FLORENCE-MARIE COOPER, District Judge.
The matter is before the Court on Plaintiff's Motion for Summary Judgment (docket no. 48) and Defendants' Motion for Summary Judgment (docket no. 53), a portion of which the Court decided with its December 16, 2008, 772 F.Supp.2d 1135, 2008 WL 8236986 (C.D.Cal.2008), Order Re Plaintiff's Motion for Summary Judgment and a Permanent Injunction and Defendant's
This action arises out of a dispute over the ownership of intellectual property rights in Betty Boop, a cartoon character that has appeared in cartoon films and other media since the early 1930s. The parties do not dispute that Betty Boop represents a "highly profitable merchandising property[,]" or that "[t]here [have] been about 200 authorized U.S. Betty Boop licensees over the past five years, and merchandise sold under [Plaintiff's] Betty Boop trademarks has generated millions of dollars in gross sales" over many years. Pl's Stmt. of Uncontroverted Facts ("Pl's SUF") ¶ 8. Similarly, the parties do not dispute that the merchandise Plaintiff has sold since 1972 "has been sold with labels depicting the name and image of Betty Boop, and with text that identifies Fleischer Studios as the copyright and trademark owner of the character." Id. at ¶ 11.
The Court laid out the factual background of this action in considerable detail in its December 16, 2008 Order. Therefore, the Court summarizes here only the history relevant to the determination of the parties' cross motions for summary adjudication of Plaintiff's trademark and unfair competition claims.
The Plaintiff in this action, Fleischer Studios, Inc. ("Plaintiff" or "Fleischer"), a California corporation, identifies no legal relationship or connection to earlier corporations of the same name. However, because the rights Plaintiff seeks to assert in this action originated in those now-defunct corporations, the Court reviews their history here.
It is undisputed that the original Fleischer Studios, a New York corporation, was incorporated in 1929. The original Fleischer Studios, Inc. ("FSI NY1") was formed by Max Fleischer and others.
On July 11, 1941, the original FSI assigned to Paramount all of its copyright and renewal interest in and to several drawings and books, including the two booklets of Betty Boop drawings: Betty, Cartoon Character and Betty Boop and Her Gang. The July 11, 1941 Booklet Agreement,
Beginning in the mid-1950s, Paramount entered into various agreements whereby it assigned rights in the Betty Boop works to various other entities, including a 1955 assignment of numerous cartoon films to UM & M TV Corp. ("UM & M"), Pl's Stmt. of Genuine Issues ¶ 19; a 1958 assignment to Harvey Films, Inc. ("Harvey") of 220 cartoon films and other short subjects, including the booklet Betty Boop and Her Gang; an a 1980 quitclaim to CBS, Inc. ("CBS") whatever Betty Boop character rights Paramount still possessed.
More than 25 years after the original FSI ceased to exist, at some point prior to Max Fleischer's death in September 1972, Max Fleischer and his heirs formed a new Fleischer Studios, Inc. as a New York corporation ("FSI NY2"). In August 1972, the new Fleischer Studios, FSI NY2, authorized the King Features Syndicate Division of the Hearst Corporation ("King Features") to act as its exclusive licensing agent for Betty Boop merchandise. Fleischer Decl. ¶ 21. However, Plaintiff does not indicate and offers no evidence to establish the origin of the merchandising rights involved in its relationship with King Features.
Plaintiff in this action, Fleischer Studios, Inc., is a California corporation ("FSI CA" or "Plaintiff") that was incorporated in 1992, at which point FSI NY2 was "merged into" FSI CA.
Defendants A.V.E.L.A. Inc. ("AVELA"); Art-Nostalgia.Com., Inc. ("Art Nostalgia"); X one X Movie Archive, Inc. ("X one X"); and Leo Valencia ("Valencia"), the President, CEO, sole officer, sole shareholder, and sole employee of the defendant corporations (collectively "Defendants")
On December 2, 2002, Defendants obtained federal copyright registrations for two restored Betty Boop movie posters. Valencia Decl., Ex. C (registration nos. VA 1-309-437 and VA 1-309-347). Around or after that time, Defendants began selling copies of and licensing rights in the restored Betty Boop movie poster artwork. Defendants' licenses to third parties permit the production and distribution of merchandise utilizing all or part of the movie poster images. The merchandise
On September 29, 2006, Plaintiff initiated this action, asserting the following claims against Defendants: (1) copyright infringement, (2) trademark infringement, (3) false designation of origin under the Lanham Act, (4) state law trademark infringement and unfair competition, and (5) deceptive trade practices.
