Silvertop Associates Inc v. Kangaroo Manfacturing Inc , 931 F.3d 215 ( 2019 )

PRECEDENTIAL
UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT
___________
No. 18-2266
___________
SILVERTOP ASSOCIATES INC.,
DBA Rasta Imposta
v.
KANGAROO MANUFACTURING INC.,
Appellant
On Appeal from the United States District Court
for the District of New Jersey
(D.C. No. 1-17-cv-07919)
District Judge: Honorable Noel L. Hillman
Argued April 3, 2019
Before: CHAGARES, HARDIMAN, Circuit Judges, and
GOLDBERG, District Judge. *
*
Honorable Mitchell S. Goldberg, District Judge of the
United States District Court for the Eastern District of
Pennsylvania, sitting by designation.
(Filed: August 1, 2019)
Alexis Arena [Argued]
Flaster Greenberg
1835 Market Street
Suite 1050
Philadelphia, PA 19103
Eric R. Clendening
Flaster Greenberg
1810 Chapel Avenue West
Cherry Hill, NJ 08002
Attorneys for Appellee
David A. Schrader [Argued]
Paykin Krieg & Adams
750 Third Avenue, 9th Floor
New York, NY 10017
Attorney for Appellant
_
OPINION OF THE COURT
_
HARDIMAN, Circuit Judge.
This interlocutory appeal involves the validity of a
copyright in a full-body banana costume. Appellant Kangaroo
Manufacturing Inc. concedes that the banana costume it
manufactures and sells is substantially similar to the banana
costume created and sold by Appellee Rasta Imposta. See infra
Appendix A. Yet Kangaroo claims that Rasta cannot hold a
2
valid copyright in such a costume’s “pictorial, graphic, or
sculptural features.” 17 U.S.C. § 101. 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, L.L.C. v.
Varsity Brands, Inc., 137 S. Ct. 1002 (2017). 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.
I
This dispute stems from a business relationship that
went bad. In 2010, Rasta obtained Copyright Registration No.
VA 1-707-439 for its full-body banana costume. Two years
later, Rasta began working with a company called Yagoozon,
Inc., which purchased and resold thousands of Rasta’s banana
costumes. Yagoozon’s founder, Justin Ligeri, also founded
Kangaroo and at all relevant times was aware of Rasta’s
copyright registration in the banana costume. After the
business relationship between Rasta and Yagoozon ended,
Rasta’s CEO, Robert Berman, discovered Kangaroo selling a
costume that resembled his company’s without a license.
Rasta sued Kangaroo for copyright infringement, trade
dress infringement, and unfair competition. After settlement
discussions were unsuccessful, Rasta moved for a preliminary
injunction and Kangaroo responded by moving to dismiss. The
District Court granted the motion for a preliminary injunction
and explained its reasons for doing so in a thorough opinion.
See Silvertop Assocs., Inc. v. Kangaroo Mfg., Inc., 319 F.
Supp. 3d 754 (D.N.J. 2018). It also dismissed the unfair
competition count. Kangaroo appealed, but because the
District Court had not entered an order detailing the
injunction’s terms, we granted the parties’ motion to remand
3
for the limited purpose of entering a corrected order. The
District Court amended its order, and the injunction is now ripe
for review on appeal.
II
The District Court had jurisdiction under 28 U.S.C.
§§ 1331 and 1338(a). We have jurisdiction under 28 U.S.C.
§ 1292(a)(1). We review the District Court’s conclusions of
law de novo and its ultimate decision to grant the preliminary
injunction for abuse of discretion. Child Evangelism
Fellowship of N.J. Inc. v. Stafford Twp. Sch. Dist., 386 F.3d
514, 524 (3d Cir. 2004). 1
III
Kangaroo claims the injunction should not have issued
because Rasta is not likely to succeed on the merits of its
copyright infringement claim. 2 According to Kangaroo, Rasta
1
Kangaroo argues that the District Court erred by
failing to apply the heightened mandatory injunction standard.
