Applying the Supreme Court of the United States’ 2017 decision in Star Athletica v. Varsity Brands regarding the copyrightability of non-utilitarian sculptural design features (IP Update, Vol. 20, No. 4), the US Court of Appeals for the Third Circuit took on an issue of first impression when affirming the protectability and infringement of a banana costume. Silvertop Associates Inc. v. Kangaroo Manufacturing Inc., Case No. 18-2266, (3rd Cir., Aug. 1, 2019) (Hardiman, J).

Following the end of a business partnership between Rasta and it reseller, Yagoozon, Rasta discovered that Yagoozon’s sister company, Kangaroo, was selling a costume that resembled Rasta’s full-body banana costume previously resold by Yagoozon. Rasta filed suit against Kangaroo alleging copyright infringement, trade dress infringement and unfair competition. Finding that Rasta’s banana costume was infringed, the district court granted Rasta’s motion for a preliminary injunction. Kangaroo appealed.

Kangaroo argued that no injunction should have issued on the basis of copyright infringement because the costume was ineligible for copyright protection. Therefore, Kangaroo argued, Rasta did not hold a valid copyright in the banana costume.

Under the Copyright Act, “useful articles” are eligible for copyright protection to the extent they incorporate pictorial, graphic or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article. The Third Circuit began its analysis by looking at whether the non-utilitarian, sculptural features of the Rasta banana costume could be properly separated from the costume’s utilitarian features. The Court also examined whether the merger and scènes à faire doctrines rendered the costume ineligible for copyright protection.

Applying Star Athletica, the Third Circuit affirmed the district court, finding that it did not err in concluding that Rasta was reasonably likely to prove ownership of a valid copyright in, and thus the infringement of, its banana costume.

From the starting point that Rasta’s banana costume was a useful article, the Third Circuit considered (1) whether the artistic features of the costume’s design could be perceived as a work of art separate from the useful article, and (2) whether that work of art would qualify as its own protectable pictorial, graphic or sculptural work when imagined separately from the useful article.

The Third Circuit examined the banana costume’s combination of sculptural features including its colors, lines, shape and length, while ignoring the costume’s functional features, such as the cutouts intended for the wearer, and found that one could still imagine the banana apart from the costume as an original sculpture. The Court also found that the sculptural elements comprising a “recognizable rendering” of a banana met the minimal level of creativity for copyright protection. Thus the costume was deemed copyrightable.

Kangaroo also objected to the protectability of the costume design by invoking the doctrines of merger and scènes à faire, and asserted that allowing for copyright protection of the costume would be allowing for a monopoly over an idea through the protection of elements necessary to the expression of that idea. The Third Circuit rejected this argument, stating that “there are many other ways to make a costume resemble a banana,” and found that no specific feature necessarily results from the costume’s subject matter as a banana.