IP Law Daily Preliminary injunction granted against manufacture and sale of banana costume
Monday, June 4, 2018

Preliminary injunction granted against manufacture and sale of banana costume

By Nicholas Kaster, J.D.

The federal district court in Camden, New Jersey, has granted a preliminary injunction to prevent the sale and manufacture by Kangaroo Manufacturing of a banana costume made and copyrighted by Silvertop Associates, doing business under the name Rasta Imposta. The court found that there was a reasonable likelihood of success on the merits of a copyright infringement claim by Rasta Imposta, as well as the other elements of a preliminary injunction, were satisfied (Silvertop Associates Inc. v. Kangaroo Manufacturing, Inc., May 30, 2018, Hillman, N.).

Rasta Imposta copyrighted its banana costume in 2010. In 2012, it entered into a business relationship with Yagoozon, Inc., under which Yagoozon sold the banana costume. The business relationship eventually ended. Yagoozon’s founder is also the founder of Kangaroo.

In 2017, Rasta Imposta discovered that Kangaroo was selling a costume that resembled the costume at issue. Accordingly, it brought claims for copyright infringement, trade dress infringement, and unfair competition. On October 19, 2017, the parties entered into a Stipulation of Standstill Period whereby, in anticipation of discussing an amicable resolution to the case, the parties agreed that Kangaroo would cease manufacturing, selling, or marketing the banana design until December 1, 2017. It further stipulated that if the case wasn’t settled by December 1, a preliminary injunction would be filed. Settlement discussions were not successful and on December 4, 2017, Rasta Imposta filed a motion for preliminary injunction.

Preliminary injunction; copyright infringement. One of the factors in determining whether to grant a preliminary injunction is a "reasonable probability of success on the merits." To establish a copyright infringement claim, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.

With respect to the first element, the court found that there was a reasonable probability that Rasta Imposta will prove ownership of a valid copyright. First, the court found that a Certificate of Registration, presented by Rasta Imposta, was persuasive, even if registered over nine years after the date of first publication. Further, the court found that it was likely that Rasta Imposta could prove that the banana design can both be identified separately from and can exist independently from the utilitarian aspect of the article. The court could easily identify the features of the banana costume having a pictorial, graphic, or sculptural quality.

On the second element, the court noted that that Kangaroo had access to the copyrighted work through Yagoozon’s business relationship with Rasta Imposta, whereby Yagoozon sold Rasta Imposta’s costumes, including the banana costume. This was sufficient, the court said, to conclude there was a reasonable likelihood Rasta Imposta can prove Kangaroo’s access to the copyrighted work. Moreover, it appeared to the court that almost every feature of Kangaroo’s design resembled Rasta Imposta’s. Rasta argued that a side-by-side comparison of the costumes at issue was sufficient circumstantial evidence from which to infer copying. The court agreed and found Rasta Imposta showed a reasonable likelihood of proving "near identity" of the costumes and that the copyright relates to protectable material.

The court also found that the remaining elements for a preliminary judgment (irreparable injury, balance of hardship, and public interest) were satisfied. Accordingly, the court granted Rasta Imposta’s motion for preliminary injunction. The court required Rasta Imposta to post a $100,000 bond to maintain the preliminary injunction.

For the same reasons the court found a preliminary injunction appropriate, the court did not grant Kangaroo’s motion to dismiss copyright infringement claims. The court found the allegations in the complaint contained sufficient evidence of the existence of a valid copyright and the copying of constituent elements to survive Kangaroo’s motion to dismiss.

Trade dress infringement. The court also denied Kangaroo’s motion to dismiss Rasta Imposta’s complaint for trade dress infringement. Certain elements of the banana costume represent unique non-functional and distinctive pictorial, graphic, and sculptural features, the court found. In addition, the court noted that the products are almost identical in look and feel. The danger of confusion in the marketplace is clear, the court held.

Unfair competition. However, the court found that Rasta Imposta’s complaint of unfair competition could not proceed at this time. The complaint did not plead the use of a "word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact" that would allow for relief under 15 U.S.C. §1125(a).

The case is No. 1:17-cv-07919-NLH-KMW.

Attorneys: Eric Robert Clendening (Flaster Greenberg PC) for Silvertop Associates, Inc. d/b/a Rasta Imposta. Bruce Allen Schoenberg (Moritt Hock & Hamroff LLP) and David Alan Schrader (Schrader & Schoenberg LLP) for Kangaroo Manufacturing, Inc.

Companies: Silvertop Associates, Inc. d/b/a Rasta Imposta; Kangaroo Manufacturing, Inc.

MainStory: TopStory Copyright Trademark NewJerseyNews

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