The Doctrine of Aesthetic Functionality: What Trademark and Copyright Owners Can Learn from Betty Boop
September 2011By: Christina M. Licursi
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What This Means to You
- Brand owners should consider all relevant aspects of intellectual property protection, particularly for famous brands.
- If you wish to enforce your rights in an older, established mark, ensure there is a proper chain of title and you have valid ownership of the mark at issue.
- A trademark owner with products being purchased for aesthetic qualities may not be able to prevent non-licensees from selling merchandise featuring its marks if they are not being relied upon by the consumer as an indicator of the source of the merchandise.
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In the recent Ninth Circuit case, Fleischer Studios, Inc. v. A.V.E.L.A., Inc., the court affirmed a district court’s summary judgment dismissal of copyright and trademark claims related to the use of the Betty Boop character on merchandise. The appellate court held that the plaintiff was unable to establish ownership of the copyright at issue and that depictions of the Betty Boop character on merchandise are functional and therefore not protectable under trademark law.
Background
In the 1930s, Max Fleischer created the Betty Boop character, who was featured in cartoons and whose image was licensed for use in toys, dolls, and other merchandise. Years later, family members of Max Fleischer established Fleischer Studios, Inc. and sought to repurchase the IP rights to the Betty Boop character, with the goal of revitalizing the brand and licensing it for use in toys and other merchandise.
Fleischer Studios, who believed they were the rightful and exclusive owners of the Betty Boop trademark, sued a rival company selling Betty Boop merchandise for copyright and trademark infringement in district court. The court, however, granted the defendant’s motion for summary judgment, finding that 1) Fleischer Studios failed to establish a chain of title sufficient to have valid ownership in the Betty Boop character copyright, and 2) it failed to establish a registered federal trademark or common-law rights in the Betty Boop image.
The Appellate Decision
On appeal, the Ninth Circuit acted unexpectedly in affirming the district court’s decision. In reaching its conclusion, the court disregarded the parties’ arguments and based its decision on a 1980 decision neither party cited—International Order of Job’s Daughters v. Lindeburg & Co.—in which it held that the use of a name and emblem on jewelry was not actionable under trademark law because it was functional. In other words, consumers purchased the jewelry for the aesthetics of the design rather than as an assurance of product source or sponsorship.
The court applied this same line of reasoning here, finding that the defendants were not using the Betty Boop image as a source identifier, but rather only ornamentally. The court ultimately held there was no trademark infringement because consumers were purchasing the defendant’s Betty Boop merchandise for its aesthetic features.
Response to the Decision
This decision has generated quite a bit of response from the trademark community. For example, the International Trademark Association (INTA) filed an amicus brief to request the court rehear the case, arguing it could have far-reaching and unfavorable consequences for brand owners. Specifically, INTA’s brief argued the court should not have applied the “aesthetic functionality doctrine” and that trademark protection should not be precluded for images that are also protected by copyright.
Takeaways
Although controversial, the case offers brand owners important lessons. First and foremost, brand owners should consider all relevant aspects of IP protection, particularly for famous brands. Along these lines—and particularly for older and established marks—a party wishing to enforce its rights in a mark should ensure there is a proper chain of title and that it has valid ownership of the mark at issue.
Finally, even if ownership can be established, trademark owners should be mindful that if their products are being purchased for aesthetic qualities, they may not be able to prevent non-licensees from selling merchandise featuring their marks.
