In the latest phase of a long litigation, the U.S. District Court for the Central District of California, following a remand from an amended Ninth Circuit opinion, held that a company that claimed to have acquired the intellectual property rights in the cartoon character “Betty Boop” could not maintain a claim for trademark infringement against a manufacturer of merchandise that includes or incorporates elements from vintage Betty Boop movie posters. In Fleischer Studios Inc. v. A.V.E.L.A. Inc., the defendant had argued that because the posters were in the public domain, using the trademark BETTY BOOP to describe the content of the posters was not a trademark use, but rather a use that was either an “aesthetically functional” use or a fair use. On remand, the court agreed.
Although the Ninth Circuit had withdrawn its first ruling and remanded the case, the court found the reasoning of the first ruling, which raised aesthetic functionality sua sponte, “sound and applicable” to the case on remand. Relying on the aesthetic functionality doctrine discussed in International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir. 1980), and Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062 (9th Cir. 2006), the court looked at whether the use of the mark BETTY BOOP had a source-identifying or “reputation-related” function. Finding that the mark was adapted from the restored Betty Boop posters in a way that made the words a “decorative component,” the court concluded that “it is part and parcel of the aesthetic design of those goods.” As an artistic design element, the words were not “source-identifying.” Moreover, protection of the words as a trademark would cause a competitive disadvantage to the defendants, who never identified their merchandise as “official” and otherwise would need to remove the words “Betty Boop” from historic phrases and posters containing those words.
In the alternative, the court found that use of the trademark was a “fair use.” On the doctrine of classic fair use, the court explained that the words “Betty Boop” described a characteristic of the product – much like the term “apple” (although a trademark) describes apple juice. (The court did not appear to consider nominative fair use, the alternate doctrine in which a user intends to describe the trademarked product, not a characteristic thereof.) Because it found that “[a] non-trademark use cannot be infringing,” the court held that Fleischer’s claims failed and declined to conduct the multi-factor likelihood of confusion analysis that determines whether infringement exists.
While the court noted that the doctrine of aesthetic functionality has “limited application,” this decision could have far-reaching impacts on the use of trademarks of characters or artistic elements that are in, or may soon go into, the public domain under copyright law. The decision also underscores the boundaries of trademark law, suggesting that a trademark owner cannot bootstrap trademark rights onto copyright rights, particularly if the use of the trademark is to describe the artistic component at issue rather than to use the trademark to suggest that the product is sponsored or endorsed by the trademark holder. Thus, even if artwork contains some source-identifying function, accurate identification of artwork may be considered a non-trademark use.