Continuing our conversation about clowns generally, guest blogger Professor Lee Ann Lockridge clarifies the Great Clown Makeup Question.
There’s nothing like an intellectual property lawyer to ruin the fun at the circus! I hadn’t considered the intellectual property issues raised by clowns before, but now that my colleague Christine raised them, I’ll probably never see a clown the same way again.
Christine first asked me about trademark, since she had heard or seen offhand remarks about “registering” a clown’s face paint or how a face-paint scheme was a particular clown’s “trademark.” We decided that these were likely non-legal uses of the words. We discussed the applicable law, and our conclusion was that while trademark protection was theoretically possible, it could be practically difficult for some, or maybe most clowns. I think that a clown would have to prove secondary meaning, aka acquired distinctiveness, in order to prove the existence of valid trademark rights. (I won’t bother to fully explain how I reached that conclusion.) In other words, the clown (or perhaps a circus employing the clown or other entertainment service provider, such as a television production company) would need to convince a decisionmaker – likely a court – that consumers (audiences) have learned to recognize a certain face-paint design as indicating a common source of entertainment services (the clown, circus, TV show, etc.). Secondary meaning would not be present if the public considers the face-paint design to be mere ornamentation. For example, one face-paint scheme that likely had (or maybe still has) secondary meaning would be the face painting used by the band KISS. I don’t think the consuming public considered those designs to be mere ornamentation – at least after some period of use by the band. See the Wal-Mart v. Samara Bros. case for an illustration of this principle.
Upon further reflection, I told Christine that I thought copyright might be an even better idea for a clown who has created an original face-paint scheme. Assuming the clown has not copied the design from someone else, it should qualify as an original work of authorship. (It would be like the copyright protection available for some masks, in a way.) And although the face paint is only used for short periods of time, it is certainly sufficiently "fixed in a tangible medium of expression" for copyright protection to exist. Foreign jurisdictions don't always require fixation, but U.S. law does. See the U.S. Copyright Act: section 102(a). The face paint has no non-aesthetic utilitarian function, so it is not disqualified from copyright protection for that reason. The entertainment function is not considered utilitarian in copyright terms, although a game or toy’s capacity to entertain creates sufficient utility in terms of patent law.
Anyway – maybe I'm reaching, but copyright law seems easier for a clown to use to protect his or her face paint design than trademark law would be. Although the strongest U.S. protection in terms of available remedies and the immediate ability to file suit for infringement does require registering the design with the copyright office before infringement takes place, it is certainly easier to register a copyright than to prove secondary meaning. Use the link above to look at section 412. And even registration following infringement allows an author to ultimately obtain legal relief from the infringement.
And with that, I will try to go back to finding clowns funny, instead of finding IP issues to discuss.
An excellent post. For more about clowns and legal issues, check out the following: Clown Suit Threatened (from Lowering the Bar, and no jokes about lawyers in clown suits, please), Clowns Interrupt Immigration Law Rally, Carlock Family Makes New Allegations (family of local man who performed as "Klutzo the Clown" who died in custody files suit against authorities) and El Salvador Bus Clowns Protest at Passenger Murder.