319 F. Supp. 3d 754
D.N.J.2018Background
- Rasta Imposta (plaintiff) designs and sells a distinctive Banana Costume first offered in 2011 and registered for copyright (Registration VA 1-707-439 issued Mar. 26, 2010; first publication Mar. 9, 2001).
- Kangaroo (defendant) was founded by a former distributor contact; plaintiff discovered Kangaroo selling a highly similar banana costume in 2017.
- Parties stipulated to a standstill (Kangaroo paused sales through Dec. 1, 2017); settlement talks failed and Rasta Imposta moved for a preliminary injunction on Dec. 1, 2017.
- Rasta Imposta asserted copyright infringement (Count I), trade dress infringement (Count II), and unfair competition under § 1125(a) (Count III). Kangaroo cross-moved to dismiss.
- Court found personal jurisdiction by consent, granted the preliminary injunction (with a $100,000 bond), denied dismissal of Counts I and II, and dismissed Count III without prejudice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity of copyright in a costume (separability/useful-article) | Banana design has separable pictorial/sculptural features (shape, color, black tips, ridges, fabric sheen) and thus is copyrightable under Star Athletica | Costume is a useful article; many features (cutouts, basic banana colors/shape) are utilitarian or unprotectable | Copyright is likely valid: features are separable and eligible for protection (registration persuasive despite >5-year post-publication filing) |
| Copying / substantial similarity | Kangaroo had access via prior distributor relationship; accused costume is nearly identical in shape, color, tips, lines, material | Similarity reflects natural banana features or scènes à faire; merger/limited ways to express idea | Court finds reasonable likelihood of proving copying of protectable expression (near identity within the limited scope of the copyright) |
| Preliminary injunction factors (irreparable harm, balance, public interest) | Likely consumer confusion and loss of goodwill; public interest favors enforcing copyrights; harm to defendant limited to stopping sales of infringing goods | Injunction would harm defendant's business and sales; bond should cover potential losses | All four factors satisfied: injunction granted (status quo maintained), bond set at $100,000 |
| Trade dress and unfair competition pleading sufficiency | Trade dress claim: design is nonfunctional, distinctive or has secondary meaning, and causes likely confusion | Unfair competition claim lacked allegations of false designation/other §1125(a) elements | Trade dress claim survives; unfair competition claim (Count III) dismissed without prejudice for failure to plead required §1125(a) elements |
Key Cases Cited
- Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (copyright requires original expression)
- Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (useful-article separability test for copyright)
- Kay Berry, Inc. v. Taylor Gifts, Inc., 421 F.3d 199 (3d Cir.) (combination of common elements can be protected; substantial similarity analysis)
- Opticians Ass'n of Am. v. Indep. Opticians of Am., 920 F.2d 187 (3d Cir.) (factors for preliminary injunction; irreparable harm, status quo)
- Don Post Studios, Inc. v. Cinema Secrets, Inc., 124 F. Supp. 2d 311 (E.D. Pa.) (weight of copyright registration depending on timing)