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`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
`
`
`
`
`
`
`SILVERTOP ASSOCIATES, INC.
`d/b/a RASTA IMPOSTA,
`
` Plaintiff,
`
`v.
`
`KANGAROO MANUFACTURING, INC.,
`
` Defendant.
`
`
`
`
`1:17-cv-7919 (NLH/KMW)
`
`OPINION
`
`
`
`
`
`
`
`APPEARANCES:
`ERIC ROBERT CLENDENING
`ALEXIS KATHRYN ARENA
`FLASTER/GREENBERG PC
`1810 CHAPEL AVENUE WEST
`CHERRY HILL, NJ 08002
`
`On behalf of Plaintiff
`BRUCE ALLEN SCHOENBERG
`DAVID ALAN SCHRADER
`A. JONATHAN TRAFIMOW
`MORITT HOCK & HAMROFF LLP
`1407 BROADWAY
`SUITE 3900
`NEW YORK, NY 10018
`
`On behalf of Defendant
`
`
`HILLMAN, District Judge
`
`This matter concerns Defendant Kangaroo Manufacturing, Inc.
`(“Kangaroo”)’s alleged copyright infringement of a banana
`costume made and copyrighted by Plaintiff Silvertop Associates,
`Inc., doing business as Rasta Imposta (“Rasta Imposta”). Before
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`the Court is Rasta Imposta’s Motion for Preliminary Injunction
`and Kangaroo’s Cross-Motion to Dismiss. For the reasons that
`follow, the Court will grant Rasta Imposta’s Motion for
`Preliminary Injunction, grant Kangaroo’s Cross-Motion to Dismiss
`as to Count III of the Complaint, and deny Kangaroo’s Cross-
`Motion to Dismiss as to Count I and Count II of the Complaint.
`The Court will require a $100,000 bond be posted by Rasta
`Imposta to maintain the preliminary injunction.
`I.
`The Court takes the following facts from Robert Berman’s
`
`Declaration in support of Rasta Imposta’s Motion for Preliminary
`Injunction and from his testimony at a hearing before the Court.
`Berman is the Chief Executive Officer of Rasta Imposta, a
`business that designs, manufactures, and sells costumes for
`adults and children. Among these costumes, Rasta Imposta began
`to offer a banana design on March 9, 2011 (“the Banana
`Costume”). While Rasta Imposta has licensed the Banana Costume
`to third parties, Kangaroo does not have a license for the
`Banana Costume. On March 23, 2010, Rasta Imposta filed a
`copyright application to register the Banana Costume. Copyright
`Registration No. VA 1-707-439 was issued by the United States
`Copyright Office on March 26, 2010 for the Banana Costume.
`
`In 2012, Rasta Imposta entered into a business relationship
`with Yagoozon, Inc. (“Yagoozon”), founded by Justin Ligeri.
`
`
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`This relationship was formed for Yagoozon to sell Rasta
`Imposta’s Banana Costume. Over the course of the business
`relationship, Ligeri was informed of Rasta Imposta’s copyright
`registration for the Banana Costume, and Yagoozon purchased
`thousands of them from Rasta Imposta. The business relationship
`eventually ended. Ligeri is also the founder of Kangaroo.
`Around September 25, 2017, Berman discovered Kangaroo was
`selling a costume that resembled the Banana Costume at issue in
`this case.
`
`Rasta Imposta filed its Complaint with the Court on October
`5, 2017, bringing claims for copyright infringement (Count I),
`trade dress infringement (Count II), and unfair competition
`(Count III). On October 19, 2017, the parties entered into a
`Stipulation of Standstill Period whereby, in anticipation of
`“discuss[ing] an amicable resolution to this matter prior to
`December 1, 2017,” the parties agreed that Kangaroo would “cease
`manufacturing, ordering, offering for sale, advertising,
`marketing, promoting, selling and distributing Plaintiff’s
`Banana Design (and any substantially similar Banana costume)
`until December 1, 2017.” It further stipulated that “if this
`case is not settled or otherwise resolved prior to December 1,
`2017, Plaintiff will file its application for a preliminary
`injunction on or about December 1, 2017.”
