In a recent judgment, the U.S. Ninth Circuit Court of Appeals has upheld a decision in favour of a number of companies which license Betty Boop paraphernalia, including dolls, t-shirts, handbags etc.
Risqué for her times, Betty Boop “combined the childish with the sophisticated.” Merchandise bearing her resemblance transcended conventional usage. In fact, so ubiquitous was her character that ceramic Betty Boop dolls were even used to conceal large parcels of methamphetamines (See United States v. Lakoskey, 462 F.3d 965, 971 (8th Cir. 2006) as cited in Fleischer Studios, Inc. v. A.V.E.L.A., Inc., No. 09-56317 (9th Cir. Feb. 23, 2011).
By a 2-1 majority, the court held that the family of Max Fleischer (the creator of the renowned Betty Boop) did not have copyright or trademark rights in respect of the famed cartoon character.
The Fleischer family’s case fell down on the issue of whether they owned copyright in the Betty Boop character. Two of the three presiding judges found that the Fleischers failed to establish an unbroken chain of title assigning the copyright in the well-known cartoon character to them. The family argued that their ownership arose by virtue of a number of chains of title. The majority chose to only focus on one such chain, as it took the view that the others were abandoned on appeal.
The relevant transfer of rights was from the original Max Fleischer to Paramount Pictures to UM&M TV Corp to National Telefilm Associates (which became Republic Pictures) who finally transferred exclusive copyright to the Fleischer family. Relying on the wording of a 1955 purchase agreement between Paramount Pictures and UM&M TV Corp, the majority found that the right to the Betty Boop character copyright was retained by Paramount rather than being transferred to UM&M TV Corp.
Judge Graber dissented, strongly disagreeing with the reasoning and conclusion drawn by the majority in relation to this issue.
Also interesting in this case, was the majority’s treatment of the trademark issue. Judge Clifford Wallace utilised the notion of “judicial economy” to introduce a line of authority which was not argued or cited by either party.
This line of authority was the case of Job’s Daughters v. Lindeburg Co., 633 F.2d 912 (9th Cir. 1980) which was held to be ‘’directly applicable to Fleischer’s trademark claims.” Drawing this analogy, the court concluded, as was found in that case, that the defendants were not using Betty Boop as a trademark, but instead as a “functional aesthetic component of the[ir] product.” There was no confusion created in the minds of consumers as to the origins of the defendants’ products and the defendants “never designated the merchandise as official Betty Boop material nor did they indicate any sponsorship from Fleischer Studios.
In deciding the trademark issue, Judge Clifford Wallace also considered the decision of Dastar Corp. v. Twentieth Century Fox Film Corp.,539 U.S. 23 (2003) affirming its application to the present case. In Dastar, it was held that where “copyright is in the public domain (i.e. where rights have expired), a party may not bring a trademark infringement proceeding if that action is in essence a substitute for a copyright infringement action.” The rationale behind such a principle was explained by the court as prohibiting a party from “circumvent[ing] the Copyright Act and allow[ing] trademark holders perpetual rights to exploit their creative work.”
Here, Judge Clifford Wallace concluded that a finding in favour of the Fleischer family would mean that “the Betty Boop character would essentially never enter the public domain” and this would be contrary to the Supreme Court’s ruling in Dastar.