On March 19, 2008, Plaintiff filed its Motion for Summary Judgment as to Liability and a Permanent Injunction (docket no. 48). On the same date, Defendants filed their Motion for Summary Judgment.
Plaintiff's argument regarding its trademark and unfair competition claims in its Motion for Summary Judgment is premised on its assertion of ownership of federally registered and common law trademarks in the "name and image" of Betty Boop. See, e.g., Pl's Mot. at 1; see also id. at 10:13-15 ("Fleischer Studios must prove only that there has been a misleading description or representation concerning goods or service that affects interstate commerce to prevail on its trademark and unfair competition claims" (emphasis added)). Plaintiff maintains that Defendants' "use of [Plaintiffs'] Betty Boop copyrights and trademarks lessens the value of its `Betty Boop' brand and those intellectual property rights" and "threatens to harm the goodwill associated with authorized merchandise, and weaken [Plaintiff's] Betty Boop marks." Id. at 9:25-10:3.
Related to this primary line of argument, Plaintiff asserts that "[t]he former Fleischer Studios began authorizing Betty Boop merchandise in the 1930s."
Plaintiff asserts that it "possesses common law trademark rights in the images of Betty Boop used on merchandise or labels that accompany authorized merchandise." Pl's SUF ¶ 15. However, at most, the evidence Plaintiff references in support of this assertion substantiates that Plaintiff's labels indicate copyright and trademark rights in images of Betty Boop. Id. (citing Fleischer Decl., Ex. 39,
As evidence of its federal trademark registrations, Plaintiff submits records indicating four separate registrations of the "word mark" "Betty Boop" on a variety of merchandise. Fleischer Decl. ¶ 14, Ex. 40 (printout from the USPTO's website providing basic information about registration nos. 2430642, 2378474, 2374258, and 2392715 for "word mark" "Betty Boop").
Moving for summary judgment in its favor on Plaintiff's trademark and unfair competition claims, Defendant's primary argument is that Plaintiff could not prevail because the Betty Boop posters it uses and licenses are copyrightable works that "were entirely in the public domain[,]" and, as a result, using trademark claims "to reclaim that which was previously protected by copyright" would run afoul of the Supreme Court's decision in Dastar Corporation v. Twentieth Century Fox Film Corporation, 539 U.S. 23, 123 S.Ct. 2041, 156 L.Ed.2d 18 (2003). Defs' Mot. at 22:13-15, 23:12-14. Defendant also argued
On August 25, 2008, the Court heard oral argument on the motions and, thereafter, took the motions under submission.
On December 16, 2008, the Court issued its Order Re: Plaintiff's Motion for Summary Judgment and a Permanent Injunction and Defendants' Motion for Summary Judgment, denying Plaintiff's motion and granting Defendants' motion in connection with Plaintiff's copyright infringement claim. After tracing the relevant portions of the long history of transfers of copyright interests in various aspects of works in which Betty Boop appears and in the character herself, the Court concluded that "Plaintiff ha[d] not demonstrated a chain of title in the relevant cartoon films or the component parts thereof that leads to and terminates with Plaintiff. Stated otherwise, Plaintiff has not established its ownership of the Betty Boop cartoon character." Dec. 16, 2008 Order, 772 F.Supp.2d at 1152-53, at 30:26-31:3.
With its December 16, 2008 Order, the Court reserved ruling and ordered supplemental briefing regarding Plaintiff's trademark and unfair competition claims. The Court did so because the parties' existing briefing failed to address issues central to the determination of those claims. For example, Defendants' arguments for summary judgment were premised on a finding that the copyright for the Betty Boop character had fallen into the public domain, but the Court did not so find. Id. at 1153, at 32:6-9 ("[A]s the foregoing discussion of Plaintiff's copyright infringement claim demonstrates, the Court has not found that the Betty Boop character has fallen into the public domain.") At the same time, the Court pointed out that Plaintiff's briefing did not address "how its registered trademarks encompass the use of the image of Betty Boop" or "the nature or source of its common law trademark rights, if any, in Betty Boop images." Id. at 1154, at 33:24-34:2 (emphasis added).
Id. at 1154, at 34:2-18.
On January 30, 2009, the parties filed their opening supplemental briefs. On February 23, 2009, the parties filed their responsive supplemental briefs. Plaintiff filed declarations and exhibits in support of both of its supplemental briefs.
