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• Case Summary: The chain of title through which Fleischer Studios claims copyright interest in the Betty Boop cartoon character was broken in 1955, so it may not pursue infringement claims against companies selling Betty Boop merchandise.
• Key Takeaway: Even if it could establish trademark rights in the Betty Boop character, Fleischer Studios may not use such rights to block aesthetically functional uses.
A company formed by the family of late animator Max Fleischer to acquire rights to the Betty Boop character and films was unable to establish a chain of title through which it could claim a copyright interest in the character that it could assert in a copyright infringement action, the U.S. Court of Appeals for the Ninth Circuit ruled Feb. 23 (Fleischer Studio Inc. v. A.V.E.L.A. Inc. d/b/a Art and Vintage Entertainment Licensing Agency, 9th Cir., No. 09-56317, 2/23/11).
Affirming a summary judgment for the accused infringers, the court also affirmed the dismissal of a trademark infringement claim challenging competing uses of the Betty Boop character, reasoning that those uses were aesthetically functional, and thus noninfringing.
A dissenting opinion criticized the majority for refusing to address the Fleischer family's alternative asserted chains of title.
In the 1930s, animator Max Fleischer created the cartoon character Betty Boop, which appeared in a series of films and which was licensed for use on merchandise. In 1941, Fleischer sold his rights in the character and the cartoons to Paramount Studios Inc. In 1955, Paramount transferred its rights to UM&M TV Corp., and in 1958, UM&M transferred the rights to National Telefilm Associates Inc. In 1986, National Telefilm acquired the name and logo of the then-defunct Republic Pictures and transferred its interest to the new Republic Pictures.
After Max Fleischer's death in 1972, his family re-formed Fleischer Studios Inc. as a new entity, and in 1997, Fleischer Studios contracted with Republic Pictures to acquire the rights in the Betty Boop character and films. Since the 1970s, the Betty Boop character has seen a surge of popularity and it appears in a variety of forms on a wide range of licensed goods.
Fleischer Studios filed an action for copyright and trademark infringement against several entities--A.V.E.L.A. Inc. d/b/a Art and Vintage Entertainment Licensing Agency, Art-Nostalgia.com Inc., X One X Movie Archive Inc., and Leo Valencia--that also licensed uses of the Betty Boop character. In particular, Art and Vintage claimed rights in Betty Boop images that appeared on vintage posters which it had restored.
Art and Vintage moved for summary judgment, arguing that there was insufficient evidence to establish the validity of the transfers of copyright ownership to UM&M, National Telefilm, and Republic Pictures.
Judge Florence-Marie Cooper of the U.S. District Court for the Central District of California agreed, ruling that Fleischer Studios held no valid copyright interest in Betty Boop. The district court also found that Fleischer Studios had presented insufficient evidence of a valid federal trademark registration or common law trademark rights. The court thus granted Art and Vintage's motion, dismissing Fleischer's copyright and trademark claims.
Fleischer Studios appealed.
Senior Judge J. Clifford Wallace began by stating that the parties did not dispute that a valid copyright interest existed for the Betty Boop character, separate from the copyright interest that existed in the films under the Copyright Act of 1909.
However, the 1955 transaction through which Fleischer alleged the transfer of copyright interest from Paramount to UM&M failed to transfer valid copyright interest in the Betty Boop character, the court said. This defect was explicit in the purchase agreement, which referred to the sale of “photoplays” to UM&M, but excluded from the transaction “characters … contained in said Sold Photoplays … or of the copyrights in said characters …, or of any … other rights in said characters …, or to use said characters … or the names of said characters or trade names, trademark and names of the series of Sold Photoplays,” the court said, quoting from the assignment clause.
This clause meant that Paramount did not transfer copyright interest in the Betty Boop character, the court said. The court rejected Fleischer's argument that, under the doctrine of indivisibility, UM&M could not have renewed its copyright interest in the photoplays if Paramount had retained the copyright interest in the characters. The court said:
Under the 1909 Act, the doctrine of indivisibility may have prohibited a copyright owner from renewing his or her copyright if, for example, he or she had previously sold the magazine-publishing rights to his or her story. … Or, because the law abhors a forfeiture, a court would deem the purported owner of the magazine-publishing rights to be a mere licensee, thereby allowing the author to renew the copyright.