`Settlement discussions were not successful and on December
`
`
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`1, 2017, Rasta Imposta filed a Motion for Preliminary
`Injunction. Kangaroo responded with a December 21, 2017 Cross-
`Motion to Dismiss. This Court held a hearing on the pending
`motions on January 26, 2018, which was continued on February 13,
`2018. Rasta Imposta presented the testimony of Berman, who was
`cross-examined by Kangaroo, and who testified consistently with
`his declaration. The parties submitted supplemental briefing
`following the hearing, which was complete as of March 8, 2018.
`II.
`This Court has subject matter jurisdiction over this matter
`
`pursuant to 28 U.S.C. §§ 1331 and 1338(a). In Kangaroo’s Cross-
`Motion to Dismiss, Kangaroo argues it is not subject to personal
`jurisdiction in New Jersey. This issue was addressed at the
`hearing before the Court and in the supplemental briefing. In
`its March 2, 2018 letter brief, Kangaroo “decided to withdraw
`its jurisdictional objection” and “to consent to personal
`jurisdiction in this proceeding.” Accordingly, the Court has
`personal jurisdiction, by consent, over Kangaroo. See Azubuko
`v. E. Bank, 160 F. App’x 143, 146 (3d Cir. 2005) (“[P]ersonal
`jurisdiction may be conferred by consent of the parties . . . .”
`(quoting Zelson v. Thomforde, 412 F.2d 56, 59 (3d Cir. 1969))).
`III.
`The Court turns to the merits of Rasta Imposta’s Motion for
`
`Preliminary Injunction. “A district court must consider four
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`elements in determining whether to grant a preliminary
`injunction: (1) reasonable probability of success on the merits;
`(2) irreparable injury to the moving party; (3) harm to the
`nonmoving party; and (4) the public interest.” Goodwin v.
`Castille, 465 F. App’x 157, 160 (3d Cir. 2012) (citing Iles v.
`de Jongh, 638 F.3d 169, 172 (3d Cir. 2011)).
`
`However, before turning to these elements, the Court must
`determine whether or not Rasta Imposta is requesting a mandatory
`injunction. Kangaroo argues Rasta Imposta is seeking “a
`mandatory injunction seeking the ultimate relief requested
`should it win the case,” which Kangaroo argues would require the
`Court to apply a heightened burden on Rasta Imposta. Rasta
`Imposta, however, argues Kangaroo “mistakenly alleged” that it
`is seeking a mandatory injunction and maintains that it “is only
`seeking a preliminary injunction at this stage.”
`
`The Court finds that the question of whether Rasta Imposta
`is asking for a mandatory injunction or not depends not on the
`wording of the motion and the moving papers, but on the
`substance of the relief being requested. Accordingly, the
`language Rasta Imposta chose in framing its request does not
`resolve this issue.
`
`“An injunction is mandatory if the injunction will either
`(1) ‘alter the status quo by commanding some positive act’ or
`(2) provide the moving party with ‘substantially all the relief
`
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`sought and that relief cannot be undone even if the defendant
`prevails at a trial on the merits.’” Coast to Coast Entm’t, LLC
`v. Coastal Amusements, Inc., No. 05-3977, 2005 WL 7979273, at *9
`(D.N.J. Nov. 7, 2005) (quoting Tom Doherty Assocs. v. Saban
`Entm’t, 60 F.3d 27, 33-34 (2d Cir. 1995)). “Where a plaintiff
`seeks a mandatory injunction rather than a prohibitory
`injunction, the burden of showing an entitlement to the
`preliminary injunction is greater, as mandatory injunctions are
`generally disfavored.” Id.
`
`The Court finds Rasta Imposta is not requesting a mandatory
`injunction, and the Court will accordingly not apply a
`heightened burden in determining whether a preliminary
`injunction is warranted in this case.1 The Court finds Rasta
`Imposta’s request is to maintain the status quo established by
`the October 19, 2017 Stipulation of Standstill, which provided
`that Kangaroo would “cease manufacturing, ordering, offering for
`sale, advertising, marketing, promoting, selling and
`distributing Plaintiff’s Banana Design (and any substantially
`similar Banana costume) until December 1, 2017.” The Court
`further finds this is not a case where Rasta Imposta will be
`
`
`This Court finds that even if Rasta Imposta could be said
`1
`to be seeking a mandatory injunction it has met its burden of
`showing a clear and substantial likelihood of success on the
`merits.
