily use, e.g. games and clothes so that not only people who watched the movie, but rather any person shall be taken as reference, and it cannot be guaranteed that these people in general would recognize the trademark as a title of a successful film and as a joke. As a result, the average consumer will rather see the sign as the commonly used English expression “fuck you”, which is immoral and therefore cannot be registered as a trademark pursuant to Art. 7(1)(f) EUTMR.




Now that the time of the year has come, it seems like everything is all about finding the perfect gift, decorating your house in the most beautiful Christmas colors, baking Christmas cookies and of course, going to Christmas markets. But even while we are enjoying the peaceful and contemplative atmosphere – and obviously to drink one or the other mulled wines we are not spared from being confronted with the German trademark law. Insofar we would like to conclude this year with  a decision of the German Patent Court which dates back to 2006, but which perfectly fits into the advent and Christmas season.

The Case

“Christkindlesmarkt” was registered as a German trade mark with the German Patent and Trademark Office (GPTO) for, among others, non-alcoholic and alcoholic beverages. On 10 December 2003, the GPTO cancelled this trade mark based on absolute grounds after a third party had lodged a cancellation request with the GPTO. The examiner of the GPTO took the view that the mark was not eligible for trademark protection, as the relevant public would perceive the mark only as an indication of goods offered on Christmas markets, which are also known as Christkindlesmarkt. The lovely street markets associated with the celebration of Christmas during the four weeks of advent have their origin in the South of Germany, but are now being held all over Germany. Accordingly, the German public would perceive products labeled with the term Christkindlesmarkt only as products which are typically offered on such Christmas markets, but not as an indication of origin for a specific undertaking. Therefore the mark should never have been registered with the GPTO.

The owner of the mark disagreed and filed a complaint against this cancellation decision with the German Federal Patent Court. The owner took the view that although Christmas markets are called “Christkindlesmarkt” in the South of Germany, this could only prevent registration of the mark for services like organizing and performing such Christmas markets, but not for the so labeled goods in question.

The Ruling

According to Section 8 (2) No. 1 of the German trade mark law (MarkenG), trade marks shall be excluded from registration which are devoid of any distinctive character for the goods or services. Accordingly, only marks with a distinctive character by their nature or by the use made of them are capable of distinguishing their goods from the goods of other undertakings and thereby capable of registration.

In this regard the German Federal Patent Court shared the opinion of the GPTO, namely that the mark in question did not fulfill the requirements of distinctiveness. It held that the term “Christkindlesmarkt” represented only a common synonym for the word “Christmas market”. The German Federal Patent Court concluded that the mark lacked distinctive character as the relevant public (in this case, the average German-speaking consumer) understood the sign Christkindlesmarkt as referring to Christmas markets (particularly to products sold on such markets). There was however no evidence that the general public would perceive the trade mark as a source-related indication of the goods and services in question. Traditionally held in the town square, Christmas markets have food, drink and seasonal items from open-air stalls accompanied by traditional singing and dancing. Popular attractions at these markets are candied and roasted almonds, traditional Christmas cookies such as Lebkuchen and of course the famous German Bratwurst. One of the other highlights of these markets is the mulled wine called Glühwein. This means in effect that when foods and beverages are labeled with the name “Christkindlesmarkt”, the public will not perceive this as an individual indication of origin of an undertaking, but rather that these goods are typical goods offered on Christmas markets.


The decision is in line with settled case law, therefore it did not come as a surprise. The term “Christkindlesmark” is in itself descriptive and lacks of sufficient distinctive character.

We wish you all a Merry Christmas and Happy Holidays!

Court of Justice of The EU Ruled on Trade Marks Used Only to Indicate Quality Standards

Trade marks will not only be associated with the company they origin from, but might also be associated with certain quality or ethical standards. Certain associations are using their trade marks only to license it to producers who fulfill a certain standard. While some jurisdictions recognize such use of a trade mark as sufficient to maintain trademark protection, the European Union Trade Mark Regulation (EUTMR) does only mentioning the term “genuine use” of a trade mark. On 8 June 2017, the Court of Justice of the European Union (CJEU) has decided whether using a trade mark only to indicate certain quality or ethical standards can be seen as “genuine use”.

