This post is not saying that BETTY BOOP is not a trademark.  Instead, it is highlighting a decision from the United States District Court for the Central District of California, which held that a competitor’s use of words “Betty Boop” was “aesthetically functional,” and not a trademark use.  By way of background, the Plaintiff sued for trademark infringement, among other claims, in connection with Defendant’s use of images of Betty Boop, the words Betty Boop, or both on posters, dolls, and clothing.

The Court first recognized the bedrock principle of trademark law: a trademark use must indicate source or origin of the product.  It went on to recognize that “The salient question is whether the designation in question, as used, will be recognized in and of itself as an indication of origin for this particular product. That is, does this component or designation create a commercial impression separate and apart from the other material appearing on the label?”

The Court, relying upon two Ninth Circuit decisions, applied the aesthetic functionality doctrine.  In doing so, consistent with International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir.1980), the Court examined the posters and clothing themselves, the Defendant’s merchandising practices, and any evidence of actual consumer confusion as to a connection between Defendant and the trademark owner.  It further analyzed the more recent Ninth Circuit case’s, Au–Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062 (9th Cir.2006), two-part test, namely: (1) whether the alleged “significant non-trademark function” of the mark “[is] essential to the use or purpose of the article [or] affects [its] cost or quality“; and if so, then the feature is functional in the utilitarian sense and cannot trigger liability for infringement; but if not, the mark is nonfunctional and may trigger liability; and (2) where the claim is one for aesthetic functionality, the court should determine if “protection of the feature as a trademark would impose a significant non-reputation-related competitive disadvantage”; and if so, the mark is aesthetically functional and does not trigger liability for infringement.

Focusing on Defendant’s use of Betty Boop as a prominent feature of its products, lack of use of “official” or other language that would suggest a connection with Plaintiff, and its clear identification of itself as the source, the Court held that “Defendants’ use of the mark is a decorative feature of their merchandise and is not source-identifying.”  Thus, consistent with precedent, “protection of the feature as a trademark would impose a significant non-reputation-related competitive disadvantage” on Defendants.”

This case sounds more like a Betty Oops, at least for the Plaintiff.  That said, the traditional fair use analysis, which was also discussed and formed a basis for dismissal, would have seemed to be the stronger argument at first glance.  That said, at least in the Ninth Circuit, aesthetic functionality may avoid a finding of trademark infringement.

Fleischer Studios, Inc. v. A.V.E.L.A., Inc., CV 06-6229 ABC MANX, 2012 WL 7179374 (C.D. Cal. Nov. 14, 2012).


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