See Trinity Indus. v. Chi. Bridge & Iron Co., 735 F.3d 131, 139
(3d Cir. 2013). We disagree for the reasons the District Court
articulated: Rasta’s motion for a preliminary injunction did not
request all or substantially all of its relief in a way that the relief
could not later be undone. See Punnett v. Carter, 621 F.2d 578,
582–83 (3d Cir. 1980). And Rasta’s preliminary injunction
motion merely sought to maintain the status quo the parties
agreed to in their Stipulation of Standstill. See id.2
The other three prerequisites for injunctive relief are
not at issue.
4
does not hold a valid copyright in its banana costume. Whether
Rasta’s copyright is valid is a question of law, which makes
our review plenary. See Masquerade Novelty, Inc. v. Unique
Indus., 912 F.2d 663, 667 (3d Cir. 1990). 3 And we must remain
“cognizant of the Supreme Court’s teaching that copyrights
protect only expressions of ideas and not ideas themselves.” Id.at 671 (citing Mazer v. Stein, 347 U.S. 201, 217 (1954)).
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. See 17 U.S.C.
§ 101; Star Athletica, 137 S. Ct. at 1008. We then consider
whether the merger and scenes a faire doctrines render the
costume ineligible for copyright protection. We conclude that
the District Court did not err when it held that Rasta is
reasonably likely to prove ownership of a valid copyright.
3
Registering a work’s copyright within five years of the
work’s first publication entitles the holder to a presumption of
validity. See 17 U.S.C. § 410(c). A later-filed registration may
still be probative though. See id. (“The evidentiary weight to
be accorded [a later-filed] certificate . . . shall be within the
discretion of the court.”). Here, Rasta’s Certificate of
Registration lists a 2001 first publication date and a 2010
registration date, so it is not entitled to the statutory
presumption of validity, though we may consider the
registration’s existence in our analysis.
5
A
“A valid copyright extends only to copyrightable
subject matter.” Star Athletica, 137 S. Ct. at 1008.
Copyrightable subject matter means “original works of
authorship fixed in any tangible medium of expression.” 17
U.S.C. § 102(a). Originality is a very low bar, requiring “only
a minimal amount of creativity.” Kay Berry, Inc. v. Taylor
Gifts, Inc., 421 F.3d 199, 207 (3d Cir. 2005). “Works of
authorship include . . . pictorial, graphic, and sculptural
works,” 17 U.S.C. § 102(a)(5), which are “two-dimensional
and three-dimensional works of fine, graphic, and applied art,
[etc.],” id. § 101. “And a work of authorship is ‘fixed in a
tangible medium of expression when it is embodied in a’
‘material object . . . from which the work can be perceived,
reproduced, or otherwise communicated.’” Star Athletica, 137
S. Ct. at 1008 (internal quotation marks and alterations
omitted) (quoting 17 U.S.C. § 101).
A special rule applies to “useful article[s],” i.e., those
which have “an intrinsic utilitarian function that is not merely
to portray the appearance of the article or to convey
information.” Id. (quoting 17 U.S.C. § 101). Without more,
they may not receive protection as such. Id. Instead, useful
articles that “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” may be eligible for protection of those features alone.
Id. (quoting 17 U.S.C. § 101). Thus, separability analysis
determines whether a useful article contains copyrightable
features.
A useful article’s design feature “is eligible for
copyright if, when identified and imagined apart from the
6
useful article, it would qualify as a pictorial, graphic, or
sculptural work either on its own or when fixed in some other
tangible medium.” Id. at 1012 (describing separability
analysis). So we ask two questions: (1) can the artistic feature
of the useful article’s design “be perceived as a two- or three-
dimensional work of art separate from the useful article[?]” and
(2) would the feature “qualify as a protectable pictorial,
graphic, or sculptural work either on its own or in some other
medium if imagined separately from the useful article[?]” Id.
at 1016.
