One of the ornaments that grace our living room coffee table is a small lamp that features Betty Boop playing the ukulele underneath a palm tree. Because of a case from the Ninth Circuit this week, now I wish I had kept the original box and could tell what company manufactured it. This case (Fleischer v. A.V.E.L.A, No. 009-56317 (February 23, 2011)) was about copyright and trademark claims in the Betty Boop character. It has several interesting features, including the use of older copyright law, the concept of copyright in characters, and the interaction of copyright and trademark.
In the 1930s Max Fleischer and Fleischer studios issued cartoons featuring the Betty Boop character and also licensed merchandise with the Betty Boop image. Fleischer sold both the rights to the cartoon and to the character in 1946. Rights were subsequently sold and re-sold, and the chain of title had become rather confused. Fleischer’s family formed a new corporation and tried to re-purchase the rights in the 1970s, and, since then, Betty Boop’s popularity has risen again. This lawsuit arose between the new Fleischer corporation and another company that has also been licensing Betty Boop merchandise. At trial the court sided with A.V.E.L.A, holding that the Fleischer had not established a good chain of title in the copyright. It also held that the plaintiff had not established sufficient evidence of a registered trademark. The appeals court agreed.
Because all the works at issue had been created before 1978, the 1909 Copyright Act applied in this case. Characters that are “especially distinctive” have copyright protection apart from the copyright works in which they appear. At one point in the sale of rights, the rights in the Betty Boop cartoons had been sold separately from the Betty Boop character. At that point, the chain of title in the cartoons and the character had parted. Fleischer also made an argument on the basis of the doctrine of indivisibility, which the court disallowed. Although the doctrine is no longer used under the present statutes, it was part of the 1909 copyright law, and so the plaintiffs were allowed to use it in arguments, although they did not ultimately succeed.
In addition, Fleischer brought a trademark claim, which the appeals court also dismissed on the basis of two cases. One was Job’s Daughters and the idea that the Betty Boop images were “functional aesthetic components of the product, not trademarks.” The other was Dastar and the idea that when a copyright has passed into the public domain, a trademark action cannot be asserted as a substitute for an action for copyright infringement. Quoting Dastar, the court said “The rights of a patentee or copyright holder are part of a carefully crafted bargain, under which, once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution.”