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.
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 lexis.com 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].
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."
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.
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
Veronica J. Cherniak, Ornamental
Use of Trademarks: The Judicial Development and Economic Implications of an
Exclusive Merchandising Right, 69 Tul. L. Rev. 1311 (1995)
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