The first requirement “is not onerous. The
decisionmaker need only be able to look at the useful article
and spot some two- or three-dimensional element that appears
to have pictorial, graphic, or sculptural qualities.” Id. at 1010.
The second requirement, which is “ordinarily more
difficult to satisfy,” requires “that the separately identified
feature has the capacity to exist apart from the utilitarian
aspects of the article.” Id. (“In other words, the feature must be
able to exist as its own pictorial, graphic, or sculptural work as
defined in § 101 once it is imagined apart from the useful
article.”). And that separate feature “cannot itself be a useful
article or ‘an article that is normally a part of a useful article’
(which is itself considered a useful article).” Id. (alteration
omitted) (quoting 17 U.S.C. § 101). We do not focus on “any
aspects of the useful article that remain after the imaginary
extraction.” Id. at 1013. Nor does the work’s marketability or
artistic merit bear on our analysis. See id. at 1015. Thus, the
two-part inquiry effectively turns on whether the separately
imagined features are still intrinsically useful.
We have explained that we do not analyze each feature
in isolation; instead, a “specific combination of elements” that
7
gives a sculpture “its unique look” could be eligible for
copyright protection. Kay Berry, 421 F.3d at 209 (emphasis
added). Those combined features may include “texture, color,
size, and shape,” among others, and it “means nothing that
these elements may not be individually entitled to protection.”
Id. at 207; see also Star Athletica, 137 S. Ct. at 1012 (analyzing
the uniform designs’ “arrangement of colors, shapes, stripes,
and chevrons” together, not individually).
The Supreme Court in Star Athletica found the two-
dimensional design patterns on cheerleader uniforms eligible
for copyright protection. Id. The uniform’s utilitarian “shape,
cut, and dimensions” were not copyrightable, but “the two-
dimensional work of art fixed in the tangible medium of the
uniform fabric” was. Id. at 1013. Imagining those designs apart
from the uniform did not necessarily replicate the useful article
even though the designs still looked like uniforms. See id. at
1012.
The Star Athletica Court also provided helpful
examples addressing three-dimensional articles. First, it
reaffirmed its decision in Mazer, which held that a statuette
depicting a dancer, intended for use as a lamp base, was
eligible for copyright protection. Id. at 1011 (citing 347 U.S. at
214, 218–19). Second, the Court noted that a replica of a useful
article (cardboard model car) could be copyrightable, although
the underlying article (the car itself) could not. Id. at 1010.
Finally, the Court noted that a shovel, “even if displayed in an
art gallery,” still has an intrinsic utilitarian function beyond
portraying its appearance or conveying information. Id. at 1013
n.2. So it could not be copyrighted, even though a drawing of
a shovel or any separately identifiable artistic features could.
Id. We too have observed that “just because a sculpture is
incorporated into an article that functions as other than a pure
8
sculpture does not mean that the sculptural part of the article is
not copyrightable.” Masquerade Novelty, 912 F.2d at 669.
B
Having articulated the legal principles that govern our
analysis, we turn to the particular facts of this case. To begin
with, Rasta’s banana costume is a “useful article.” 4 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. 5 Although more difficult
4
We have noted that “a costume . . . may serve, aside
from its appearance, to clothe the wearer.” Masquerade
Novelty, 912 F.2d at 670. Star Athletica addressed cheerleader
uniforms as useful articles. 137 S. Ct. at 1010. And Rasta
concedes its costume is a useful article.
5
The District Court correctly found “that the cutout
holes are not, per se, a feature eligible for copyright” because
they “perform a solely utilitarian function.” Silvertop, 319 F.
