Not a Lexis Advance subscriber? Try it out for free.
LexisNexis® CLE On-Demand features premium content from partners like American Law Institute Continuing Legal Education and Pozner & Dodd. Choose from a broad listing of topics suited for law firms, corporate legal departments, and government entities. Individual courses and subscriptions available.
Fleischer Studios, Inc. v. A.V.E.L.A.,
Inc., 636 F.3d 1115 (9th Cir. Cal. 2011) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law],
the Ninth Circuit misapplied the doctrine of aesthetic functionality, flinging
the door wide open for infringers and counterfeiters to use valuable logos with
impunity. The court also misunderstood the Supreme Court's holding in Dastar Corp. v. Twentieth Century Fox Film
Corp., 539 U.S. 23 (U.S. 2003) [enhanced version / unenhanced version]. In this Analysis, Anne Gilson LaLonde will
look first at the aesthetic functionality issue then turn to the Ninth
Circuit's interpretation of Dastar.
Facts of Fleisher
Fleisher created the character of Betty Boop and in 1930, his company began
making cartoons in which she featured. In the 1940s, the company dissolved soon
after it sold its rights in the character. In the 1970s, Fleischer's family
incorporated as a new entity and tried to regain rights in Betty Boop.
Inc. and other companies licensed the Betty Boop character to others for use
with toys, t-shirts, handbags and other merchandise. The more recent iteration
of Fleischer Studios sued defendants, claiming ownership in the character and
both copyright and trademark rights. The district court found that Fleischer
Studios did not have a valid copyright or a valid trademark in the Betty Boop
cartoon character and therefore did not have standing to sue.
Ninth Circuit affirmed. As to the copyright claim, which is beyond the scope of
this Commentary, the court found that Fleisher Studios had attempted to
purchase a copyright in the character from a company that did not actually own
the rights to it. For the trademark claim, the court concluded that defendants
were not using the image as a trademark "but instead as a functional
product" and found any of Fleischer's rights in the mark to be invalid. It
also ruled that, because the Betty Boop copyright was in the public domain,
Supreme Court precedent required the court to find that Fleischer did not
therefore own trademark rights in the image.
The Dastar Mistake
Ninth Circuit made yet another basic error in its interpretation of trademark
law when it held that, where a copyright is in the public domain, the formerly
copyrighted image cannot serve as a trademark. In doing so, it relied on Dastar Corp. v. Twentieth Century Fox Film
Corp., 539 U.S. 23 (2003), another case neither party cited. The Ninth
Circuit interpreted Dastar as holding
that "where a copyright is in the public domain, a party may not assert a
trademark infringement action against an alleged infringer if that action is
essentially a substitute for a copyright infringement action."
Access the full version of Ninth Circuit Misunderstands
Aesthetic Functionality with your lexis.com ID. Additional fees may be incurred.
(approx. 6 pages)
If you do not have a
lexis.com ID, you can purchase this commentary and additional Emerging Issues
Analysis content at the LexisNexis Store.
For more information about LexisNexis products and
solutions connect with us through our corporate