Relying on 9th Circuit's Withdrawn Opinion, District Court Says ‘Betty Boop' Is Functional

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The “Betty Boop” word mark, as used on merchandise such as T-shirts and posters in conjunction with an image of the cartoon character, is both aesthetically functional and a protected fair use, the U.S. District Court for the Central District of California held Nov. 14 (Fleischer Studios Inc. v. A.V.E.L.A. Inc., C.D. Cal., No. 2:06-cv-06229-ABC-MAN, 11/14/12).

The court's opinion followed an unusual remand by the U.S. Court of Appeals for the Ninth Circuit. The appeals court initially upheld the district court's finding of noninfringement and in fact recognized that the mark was aesthetically functional--an argument not raised by either party below. That portion of the Ninth Circuit's opinion was, however, subject to substantial criticism, and the court later issued an amended opinion ignoring the aesthetic functionality doctrine. The second opinion remanded the trademark infringement claim for further findings.

The court here acknowledged that the Ninth Circuit's operative opinion contained no aesthetic functionality analysis. However, it determined that “the reasoning set forth in [the Ninth Circuit's initial opinion] is nevertheless sound and applicable.” It thus found that the defendants' use of the Betty Boop mark was for artistic, not source identification, purposes. Accordingly, the mark was not used as a trademark, and the infringement claim could not succeed, the court held.

Mark Changed Hands Frequently After Creation.

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 in the films 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, 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.

Ninth Circuit's Fleischer IOpinion Draws Criticism.

The Ninth Circuit affirmed summary judgment for the accused infringers. Fleischer Studios Inc. v. A.V.E.L.A. Inc., 636 F.3d 1115, 97 USPQ2d 1833 (9th Cir. 2011)(41 PTD, 3/2/11). The appeals court also affirmed the dismissal of trademark infringement claims challenging competing uses of the Betty Boop character, reasoning that those uses were aesthetically functional, and thus noninfringing.

The appeals court reached its aesthetic functionality determination by relying on International Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912, 208 USPQ 718 (9th Cir. 1980). 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

Critics, many believing the aesthetic functionality doctrine to be long dead, strongly opposed the doctrine's sua sponte revival by the Ninth Circuit.

It was “the worst decision to be handed down in the last 12 months,” according to a participant in a panel discussion presented by the American Bar Association in early 2012 (68 PTD, 4/10/12). Another panelist said that the decision “would be the death knell of trademark law.”

The ABA panelists' candid remarks came a few months after Fleischer I had been withdrawn by the Ninth Circuit when it issued Fleischer II. 654 F3d 958, 97 USPQ2d 183 (9th Cir. 2011).

Fleischer IIDrops Aesthetic Functionality Analysis.

The Ninth Circuit's amended opinion was distinguishable from its earlier opinion only in its analysis of the trademark infringement claims.

Fleischer II scrubbed all mention of the aesthetic functionality doctrine, instead finding a number of problems with the district court's treatment of Fleischer's trademark claims. Specifically, the appeals court took issue with the district court's disposition on summary judgment of Fleischer's infringement claim going to its alleged ownership of a trademark on the words “Betty Boop.”

First, the appeals court addressed the district court's conclusion that the “fractured history” of the IP rights in Betty Boop precluded Fleischer from demonstrating secondary meaning in the mark.

“The fractured history theory … is one that neither this nor any circuit has yet adopted,” the Ninth Circuit said. Moreover, even if the theory could apply to prevent a showing of secondary meaning, the facts in this case did not support application of the theory below, the court said. It thus found the district court's use of the doctrine to be in error.

The Ninth Circuit also found inadequate the lower court's failure to explain its decisions going to Vintage's alleged use of the mark in commerce, and to likelihood of confusion. The district court had determined both that Vintage's use did not amount to use in commerce, and that the use did not raise a likelihood of customer confusion. Given the lack of explanation on either issue, “we are unable to ascertain a legal basis for the district court's reasoning on the current record,” Fleischer II held. It thus remanded “for further proceedings on Fleischer's trademark infringement claims regarding the Betty Boop word mark.”

District Court Revives Aesthetic Functionality Analysis.

The district court began its trademark infringement analysis by pointing out that in its 2009 decision it had determined that because Vintage had not used the mark as a trademark it could not be liable for trademark infringement.

“While that order did not provide much reasoning for this conclusion, the Ninth Circuit in Fleischer I did. Although the Ninth Circuit withdrew Fleischer I and remanded the case, the reasoning set forth in Fleischer Iis nevertheless sound and applicable,” Judge Audrey B. Collins said.