Supp. 3d at 764. It went on, however, to list “the location of
the head and arm cutouts which dictate how the costume drapes
on and protrudes from a wearer (as opposed to the mere
existence of the cutout holes)” among the copyrightable
features. Id. at 765. We disagree with that portion of the
District Court’s analysis because we must imagine the banana
apart from the useful (i.e., wearable) article. Rasta has not
identified any artistic aspect to the holes’ dimensions or
9
to imagine separately from the costume’s “non-appearance
related utility” (i.e., wearability) than many works,
Masquerade Novelty, 912 F.2d at 669, 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. See 421 F.3d at 209–10 (focusing 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. 137 S. Ct. at 1012 (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.
Kangaroo also contends the banana is unoriginal
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
locations except in relation to the wearer. The cutout holes’
dimensions and locations on the costume are intrinsically
useful (perhaps even necessary) to make the costume wearable
like the “shape, cut, and dimensions” of the cheerleader
uniforms in Star Athletica, so they cannot be copyrighted. 137
S. Ct. at 1012.
10
seeks to raise the originality requirement’s very low bar, which
precedent forecloses for good reason. See Kay Berry, 421 F.3d
at 207. A judge’s own aesthetic judgments must play no role in
copyright analysis. See Star Athletica, 137 S. Ct. at 1015. “Our
inquiry is limited to how the article and feature[s] are
perceived, not how or why they were designed.” Id. The cases
Kangaroo cites in its brief confirm that whether natural objects
are copyrightable depends on the circumstances. Compare
Satava v. Lowry, 323 F.3d 805, 810 (9th Cir. 2003) (holding
that a sculpture of a jellyfish was not copyrightable), with
Coquico, Inc. v. Rodriguez-Miranda, 562 F.3d 62, 69 (1st Cir.
2009) (holding that several elements of a plush toy depicting a
tree frog were copyrightable). The essential question is
whether the depiction of the natural object has a minimal level
of creativity. Rasta’s banana meets those requirements.
In furtherance of its argument that costumes depicting
items found in nature can never be copyrighted, Kangaroo
relies on Whimsicality, Inc. v. Rubie’s Costume Co., 891 F.2d
452 (2d Cir. 1989). Whimsicality involved a company’s
misrepresentation of its costumes as only “soft sculpture” on
its application for copyright registration, without any
indication (written or pictorial) that they could be worn. Id. at
456. Unlike that case, here the Copyright Office recognized
that Rasta sought to copyright a costume and initially refused
to register a copyright because it was a costume. Additionally,
the Whimsicality court imagined the costumes peeled away
from their wearers as deflated piles of fabric, leaving nothing
recognizable or original to copyright. See id. Star Athletica
does not allow that approach in this appeal. The three-
dimensional banana sculpture that separability analysis
requires us to imagine is not a crumpled pile of fabric; it is a
recognizable rendering of a banana. See Star Athletica, 137 S.
11
Ct. at 1012 (requiring courts to imagine the separated work “on
its own or when fixed in some other tangible medium”
(emphasis added)). Courts have not, as Kangaroo claims,
“consistently found that costumes of natural items, such as
bees and pumpkins, cannot be copyrighted.” Reply Br. 5; see
also Animal Fair, Inc. v. Amfesco Indus., 620 F. Supp. 175, 188
(D. Minn. 1985) (finding a slipper in the shape of a bear’s paw
copyrightable), aff’d mem., 794 F.2d 678 (8th Cir. 1986).
Indeed, the Second Circuit focused its decision on
Whimsicality’s misrepresentation to the Copyright Office and
did not even reach the question whether costumes are an
exception to the general rule that clothing is not copyrightable.
891 F.2d at 455–56. In our view, the non-utilitarian, sculptural
features of this costume are just such an exception. 6
We therefore hold that the banana costume’s
combination of colors, lines, shape, and length (i.e., its artistic
features) are both separable and capable of independent
existence, and thus are copyrightable.