The Facts

The Verein Bremer Baumwolle (VBB), an association under German law, owns an individual European Union trade mark (EUTM) displaying a cotton flower. The VBB concludes license agreements under this trade mark with associated producers of textiles who oblige themselves to comply with certain quality standards concerning the cotton they use. The defendant, a German manufacturer of textiles, displayed this trade mark on its products without having an appropriate license to do so.

VBB sued the defendant for trade mark infringement. The defendant brought a counterclaim for declaration of invalidity of this trade mark. In first instance the Düsseldorf District Court found infringement , but the Düsseldorf Court of Appeals referred the case to the CJEU with the following questions: Is the use of a trade mark as a label for quality a “genuine use” in regards to an individual trade mark? Must such a trade mark be declared invalid, if the holder of said trade mark does not ensure the quality standard by carrying out periodic quality controls?

First Question

According to the CJEU, the essential function of a trade mark is to guarantee that all goods or services marked by the sign come from the same undertaking or economically linked undertakings. It might be a secondary purpose of a trade mark to ensure a certain quality, but the “genuine use” of a trade mark is only to guarantee that the goods origin from the same or an economically linked entity. Therefore, the proprietor is not using the trade mark in terms of the EUTMR, if it is only licensing the trade mark to ensure a certain quality. This is particularly relevant, because, if there is no “genuine use” of a trade mark for five years, the trade mark proprietor might face an application for revocation of its trade mark.

Second Question

In relation to the second question, the CJEU stated that an individual trade mark is not to be declared invalid, if the proprietor does not conduct quality controls on a regular basis. While this is a reason for invalidation of collective trade marks, it cannot be applied to individual trade marks because these trade marks are not designed to guarantee a certain quality standard. Individual trademarks might be declared invalid, however, if the public is made to believe that there will be quality controls while the trade mark proprietor never intended to conduct them.


The judgment is apparently guided by the fact that the EUTMR provides two specific instruments to mark products that come from certain undertakings. There is the possibility to file a collective trade mark to display that the user of the trade mark is a member of a certain association that follows certain standards. Further, as of 1 October 2017, a certification trade mark could be used to show that certain standards are met. The CJEU apparently tries to ensure that individual trade marks cannot be used to circumvent the requirements for collective and certification trade marks.


Gamer playing first person shooter game on high end pc

On 12 January 2017, the German Federal Court of Justice has handed down its second landmark decision on cheat software within three months. After clarifying the question under which conditions cheat software may constitute copyright infringement in October last year, the Federal Court of Justice has now decided that cheat software can constitute an act of unfair competition, too.

To be able to play online games, e.g. World of Warcraft (WoW) or Diablo III , it is necessary to download a client software and install it on the computer. Achieving progress within the game regularly takes several hours. To save time and to easily achieve the goals of the game some companies develop software, so-called cheat- or buddy-bots, allowing the player to overcome the challenges of the game automatically. Online game developers are not pleased by this fact, which is why they try to prevent the distribution of such cheat bots up front.

Cheat Software and Copyright

In October 2016, the Federal Court of Justice had already decided that the commercial downloading and copying of the client software to develop cheat software constitutes copyright infringement. According to the court, this act is neither permitted by the End User License Agreement (EULA), as it only allows private use of the client software, nor does it fall within the scope of § 69 Sec. 3 of the German Copyright Act, which in order to determine the ideas and principles which underlie any element of a software allows users to observe, study or test the functioning of the program without the authorization of the right holder. However, this exception only applies to computer programs and does not justify the reproduction of the audiovisual content.

Cheat Software and Unfair Competition

Three months later, the Court further decided that the distribution of such cheat bots can also amount to an illegal obstruction of a competitor. The court held that not the breach of contract as such constitutes an act of unfair competition. An act of unfair competition is rather to be seen in the development and distribution of cheat bots which are able to impair the business model by circumventing protective measures which were meant to avoid such impairment. According to the Court it shall remain up to the developer how the game should be played.