`
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`granted all of its requested relief in such a way that the
`relief cannot be later undone.2
`
`First, Rasta Imposta requests relief other than the
`enjoinment of Kangaroo’s alleged copyright infringement. Rasta
`Imposta’s Complaint pleads it “is entitled pursuant to 17 U.S.C.
`§ 504 to either disgorgement of profits and recovery of actual
`damages, or statutory damages” under its copyright claim. Rasta
`Imposta further pleads an entitlement to attorneys’ fees and
`costs pursuant to 17 U.S.C. § 505. Similarly, under its trade
`dress infringement claim, Rasta Imposta pleads it “is entitled
`to recover their damages, as well as Kangaroo’s profits received
`as a result of the infringement, pursuant to 15 U.S.C.
`§ 1117(a).” Second, the Court does not find the injunctive
`relief “cannot be later undone.” If later shown to be
`warranted, the injunction can be lifted and the $100,000 bond
`will be used to make Kangaroo whole. The Court does not
`consider this to be a motion for a mandatory injunction.
`A. Reasonable Probability of Success on the Merits
`The Court begins by considering the reasonable probability
`of success on the merits of Rasta Imposta’s copyright
`infringement claim. “To establish infringement, two elements
`
`
`2
`The Court further questions whether Rasta Imposta’s Motion
`for Preliminary Injunction could be considered to command “some
`positive act.”
`
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`must be proven: (1) ownership of a valid copyright, and (2)
`copying of constituent elements of the work that are original.”
`Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361
`(1991).
`1. Ownership of a Valid Copyright
`“A plaintiff in a copyright infringement action must
`prove . . . that the copyright upon which it rests its claim is
`valid.” Don Post Studios, Inc. v. Cinema Secrets, Inc., 124 F.
`Supp. 2d 311, 315 (E.D. Pa. 2000). “Under 17 U.S.C. § 410(c),
`only works that are registered within five years after the first
`publication of the work are entitled to a presumption of
`validity.” Id. “For works registered after the five year
`period following publication, it is within the court’s
`discretion to determine what evidentiary weight the registration
`should be accorded.” Id.; 17 U.S.C. § 410(c) (“In any judicial
`proceedings the certificate of a registration made before or
`within five years after first publication of the work shall
`constitute prima facie evidence of the validity of the copyright
`and of the facts stated in the certificate. The evidentiary
`weight to be accorded the certificate of a registration made
`thereafter shall be within the discretion of the court.”).
`The Certificate of Registration Rasta Imposta presents to
`the Court lists an “effective date of registration” of March 26,
`2010. However, it lists the date of first publication as March
`
`
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`9, 2001 – well over five years before the registration date.
`The Court thus finds there is no presumption of validity in this
`case due to the registration of the Banana Costume over nine
`years after its first publication. Nonetheless, the Court
`considers the existence of this registration in its analysis of
`the validity of the copyright.
`
`The Court begins by considering whether the Banana Costume
`is a useful article. The Court finds the Banana Costume is a
`useful article under the definition provided in 17 U.S.C. § 101
`(“A ‘useful article’ is an article having an intrinsic
`utilitarian function that is not merely to portray the
`appearance of the article or to convey information.”); see,
`e.g., Masquerade Novelty, Inc. v. Unique Indus., 912 F.2d 663,
`670-71 (3d Cir. 1990) (“[A] costume . . . may serve, aside from
`its appearance, to clothe the wearer . . . .”).3
`The Supreme Court in Star Athletica, L.L.C. v. Varsity
`Brands, Inc., 137 S. Ct. 1002 (2017) clarified the boundaries of
`when useful articles can be eligible for copyright protection in
`its March 22, 2017 opinion.4
`
`
`3
`Rasta Imposta appears to concede the Banana Costume is a
`useful article. See Pl. Br. 12 (“Although banana costumes are
`worn on the body and therefore may qualify as ‘useful articles,’
`they also can have distinctive sculptural features.”).