C
Lastly, Kangaroo invokes two copyright doctrines—
merger and scenes a faire—to argue the banana costume is
ineligible for protection. Both arguments address the same
6
Kangaroo’s reliance on the underlying district court
decision in Whimsicality is also misplaced because that
decision, though carefully reasoned, employed a separability
analysis inconsistent with the analysis required by Star
Athletica. See Whimsicality, Inc. v. Rubie’s Costumes Co., 721
F. Supp. 1566, 1572–76 (E.D.N.Y.), order aff’d in part,
vacated in part sub nom., 891 F.2d 452 (2d Cir. 1989).
12
question: whether copyrighting the banana costume would
effectively monopolize an underlying idea, either directly or
through elements necessary to that idea’s expression.
Because Congress has excluded “any idea, procedure,
process, system, method of operation, concept, principle, or
discovery” from copyright protection, 17 U.S.C. § 102(b),
courts deny such protection when a work’s underlying idea can
effectively be expressed in only one way. Courts term this rare
occurrence “merger,” and find it only when “there are no or
few other ways of expressing a particular idea.” Educ. Testing
Servs. v. Katzman, 793 F.2d 533, 539 (3d Cir. 1986) (quoting
Apple Comput., Inc. v. Franklin Comput. Corp., 714 F.2d
1240, 1253 (3d Cir. 1983). And if copyrighting a design feature
would effectively monopolize an underlying idea, procedure,
process, etc., then the merger doctrine exists to deny that
protection. See Kay Berry, 421 F.3d at 209. Notably, merger
“is most applicable where the idea and the expression are of
items found in nature, or are found commonly in everyday
life.” Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d
25, 36 (1st Cir. 2001). But if copyright does not foreclose
“other methods of expressing [an] idea . . . as a practical
matter, then there is no merger.” Educ. Testing Servs., 793 F.2d
at 539 (quoting Apple Comput., 714 F.2d at 1253).
Here, copyrighting Rasta’s banana costume would not
effectively monopolize the underlying idea because there are
many other ways to make a costume resemble a banana.
Indeed, Rasta provided over 20 non-infringing examples. As
the District Court observed, one can easily distinguish those
examples from Rasta’s costume based on the shape, curvature,
tips, tips’ color, overall color, length, width, lining, texture, and
material. See Silvertop Assocs., 319 F. Supp. 3d at 768. We
agree and hold the merger doctrine does not apply here.
13
Courts also exclude scenes a faire from copyright
protection, which include elements “standard, stock, or
common to a particular topic or that necessarily follow from a
common theme or setting.” Dun & Bradstreet Software
Servs. v. Grace Consulting, Inc., 307 F.3d 197, 214 (3d Cir.
2002) (quoting Gates Rubber Co. v. Bando Chem. Indus., 9
F.3d 823, 838 (10th Cir. 1993)). The doctrine covers “those
elements of a work that necessarily result[] from external
factors inherent in the subject matter of the work.” Id. at 215
(quoting Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366, 1375 (10th
Cir. 1997)). As with merger, the scenes a faire doctrine seeks
to curb copyright’s potential to allow monopolizing an
underlying idea—via features that are so common or necessary
to that idea’s expression that copyrighting them effectively
copyrights the idea itself. E.g., Mitel, 124 F.3d at 1374–75
(citing foot chases as a scene a faire of police fiction).
Here too, copyrighting the banana costume’s non-
utilitarian features in combination would not threaten such
monopolization. Kangaroo points to no specific feature that
necessarily results from the costume’s subject matter (a
banana). Although a banana costume is likely to be yellow, it
could be any shade of yellow—or green or brown for that
matter. Although a banana costume is likely to be curved, it
need not be—let alone in any particular manner. And although
a banana costume is likely to have ends that resemble a natural
banana’s, those tips need not look like Rasta’s black tips (in
color, shape, or size). Again, the record includes over 20
examples of banana costumes that Rasta concedes would be
non-infringing. The scenes a faire doctrine does not apply here
either.
14
* * *
Because Rasta established a reasonable likelihood that
it could prove entitlement to protection for the veritable fruits
of its intellectual labor, we will affirm.
15
APPENDIX A
16