February 2011 Issue
Civil Cases
Fleischer Studios, Inc. v. A.V.E.L.A., Inc.,
2011 WL 631449 (9th Cir. Feb. 23, 2011)
ABSTRACT
In evaluating the validity of the plaintiff’s copyright and trademark rights in the Betty Boop character, the Ninth Circuit held that the district court did not err in finding that the chain of title purportedly transferring the copyright in the Betty Boop character to plaintiff instead transferred only the copyright in certain Betty Boop films. As to trademark infringement, the court held that the name and Betty Boop image were functional, aesthetic components of the defendants’ allegedly infringing products, not trademarks. Therefore, there could be no infringement. The court also rejected plaintiff’s trademark-infringement claims because, under plaintiff’s theory, the Betty Boop character would in effect be subject to perpetual copyright protection and may never enter the public domain.
CASE SUMMARY
FACTS
Max Fleischer, the head of Fleischer Studios, Inc. (“Original Fleischer”), created the Betty Boop character in the 1930s and developed a number of Betty Boop cartoon films. In 1941, Original Fleischer sold its rights in the Betty Boop character and films to Paramount Pictures, Inc., the first of several subsequent sales involving interests in the Betty Boop character and/or films.
Plaintiff Fleischer Studios, Inc. (“Fleischer”), a distinct new entity created by Max Fleischer’s family in the 1970s under the same name, claimed that it owned copyright and trademark rights to the Betty Boop character through a multiple-step chain of title involving numerous entities over a time period from 1941 to 1997. Fleischer alleged that it reacquired exclusive copyright and trademark rights to the Betty Boop character in 1997, and filed suit against the defendants for copyright and trademark infringement based on their use of the Betty Boop image on dolls, t-shirts, and handbags.
Defendant A.V.E.L.A., Inc. and others (collectively “A.V.E.L.A.”) claim the right to license the Betty Boop character to third parties based on A.V.E.L.A.’s copyright obtained from restoring vintage posters featuring Betty Boop’s image.
On summary judgment, the district court found that Fleischer failed to establish each link in the chain of title transferring ownership of the alleged copyright, and thus could not prove ownership sufficient to support a copyright claim. The district court also found that Fleischer provided insufficient evidence of ownership of trademark rights in the Betty Boop name or image. Fleischer appealed the district court’s decision to the Ninth Circuit.
ANALYSIS
The Ninth Circuit first addressed the district court’s dismissal of Fleischer’s copyright-infringement claim. It found, as the district court did, that Fleischer did not establish each link in the alleged chain of title in the Betty Boop character’s copyright.
Turning to the trademark-infringement claim, the Ninth Circuit noted that the parties’ arguments had focused on the issues of Fleischer’s ownership of trademark rights and whether cartoon characters are protectable as trademarks. Instead of addressing the particular arguments briefed by the parties, however, the appeals court sua sponte cited International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir. 1980), and concluded that A.V.E.L.A.’s use of the Betty Boop image on its products was a functional use, not a trademark use. In Job’s Daughters, the Ninth Circuit had previously held:
Trademark law does not prevent a person from copying so-called “functional” features of a product which constitute the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product . . . . It is not uncommon for a name or emblem that serves in one context as a collective mark or trademark also to be merchandised for its own intrinsic utility to consumers . . . . Although these inscriptions frequently include names and emblems that are also used as collective marks or trademarks, it would be naive to conclude that the name or emblem is desired because consumers believe that the product somehow originated with or was sponsored by the organization, the name, or emblem signifies.
Citing Job’s Daughters, the Ninth Circuit held that the defendants’ allegedly infringing products and merchandising practices revealed that “A.V.E.L.A. is not using Betty Boop as a trademark, but instead as a functional product.” In reaching this conclusion, the appeals court noted that Betty Boop was “a prominent feature of each item so as to be visible to others when worn,” and that A.V.E.L.A. “never designated the merchandise as ‘official’ [Fleischer] merchandise or otherwise affirmatively indicated sponsorship.” Moreover, as in Job’s Daughters, Fleischer did not establish that there was any actual confusion or that it received any complaints about the defendants’ products.
Accordingly, the Ninth Circuit determined that Fleischer, even if it held any valid trademark rights in the Betty Boop character, could not use such rights to prohibit the aesthetically functional uses made by the defendants.
The Ninth Circuit also sua sponte raised the case of Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), which held that a trademark-infringement action cannot be used as a substitute for a copyright claim when the relevant work has entered the public domain. Doing so, the Ninth Circuit held, would circumvent the Copyright Act and provide Fleischer with something akin to a perpetual copyright in the Betty Boop character contrary to law.
CONCLUSION
Surprisingly, the Ninth Circuit did not cite any post-Job’s Daughters cases that limit or narrow its holding to apply only to cases in which the mark at issue did not possess any source-identifying significance. For example, in Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062, 1073 (9th Cir. 2006), the Ninth Circuit held that “[i]n practice, aesthetic functionality has been limited to product features that serve an aesthetic purpose wholly independent of any source-identifying function.” Additionally, in Vuitton et Fils S.A. v. J. Young Enterprises, 644 F.2d 769, 773 (9th Cir. 1981), the Ninth Circuit rejected the notion that “any feature of a product which contributes to consumer appeal and saleability of the product is, as a matter of law, a functional element of that product.” Professor McCarthy has also criticized the decision in Job’s Daughters and aesthetic functionality in general. Numerous courts in other circuits have distinguished or refused to follow Job’s Daughters.