However, the 1955 agreement granted UM&M full copyright interest in the films, the court said, adding that this interest was not divided. The separate issue of the copyright interest in the character did not trigger the doctrine of indivisibility, the court said.
Furthermore, the court noted that in 1958, Paramount entered into an agreement that purported to transfer its interest in the Betty Boop character to Harvey Films. This supported the conclusion that Paramount had not transferred the rights to UM&M in 1955, the court said.
The court acknowledged that Fleischer had at the district court argued an alternative chain of title through Harvey Films, but it found that Fleischer had waived this alternative theory by failing to raise it on appeal.
Having found the asserted chain of title to be broken, the court affirmed the district court's dismissal of the copyright infringement claim.
Turning to Fleischer's trademark infringement claim, the court relied on International Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912, 208 USPQ 718 (9th Cir. 1980) (511 PTCJ A-9, 1/8/81), to reach the conclusion that Art and Vintage's uses of the Betty Boop image on its products were functional, rather than trademark uses. Quoting from Job's Daughters, the court said:
Betty Boop “w[as] a prominent feature of each item so as to be visible to others when worn ….” … A.V.E.L.A. “never designated the merchandise as 'official' [Fleischer] merchandise or otherwise affirmatively indicated sponsorship.” … Fleischer “did not show a single instance in which a customer was misled about the origin, sponsorship, or endorsement of [Art and Vintage's products], nor that it received any complaints about [Art and Vintage's] wares.”
The appearance of the Betty Boop character on the goods was aesthetically functional, the court said, and thus was not infringing of any trademark rights that might be asserted.
Furthermore, the court found applicable Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 66 USPQ2d 1641 (2003) (66 PTCJ 162, 6/6/03), which held that a trademark infringement action cannot be used as a substitute for a copyright claim when the relevant work has become a public domain work.
If Fleischer had held valid copyright interests and could assert a trademark interest over the Betty Boop character in this way, the court said, it could continue to assert copyright-like protection over the films even after such rights had expired and the works had entered the public domain.
Thus, according to the court, even if Fleischer held any valid trademark rights through registration or common law, it could not use such rights to prohibit the aesthetically functional uses made by Art and Vintage.
The court's opinion was joined by Senior Judge Richard Mills, sitting by designation from the Central District of Illinois.
In dissent, Judge Susan P. Graber criticized the majority for failing to determine the fate of the copyright interest in the Betty Boop character following the 1958 transfer of rights to Harvey Films, noting that Fleischer also had asserted that it had purchased whatever rights had been held by Harvey Films.
The majority refused to address that second asserted chain of title, on the basis that Fleischer had not raised it in its opening brief and thus had waived it. The dissent said:
[I]ts failure in that regard is perfectly understandable. The district court had ruled in [Fleischer's] favor on every link in the UM&M chain except one. [Fleischer] thus challenged only the portion of the district court's opinion in which [it had] lost. That strategy makes particular sense because Defendants had never before advanced the argument made in their answering brief. Furthermore, after Defendants did advance a new argument, [Fleischer] immediately retorted, in its reply brief, that even if the doctrine of indivisibility applied, [Fleischer] prevails via the Harvey Films chain of title. I see nothing to be gained from encouraging litigants to protect against the waiver doctrine by asserting, pro forma, in their opening briefs any and all possible theories of victory, in the possible even that the opposing party will raise a completely new argument in its answering brief.
The dissent also asserted that while barring Fleischer from raising the Harvey Films chain of title through waiver, the majority reached its decision on a theory that neither party had advanced.
Fleischer was represented by Robert P. LoBue of Patterson Belknap Webb & Tyler, New York. Art and Vintage was represented by Douglas D. Winter of the Ball Law Firm, Los Angeles.
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