Betty Boop redux: Ninth Circuit revisits aesthetic functionality

United States of America
The US Court of Appeals for the Ninth Circuit has long taken inconsistent views of the doctrine of aesthetic functionality, which focuses not on the utilitarian advantages of a claimed trademark, but instead on the mark’s appeal to consumers. Specifically, the court has embraced the doctrine in some cases but rejected it in others. Indeed, in successive opinions delivered six months apart in the same case, Fleischer Studios Inc v AVELA Inc (636 F3d 1115 (9th Cir), withdrawn and superseded, Case 09-56317, 2011 WL 3633512 (August 19 2011)), the court managed to take both approaches.
The appeal before the court arose from the plaintiffs’ efforts to protect two marks, one consisting of the BETTY BOOP word mark and the other consisting of a representation of the cartoon character by that name. Although the issue of aesthetic functionality was neither argued nor briefed by the parties, the court, on its own initiative, held in its first opinion that the plaintiffs’ marks were aesthetically functional and therefore unprotectable. In doing so, it departed from the traditional inquiry under US functionality doctrine, which is whether the plaintiff owns a valid mark, and instead looked to whether the defendants’ use was functional and therefore non-actionable. For good measure, it then held that, even if functionality were not at issue, the plaintiff would not be entitled to relief because its trademark-based causes of action were “essentially... substitute[s] for a copyright infringement action”, which the court believed would prevent the Betty Boop character from ever entering the public domain (for further details please see "Ninth Circuit revives and expands aesthetic functionality doctrine").
These holdings led the plaintiffs to file a petition for rehearing. The petition was supported by several amicus curiae briefs by IP constituencies and other interested parties, most of which pointed out that:
  • the opinion’s treatment of functionality was inconsistent with the court’s own past decisions; and
  • the court itself had previously upheld the entry of injunctive relief in the same case under copyright and trademark theories.
Whether because of those arguments or for other reasons known only to the court, the court withdrew its initial opinion and then issued a new one. The new opinion did not revisit the issue of aesthetic functionality at all, much less do so in a way that necessarily disqualified the plaintiffs’ word mark and design mark from protection; indeed, to the contrary, it acknowledged the possibility that both might qualify as marks.
The court’s second opinion was therefore more consistent with conventional applications of the functionality doctrine, but it nevertheless contained some cautionary lessons for plaintiffs. Although the lead plaintiff owned registrations covering both of the marks at issue, it failed to introduce that for its design mark and, additionally, failed to document the incontestable status of the registration of its word mark. As a consequence, the plaintiffs unnecessarily bore the burden of proving that the design mark was valid, and the word mark registration was accorded less weight than if its incontestability had been properly made of record. In no small part because of these considerations, the court held that the plaintiffs had not demonstrated that they owned protectable rights in the design mark (even if those rights might exist in theory), and their claim of rights to the word mark was remanded for further proceedings before the trial court.
Theodore H Davis Jr, Kilpatrick Townsend & Stockton LLP, Atlanta
The author participated at the rehearing stage in Fleischer Studios Inc v AVELA Inc (Case 09-56317, 2011 WL 3633512), as counsel for amici curiae Major League Baseball Properties Inc, NBA Properties Inc, NFL Properties LLC, NHL Enterprises LP and The Collegiate Licensing Company.

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