An Opinion That Cries Out For A 9th Circuit En Banc Review … Betty Boop and The Tangled Character Copyright and Trademark Chain of Title

Fleischer Studios v. A.V.E.L.A., Inc. (9th Cir. Sept. 23, 2011) A copyright and trademark case in which the Ninth Circuit finds copyright chain of title argument waived for failure to raise in the opening brief; and the trademark analysis goes off in an obtuse angle to trademark law as we know it.

Max Fleischer, while in his studio of the same name, created Betty Boop in 1941. Thereafter a tangled chain of transfers followed, including a transfer to Paramount Pictures and a comprehensive campaign by the Fleischer family to gather up all the disparate assignments. The family, believing that they had regained ownership to the work, sued A.V.E.L.A who was making unauthorized use of the image for sales of t-shirts and handbags.

The Ninth Circuit affirmed the trial court’s dismissal of the case. In the copyright portion of the case, the court held that the family’s claim of ownership failed for lack of proof of one of the chains of title, and an alternative theory of complete title was nil for failing to raise that alternative theory in the opening brief.

The trademark claim is also dismissed, but for an unorthodox reason, that the trademark fails as a trademark for the reason that it is functional. The court generated this conclusion on a theory that was neither argued nor briefed. Briefly, the court held that because the consumer buys the image on the t-shirt and the handbag for the pleasing image, that rendered the image functional and not a candidate for trademark protection.

To the discomfort of any trademark professional or college logo licensing group, the court placed emphasis on the fact that the defendants’ infringement was less problematic because they did not ‘designate the merchandise as official or otherwise a affirmatively indicate sponsorship’. This is an opinion that flies in the face of 9th Circuit opinions that state that when the trademark is the very thing that is being infringed, that that infringement is not insulated by the functionality doctrine. The recent case of Automotive Gold v. Volkswagen of America (457 F.3d 1062, 9th Cir. 2006) comes to mind.

Finally, the court seems confused about where copyright ends and trademark begins. This opinion suggests that the court is simply set upon not finding a valid copyright chain of title under the mistaken thought that if it did, that copyright would go on in perpetuity: ‘If we ruled that A.V.E.L.A’s depictions of Betty Boop infringed Fleischer’s trademarks, the Betty Boop character would essentially never enter the public domain.’

This is a case that we’ll be either seeing in an en banc review or we’ll be scratching our heads about for a long time to come.

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