Third Circuit Goes Bananas for Copyright Protection

Advertising Law

The U.S. Court of Appeals, Third Circuit went bananas for copyright protection, ruling that a banana costume was copyrightable in a lawsuit filed by the maker of a competing costume.

In 2010, Rasta Imposta obtained copyright registration for a full-body banana costume. Two years later, Rasta began working with another company that purchased and resold thousands of Rasta’s banana costumes. But when the business relationship ended, Rasta discovered that Kangaroo Manufacturing (founded by the same person as the other company) was selling without a license a costume that resembled Rasta’s.

Rasta sued Kangaroo for copyright infringement, trade dress infringement and unfair competition. A district court granted Rasta’s motion for a preliminary injunction, holding that Rasta was likely to succeed on the merits of its copyright claim.

Kangaroo appealed and the Third Circuit affirmed. The court first determined that the costume was copyrightable and then ruled out both the merger and scènes à faire doctrines (the elements are indispensable to the work) as rendering the costume ineligible for copyright protection.

A useful article’s design feature is eligible for copyright if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic or sculptural work either on its own or when fixed in some other tangible medium, the federal appellate panel explained.

Rasta’s banana costume is a “useful article,” the court said, but its design features can stand alone and are therefore copyrightable.

“The artistic features of the costume, in combination, prove both separable and capable of independent existence as a copyrightable work: a sculpture,” the court wrote. “Those sculptural features include the banana’s combination of colors, lines, shape and length. They do not include the cutout holes for the wearer’s arms, legs and face; the holes’ dimensions; or the holes’ locations on the costume, because those features are utilitarian.”

Although the artistic features were more difficult to imagine separately from the costume’s “non-appearance related utility” than many works, “one can still imagine the banana apart from the costume as an original sculpture,” the panel said. “That sculpted banana, once split from the costume, is not intrinsically utilitarian and does not merely replicate the costume, so it may be copyrighted.”

The panel rejected Kangaroo’s “divide-and-conquer” approach, refusing to inspect each feature individually and instead focusing on the combination of design elements in the work. Neither was the court persuaded by Kangaroo’s contention that depictions of natural objects in their natural condition can never be copyrighted.

“This argument seeks to raise the originality requirement’s very low bar, which precedent forecloses for good reason,” the court said. “The essential question is whether the depiction of the natural object has a minimal level of creativity. Rasta’s banana meets those requirements.”

The court concluded that “the banana costume’s combination of colors, lines, shape and length (i.e., its artistic features) are both separable and capable of independent existence, and thus are copyrightable.”

Kangaroo invoked two copyright doctrines to argue that the banana costume was ineligible for protection, but neither the merger nor the scènes à faire doctrines moved the court. Merger—where the underlying idea can be effectively expressed in only one way—is a rare occurrence and not present with respect to the banana costume, the court said.

“Here, copyrighting 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 Third Circuit wrote. “Indeed, Rasta provided over 20 non-infringing examples. As the district court observed, one can easily distinguish those examples from Rasta’s costume based on the shape, curvature, tips, tips’ color, overall color, length, width, lining, texture and material.”

As for the scènes à faire doctrine, where courts exclude from copyright protection works that include elements “standard, stock or common to a particular topic or that necessarily follow from a common theme or setting,” Kangaroo pointed to no specific feature that necessarily results from the costume’s subject matter.

“Although a banana costume is likely to be yellow, it could be any shade of yellow—or green or brown for that matter,” the panel said. “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 court affirmed the preliminary injunction.

To read the opinion in Silvertop Associates, Inc. v. Kangaroo Manufacturing, Inc., click here

Why it matters: The Third Circuit’s opinion was its first opportunity to apply the Supreme Court’s recent decision in Star Athletica, LLC v. Varsity Brands, Inc., where the Court held that copyright law can protect the designs on cheerleading uniforms. The justices established a test requiring courts to ask two questions: Can the artistic feature of the useful article’s design be perceived as a two- or three-dimensional work of art separate from the useful article, and would the feature qualify as a protectable pictorial, graphic or sculptural work either on its own or in some other medium if imagined separately from the useful article? Since the court answered “yes” to both questions, the banana costume was copyrightable.



pursuant to New York DR 2-101(f)

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