A Look Ahead

These decisions make the cheat software business model much more difficult. Due to the fact that for the development of such bots it is necessary to copy the client software, which automatically implies a copying of the audiovisual content, such acts always constitute copyright infringement.

Further, it was held that the development and distribution of cheat bots can constitute an act of unfair competition, if and to the extent the developer´s product is impaired. Therefore, these two decisions may affect the development of software bots beyond the gaming industry. So-called “social bots” used within social networks to automatically generate posts may also impair the business of the operator, and thus may be prohibited as well based on the reasoning of these decisions. How this will be assessed in detail remains to be seen.

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Women's running shoes and dumbbells for trainingThe question of whether a sequence of exercises, such as yoga poses or dance moves, can be copyrighted has occupied the attention of international courts, scholars and copyright offices for some time. In late 2015, the issue received some media attention when yoga guru Bikram Choudhur tried to gain a US copyright in a signature sequence of yoga poses but failed before the Court of Appeals for the Ninth Curcuit. Despite the effort of international copyright conventions, the question of copyrightability essentially remains a matter of national law.

On 2 February 2007, the Higher Regional Court of Cologne (Case 6 U 117/06), Germany, ruled that an acrobatic dance performance could, in principle, be considered a “work of dance art” subject to copyright protection under Sec. 2 para. 1 No. 3 of the German Copyright Act. The required threshold of originality could, however, only be achieved, if the performance went beyond a sequence of physical movements and conveyed a particular artistic message. Whether this ruling can, by analogy, be extended to yoga and exercise routines is not clear. Simple routines are, however, not likely to constitute “personal intellectual creations” within the meaning of Sec. 2 para. 2 of the German Copyright Act.

An Integrated, Coherent, and Expressive Whole

In a further example, in a Statement of Policy from 18 June 2012, the US Copyright Office took the position that “a selection, coordination, or arrangement of functional physical movements such as sports movements, exercises, and other ordinary motor activities” did not represent the type of authorship intended to be protected under the US Copyright Act as choreographic works. However, a “composition and arrangement of a related series of dance movements and patterns organized into an integrated, coherent, and expressive whole” could rise to the level of original choreographic authorship.

A Look Ahead

Even if simple yoga or exercise routines will likely not meet the minimum threshold of originality in most jurisdictions, a film or description of such routine may be copyrightable, as may a compilation of photographs of the routine’s individual movements. Additionally, exercise brands can make a profit from teaching their routines to others („train the trainer“) or from licensing their brand to fitness centers so that people familiar with the brand’s program know what to expect of the centers’ workout sessions.


This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Romantic DiningAccording to the code of ethics of the International Association of Culinary Professionals, a culinary professional must not knowingly “appropriate […] any recipe or other intellectual property belonging to another without the proper recognition.” And, in addition to the ethical, there are legal issues. While copying culinary creations might not sound like a big deal to millennial food bloggers and vloggers, lawsuits—sometimes with high stakes—have been filed over (mis)appropriated recipes. But whether claims to a signature dish will hold up in court is a different question and will likely depend on the scope of protection of the applicable copyright law(s).

The Literary Work

The written expression of a recipe (explanations and directions) is likely to be protected as a “literary work” in most jurisdictions. For example, the Court of Justice of the European Union (Case No. C‑5/08) held that even an 11-word newspaper article extract may be protected subject matter under the Copyright Directive (2001/29/EC), provided that it is original in the sense that it is the author’s own intellectual creation. One can, therefore, safely assume that quite a few recipes that were published online or in print could be considered literary works subject to copyright protection. However, the copyright in a literary recipe only prevents unlicensed copying of the text, not the functional means for achieving a culinary result. Whether the recipe itself could be eligible for protection is another matter entirely: ideas like the ingredients necessary to the preparation of a particular dish are generally not copyrightable.

