Will the real official Betty Boop please stand up?
In Fleischer Studios Inc. v A.V.E.L.A Inc, 2011 WL 631449 (9th Cir. Feb. 23, 2011), the Ninth Circuit Court of Appeals held that the purported holder of the Betty Boop character and the Betty Boop trademark (name and image) did not own it after all. The court found that the purported owner failed to show a chain of title to the copyright.
The case raises the interesting issue of how a character copyright arises separately from a copyrighted work. For example, when Ian Fleming wrote the first James Bond novel, he created both a character and a novel. So he could sell the novel and retain the character copyright or sell both. The Fleischer case discusses how films and screenplays are created and sold and how a copyright owner of a film could renew its copyright without owning the underlying character.
Since Fleischer failed to prove copyright ownership, this left the Betty Boop copyright ownership fractured among others, depriving Fleischer of the trademark. Further, the court found that the use of BETTY BOOP with image was "functional and aesthetic" and thus did not function as a trademark.
Circuit Judge Susan Graber wrote a spirited dissent, it is worth reading.
I cover copyright ownership disputes in Copyright Litigation Handbook (West 5th Ed. 2010). The Fleischer case points out three important object lessons for copyright and trademark practitioners who engage in licensing and draft agreements: 1. be very careful in documenting chains of title to a work; 2. be very sure when you license a TM or copyrightable materials that the person claiming the license actually owns the works; and 3. make sure that the representations and warranties clauses cover you in the event your licensor's IP disappears.
Probably the most important lesson to be drawn for an IP owner is that litigation is a risky business. When you send out a cease and desist letter or commence a declaration of title action, there is a chance that the rights that you and your very experienced and fine attorneys believe you own may not hold up. Given the opportunity for reasonable settlement, discretion is often the better part of valor.
Watch Minnie the Moocher above.
More from THREsq here.
WSJ's take here.
The Trademark Blog goes BALLISTIC here and collects critical comments.
Purchase Copyright Litigation Handbook 2010 by Raymond J. Dowd from West here