Before the Sonny Bono copyright extension in 1998, I thought this would be the dominant trademark issue of coming decades.  It might still be if there are no more extensions, so here’s a preview.

Fleischer claims trademark and copyright in the BETTY BOOP word and image.  It has incontestable trademarks in both.

Avela sells BETTY BOOP merchandise, that is to say merchandise that displays the Betty Boop image.

The first two thirds of the Ninth Circuit decision holds that Fleischer can’t establish copyright, due to failures of chain of title.  That part is interesting enough, especially the comment that the dissent’s critique ‘is not well taken.’ (page 10).

The apoplexy begins on page twelve with the mention of Job’s Daughters (we thought we were done with them!).   Neither cited nor argued by either party, the Court brings International Order of Job’s Daughters v Lindeburg, 633 F.2d 912 (9th Cir 1980) and aesthetic functionality back to the forefront (and, as Pam puts it,  in a way orthogonal to the current of trademark law today):

Job’s Daughters is directly applicable to Fleischer’s trademark claims. Even a cursory examination, let alone a close one, of  “the articles themselves, the defendant’s merchandising practices, and any evidence that consumers have actually inferred a connection between the defendant’s product and the trademark owner,” reveal that A.V.E.L.A. is not using Betty Boop as a trademark, but instead as a functional product. . . . The name and [Betty Boop image] were functional aesthetic components of the product, not trademarks. There could be, therefore, no infringement.

I think they lit the Amicus Signal on the roof of the INTA Tower after that paragraph.

So let’s look at this fact pattern.  Purely hypothetical.  Let’s say that the original illustrations for Winnie the Pooh fall into the public domain.  And let’s say that in 1994 Disney begins using some of the images of Pooh as a trademark under a CLASSIC POOH line including shirts (just making it up as I go along here).  Eventually Disney obtains an incontestable trademark incorporating the Pooh image (lets say reg no. 2421065).

So a third party comes out with a shirt that clearly, through neck tags, hang tags and packaging, indicate the third party as the source, and whose primary feature of the shirt is that image of ‘classic’ Pooh.

Let’s further suppose that despite the clear marking, a significant number of consumers believe that Disney is the source of that shirt.  What result?  Well, defendant would cite this language:

If we ruled that A.V.E.L.A.’s depictions of Betty Boop infringed Fleischer’s trademarks, the Betty Boop character would essentially never enter the public domain. Such a result would run directly contrary to Dastar, 539 U.S. at 37 (“To hold otherwise would be akin to finding that § 43(a) created a species of perpetual patent and copyright, which Congress may not do”).

Further comment from 43(B)log hereKate Spelman thinks this is heading for an en banc review.  Also, you may want to look into Arsenal v Reed for the European take on the ‘source vs allegiance’ argument.