Finding the Ninth Circuit's withdrawn aesthetic functionality analysis on point, the court next turned to both Job's Daughter and Au-Tomotive Gold Inc. v. Volkswagen of America Inc., 457 F.3d 1062, 80 USPQ2d 1293 (9th Cir. 2006)(158 PTD, 8/16/06), for additional guidance on the doctrine.

“Because trademark law is concerned only with identification of the maker of the product so as to avoid confusing consumers, it '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,' ” the court said, quoting Job's Daughter.

The court noted that Au-Tomative Gold established a two-part test to be used to determine if a mark is functional. The first thing a court must do is determine if “the alleged 'significant non-trademark function' of the mark '[is] essential to the use or purpose of the article [or] affects [its] cost or quality,' ” the court said, quoting Au-Tomative Gold.

“Although the Ninth Circuit withdrew Fleischer I and remanded the case, the reasoning set forth in Fleischer Iis nevertheless sound and applicable.”
Judge Audrey B. Collins

If the answer to the first query is yes then the mark is functional and no infringement liability can be imposed, the court said. Again quoting Au-Tomative Gold it added, “However, where the claim is one for aesthetic functionality, one additional question applies: the court should determine if 'protection of the feature as a trademark would impose a significant non-reputation-related competitive disadvantage.' ” Where the feature provides the mark's owner with a competitive advantage, the mark is aesthetically functional and not protectable, the court said.

Turning to the facts at hand, the court first concluded--once again--that Vintage did not use the Betty Boop mark as a trademark. “Considering that Defendants use the words Betty Boop as an artistic design element and identify themselves as the source of the goods, their use of the words Betty Boop simply cannot be viewed as source-identifying,” the court said.

Moreover, Vintage's use is also for aesthetically functional purposes, the court said. It concluded:

Because, as noted above, Defendants' use of the mark is a decorative feature of their merchandise and is not source-identifying, “protection of the feature as a trademark would impose a significant non-reputation-related competitive disadvantage” on Defendants. Were Defendants to market their goods bearing the image of Betty Boop or Betty Boop movie posters without the words Betty Boop to identify the character, that would make their products less marketable than the same product that included the BETTY BOOP name. This is because the words Betty Boop serve to name the famous character depicted on those goods and are part and parcel of the movie posters printed on Defendants' merchandise.  


Fair Use Also Protects Defendants.

Alternatively, the court said that Vintage's use of the Betty Boop mark was also protected under the fair use doctrine.

In trademark infringement cases, an affirmative fair use defense can be raised “when a mark is used in its primary descriptive sense rather than its secondary trademark sense,” the court said.

In this case, the word mark is used in connection with the Betty Boop image, and thus it is used for descriptive purposes, the court said. Indeed, “It is extremely unlikely that a prospective consumer would understand those words as identifying the source of the goods rather than merely naming the character,” the court said.

The court noted that, in fact, there was no other term available to Vintage that would adequately describe the Betty Boop image better than could the asserted mark. Noting that the proceedings have already established Vintage's right to use the Betty Boop image, the court determined that Vintage “must also …  be able to identify this character by name.”

No Likelihood of Confusion.

Finally, the court addressed Fleischer's argument that Vintage's use of the mark was likely to confuse customers as to the source of the goods.

The court began by noting that in a likelihood of confusion analysis a court would “ordinarily” apply the eight factor test set forth in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,204 USPQ 808 (9th Cir. 1979). However, because Vintage does not in fact use the term for trademark purposes, “the Court finds it unnecessary to reach the Sleekcraftfactors here.”

The court similarly rejected Fleischer's doctrine of legal equivalents argument. That argument was premised on Fleischer's contention that the word mark was legally equivalent to a pictorial depiction of Betty Boop. Because the word mark and the picture mark are legal equivalents, Fleischer argued that a likelihood of confusion analysis can take into account uses of both the picture mark and the word mark.

The court agreed that the two marks “could be considered legal equivalents,” but it failed to see how this helped Fleischer. Fleischer's confusion analysis is not thwarted by the inability to compare the word mark to the picture mark, the court said. Rather, it is the fact that Vintage did not use the word mark as a trademark that dooms Fleischer's confusion argument, it said.

The court accordingly granted Vintage summary judgment.

Vintage was represented by James E. Doroshow of Fox Rothschild, Los Angeles. Fleischer was represented by Robert P. LoBue of Patterson Belknap Webb & Tyler, New York.

By Tamlin H. Bason  

Opinion at

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