Scarinci Hollenbeck, LLC
The Firm
201-896-4100 info@sh-law.comFirm Insights
Author: Scarinci Hollenbeck, LLC
Date: November 7, 2019
The Firm
201-896-4100 info@sh-law.comThe Third Circuit Court of Appeals affirmed a district court ruling granting a preliminary injunction in a New Jersey copyright infringement lawsuit involving a human-sized banana costume. The appeals court agreed that the elements of the banana costume constituted sculptural features entitled to copyright protection.
The case, Silvertop Associates, Inc. v. Kangaroo Manufacturing, Inc., involves Defendant Kangaroo Manufacturing, Inc. (Kangaroo)’s alleged copyright infringement of a banana costume made and copyrighted by Plaintiff Silvertop Associates, Inc., which does business as Rasta Imposta (Rasta). Like many parties to copyright infringement suits, the two companies were once business partners.
In 2010, Rasta obtained Copyright Registration No. VA 1-707-439 for its full-body banana costume. Two years later, Rasta began working with a company called Yagoozon, Inc., which purchased and resold thousands of Rasta’s banana costumes. Yagoozon’s founder, Justin Ligeri, also founded Kangaroo and at all relevant times was aware of Rasta’s copyright registration in the banana costume. After the business relationship between Rasta and Yagoozon ended, Rasta’s CEO, Robert Berman, discovered Kangaroo selling a costume that resembled his company’s without a license.
Rasta sued Kangaroo for copyright infringement, trade dress infringement, and unfair competition. After settlement talks failed to resolve the dispute, Rasta moved for a preliminary injunction. The District Court granted the motion for a preliminary injunction, and Kangaroo appealed. It maintains that the injunction should not have issued because Rasta does not hold a valid copyright in its banana costume.
The Third Circuit affirmed the District Court’s preliminary injunction. “Because Rasta established a reasonable likelihood that it could prove entitlement to protection for the veritable fruits of its intellectual labor, we will affirm,” the court held.
The Third Court first determined that although the costume is a useful article under 17 U.S.C. § 101, it is still eligible for copyright protection. To reach its conclusion, the Third Circuit applied the U.S. Supreme Court’s recent decision in Star Athletica v. Varsity Brands. In that case, the Court held that a useful article is eligible for copyright protection “only if the feature (1) can be perceived as a two- or three- dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work – either on its own or fixed in some other tangible medium of expression – if it were imagined separately from the useful article into which it is incorporated.”
According to the panel, the costume’s sculptural features include the banana’s combination of colors, lines, shape, and length. “That sculpted banana, once split from the costume, is not intrinsically utilitarian and does not merely replicate the costume, so it may be copyrighted,” U.S. Circuit Judge Thomas Hardiman wrote on behalf of the appellate court.
In so ruling, the Third Circuit rejected Kangaroo’s argument that the banana costume is unoriginal because its designers based the design on a natural banana. “This argument seeks to raise the originality requirement’s very low bar, which precedent forecloses for good reason,” Judge Hardiman explained. “The essential question is whether the depiction of the natural object has a minimal level of creativity. Rasta’s banana meets those requirements.”
The Third Circuit went on to consider whether the merger and scenes a faire doctrines render the costume ineligible for copyright protection. As explained by the panel, each doctrine revolves around the same question: whether copyrighting the banana costume would effectively monopolize an underlying idea, either directly or through elements necessary to that idea’s expression.
According to the Third Circuit, neither doctrine prohibits Rasta from copyrighting its banana costume. “[C]opyrighting Rasta’s banana costume would not effectively monopolize the underlying idea because there are many other ways to make a costume resemble a banana,” the court wrote. As Judge Hardiman further explained:
Although a banana costume is likely to be yellow, it could be any shade of yellow—or green or brown for that matter. Although a banana costume is likely to be curved, it need not be—let alone in any particular manner. And although a banana costume is likely to have ends that resemble a natural banana’s, those tips need not look like Rasta’s black tips (in color, shape, or size).
The Third Circuit further noted that the record includes over 20 examples of other banana costumes that Rasta concedes would be non-infringing.
The Third Circuit’s decision affirms that the Supreme Court’s decision in Star Athletica has expanded copyright protection for works that may not have previously qualified. It also makes it clear that design patents are not the only means for businesses to protect the creative elements of their clothing, footwear, and accessories. To discuss how these decisions may benefit your business, we encourage you to contact a member of the Scarinci Hollenbeck Intellectual Property Law Group.
If you have any questions or if you would like to discuss the matter further, please contact me, David A. Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.
No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.
The Trump Administration’s new tariffs are having an oversized impact on small businesses, which already tend to operate on razor thin margins. Many businesses have been forced to raise prices, find new suppliers, lay off staff, and delay growth plans. For businesses facing even more dire financial circumstances, there are additional tariff response options, including […]
Author: Brian D. Spector
Business partnerships, much like marriages, function exceptionally well when partners are aligned but can become challenging when disagreements arise. Partnership disputes often stem from conflicts over business strategy, financial management, and unclear role definitions among partners. Understanding Business Partnership Conflicts Partnership conflicts place significant stress on businesses, making proactive measures essential. Partnerships should establish detailed […]
Author: Christopher D. Warren
*** The original article was featured on Bloomberg Tax, April 28, 2025 — As a tax attorney who spends much of my time helping people and companies who have large, unresolved issues with the IRS or one or more state tax departments, it often occurs to me that the best service that I can provide […]
Author: Scott H. Novak
On January 28, 2025, the Trump Administration terminated Gwynne Wilcox from her position as a Member of the National Labor Relations Board (NLRB or the Board). Gwynne Wilcox, a union side lawyer for Levy Ratner, was confirmed to the Board for an original term in 2021 and confirmed again for a successive five-year term expiring […]
Author: Matthew F. Mimnaugh
Breach of contract disputes are the most common type of business litigation. Therefore, nearly all New York and New Jersey businesses will likely have to deal with a contract dispute at least once. Understanding when to file a breach of contract lawsuit and how long you have to sue for breach of contract is essential […]
Author: Brittany P. Tarabour
Closing your business can be a difficult and challenging task. For corporations, the process includes formal approval of the dissolution, winding up operations, resolving tax liabilities, and filing all required paperwork. Whether you need to understand how to dissolve a corporation in New York or New Jersey, it’s imperative to take all of the proper […]
Author: Christopher D. Warren
No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.
Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.
Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.
Let`s get in touch!
Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!