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September 15, 2011 Vol. 66 No. 16 Back to Bulletin Main Page

U.S. Court Withdraws Aesthetic Functionality Ruling Challenged by INTA in Betty Boop Battle


The U.S. Court of Appeals for the Ninth Circuit has withdrawn a widely-criticized opinion that INTA in an amicus filing had argued erred by applying the “aesthetic functionality” doctrine to deny trademark protection to a cartoon character. The court issued a superseding opinion in Fleischer Studios, Inc. v. A.V.E.L.A., Inc., DBA Art & Vintage Entertainment Licensing Agency, et al., No. 09-56317 (9th Cir. Aug. 19, 2011), which eliminated the holdings INTA challenged in its March 21, 2011  amicus brief.

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.

In its original Feb. 23, 2011 decision, a divided Ninth Circuit panel held that the plaintiff was not entitled to trademark protection under the “aesthetic functionality” doctrine of International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir. 1980), concluding that plaintiff “is not using Betty Boop as a trademark, but instead as a functional product.”

INTA had argued that the aesthetic functionality doctrine had been sharply criticized by commentators, rejected by many courts, and severely limited by the Ninth Circuit itself, 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.

The majority had also stated 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,” relying on Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). INTA had 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.

Consistent with INTA’s arguments, the majority withdrew the portions of its original opinion that INTA had identified as in error, and issued a new opinion that made no mention of the doctrine of aesthetic functionality, nor the status of trademark rights with respect to copyrighted works that have fallen into the public domain.

Instead, the majority ruled that because plaintiff did not offer sufficient evidence that it had developed secondary meaning in the Betty Boop image as a trademark, the district court properly granted summary judgment for the defendant on that claim.

As for plaintiff’s claim for infringement of the BETTY BOOP word mark, the majority held that because there were fact questions as to whether third party use was “destroying the secondary meaning” in that mark, the district court should not have granted defendant summary judgment on that claim. It remanded the case to the lower court for further proceedings.

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