Intellectual Property

Job’s Daughters and Betty Boop: An Odd Couple by Name but Important Functionality Cases in Ninth Circuit Trademark Law

If you miss a case citation, it might mean one of two things: a) your research was incomplete; or b) there's a blind spot in the law. A recent trademark case may have exposed such a blind spot in the Ninth Circuit.

Fleischer Studios, Inc., the alleged owner of the Betty Boop cartoon character, filed a lawsuit in the Central District of California, accusing A.V.E.L.A., Inc. of copyright and trademark infringement. The A.V.E.L.A. products to which Fleischer objected included Betty Boop dolls as well as t-shirts and handbags prominently displaying her image.

In Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 2011 U.S. App. LEXIS 3487 (9th Cir. Cal. Feb. 23, 2011) [enhanced version available to subscribers / unenhanced version available from lexisONE Free Case Law], the court rejected Fleischer's claim of copyright ownership. On the trademark claim, the parties' briefs discussed the issues of whether cartoon characters were protectable as trademarks, whether Fleischer owned a registered or common-law trademark, whether the fractured ownership of the Betty Boop copyright precluded Fleischer from asserting a trademark claim, and, finally, whether A.V.E.L.A. infringed Fleischer's marks. However, in addressing these briefs, the court stated:

But all of these arguments are mooted by controlling precedent that neither party cited: International Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir. 1980) [enhanced version].

Job's Daughters held that:

trademark law is concerned only with identification of the maker, sponsor, or endorser of the product so as to avoid confusing consumers. Trademark law does not prevent a person from copying so-called "functional" features of a product which constitute the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product.

. . . .

It is not uncommon for a name or emblem that serves in one context as a collective mark or trademark also to be merchandised for its own intrinsic utility to consumers. We commonly identify ourselves by displaying emblems expressing allegiances. Our jewelry, clothing, and cars are emblazoned with inscriptions showing the organizations we belong to, the schools we attend, the landmarks we have visited, the sports teams we support, the beverages we imbibe. Although these inscriptions frequently include names and emblems that are also used as collective marks or trademarks, it would be naive to conclude that the name or emblem is desired because consumers believe that the product somehow originated with or was sponsored by the organization the name or emblem signifies.

The court found Job's Daughters directly applicable to Fleischer's trademark claims. Taking into account the articles themselves, the defendant's merchandising practices, and the evidence that consumers had actually inferred a connection between defendant's and plaintiff's products, the court held that A.V.E.L.A. was not using Betty Boop as a trademark but, instead, as a functional product.

Just as in Job's Daughters, Betty Boop "w[as] a prominent feature of each item so as to be visible to others when worn . . . ." A.V.E.L.A. "never designated the merchandise as 'official' [Fleischer] merchandise or otherwise affirmatively indicated sponsorship." Fleischer "did not show a single instance in which a customer was misled about the origin, sponsorship, or endorsement of [A.V.E.L.A.'s products], nor that it received any complaints about [A.V.E.L.A.'s] wares." Given the marked similarity between the facts of Job's Daughters and the appeal before us, we reach the same conclusion here as in our earlier decision. "The name and [Betty Boop image] were functional aesthetic components of the product, not trademarks. There could be, therefore, no infringement."

(citations omitted)

The court went on to reference a second case not cited by the parties - Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (U.S. 2003) [enhanced version / unenhanced version]. Dastar held that where a copyright was in the public domain, a party could not assert a trademark infringement action against an alleged infringer if that action was essentially a substitute for a copyright infringement action. Doing so circumvented the Copyright Act and allowed trademark holders perpetual rights to exploit their creative work.

For a better understanding of this case and the issues, read:

1-2A Gilson on Trademarks § 2A.04 Functionality (Non-subscribers can purchase Gilson on Trademarks at the LexisNexis Bookstore)

1-5 Trademark and Unfair Competition Deskbook § 5.04 Aesthetic Functionality (Non-subscribers can purchase Trademark and Unfair Competition Deskbook at the LexisNexis Bookstore)

Veronica J. Cherniak, Ornamental Use of Trademarks: The Judicial Development and Economic Implications of an Exclusive Merchandising Right, 69 Tul. L. Rev. 1311 (1995) subscribers can view briefs, pleadings and motions related to the aforementioned case. Non-subscribers can purchase relevant briefs, pleadings and motions using lexisOne's Research Value Package.

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