`As of the writing of this Opinion, this Court is the first
`
`in the Third Circuit to address the implications of Star
`Athletica.
`
` 4
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`The Copyright Act . . . establishes a special rule for
`copyrighting a pictorial, graphic, or sculptural work
`incorporated into a “useful article,” which is defined
`as “an article having an intrinsic utilitarian function
`that is not merely to portray the appearance of the
`article or to convey information.” The statute does not
`protect useful articles as such. Rather, “the design of
`a useful article” is “considered a pictorial, graphical,
`or sculptural work only if, and only to the extent that,
`such design incorporates pictorial, graphic, or
`sculptural features that can be identified separately
`from, and are capable of existing independently of, the
`utilitarian aspects of the article.”
`
`Id. at 1008 (quoting 17 U.S.C. § 101). This analysis is
`described as “separability.” Id. Thus, under § 101, a
`pictorial, graphic, or sculptural feature incorporated into a
`useful article “is eligible for copyright protection if it (1)
`‘can be identified separately from,’ and (2) is ‘capable of
`existing independently of, the utilitarian aspects of the
`article.’” Id. at 1010 (quoting 17 U.S.C. § 101).
`For the first requirement of separate identification,
`“[t]he 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. For the second requirement of independent existence, “[t]he
`decisionmaker must determine that the separately identified
`feature has the capacity to exist apart from the utilitarian
`aspects of the article.” Id. at 1010, 1016 (“[A]n artistic
`feature of the design of a useful article is eligible for
`copyright protection if the feature . . . would qualify as a
`
`
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`protectable pictorial, graphic, or sculptural work either on its
`own or in some other medium if imagined separately from the
`useful article.”).
`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.
`If the feature is not capable of existing as a pictorial,
`graphic, or sculptural work once separated from the
`useful article, then it was not a pictorial, graphic, or
`sculptural feature of that article, but rather one of
`its utilitarian aspects.
`
`Id. at 1010. “[T]he ultimate separability question . . . is
`whether the feature for which copyright protection is claimed
`would have been eligible for copyright protection as a
`pictorial, graphic, or sculptural work had it originally been
`fixed in some tangible medium other than a useful article before
`being applied to a useful article.” Id. at 1011, 1012 (“In sum,
`a feature of the design of a useful article is eligible for
`copyright if, when identified and imagined apart from the useful
`article, it would qualify as a pictorial, graphic, or sculptural
`work either on its own or when fixed in some other tangible
`medium.”).
`Rasta Imposta claims the following as the unique features
`of the banana design: the overall shape and cutout holes of the
`costume, the black ends of the banana, and the vertical lines
`running down the middle of the banana. Rasta Imposta argues the
`elements could be removed and displayed elsewhere, such as “to a
`
`
`
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`two-dimensional painter’s canvas” or “made into a three-
`dimensional item like a piñata, a clay sculpture or a
`paperweight.”
`
`The Court addresses the cutout holes first. Kangaroo
`argues the cutout holes “are [a] utilitarian aspect of a useful
`article,” and as such “cannot be protected through copyright.”
`Kangaroo argues the cutout holes serve no “design or aesthetic
`purpose” and exist solely “to enable the costume to be worn by
`an individual, no different than the arm or neck cutouts on a
`shirt or the leg cutouts on a pair of shorts.” A close reading
`of Star Athletica compels the Court to find that the cutout
`holes are not, per se, a feature eligible for copyright.
`Star Athletica concerned a claim of copyright infringement
`for five designs of cheerleading uniforms. Id. at 1007. The
`Supreme Court held that “the only feature of the cheerleading
`uniform eligible for a copyright . . . [wa]s the two-dimensional
`work of art fixed in the tangible medium of the uniform fabric.”
`Id. at 1012. The Court held that “respondents have no right to
`prohibit any person from manufacturing a cheerleading uniform of
`identical shape, cut, and dimensions to the ones on which the
`decorations in this case appear.” Id. “They may prohibit only
`the reproduction of the surface designs in any tangible medium
`of expression – a uniform or otherwise.” Id.
