UPDATE: Ninth Circuit Takes Second Stab at Betty Boop Trademark Dispute
The Ninth Circuit first addressed this appeal involving copyright and trademark claims relating to the Betty Boop cartoon character in February, 2011, issuing an opinion affirming the District Court's decision with respect to both claims. That decision was previously blogged here.
The Ninth Circuit has now withdrawn that opinion and issued a superseding opinion that reached the same conclusion as to the copyright claim but not as to the trademark claim.
As described in my post describing the Ninth Circuit's February decision, the Ninth Circuit affirmed the dismissal of plaintiff Fleischer's trademark infringement claim
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.
But in its new opinion, the Ninth Circuit took a different stance.
As to the use of the Betty Boop image as a trademark, the court concluded that Fleischer had failed to provide sufficient evidence of secondary meaning to withstand summary judgment.
But as to the Betty Boop word mark, the Ninth Circuit agreed that "the fractured ownership of a trademark may make it legally impossible for a trademark holder to prove secondary meaning." Nonetheless, the court held that it could not resolve this issue as a matter of law because the only evidence was "the possibility that other copyright owners may be destroying the secondary meaning in the Betty Boop mark," which, standing alone, was insufficient to support summary judgment.
The Ninth Circuit also concluded that it could not "ascertain a legal basis" for the District Court's conclusions that there was no evidence that A.V.E.L.A.'s use represented a use of the Betty Boop word mark in commerce or that any such use was likely to cause consumer confusion.
The Ninth Circuit thus vacated the District Court's decision and remanded the case for further proceedings with respect to the trademark infringement claim relating to the Betty Boop word mark.
The case cite is Fleischer Studios, Inc. v. A.V.E.L.A., Inc., No. 09-56317 (9th Cir. Aug. 19, 2011).
