Ninth Circuit Affirms Dismissal of Betty Boop Copyright and Trademark Infringement Claims
Max Fleischer, head of Fleischer Studios, Inc. (referred to by the court as "Original Fleischer"), created the well-known cartoon character Betty Boop in 1930. Some 10 years later, Original Fleischer abandoned Betty Boop and sold the rights to her cartoons and her character and in 1946, Original Fleischer was dissolved.
In the early 1970s, Mr. Fleischer's family attempted to revive his cartoon business, incorporated a new entity (the plaintiff in the case) under the same name as the Original Fleischer and attempted to repurchase the rights to the Betty Boop character. Based on those purchases, Plaintiff Fleischer believed that it was the exclusive owner of the Betty Boop character copyright and trademark and licensed the character for use on merchandise based on that belief. (For whatever reason, the Ninth Circuit's factual statement of the case seems rather cursory and somewhat lacking in clarity. The District Court's summary judgment opinion on the copyright infringement claim, found here, provides a more detailed explanation of the history.)
The defendants in the case also license Betty Boop merchandise based on a copyright on vintage posters featuring the Betty Boop image that defendant A.V.E.L.A. restored.
The parties disputed whether Plaintiff Fleischer owned the exclusive copyright to the Betty Boop character. On summary judgment, the District Court concluded that plaintiff had failed to satisfy its burden of proof regarding the chain of title to the copyright ultimately leading to the plaintiff and therefore dismissed the plaintiff's copyright infringement claim. The District Court also dismissed Plaintiff Fleischer's trademark infringement claim concluding that the plaintiff had failed to submit proper evidence of a registered federal trademark for the Betty Boop image, that the fractured ownership and use of the Betty Boop name destroyed plaintiff's trademark rights, and that the plaintiff did not establish common law trademarks of the Betty Boop name or image.
According to the majority opinion, Plaintiff Fleischer asserted several alternative chains of title to the Betty Boop character copyright before the District Court but had abandoned all but one of those chains on appeal. Specifically, Plaintiff Fleischer asserted the following chain of title on appeal:
Original Fleischer transferred its rights to Paramount Pictures, Inc. (Paramount) in 1941; Paramount transferred those rights to UM&M TV Corp. (UM&M) in 1955; in 1958, UM&M transferred these rights to National Telefilm Associates, Inc. (NTA), which became Republic Pictures in 1986; and finally, Republic Pictures transferred the exclusive copyright to Fleischer in 1997.
In granting summary judgment on Plaintiff Fleischer's copyright infringement claim, the District Court specifically concluded that the plaintiff had failed to meet its burden of proof regarding the transfer of rights from UM&M to NTA and from NTA to Republic Pictures, thereby destroying the chain of title allegedly leading to the plaintiff.
The Ninth Circuit affirmed the District Court's decision, concluding that Paramount did not transfer the Betty Boop character to UM&M under a 1955 purchase agreement, which transferred rights to certain Betty Boop cartoons. The court relied on language in the agreement that stated:
Anything to the contrary notwithstanding, no grant or assignment is made hereunder to [UM&M] of the characters and characterizations contained in said Sold Photoplays or said literary material, or of the copyrights in said characters or characterizations, or of any production or other rights in said characters and characterizations, or to use said characters and characterizations or the names of said characters or trade names, trademark and names of the series of Sold Photoplays or of said literary material in any manner except . . . only as part of the particular Sold Photoplay in which they or any of them are contained. . . .
Although it questioned the propriety of looking to subsequent behavior given this contractual language, the Ninth Circuit did note Paramount's subsequent transfer of the Betty Boop character copyright to Harvey Films in support of its conclusion that Paramount did not transfer that copyright earlier to UM&M.
Thus, because the Ninth Circuit concluded that Paramount did not transfer the Betty Boop character copyright to UM&M the chain of title leading to Plaintiff Fleischer was broken and plaintiff's copyright infringement claim was therefore properly dismissed.
The Ninth Circuit also affirmed the District Court's decision dismissing Plaintiff Fleischer's trademark infringement claim (District Court's opinion can be found here) concluding that Defendant A.V.E.L.A. was using Betty Boop as a functional aesthetic component of the products, not as a trademark. The Ninth Circuit further concluded that allowing Plaintiff Fleischer to assert a trademark infringement claim would run afoul of the Supreme Court's decision in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), by preventing the Betty Boop character from ever entering the public domain.
Circuit Judge Susan P. Graber filed a dissenting opinion taking issue with the majority's conclusions as to the chain of title issue on Plaintiff Fleischer's copyright infringement claim.
The case cite is Fleischer Studios, Inc. v. A.V.E.L.A., Inc., No. 09-56317 (9th Cir. Feb. 23, 2011).
