Aesthetic Functionality Shields Defendants' Use of "Betty Boop": Central District of California | Practical Law

Aesthetic Functionality Shields Defendants' Use of "Betty Boop": Central District of California | Practical Law

In Fleischer Studios, Inc. v. A.V.E.L.A., Inc., the US District Court for the Central District of California, at the direction of the Ninth Circuit, provided the factual and legal bases for its earlier ruling dismissing Fleischer's claims that AVELA infringed its trademark rights in the BETTY BOOP word mark. 

Aesthetic Functionality Shields Defendants' Use of "Betty Boop": Central District of California

by PLC Intellectual Property & Technology
Published on 19 Nov 2012 • USA (National/Federal)
In Fleischer Studios, Inc. v. A.V.E.L.A., Inc., the US District Court for the Central District of California, at the direction of the Ninth Circuit, provided the factual and legal bases for its earlier ruling dismissing Fleischer's claims that AVELA infringed its trademark rights in the BETTY BOOP word mark.

Key Litigated Issue

The key litigated issue before the court in Fleischer Studios, Inc. v. A.V.E.L.A., Inc. was whether the use by A.V.E.L.A. and other defendant licensors (AVELA) of the BETTY BOOP word mark on merchandise such as posters, dolls and apparel was a source-identifying, trademark use that infringed Fleischer's trademark rights in this federally-registered mark.

Background

In or around 1930, Max Fleischer developed the Betty Boop cartoon character and licensed the Betty Boop image for use in toys, dolls and other merchandise through his company, Fleischer Studios, Inc. Fleischer Studios later sold its rights in the Betty Boop character to a third party and, by 1946, the company was dissolved. In the 1970s, Fleischer's family formed a new Fleischer Studios, Inc. and attempted to repurchase the intellectual property rights in the Betty Boop name and character in connection with the company's sale of toys, dolls and other merchandise. AVELA also licensed Betty Boop merchandise, such as posters, dolls and apparel, using the Betty Boop name and images derived from vintage movie posters. Fleischer sued AVELA for copyright and trademark infringement, among other claims, alleging that AVELA's unauthorized use of the Betty Boop name and image infringed its exclusive rights in the BETTY BOOP character and marks.
When the US District Court for the Central District of California first heard the case, it granted summary judgment to AVELA, dismissing all of Fleischer's claims. Specifically, the court ruled that:
  • Fleischer did not hold a valid copyright or trademark in the Betty Boop cartoon character.
  • The word mark was invalid because it could not indicate a single source or achieve secondary meaning after the mark's rights were divided among multiple entities over several decades.
  • The record contained no evidence that AVELA used the BETTY BOOP word mark as a trademark in commerce.
  • The record also lacked evidence that AVELA's use of the words "Betty Boop" was likely to cause consumer confusion.
Although the US Court of Appeals for the Ninth Circuit initially affirmed the district court's ruling on all counts, it later withdrew its opinion and issued a superseding opinion in which it:
  • Upheld the district court's grant of summary judgment dismissing the copyright and image mark claims, reasoning that Fleischer failed to show:
    • its ownership of copyrights in the Betty Boop character; and
    • a triable issue of fact of whether the Betty Boop character acquired the secondary meaning needed to establish its validity as a common law mark.
  • Ruled that Fleischer had satisfactorily proved that it possessed registered trademarks in the BETTY BOOP word mark.
  • Reversed the district court's ruling that the word mark's history of divided ownership precluded secondary meaning and deemed this a matter of triable fact.
  • Vacated and remanded to the district court for further proceedings the court's unexplained holdings that AVELA did not use the word mark in commerce and that its use of the mark did not cause a likelihood of confusion.
Notably, in its superseding opinion, the Ninth Circuit was silent on its earlier sua sponte ruling that AVELA's use of the Betty Boop image was protected by the doctrine of aesthetic functionality as a decorative, rather than source-identifying, use.

Outcome

On remand, in its November 14, 2012 decision, the district court reexamined its previously "unexplained" rulings in light of the evidence presented in the initial proceedings and preserved on appeal. It ruled that:
  • AVELA's use of "Betty Boop" was not a trademark use because:
    • the words "Betty Boop," as used by AVELA, were an aesthetically functional, decorative feature of its merchandise; and
    • AVELA used this designation to describe the Betty Boop image rather than as a trademark to identify its products' source.
  • Fleischer failed to show that its claim of likelihood of confusion presented a triable issue of fact.
  • As a matter of law, because AVELA did not use the words "Betty Boop" as a trademark, it did not infringe Fleischer's BETTY BOOP word mark.

Aesthetic Functionality

In determining whether AVELA's use of the words "Betty Boop" was a trademark use of the BETTY BOOP word mark, the court reverted to the Ninth Circuit's superseded analysis in the case under the aesthetic functionality doctrine. Applying the tests for aesthetic functionality formulated by the Ninth Circuit in International Order of Job's Daughters v. Lindeburg & Co. and Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., the district court determined that AVELA's use of "Betty Boop" was aesthetically functional because:
  • AVELA used the words "Betty Boop" as a prominent decorative feature or design element of its products.
  • AVELA identified itself as the source of these goods, never designated its merchandise as "official" or otherwise indicated sponsorship by Fleischer.
  • Without the use of the name "Betty Boop," AVELA's products would be placed at a non-reputation-related competitive disadvantage because they would be less marketable than the same products bearing this famous name.
Based on these findings, the court ruled, as a matter of law, that AVELA's use of the words "Betty Boop" was aesthetically functional and granted summary judgment dismissing Fleischer's claims that AVELA infringed its trademark rights in the BETTY BOOP word mark.

Fair Use

The court also ruled that, even if AVELA's use of "Betty Boop" was not aesthetically functional, AVELA's descriptive use of this name was nevertheless protected by fair use because:
  • AVELA used the name in a manner other than as a mark identifying the source of the goods.
  • There are no words other than "Betty Boop" available to describe or name the associated character.
  • AVELA did not use the Betty Boop name intending to capitalize on Fleischer's good will.

Practical Implications

The decision in Fleischer Studios, Inc. v. A.V.E.L.A., Inc., unless overturned on appeal, reveals that the aesthetic functionality doctrine in the Ninth Circuit may extend so broadly as to cover even the use of names claimed by trademark owners as word marks.

Court Documents