In September, 1966, a singer named Helen Kane died in her apartment in Queens, NY. She began her career with the Marx Brothers and her greatest hits included "I Wanna Be Loved By You" and "Button Up Your Overcoat." At the height of her career in the 1920s and 30s she was known as the "boop-boop-a-doop" girl. In her obituary, the New York Times described her as having "converted a babyish singing voice into a fortune and lost the fortune in a dress firm bankruptcy."
In 1932, Ms. Kane filed a lawsuit against Max Fleischer, the creator of the character "Betty Boop," as well as Fleischer Stutios Inc. and Paramount-Publix Corporation. Kane described herself as an actress "who uses in her speech and songs an exaggerated lisp and a childish voice and manner." In her lawsuit, Kane alleged that Betty Boop was a caricature of her, sought an injunction prohibiting the defendants from exhibiting Betty Boop cartoons, and requested $250,000 in damages.
The case went to trial in 1934 and included a day of screening Ms. Kane's film, "Dangerous Nan McGrew" and various Betty Boop cartoons. However, after three weeks, Justice Edward J. McGoldrick dismissed the complaint based on Kane's failure to prove the causes of action based on the alleged misappropriation of her style of singing and acting. The case was affirmed on appeal. Kane v. Fleischer, 248 A.D. 554, 288 N.Y.S. 1046 (N.Y.A.D. 1 Dept., 1936).
Nearly eighty years later, Fleischer Studios is now in court fighting over its own alleged rights to Betty Boop. Last winter, the Ninth Circuit Court of Appeals affirmed a trial court's grant of summary judgment, which had held that Fleischer did not own a valid copyright or trademark in the Betty Boop cartoon character.
The dispute in that case concerned a group of defendants that license Betty Boop merchandise, some of which are based on vintage movie posters. The defendants challenged Fleischer Studios assertion that it owned the subject trademark rights and copyright rights or that they were infringing them. Among other things, the district court held that - although Fleischer Studios proved it owned the registered word mark, "Betty Boop" and had used the mark on merchandise mark - there was no evidence that any of the defendants’ uses of poster artwork represented a use of Plaintiff’s word mark in commerce.
The case set off alarm bells in the intellectual property community, not for this evidentiary issue, but over concerns about the manner in which the Ninth Circuit analyzed the issues involving trademark protection for copyrightable images, the trademark concept of "asethetic functionality" and issues of waiver that the court addressed in dismissing a chain of title argument.
Under the court's trademark functionality analysis, it found that Fleischer Studios had been using Betty Boop as a functional product and not as a trademark. The "aesthetic functionality" concept concerns whether purely aesthetic and ornamental features of a product may be functional because of a perceived competitive need to copy the ornamental features. The doctrine has been widely criticized, rejected by some courts, and many commentators and trademark holders are seeking to narrow or eliminate its applicability altogether. The Court also noted in dicta that a copyrighted work that falls into the public domain cannot thereafter be protected as a trademark. This raised eyebrows in some circles, particularly those who have interests in copyrighted characters that are also protected by trademark law.
Many have been pleading with the court to rehear the case and entities no less than Tarzan's Edgar Rice Burroughs, Inc., Major League Baseball Properties, Inc., NBA Properties, Inc., NHL Enterprises, L.P., Collegiate Licensing Company, the International Trademark Association, and the Motion Picture Association of America, Inc. have gone on the record, filing amicus briefs with the court.
Two weeks ago the court ordered the parties to further brief issues concerning the legal bases for the district court's statement that the defendants' use of poster artwork does not represent a use in commerce of Fleischer's trademark for the word mark "Betty Boop," which the court noted could be relevant to resolving the appeal. The briefs are expected this week.
Unfortunately for Helen Kane's ghost, the word "irony" is a registered trademark. But perhaps she's up there somewhere smiling anyway.
Watch this space for further developments.
The Ninth Circuit's opinion in Fleischer Studios, Inc., v. A.V.E.L.A., Inc. et al., Case No. 09-56317 (9th Circuit, February 23, 2011) is available here.
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