Plaintiff's supplemental briefing carries forward with the premise that Plaintiff "owns incontestable federal trademark registrations and common-law rights in both the name and image of Betty Boop." Pl's Supp. Br. at 1:18-20 (emphasis added); see also id. at 3:18-21 (arguing regarding ownership that Plaintiff "owns incontestable federally registered marks in both the name and image of Betty Boop, as well as common law rights in an image and the physical appearance of Betty Boop"); id. at 4:3-5 ("[Plaintiff] possesses valuable trademark rights in the name and image of Betty Boop that arise from its commercial use of those marks over many decades.") Plaintiff goes on to present argument about how Defendants' merchandise infringes Plaintiff's name and image marks.
Regarding its assertion of trademark rights in an image and the physical appearance of Betty Boop, Plaintiff introduces two potential points of origin. First, Plaintiff submits additional evidence in support of its supplemental briefing to establish its ownership of three federal trademark registrations for an image of Betty Boop. Plaintiff explained the production of the new evidence in a footnote:"
Pls' Supp. Br. at 4 n. 1 (citations to declarations and exhibits omitted).
Defendants' supplemental briefing focuses on Defendants' view that their use and licensing of their copyrighted Betty Boop poster artwork "neither constitutes a use of Plaintiff's marks nor is it likely to create or cause confusion as to the origin of the merchandise." Defs' Supplement Brief ("Defs' Supp. Br.") at 2:15-17. In the context of their argument regarding the factors considered in determining whether a likelihood of confusion exists, Defendants assert that Plaintiff's marks are not strong: "The fact that Betty Boop is a recognizable character does not mean that she indicates a source of merchandise." Id. at 10:19-20. Building on that notion in their responsive supplemental brief, Defendants somewhat inartfully argue:
Defs' Responsive Br. ("Defs' Resp. Br.") at 5:12-23.
In the alternative, Defendants argue that genuine issues of material fact related to their fair use defense preclude summary judgment in favor of Plaintiff.
With this Order, the Court considers the parties' cross-motions for summary judgment on Plaintiff's remaining claims.
Plaintiff's remaining claims are for (a) trademark infringement pursuant to 15 U.S.C. § 1114,
As the party asserting trademark and unfair competition claims, Plaintiff has the burden of proof at trial and the initial burden of production at summary judgment. Defendants may satisfy their initial burden with respect to Plaintiff's claims by "by pointing out that there is an absence of evidence to support the nonmoving party's case." Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Nissan Fire & Marine Ins. Co. v. Fritz Cos., 210 F.3d 1099, 1106 (9th Cir.2000). If the moving party meets its initial burden, the nonmoving party must then set forth, by affidavit or as otherwise provided in Rule 56, "specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e)(2); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
Trademarks function as a designation of source or origin. See 15 U.S.C. § 1127 (defining "trademark" to include "any word, name, symbol, or device, or any combination thereof—(1) used by a person... to identify and distinguish his or her goods ... from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown"). As the Trademark Trial and Appellate Board has explained:
The Procter & Gamble Company v. Keystone Automotive Warehouse, Inc., 191 U.S.P.Q. 468, 474 (TT & A Bd.1976) (emphasis added); see also United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97, 39 S.Ct. 48, 63 L.Ed. 141 (1918) ("There is no such thing as property in a trademark except as a right appurtenant to an established business or trade in connection with which the mark is employed.... [T]he
"To succeed on the merits, plaintiff must establish three elements: (1) that he owns the mark; (2) that the mark indicates the source of the [merchandise] ("secondary meaning"); and (3) that defendant's use of the mark is likely to create confusion as to the source of the recordings." Culliford v. CBS, Inc., 222 U.S.P.Q. 497, 499 (D.D.C.1984) (referencing the test for trademark claims involving unregistered marks, to which the common law and the Lanham Act's Section 1125(a) apply); see also Toho Co., Ltd. v. William Morrow and Co., Inc., 33 F.Supp.2d 1206, 1210 (C.D.Cal.1998) ("When trademark and unfair competition claims are based on the same infringing conduct, courts apply the same analysis to both claims. To succeed on a claim for trademark infringement or unfair competition, the moving party must establish: (1) ownership of the trademark at issue; (2) use by defendant, without authorization, of a copy, reproduction, counterfeit or colorable imitation of the moving party's mark in connection with the sale, distribution or advertising of goods or services; and (3) that defendant's use of the mark is likely to cause confusion, or to cause mistake or to deceive." (internal quotations and citations omitted)).
The Court begins its analysis with the question of ownership. "To establish standing to sue for trademark infringement under the Lanham Act, a plaintiff must show that he or she is either (1) the owner of a federal mark registration, (2) the owner of an unregistered mark, or (3) a nonowner with a cognizable interest in the allegedly infringed trademark." Halicki Films, LLC v. Sanderson Sales and Marketing, 547 F.3d 1213, 1225 (9th Cir. 2008).
