The 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.

Copyright Infringement Dispute

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.

Third Circuit’s Decision

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.

Key Takeaway

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 questions, please contact us

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.