The Mere Listings of Ingredients

The US Copyright Office, for example, issued a factsheet that “copyright law does not protect recipes that are mere listings of ingredients.” This view was backed by the US Court of Appeals for the Sixth Circuit in the non-precedential case Tomaydo-Tomahhdo, LLC v. Vozary, 629 F. App’x 658 (6th Cir. 2015). The court held that while there can be a copyright in the arrangement and creative expression contained in a recipe book, protection did not extend to the recipes themselves. A list of ingredients was “merely a factual statement, and […] not copyrightable.” However, a compilation of such facts could be eligible for protection, if it was an original selection. For example, on 28 March 2012, the Regional Court of Frankfurt am Main (Case No. 2-06 O 387/11), Germany, held that a selection of recipes suitable for certain pieces of cooking equipment was a “personal intellectual creation” within the meaning of sec. 2 para. 2 of the German Copyright Act. The US Copyright Office likewise stated that copyright protection could “extend to […] a combination of recipes, as in a cookbook.”

The Visuals and Other Things

Copyright law might also apply to photographs that accompany a recipe in a cookbook or to an elaborate food arrangement if it comprises elements that do not contribute to the utilitarian aspects of how food appears on a plate like coloring, textures and placement. There are, however, other avenues than copyright law that culinary professionals can pursue to protect their creations, such as secrecy or non-disclosure agreements.

Happy Valentine’s Day to all food and IP lovers!


This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Hot chocolate with melted snowmanFor many people, Christmas is the most wonderful time of the year: decorating the house, wrapping presents and, last but not least, listening to cheesy Christmas songs, some of which are among the highest-earning songs of all time. When Santa Claus comes to town, however, he might bring some gift-wrapped intellectual property lawsuits with him. The European Patent Office, for example, records many patents that mention Christmas in their title. Most of these patents relate to Christmas trees or their decoration. But patents are not the only kind of intellectual property right that could cool your Christmas cheer.

Many Christmas songs such as “Jingle Bells” or “Silent Night” are not (or no longer) protected by copyright law and form part of the public domain. However, the danger of a copyright infringement lawsuit has not yet been abandoned. For example, even Instagramming your Christmas Eve dinner or live-streaming your church service on Persicope might be copyright sensitive. Because Christmas is ultimately about celebrating the birth of Jesus of Nazareth, it’s worth noting that Jesus himself has been mentioned in copyright infringement lawsuits.

“Otherworldly Inspiration” Can Be Attributed to Its Human Recipient

In 1975, the late US psychologist Helen Schucman published a book called A Course in Miracles. She assigned the copyright to her book to the US Foundation for Inner Peace (FIP). Schucman believed that her book was dictated to her in a series of waking dreams by Jesus.

After the New Christian Endeavour Academy, a German registered association, published extracts from Schucman’s book on their website’s homepage, FIP asked for an injunction in the Regional Court of Frankfurt/Main. The New Christian Endeavour Academy defended itself by saying that there was no doubt that Jesus is the author of A Course in Miracles. A person who herself was of the opinion that her words were the result of a divine dictate could not have possibly obtained copyright in those words. By decision of 13 May 2014 (Case 11 U 62/13), the court of appeals, the Higher Regional Court of Frankfurt/Main, however, ruled that even “otherworldly inspiration” could be attributed to its human recipient. The authorship of a work was not determined by the mental state of its creator but by the actual process of creation. Thus, writers own copyright in their works even if they wrote them while mentally disturbed, in a trance or under metaphysical influences.

The case is currently pending before the German Federal Court of Justice under case number I ZR 138/14. It will be interesting to see how the case will be decided.

Happy Holidays from the AllAboutIP Team!


This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Hands playing a cube gameOn 10 November 2016, the Court of Justice of the European Union (CJEU) ruled that a trademark on the shape of the Rubik’s Cube—supposedly the world’s bestselling toy of all time—is invalid (Case C‑30/15 P). With its judgment, the Court, inter alia, annulled a 2009 decision of the European Union Intellectual Property Office (EUIPO) that initially confirmed registration of the cube as an EU trademark.

The Rubik’s Cube was invented in 1974 by Hungarian architect Ernő Rubik. It was originally named “Magic Cube.” In 1980, the toy was renamed Rubik’s Cube and launched internationally.

