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.
So you feel in need of a little spiritual comfort and can't get out to get to church? Want someone to make a house call? The God Squad will happily come by, but maybe not with its recognizable "God Squad" logo on its little VW Bug. Best Buy, which owns the Geek Squad (those tech nerds) trademark has loosed a plague of lawyers upon Father Luke Strand, who has been tooling around in his God Squad car, bringing comfort to the locals, alleging that his logo and his use of the car (even with a clerical collar on it) sails (get it?) too close to the Geek Squad mark.
Hmmm. Does Best Buy really think people will confuse Geeks and God? (Though I realize there's more to the argument than this.) At any rate, I note that Father Luke's license plate reads "GODLVYA." Awfully close to "GODIVA." Isn't Father Luke worried that the famed Chocolatier will pounce on him? But seriously, folks....
People in all societies have a strong tendency toward magical thinking. This human tendency is extensively exploited by modern advertising, which routinely suggests that consuming goods will make us beautiful, successful, happy, etc. Employing anthropological research, this article suggests that such advertising creates a system of beliefs closely resembling a totemic religion. In this religion, brands perform the role of sacred objects.
The article further demonstrates that trademark law supports and encourages the commercial religion of brands. Trademark law initially aims at preventing consumer confusion as to the source of goods. Yet, today famous trademarks are extensively protected against non-confusing associations. This article argues that this broad protection is based on magical thinking. Pointing out the parallels between the laws of magic and various trademark doctrines, I suggest that famous marks are legally treated as magical, sacred objects. This approach amounts to legally endorsing the religion of brands. I submit that this result is undesirable and probably even unconstitutional in light of the neutrality principle.
A provocative and interesting paper. Download it from SSRN at the link.