`
`
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`The Court finds the same must be said for the Banana
`Costume’s cutout holes. The cutout holes perform a solely
`utilitarian function. They do not contribute to the Banana
`Costume’s aesthetic except to produce it in a wearable form,
`i.e., to give it its utilitarian function. However, the Court
`finds the other features of the Banana Costume can be identified
`separately from and are capable of existing independently of the
`utilitarian aspects.
`As for the colors, lines, shape, and other features,
`Kangaroo argues that color is generally not protected by
`copyright and that “depicting basic features of a naturally
`occurring banana . . . [is] not original and not eligible for
`copyright protection.” Kangaroo argues “there is nothing
`original about making a banana yellow or the ends of a banana
`black, as this is exactly how a ripe banana appears in nature.”
`The Court must view the Banana Costume as a whole, as
`opposed to inspecting the individual components that come
`together to create the Banana Costume. Indeed, it is “the
`combination of texture, color, size and shape” and the
`particular details of an item that are relevant. See Kay Berry,
`Inc. v. Taylor Gifts, Inc., 421 F.3d 199, 207 (3d Cir. 2005).
`It means nothing that these elements may not be
`individually entitled to protection; “all creative works
`draw on the common wellspring that is the public domain.
`In this pool are not only elemental ‘raw materials,’
`like colors, letters, descriptive facts, and the
`
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`catalogue of standard geometric forms, but also earlier
`works of art that, due to the passage of time or for
`other reasons, are no longer copyright protected.”
`
`Id. (quoting Tufenkian Import/Export Ventures, Inc. v. Einstein
`Mommjy, Inc., 338 F.3d 127, 132 (2d Cir. 2003)). “When an
`author combines these elements and adds his or her own
`imaginative spark, creation occurs, and the author is entitled
`to protection for the result.” Id. “This is true even when the
`author contributes only a minimal amount of creativity.” Id.
`
`The Court finds there is a reasonable probability of
`success that Rasta Imposta will prove ownership of a valid
`copyright. First, the existence of the Certificate of
`Registration, even if registered over nine years after the date
`of first publication, is persuasive evidence to this Court.
`Further, the Court finds a likelihood that Rasta Imposta can
`prove that the banana design can both be identified separately
`from and can exist independently from the utilitarian aspect of
`the article. The Court can easily identify the features of the
`Banana Costume having a pictorial, graphic, or sculptural
`quality.
`These features include: a) the overall length of the
`costume, b) the overall shape of the design in terms of
`curvature, c) the length of the shape both above and below the
`torso of the wearer, d) the shape, size, and jet black color of
`both ends, e) the location of the head and arm cutouts which
`
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`dictate how the costume drapes on and protrudes from a wearer
`(as opposed to the mere existence of the cutout holes), f) the
`soft, smooth, almost shiny look and feel of the chosen synthetic
`fabric, g) the parallel lines which mimic the ridges on a banana
`in three-dimensional form, and h) the bright shade of a golden
`yellow and uniform color that appears distinct from the more
`muted and inconsistent tones of a natural banana.
`The Court finds that, if these features were separated from
`the costume itself and applied on a painter’s canvas, it would
`qualify as a two-dimensional work of art in a way that would not
`replicate the costume itself. The Court thus finds, although it
`uses elements that might in and of themselves not be protectable
`standing alone, that the design when considered as a whole is
`separable and eligible for copyright protection.5 Plaintiff’s
`
`
`See Star Athletica, 137 S. Ct. at 1012 (“Applying this test
`5
`to the surface decorations on the cheerleading uniforms is
`straightforward. First, one can identify the decorations as
`features having pictorial, graphic, or sculptural qualities.
`Second, if the arrangement of colors, shapes, stripes, and
`chevrons on the surface of the cheerleading uniforms were
`separated from the uniform and applied in another medium – for
`example, on a painter’s canvas – they would qualify as ‘two-
`dimensional . . . works of . . . art,’ § 101. And imaginatively
`removing the surface decorations from the uniforms and applying
`them in another medium would not replicate the uniform itself.
