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New Jersey Copyright Infringement Lawsuit Over Banana Costume Design Goes Bananas


August 15, 2018
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A New Jersey Federal Court Judge Recently Granted a Preliminary Injunction in a Copyright Infringement Lawsuit Involving a Human-sized Banana Costume

A New Jersey federal court judge recently granted a preliminary injunction in a copyright infringement lawsuit involving a human-sized banana costume. While the unique subject matter generated media buzz and its fair share of clever puns, the ultimate outcome of the suit will seriously impact the future of two competing businesses.

Copyright Dispute Over Banana Costume

The suit, 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 Imposta). Rasta Imposta designs, manufactures and sells costumes for adults and children.  On March 9, 2011, Rasta Imposta began to offer a banana design (“the Banana Costume”). While Rasta Imposta has licensed the Banana Costume to third parties, Kangaroo does not have a license for the Banana Costume. On March 23, 2010, Rasta Imposta filed a copyright application to register the Banana Costume. The United States Copyright Office issued Copyright Registration No. VA 1-707-439 for the Banana Costume on March 26, 2010.

In 2012, Rasta Imposta entered into a business relationship with Yagoozon, Inc. (“Yagoozon”), founded by Justin Ligeri. This relationship was formed for Yagoozon to sell Rasta Imposta’s Banana Costume. Over the course of the business relationship, Ligeri was informed of Rasta Imposta’s copyright registration for the Banana Costume, and Yagoozon purchased thousands of them from Rasta Imposta. The business relationship eventually ended. Ligeri is also the founder of Kangaroo. Around September 25, 2017, Berman discovered Kangaroo was selling a costume that resembled the Banana Costume at issue in this case. The company subsequently filed a lawsuit alleging claims for copyright infringement, trade dress infringement, and unfair competition. It also sought a preliminary injunction.

Judge Grants Preliminary Injunction

As The New York Times reported, Judge Noel L. Hillman couldn’t help but have a little fun with the subject of the lawsuit, using terms like “bananafest” and “bananapalooza” during a court hearing. In the end, Judge Hillman also decided to grant Rasta Imposta’s Motion for Preliminary Injunction. In determining whether to grant a preliminary injunction, the court must consider four elements: (1) reasonable probability of success on the merits; (2) irreparable injury to the moving party; (3) harm to the nonmoving party; and (4) the public interest.”

Judge Hillman first analyzed Rasta Imposta’s reasonable probability of success on the merits of its copyright infringement claim. To establish a copyright infringement claim, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. With regard to the first element, Judge Hillman concluded that there was a reasonable probability that Rasta Imposta could establish ownership of a valid copyright. He first found that the company’s Certificate of Registration was persuasive, despite being registered more than nine years after the date of first publication. Judge Hillman then turned to the U.S. Supreme Court’s decision in Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017). 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.”

Applying the test set forth in Star Athletica, the court concluded that although the costume is a useful article under 17 U.S.C. § 101, it is still eligible for copyright protection.  “The Court finds a likelihood that Rasta Imposta can prove that the banana design can both be identified separately from and can exist independently from the utilitarian aspect of the article,” Judge Hillman wrote. “The Court can easily identify the features of the Banana Costume having a pictorial, graphic, or sculptural quality.” He went on to note features such as the overall length of the costume; the overall shape of the design in terms of curvature; the shape, size, and jet black color of both ends; the parallel lines which mimic the ridges on a banana in three-dimensional form; and the bright shade of a golden yellow and uniform color that appears distinct from the more muted and inconsistent tones of a natural banana. Judge Hillman also distinguished the case from Star Athletica, writing:

The design is not like the familiar iconic outfit of a cheerleader known to all at issue in Star Athletica. Rather, it has unique pictorial, graphic, or sculptural features that did not exist until it was created. To be sure, the Banana Costume is unlikely to end up in the Philadelphia Museum of Art but it represents artistic and stylistic choices. Its unique features reflect an “imaginative spark.”

With regard to the second element of copyright infringement, the court noted that Kangaroo had access to the copyrighted work through Yagoozon’s business relationship with Rasta Imposta, which is “sufficient for the Court to conclude there is a reasonable likelihood Rasta Imposta can prove Kangaroo’s access to the copyrighted work.” The court also concluded that Rasta Imposta had shown a reasonable likelihood of proving “near identity” of the costumes. According to Hillman, “it appears to the court that almost every feature of Kangaroo Manufacturing’s design resembles Rasta Imposta’s.”

Finally, Judge Hillman also concluded that the remaining elements for a preliminary judgment were satisfied, finding that irreparable injury, balance of hardship, and public interest were all satisfied.  While the court granted Rasta Imposta’s motion, it did require the company to post a $100,000 bond to maintain the preliminary injunction.

Key Takeaway for NJ Businesses

Judge Hillman’s decision in Silvertop Associates, Inc. v. Kangaroo Manufacturing, Inc. represents a broad interpretation of the U.S. Supreme Court decision in Star Athletica. While the Supreme Court’s new test only protected a small portion of the cheerleading uniform at issue in Star Athletica, the same analysis in Silvertop was found to render an entire banana costume protectable, highlighting that the new test has expanded copyright protection for works that may not have previously qualified.

If you have any questions, please contact us

Do you have any questions? Would you like to discuss the matter further? If so, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work at 201-806-3364.

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