Third Circuit affirms preliminary injunction in favor of banana costume designer, finding combination of costume’s artistic features, such as its colors, lines, shape and length, are “separable” from its utilitarian aspects and capable of independent existence and therefore protectable as copyrighted work.
Plaintiff Silvertop Associates Inc., d/b/a Rasta Imposta, brought a copyright infringement action against its former wholesaler, Kangaroo Manufacturing Inc., for selling look-alikes of its banana costume without a license. Rasta obtained a copyright registration for its full-body banana costume in 2010 and thereafter formed a business relationship with a wholesale company, Yagoozon, which purchased and resold Rasta’s banana costumes. Yagoozon’s founder then co-founded Kangaroo, and following the deterioration of the business relationship with Rasta, Kangaroo began selling copycat versions of Rasta’s banana costumes.
Rasta sued for copyright infringement, trade dress infringement and unfair competition, and it obtained a preliminary injunction based on its likelihood of success on the copyright infringement claim. On an interlocutory appeal, the Third Circuit considered only the issue of whether Rasta held a valid copyright on its banana costume. Despite Kangaroo conceding that its banana costume was substantially similar to Rasta’s banana costume, Kangaroo nevertheless argued that the district court improperly issued the injunction because Rasta does not hold a valid copyright in the banana costume and Rasta is not likely to succeed on the merits of its copyright infringement claim. The Third Circuit disagreed.
As an issue of first impression, the Third Circuit first noted that Rasta’s banana costume, like other clothing garments, constituted a “useful article,” therefore subjecting it to a special rule to determine whether it contains copyrightable features. The court applied the Supreme Court’s “separability” analysis from Star Athletica, LLC v. Varsity Brands, Inc., which held that cheerleading uniforms could be copyrighted due to creative elements that were “separable” from their useful elements. First, the court considered whether “the artistic feature of the banana costume be perceived as a two- or three-dimensional work of art separate from the useful article.” Second, the court considered whether the artistic feature “qualif[ies] as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article.” Employing this two-step inquiry, the court indicated that the analysis should focus on a “specific combination of elements” rather than view each feature in isolation.
Under the first step, which merely requires spotting two- or three-dimensional elements containing “pictorial, graphic, or sculptural qualities,” the court, imagining the banana apart from the “useful article” (i.e., its wearability), singled out the costume’s colors, lines, shape and length. By comparison, the holes cut out for the arms, legs and face, the holes’ dimensions or the holes’ locations in the costume, all of which serve only utilitarian functions, were not included. Turning to the second step, which is “ordinarily more difficult to satisfy” because the separate feature “cannot itself be a useful article” or “an article that is normally a part of a useful article,” the court concluded that the combination of the costume’s artistic features—the colors, lines, shape and length—were not only separable from the underlying costume but also capable of independently existing as a three-dimensional copyrightable sculpture. Put another way, the court held that the sculpted, imagined banana, once “split” from the rest of the costume, is not intrinsically utilitarian and therefore is copyrightable.
Kangaroo set forth a number of other arguments, which the court rejected. First, Kangaroo argued that the banana is unoriginal and, in any event, depictions of objects in their “natural condition” can never be copyrighted. The court rejected this argument as an attempt to raise the “low bar” of the requirement for originality and concluded that Rasta’s depiction of the banana satisfied the minimal level of creativity required to be an original work of authorship within the meaning of the Copyright Act. Second, Kangaroo asserted the merger doctrine (which operates to deny copyright protection when a work’s underlying idea is capable of being expressed in only one way to prevent the monopolization of an underlying idea, procedure or process) to argue the banana costume is ineligible for copyright protection. The court reasoned that copyrighting Rasta’s banana costume would not monopolize the underlying idea, given that there are many other ways to “make a costume resemble a banana.” Specifically, Rasta provided over 20 non-infringing examples of banana costumes that were distinguishable by shape, curvature, tips, the color of the tips, overall color, length, width, lining, texture and material. Finally, the court rejected Kangaroo’s assertion of scenes a faire, which similarly operates to prevent monopolizing features that are “so common” or necessary to an idea’s expression that they “necessarily follow from a common theme or setting.” Finding scenes a faire to be inapplicable, the court noted that Kangaroo failed to point to any specific feature that “necessarily results” from the costume’s subject matter, i.e., a banana. Again, considering Rasta’s examples of non-infringing banana costumes, the court reasoned that a banana costume could be any shade of yellow, green or brown; that it need not be curved; and that it need not have “tips,” like Rasta’s black tips, in color, shape or size.