Going bananas after Star Athletica

“Quite unfortunate,” opines Guy Rub regarding the copyrights-in-costumes opinion by the Third Circuit in Silvertop Associates v. Kangaroo Manufacturing, and is he wrong?

The opinion is here and, for those who came in late, my discussion of Star Athletica is here. And the excerpts, stripped of internal citations and footnotes and things, are these:

This dispute presents a matter of first impression for our Court and requires us to apply the Supreme Court’s recent decision in Star Athletica . . . .

We begin by analyzing whether non-utilitarian, sculptural features of the costume are copyrightable by determining whether those features can be identified separately from its utilitarian features and are capable of existing independently from its utilitarian features.

To begin with, Rasta’s banana costume is a “useful article.” The artistic features of the costume, in combination, prove both separable and capable of independent existence as a copyrightable work: a sculpture. 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 more difficult to imagine separately from the costume’s “non-appearance related utility” (i.e., wearability) than many works, one can still imagine the banana apart from the costume as an original sculpture. That sculpted banana, once split from the costume, is not intrinsically utilitarian and does not merely replicate the costume, so it may be copyrighted.

Kangaroo responds that we must inspect each feature individually, find each one too unoriginal or too utilitarian in isolation for copyright, and decline to protect the whole. But Kay Berry forecloses this divide-and-conquer approach by training our focus on the combination of design elements in a work [(and requires us to focus] on “the specific combination of elements [] employed to give [a work] its unique look”). And the Star Athletica Court did not cherry-pick the uniform designs’ colors, shapes, or lines; it too evaluated their combination (focusing on “the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniforms”). Thus, the separately imagined banana—the sum of its non-utilitarian parts—is copyrightable.

Top banana Alexis Arena

So, let’s focus on this: “Although more difficult to imagine separately from the costume’s “non-appearance related utility” (i.e., wearability) than many works, one can still imagine the banana apart from the costume as an original sculpture. The sculpted banana, once split from the costume, is not intrinsically utilitarian” — whoa.

“Banana . . . split.” We see what you did there, Third Circuit!

Anyway. Sculpted banana, yeah — “is not intrinsically utilitarian and does not merely replicate the costume, so it may be copyrighted.” (“Copyrighted”? Wait…) And, says the Court of Appeals, what is true about a sculpted banana is true about a banana banana as well:

Kangaroo also contends the banana is unoriginal [and thus ineligible for copyright protection as a “useful object”] because its designers based the design on a natural banana. They ask us to hold 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. A judge’s own aesthetic judgments must play no role in copyright analysis. “Our inquiry is limited to how the article and feature[s] are perceived, not how or why they were designed.” The cases Kangaroo cites in its brief confirm that whether natural objects are copyrightable depends on the circumstances. . . . The essential question is whether the depiction of the natural object has a minimal level of creativity. Rasta’s banana meets those requirements.

“Depends on the circumstances” in that last passage is a bit troubling, but it is what it is. No one, after all, understands copyright anyway.

Well, a few people do, besides Mark Whipple and the judges of the Third Circuit. One of those who do is my friend Alexis Arena, one of the outstanding young intellectual property and unfair competition litigators in the country, who argued this case and won-won-won it! Bottom line:

We hold that, in combination, the Rasta costume’s non-utilitarian, sculptural features are copyrightable, so we will affirm the District Court’s preliminary injunction.

And me? I may not know much about copyright, but like Professor Rub, this does seem a pretty straightforward and predictable outcome after Star Athletica. I guess the interesting question is, where would the case have come out if there had never been a Star Athletica decision? The latter strained to find, in what seemed to a lot of people just a cheerleader’s uniform, a creative, copyrightable work.

But a banana costume? That seems somewhat more creative. Consider this unforgettable manifestation of fruit costumery:

I think we have to give the Big Fig his due.

And on the other hand … sometimes a banana is just a banana. Costume.

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