Boop-oop-a-doops

Fleischer Studios v. A.V.E.L.A., Inc., No. 09-56317 (9th Cir. Aug. 19, 2011)

The court withdrew its earlier opinion, with its holding that the Betty Boop merchandise couldn’t be serving as a trademark because people wanted to buy the merchandise with Betty Boop on it and not merchandise from a particular source, aka aesthetic functionality. After various procedural matters were out of the way, the revised opinion now remands on the trademark issues.

The district court held that the fractured copyright ownership (which was the source of plaintiff’s loss on its copyright claims) precluded the existence of a valid trademark, since multiple parties were the source of Betty Boop stuff. The new opinion agreed that “the fractured ownership of a trademark may make it legally impossible for a trademark holder to prove secondary meaning,” but held that the facts available to the court didn’t establish that this was true here as a matter of law. Fractured ownership isn’t enough on its own—there must be “something more,” which such as the facts in the district court case initially adopting the fractured ownership theory: “evidence of extensive use and licensing of similar images by other companies, the oddly-defined trademark that was legally carved out from other images of the same character, the widespread confusion amongst potential licensees and licensors regarding from whom one should license the mark, and the other image of the same character that had acquired secondary meaning.” Here, however, there had only been a showing that more than one entity owns rights to Betty Boop IP. Without evidence of confusion in the marketplace over who owns the character, extensive merchandising of other images, or secondary meaning for other images, “all we have is the possibility that other copyright owners may be destroying the secondary meaning in the Betty Boop mark.” That wasn’t enough.

The district court’s other reasons for ruling against Fleischer were that the uses here weren’t uses of a mark in commerce and weren’t likely to cause confusion. “Given the large number of complex issues it faced and the minimal assistance from the parties’ briefs, it is understandable that the district court might have deemed it unnecessary to address these issues in greater depth, to provide more detailed reasoning, to cite to relevant authority, or to identify a basis in the record for these apparent conclusions.” But more was necessary to create a reviewable decision, so remand it was.