An opinion in the U.S. Circuit Court of Appeals for the Ninth Circuit in a clash over a cartoon character has drawn widespread criticism and prompted INTA to file an
amicus brief urging the court to rehear the case, which could have far-reaching consequences for brand owners. INTA’s brief was filed March 21, 2011 in
Fleischer Studios, Inc. v. A.V.E.L.A., Inc., DBA Art & Vintage Entertainment Licensing Agency, et al., No. 09-56317 (9th Cir. Feb. 23, 2011).
The case concerns the character Betty Boop, created by Max Fleischer and featured in cartoon films beginning in 1930. Today, both plaintiff and defendants license the Betty Boop image for use on merchandise. Fleischer claims an exclusive copyright to the character, while AVELA’s copyrights are based on vintage posters featuring Betty Boop’s image that it has restored.
The U.S. District Court for the Central District of California dismissed Fleischer’s claims for trademark and copyright infringement on summary judgment, finding that Fleischer had proved neither a valid copyright nor trademark and thus lacked standing to sue. Over a dissent, a three-judge Ninth Circuit panel affirmed.
INTA’s brief argued that the court erred first in applying the “aesthetic functionality” doctrine of
International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir. 1980), and concluding that Fleischer “is not
using Betty Boop as a trademark, but instead as a functional product.” The functionality defense allows competitors to copy useful product features, while the concept of “aesthetic functionality” considers whether purely aesthetic features might be considered “functional” because of a perceived competitive need to copy an ornamental (rather than utilitarian) product feature. The aesthetic functionality doctrine has been sharply criticized by commentators, rejected by many courts, and severely limited by the Ninth Circuit, including in
Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062 (9th Cir. 2006). INTA urged the court to follow the
Au-Tomotive Gold reasoning.
Second, INTA argued that the majority erred in dictum that, when a copyrighted work falls into the public domain, the owner of a trademark comprising that work cannot assert trademark rights because that would prevent the work “from ever entering the public domain.” The court’s statement is inconsistent with decisions recognizing that trademark and copyright are independent rights that may coexist in the same product, and that trademark protection may remain even after a related copyrighted work has fallen into the public domain. The error was compounded by the majority’s reliance on
Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). INTA urged the court to withdraw that part of the decision, and hold instead that trademark protection is not precluded for images that also have been protected by copyright.
The Association’s brief was prepared by Lawrence K. Nodine of Ballard Spahr, Susan J. Hightower of Pirkey Barber, counsel of record John W. Crittenden of Cooley, and subcommittee chair David H. Bernstein of Debevoise & Plimpton. Other amicus briefs were submitted on behalf of the professional sports leagues, the Motion Picture Association of America, and Edgar Rice Burroughs, Inc.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2011 International Trademark Association