What a Betty Boop boo … part 2

The International Trademark Association (INTA) has filed an amicus curiae brief in support of a rehearing, or rehearing en banc in respect of the decision of the US Ninth Circuit Court of Appeals in Fleischer Studios, Inc v. A.V.E.L.A., Inc., No. 09-56317 (9th Cir. Feb. 23, 2011) (Betty Boop Case).

In that decision, which we recently posted an update about, the US Ninth Circuit Court of Appeals rejected a trade mark infringement action brought by the family of Max Fleischer (the creator of the Betty Boop) against A.V.E.L.A. (a company which sold Betty Boop paraphernalia, including dolls, t-shirts, handbags).

INTA is the peak industry association committed to encouraging and progressing the notion of trade marks and related IP as “essential elements of trade and commerce”.  In its brief, INTA submits that the majority decision of the Court of Appeals was erroneous in a number of respects, including:

  • its reliance on the “outdated and much criticised” principle of “aesthetic functionality” as expressed in the case of Job’s Daughters v Lindeburg  Co, 633 F2d 912 (9th Cir 1980), without reference to later cases which significantly limit the application of this doctrine; and
  • taking the position that the Fleischer family were not permitted to bring a trade mark infringement claim, because such an action was in effect a substitute for a copyright claim. As such, failing to recognise that trade mark and copyright address and protect different aspects of the same work.

INTA has expressed great concern about the judgment, noting:

“if the majority’s opinion stands uncorrected, it will have far-reaching consequences for brand owners and consumers alike, undermining settled precedent within this Circuit, upsetting the balance between trademark and copyright law, creating conflict with other Circuits, and contributing to confusion.”

As foreshadowed in our last post, a challenge in relation to the Betty Boop decision seemed likely.  In light of Judge Graber’s strong dissent in the case and the arguably unconventional treatment of the trademark issues by the majority, the amicus brief submission by INTA is not particularly surprising.   

This is especially so given the majority’s reliance on the controversial decision of Dastar Corp v Twentieth Century Fox Film Corp, 539 US 23 (2003), a case in relation to which INTA also submitted an amicus brief.  Interestingly, the majority’s reliance on this decision in the Betty Boop case was unprompted, as it was not cited by either party to the litigation.

It is a well established principle that copyright and trade mark provide their holders with different rights. The impetus and policy underpinning the two areas of law are not the same.  As INTA note in their brief:

“Copyright law rests on the notion that authors are granted a limited monopoly, as an incentive to create works, in return for dedicating their works to the public after the expiration of copyright.

“Trademark law, in contrast, is not about incentivizing companies to create brands: it is about protecting consumers against confusion as to source, sponsorship or affiliation.”

With these concepts in mind, it is arguable that any outcome in this case will have wide reaching doctrinal implications in respect of the intersection between copyright and trade mark law.

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