`Indeed, respondents have applied the designs in this case to
`other media of expression – different types of clothing –
`without replicating the uniform. The decorations are therefore
`separable from the uniforms and eligible for copyright
`protection.” (citation omitted)).
`
`
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`design is not like the familiar iconic outfit of a cheerleader
`known to all at issue in Star Athletica.6 Rather, it has unique
`pictorial, graphic, or sculptural features that did not exist
`until it was created. To be sure, the Banana Costume is
`unlikely to end up in the Philadelphia Museum of Art but it
`represents artistic and stylistic choices.7 Its unique features
`reflect an “imaginative spark.”
`
`
`6
`Although the Court applies Star Athletica, as it must, as
`relevant and binding precedent, the Court also notes that Star
`Athletica is factually distinguishable from the instant matter
`in a meaningful way. At issue in Star Athletica was the iconic
`outfit of an American cheerleader. From the film American
`Graffiti to high school football games on Friday nights to March
`Madness and similar Americana, these ubiquitious costumes are
`part of our collective culture. It would distort the purpose
`and intent of copyright law to grant to one person or entity the
`right to control the bundle of rights associated with copyright
`for the lengthy term of copyright protection for an item so
`imbedded in the public consciousness. To that end, the Court in
`Star Athletica separated the fanciful designs applied to
`cheerleading costumes from the utilitarian and ordinary costumes
`themselves as the relevant statute, 17 U.S.C. § 101, dictated.
`In contrast, it is hard to say that a cheerleading uniform and a
`“banana costume” are of equal utility. It seems safe to posit
`that there is no universal view of what a banana costume is or
`what it should look like. As Rasta Imposta’s uncontested
`submissions make clear there are literally dozens of unique and
`fanciful ways one can design a costume that suggests, mimics, or
`replicates some or most of the features of a banana.
`
`7 The Court notes that Kangaroo’s argument that Rasta
`Imposta’s copyright is invalid because it merely created what we
`would all recognize as a banana would deny Andy Warhol copyright
`protection for his famous image of a ripe banana. The Court
`views such a result as highly unlikely. See Velvet Underground
`v. Andy Warhol Found. for the Visual Arts, Inc., 890 F. Supp. 2d
`398 (S.D.N.Y. Sept. 7, 2012) (describing a longstanding dispute
`over the right to use and license the Warhol image).
`
`
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`2. Copying of Constituent Elements of the Work that are
`Original
`
`Copying “may be demonstrated by showing that the defendant
`had access to the copyrighted work and that the original and
`allegedly infringing works share substantial similarities.” Id.
`at 207-08. As a preliminary matter, it is clear to this Court
`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 is sufficient for the Court to conclude there is
`a reasonable likelihood Rasta Imposta can prove Kangaroo’s
`access to the copyrighted work.8
`“’Substantial similarity,’ in turn, is further broken down
`into two considerations: ‘(1) whether the defendant copied from
`the plaintiff’s work and (2) whether the copying, if proven,
`went so far as to constitute an improper appropriation.’” Id.
`at 208 (quoting Atari, Inc. v. N. Am. Philips Consumer Elec.
`Corp., 672 F.2d 607, 614 (7th Cir. 1982)). The first prong
`requires the factfinder to “decide whether there is sufficient
`
`
`Rasta Imposta’s evidence also included testimony and
`8
`photographs showing that Kangaroo displayed Rasta Imposta’s
`product alongside its own at Kangaroo’s booth at the industry’s
`largest trade show in Las Vegas. The Court does not suggest
`that this evidence proves access to the original design before
`the competing design was created, only that this case involves
`competitors whose designs are well known to each other. This is
`not a case in which a defendant claims the allegedly infringing
`image was created independently, unknowingly, and innocently.
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`similarity between the two works in question to conclude that
`the alleged infringer used the copyrighted work in making his
`own.” Id. (quoting Whelan Assocs. v. Jaslow Dental Lab., Inc.,
`797 F.2d 1222, 1232 (3d Cir. 1986)). “A showing of substantial
`similarity in this sense, coupled with evidence that the
`infringing author had access to the original work, permits a
`fact-finder to infer that the infringing work is not itself
`original, but rather is based on the original.” Id.
