Copyrighting a Banana? That’s Bananas!

Copyrighting a Banana? That’s Bananas!

Posted on 08/19/2019 at 11:59 AM by Grace Bogart

A recent decision from the Third Circuit Court of Appeals concluded that even though there is nothing original about a banana, it may nevertheless be subject to copyright protection if it is sufficiently creative.

The court applied the recent United States Supreme Court decision in Star Athletica v. Varsity Brands, which clarified when certain functional apparel may be subject to copyright protection. The Third Circuit applied that analysis to a highly-coveted banana costume.

The dispute initially arose from a bruised business relationship between Silvertop Associates, Inc. (d/b/a Rasta Imposta), a Halloween costume manufacturer, and Yagoozoon, Inc., a costume purchaser and resaler. Shortly after the business relationship spoiled, Rasta Imposta discovered Kangaroo Manufacturing Inc., a company founded by the same man who founded Yagoozoon, selling a substantially similar version of its banana costume—and thus, violating its copyright:

Rasta sued Kangaroo for infringing Rasta’s copyright, and the district court granted a preliminary injunction to keep Kangaroo from selling the infringing banana suit. Kangaroo appealed the injunction arguing the copyright registration was improperly granted, making the banana costume fair-game to manufacture and sell.

Kangaroo argued the banana costume was un-copyrightable material for two main reasons: (1) a banana costume is useful and therefore better suited for patent protection, if anything; and (2) granting copyright protection to a banana costume violates the merger and scenes a faire copyright doctrines.

Generally, “original works of authorship fixed in a tangible medium of expression” are copyrightable. These include pictorial, graphical, and sculptural works—two and three-dimensional works of fine, graphic, and applied art—but do not include “useful articles”—those with “an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” Copyright and patent law are completely separate and exclusive regimes of intellectual property protection; if an element is copyrightable, it inherently is non-patentable, and vice versa.

For years, courts have grappled with how to properly determine if a piece of intellectual property is a “work” (subject to copyright protection) or an “article” (subject to patent protection) when the intellectual property is “applied art” containing both creative design elements and serves a utilitarian function.

The Supreme Court’s analysis in Star Athletica gave the Third Circuit some guidance—if apparel’s creative elements may be imagined separately from its functional elements, the creative elements may be subject to copyright protection.

Let’s peel back these issues as they apply to the banana costume. There are creative elements: the shade of yellow, the curve of the banana peel, the length and shape of the banana, or the angle at which the stem protrudes from the costume-wearers head. However, the costume’s functional features—the dimensions and location of the arm, leg, and face holes—are not. Because the court could imagine the creative design elements of the banana costume separately from their accompanied functional elements, it determined “the separately imagined banana—the sum of its non-utilitarian parts—[to be] copyrightable.”

The two copyright doctrines invoked by Kangaroo—merger and scenes a faire—reflect the statutorily-based principle that copyright law protects “expression,” not “ideas.” Pursuant to the merger doctrine, an author may not gain a monopoly over applied art if there are very limited ways in which the underlying utilitarian function may be expressed. Again, this rule attempts to maintain separation between the copyright and patent protection regimes; if there are very limited ways in which the underlying idea may be expressed, monopolizing one of those few ways would effectively grant a monopoly to the underlying idea—subject matter otherwise governed under patent law.

In holding the merger doctrine does not apply to banana costumes, the Third Circuit reasoned there are many ways to make a costume resemble a banana—Rasta specifically provided over twenty examples of banana costumes that were not substantially similar to its own. It is the difference in “shape, curvature, tips, tips’ color, overall color, length, width, lining, texture, and material” that show there are a multitude of ways a banana may be expressed.

The scenes a faire doctrine serves a similar purpose, but instead of preventing a monopoly over an idea generally, it prevents a monopoly over an idea through use of the idea’s common or necessary features. For example, a spy film no matter how expressed has typical inherent features: a hero, a villain, multiple foreign languages, a black tuxedo, perhaps even a small Italian fiat, a sunset, or a Swiss bank. The scenes a faire doctrine allows writers of “The Kingsman” to implement these features despite their previous use in the long-established “James Bond” series. Why? To prevent their use would be to effectively grant the writers of “James Bond” a monopoly over practically all spy movies.

Does the scenes a faire doctrine prevent a company from copyrighting a banana costume? How many ways can the features inherent to a banana be expressed? Interestingly, the Third Circuit found there are enough ways. The court explains:

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).

Let this Third Circuit opinion serve as a copyright lesson: it’s not what is made, it’s how it’s made. Although costumes are generally not copyrightable, courts may nevertheless protect “the fruits of [one’s] intellectual labor” if the expression thereof is adequately original.


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