Plaintiff asserts ownership of common law trademark rights in Betty Boop's image and general appearance that arise from Plaintiff's use of Betty Boop images on merchandise since FSI NY2 entered into a merchandising agreement with King Features in 1972.
Priority of use is sufficient to establish ownership of an unregistered trademark. Halicki Films, LLC v. Sanderson Sales & Marketing, 547 F.3d 1213, 1226 (9th Cir.2008); see also Sengoku Works Ltd. v. RMC Int'l, Ltd., 96 F.3d 1217, 1219 (9th Cir.1996) ("It is axiomatic in trademark law that the standard test of ownership is priority of use.... [I]t is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services."). As the Ninth Circuit reiterated fairly recently:
Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 756 (9th Cir.2006) (emphasis added)
Here, Plaintiff's claim to common law rights in Betty Boop's image and appearance is based only on its use of the image(s) since 1972. Although this represents decades of use, it does nothing to address the first use of Betty Boop as a mark. In fact, Plaintiff references the original FSI's authorization of Betty Boop merchandise in the 1930s. After acknowledging the original FSI's first use,
To the extent that Plaintiff intended to argue that its trademark rights derive in some part from Harvey's assignment of its Betty Boop-related rights to FSI in 1980, or Republic's recognition of Plaintiff's rights in the Betty Boop character in its 1997 settlement agreement with Plaintiff, Plaintiff has not met its burden. As the Court previously discussed in connection with Plaintiff's arguments regarding the chain of title in the copyright interests Plaintiff asserted in this litigation, Plaintiff has not established how those agreements might be sufficient to transfer trademark rights in the Betty Boop character to Plaintiff.
Plaintiff asserts that it has incontestable trademarks in the name and and image of Betty Boop.
The rights that flow from federal registration on the Principal Register include that the registration is "prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate." 15 U.S.C.A. § 1057. However, as noted above, under the priority-of-use principle, it is not enough to be the first to have registered a mark. Grupo Gigante, 391 F.3d at 1093. "Registration does not create a mark or confer ownership; only use in the marketplace can establish a mark." Miller v. Glenn Miller Productions, Inc., 454 F.3d 975, 979 (9th Cir.2006).
A registered mark becomes incontestable if the registrant files an affidavit with the United States Patent and Trademark Office ("PTO") stating that the mark has been in continuous use for five consecutive years subsequent to the dates of registration and is still in use in commerce. 15 U.S.C. § 1065. An incontestable registration is "conclusive evidence" of (1) the validity of the registered mark; (2) the registrant's ownership of the mark; and (3) the registrant's exclusive right to use the mark in commerce.
Here, Plaintiff submitted evidence of the registration of four "word marks" for the
Plaintiff's evidence does demonstrate that Plaintiff has registered and used the name "Betty Boop" on merchandise sold under license from Plaintiff since 1972. Its federal registration is prima facie evidence of the validity and ownership of the word mark, and Defendants have not introduced any evidence to rebut the validity of that mark. However, nothing before the Court demonstrates: (a) that Plaintiff's word mark indicates a single source, (b) that any of Defendants' uses of its poster artwork represent a use of Plaintiff's word mark in commerce, or (c) that any of defendants' uses of the word mark are likely to cause consumer confusion. Accordingly, the Court concludes that Plaintiff's word mark registrations do not satisfy Plaintiff's burden with respect of any of its claims.
In light of the "fractured" history of intellectual property rights in works featuring Betty Boop, the Court finds the Southern District of New York's analysis in Universal City Studios, Inc. v. Nintendo Co. Ltd., 578 F.Supp. 911 (S.D.N.Y. 1983), particularly instructive. The plaintiff in Universal, sought to enforce rights related to the character King Kong, which Universal alleged were infringed by Defendant Nintendo's use of a gorilla in its "Donkey Kong" video game. Nintendo moved for summary judgment on Universal's trademark and unfair competition claims. Id. at 913. Regarding the right Universal sought to assert in King Kong, the court explained:
Id. at 914.
Id. at 925.