The Facts of the Case

In 1999, the company behind the Rubik’s Cube brand, Seven Towns Ltd., registered a “three-dimensional mark in the shape of a cube with surfaces having a grid structure” with the EUIPO. On 15 November 2006, German toy manufacturer Simba Toys GmbH & Co. KG filed an application for a declaration of invalidity of that mark. The company, inter alia, claimed that the cube’s rotating capability may be protected only by patent and not as a trademark. On 14 October 2008, the Opposition Division of the EUIPO rejected that application in its entirety. On 1 September 2009, the rejection was confirmed by the EUIPO Boards of Appeal (Case R 1526/2008-2).

On 6 November 2009, Simba Toys brought an action seeking annulment of the EUIPO decision before the EU General Court. In support of its action, the company, inter alia, argued that the shape of the Rubik’s Cube was necessary to obtain a technical result (rotation), which is grounds for invalidity of the three-dimensional mark (now codified in Article 3(1)(e)(ii) of the Trademark Directive (2008/95/EC)). On 25 November 2014, the EU General Court dismissed the action. The court held that the graphic representation of the mark, the grid structure on each surface of the cube, gave no indication as to the well-known rotating capability of the Rubik’s Cube. Therefore, Simba Toys’ reasoning was not based on the representation of the mark as filed but on an “invisible element” (Case T-450/09).

The CJEU’s Decision

On 25 May 2016, Advocate General Maciej Szpunar delivered an opinion that the grid structure of the cube did not constitute “a decorative and imaginative element” but performed a technical function (Case C‑30/15 P). The cube’s structure divided the movable elements of the puzzle so that they were rotatable. Beyond these functional characteristics, the mark in question contained “no arbitrary or decorative characteristics.”

In its judgment, the CJEU followed the advocate general’s opinion and held that the sign at issue consisted of the shape of actual goods and not of an abstract shape. The EU General Court should have taken the fact that the goods function as a three-dimensional puzzle into account when assessing the functionality of the essential characteristics of the sign. While it was indeed necessary to consider the graphic representation of the shape at issue, that analysis could not be made “without taking into consideration, where appropriate, the additional elements relating to the function of the actual goods at issue.”


This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Stage costume and Halloween bowl with trick or treat candiesWhen cobwebs and tombstones start to show up in your neighborhood, probably something wicked is coming your way—except that one night of the year, on Halloween. Even though Halloween involves frightening things—haunted houses, the undead, tricks in response to no treats—it is ultimately about carefree fun. And there’s candy! But if you are in a Halloween-related business, there is a genuinely scary side to the holiday—IP issues that, if ignored, could lead to a wicked lawsuit.

For example, in 2005, in the case Chosun International, Inc. v. Chrisha Creations, Ltd., the US Court of Appeals for the Second Circuit declared that elements of a (not very scary) Halloween costume could be copyrightable. Under the US Copyright Act, protection does not, in principle, extend to utilitarian or functional elements of the artist’s original work and, therefore, does not extend to elements that enhance a costume’s functionality qua clothing. However, in the case of Chosun’s plush sculpted animal costumes, the court held that certain elements might be separable from the overall design of the costume, and hence eligible for copyright protection. For example, Chosun might be able to show that the sculpted “heads” and “hands” of its costume design are physically separable from the overall costume in that they could be removed from the costume “without adversely impacting the wearer’s ability to cover his or her body.”

Thinking of creating a costume based on something less cuddly—say a fictional serial killer, such as Michael Myers, Hannibal Lecter or Dexter Morgan? Think again. In principle, fictional characters within an original work of authorship (e.g. a book or a movie) are presumed to be simply ideas not worthy of copyright protection on their own. However, fictional characters may be protected independently of their underlying works, provided that they are sufficiently unique and distinctive. In US law, the consensus seems to be that a well-defined serial killer may be copyrightable. Perhaps the most famous comment on the copyrightability of fictional characters comes from Second Circuit Judge Learned Hand in the 1930 case of Nichols v. Universal Pictures Corp. where he wrote that “the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.”

Happy Halloween!

Finally, you have to be mindful that many trademarks include the term “Halloween” in their mark. And there is a significant number of patent applications relating to Halloween-ish things like coffins, pumpkins or even, in PCs, “zombie process detection.”


This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

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