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Banana Costume Protectable by Copyright, Preliminary Injunction Upheld on A-Peel

by | Aug 21, 2019 | Copyrights, Intellectual Property

Written by Guest Author, Marks Gray Associate Logan McEwen

On August 1, 2019, the U.S. Third Circuit Court of Appeals issued its opinion in Silvertop Associates Inc., dba Rasta Imposta v. Kangaroo Manufacturing Inc., 2019 WL 3484240. 

At issue was whether the manufacturer of a banana costume was likely to prove copyright infringement by a competing banana costume manufacturer. The trial court entered a preliminary injunction, finding the plaintiff was likely to prove copyright infringement of its banana costume. 

Until recently, copyright protection for costumes, uniforms, and other items of clothing was rare because they are classified as “useful articles.” 

Useful articles include clothing or a car that serve a primary purpose other than aesthetic pleasure. Useful articles’ value is derived from their utilitarian, not artistic, characteristics. They are exempt from copyright protection to avoid monopolizing utilitarian ideas that serve important, non-artistic functions.

Then the cheerleaders came. 

In Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017), the U.S Supreme Court clarified that features of a useful article, such as a cheerleading uniform, are eligible for copyright protection if you can separate the artistic features from the useful article and those artistic features would qualify on their own for copyright protection. 

In Star Athletica, the arrangement of colors, shapes, stripes, and chevrons together on the cheerleading uniform (1) were considered separable from the useful article of the cheerleading uniform and (2) could qualify for copyright protection on their own. 

The opinion, now having had a chance to simmer, has been revisited by the Third Circuit Court of Appeals in a dispute between two banana costume manufacturers. The plaintiff prevailed in preliminary motions on likelihood of success on the merits, which was the subject of appeal. 

The Third Circuit addressed three big questions.

Can you copyright a banana costume? 

The court answered yes, finding that the artistic features of the banana costume are separable and capable of independent existence as a copyrightable work: a sculpture. 

The sculptural features include the banana’s combination of colors, lines, shape, and length. Though a banana is a natural object, the depiction of the banana has a minimal level of creativity which is all you need to meet the threshold for copyright protection. 

Equally important are those features the court clarified are not subject to copyright protection: the cutout holes for the arms, legs, and face, the holes’ dimensions, or the holes’ location on the costume because those are utilitarian features.

Does the idea of a banana costume merge with the expression of a banana in costume form? 

Merger is a rarely invoked but powerful concept in copyright law. 

Copyrights only protect expressions of ideas, not the ideas themselves. There are rare circumstances though where the idea and expression are so closely intermingled that you can’t monopolize one without the other. 

Merger is invoked where the idea and expression include items commonly found in nature or everyday life. The crucial aspect of a merger argument is the idea has no other or very few other ways of being expressed, which makes copyrighting the expression a monopoly on the idea. 

The Third Circuit found that the idea of a banana costume did not merge with the plaintiff’s banana costume because there are numerous other ways to make a costume resemble a banana. The banana costumes can differ based on the shape, curvature, tips, tips’ color, overall color, length, width, lining, texture, and material.

Are bananas scenes a faire? 

Scenes a faire are those standard, stock, or common elements to a particular topic or that necessarily follow from a common theme or setting, e.g. foot chases are a scene a faire in police fiction. 

The standard or common elements are not protectable under copyright law. The Third Circuit found there are no stock features which necessarily result from the costume’s subject matter (a banana). 

Though the costume is likely to be yellow, it can be any shade of yellow or even green or brown. The curve of the banana can be modified or no curve at all used. The tips of the banana, though attempting to resemble the natural tips of such a fruit, need not look like the black tips used by the plaintiff in that case (in color, shape, or size). 

The decision reads well, but in looking at the appendix materials to the opinion, it becomes harder to see where the line has been drawn. I wonder if the court’s opinion was colored by the fact that the plaintiff and defendant had previously worked together in selling the costume and, after their relationship ended, the defendant manufactured and sold their own banana costume.

For businesses, especially in the costume, uniform, and cosplay sectors, the concern is over broad copyright protections with little guidance from courts. Uncertainty and risk can be the difference between developing products or passing on a product idea entirely. 

Navigating business operations and possible copyright liability can be slippery, and businesses should always consult an intellectual property professional when concerns arise.


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