Here, as in Universal, merchandising intellectual property rights in a famous fictional character were divided and parceled out to various entities over many decades. In the context of these cross-motions for summary judgment, Plaintiff has not established trademark rights that are not in considerable conflict with other existing ownership rights in Betty Boop and the works in which she appears. Although there is no evidence of other current, authorized uses of Betty Boop trademarks, Plaintiff acknowledges that other entities retain copyrights in various Betty Boop works. Additionally, as discussed above, Plaintiff points to no evidence that its use since 1972 constitutes a first use, e.g., that owners of rights in works in which Betty Boop is featured were not producing or selling Betty Boop merchandise at or near the time Plaintiff commenced its use in 1972.
Accordingly, for the reasons and in the manner set forth above, summary judgment is granted in favor of Defendants on Plaintiff's trademark and unfair competition claims because Plaintiff failed to produce evidence sufficient to establish, or to raise a triable issue of fact regarding (a) its ownership of rights in the image or physical appearance of Betty Boop or (b) how Defendants' use of the Betty Boop posters infringes Plaintiff's federally-registered word-mark in the name "Betty Boop."
Those portions of Plaintiff's Motion for Summary Judgment (docket no. 48) that relate to Plaintiff's trademark and unfair competition claims are DENIED, and the corresponding portions of Defendants' Motion for Summary Judgment (docket no.
Handman Decl, Ex. 4 at FS00942. Neither party mentions the effect or import of this language in the 1941 Cartoon Film Agreement.
The original Fleischer Studios sold its assets to Paramount in 1941. However, just before my grandfather passed away in 1972, he reformed Fleischer Studios and entered into a new licensing agreement with the King Features Division of the Hearst Corporation for new Betty Boop merchandise. Fleischer Studios-authorized Betty Boop merchandise has been continuously offered to the public since that time.
Fleischer Decl. ¶ 21.
For example, Plaintiff states that the Court rules that Defendants' argument that the Betty Boop character is in the public domain for copyright purposes "does not apply because the character remains protected by copyright." Pl's Opening Supplemental Br. ("Pl's Supp. Br.") at 1:6-10 (citing the December 16, 2008 Order, 772 F.Supp.2d at 1147, 1153, 1153, at 20:8-11, 31:8-10, 32:6-9). However, the referenced portions of the Order state: (1) "Accordingly, Betty Boop, the cartoon character, was a protectable component part of the cartoon films that were copyrighted prior to July 1931"; (2) "Defendants oppose Plaintiff's Motion for Summary Judgment by contending that Plaintiff cannot prevail on its trademark claims because, once a copyright has expired, the right to copy the work passes to the public"; and (3) "However, as the foregoing discussion of Plaintiff's copyright infringement claim demonstrates, the Court has not found that the Betty Boop character has fallen into the public domain." The Court's finding that the Betty Boop cartoon character was a protectable element of copyrighted cartoon films and the Court's statement that it had not found that the character had fallen into the public domain are not tantamount to a finding that the character remains protected by copyright.
Similarly, in the very next sentence, Plaintiff states that "[t]he Court also acknowledged that Fleischer Studios presented uncontroverted evidence that it has incontestable trademark registrations in the name Betty Boop." Pl's Supp. Br. at 1:10-12 (citing page 1154, 33 of the December 16, 2009 Order). The Court acknowledged no such thing. Rather, the Court acknowledged that Plaintiff had established ownership of "four registered marks" for the name Betty Boop. Dec. 16, 2008 Order at 33:5-6, 772 F.Supp.2d at 1154, at 33:5-6 (emphasis added). Regarding incontestability, the Court acknowledged only that "Plaintiff contends that its trademark registration are more than five years old, qualifying them for `incontestable' status under the Lanham Act." Id. at 1154, at 33:7-9 (emphasis added).
15 U.S.C. § 1114(1)(a)-(b).
Dec. 16, 2008 Order, 772 F.Supp.2d at 1149, at 24:4-8. The Court then discussed the purported chain of title in the copyright in the Betty Boop character (a) from UM & M to National Telefilms Associates ("NTA"), which Plaintiff asserted became Republic Pictures ("Republic"), and (b) back to Plaintiff by virtue of a 1979 letter from NTA to the parent of FSI NY2's licensing agent and a 1997 settlement agreement entered into by Plaintiff and Republic. Id. at 1151-52, at 27:3-31:6. The Court concluded, in relevant part, that "[n]either NTA's 1972 acknowledgment in a letter nor the 1997 settlement agreement between Republic and Plaintiff effected a transfer of rights that are good as against the world. At most, these documents evidence the parties' recognition of rights effective only between the parties." Id. at 1152, at 30-19-22.
Universal City Studios, Inc. v. Nintendo Co., Ltd., 578 F.Supp. 911, 914 (S.D.N.Y.1983). The court went on to detail the ensuing long and complicated history of King Kong rights.