`“A finding of substantial similarity is an ad hoc
`determination.” Educ. Testing Servs. v. Katzman, 793 F.2d 533,
`541 (3d Cir. 1986). The Court “appl[ies] the reasonable person
`standard, under which ‘the test is whether the accused work is
`so similar to the plaintiff’s work that an ordinary reasonable
`person would conclude that the defendant unlawfully appropriated
`the plaintiff’s protectable expression by taking material of
`substance and value.’” Id. (quoting Atari, 672 F.2d at 614).
`
`For the second prong, “[t]he focus is . . . [on] ‘whether
`the substantial similarities relate to protectable material.’”
`Id. (quoting Dam Things from Denmark v. Russ Berrie & Co., 290
`F.3d 548, 562 (3d Cir. 2002)). Here, “[a] court compares the
`allegedly infringing work with the original work, and considers
`whether a ‘lay-observer’ would believe that the copying was of
`protectable aspects of the copyrighted work.” Winstead v.
`Jackson, 509 F. App’x 139, 143 (3d Cir. 2013). “The ‘inquiry
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`involves distinguishing between the author’s expression and the
`idea or theme that he or she seeks to convey or explore,’
`because the former is protected and the latter is not.” Id.
`(quoting Kay Berry, 421 F.3d at 208). “The court must determine
`whether the allegedly infringing work is similar because it
`appropriates the unique expressions of the original work, ‘or
`merely because it contains elements that would be expected when
`two works express the same idea or explore the same theme.’”
`Id. (quoting Kay Berry, 421 F.3d at 208). “It is a fundamental
`premise of copyright law that an author can protect only the
`expression of an idea, but not the idea itself.” Kay Berry, 421
`F.3d at 208.
`A plaintiff “will have a more difficult time proving
`infringement if his work contains only a minimal amount of
`original expression.” Id. “[A] copyright on a work which bears
`practically a photographic likeness to the natural article . . .
`is likely to prove a relatively weak copyright.” Id. at 209
`(alterations in original) (quoting First Am. Artificial Flowers,
`Inc. v. Joseph Markovits, Inc., 342 F. Supp. 178, 186 (S.D.N.Y.
`1972)). In such a case, “the plaintiff’s burden will be that
`much more difficult to sustain because of the intrinsic
`similarities of the copyrighted and accused works.” Id.
`(quoting First Am. Artificial Flowers, 342 F. Supp. at 186).
`Indeed, “when there is only a limited number of ways to express
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`an idea ‘the burden of proof is heavy on the plaintiff who may
`have to show “near identity” between the works at issue.’” Id.
`(quoting Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843
`F.2d 600, 606-07 (1st Cir. 1988)); see also Concrete Mach. Co.,
`843 F.2d at 606 (“This showing is necessary because, as idea and
`expression merge, fewer and fewer aspects of a work embody a
`unique and creative expression of the idea; a copyright holder
`must then prove substantial similarity to those few aspects of
`the work that are expression not required by the idea.”). “[A]n
`author may base his work on the same inspiration as that of an
`earlier work, but he may not ‘copy the copy.’” Kay Berry, 421
`F.3d at 208 (quoting Franklin Mint Corp. v. Nat’l Wildlife Art
`Exch., Inc., 575 F.2d 62, 65 (3d Cir. 1978)).
`“In some instances, there may come a point when an author’s
`expression becomes indistinguishable from the idea he seeks to
`convey, such that the two merge.” Id. at 209. This is known as
`“merger.” “In these circumstances, no protection is available
`for the expression; otherwise, the copyright owner could
`effectively acquire a monopoly on the underlying art or the idea
`itself.” Id. This is rare, but usually found “in works with a
`utilitarian function.” Id. “[A]n expression will be found to
`be merged into the idea when ‘there are no or few other ways of
`expressing a particular idea.’” Katzman, 793 F.2d at 539
`(quoting Apple Comput., Inc. v. Franklin Comput. Corp., 714 F.2d
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`1240, 1252-54 (3d Cir. 1983)). “However, ‘if the same idea can
`be expressed in a plurality of totally different manners, a
`plurality of copyrights may result.’” Id. (q