On August 19, 2011, the Ninth Circuit Court of Appeals took the unusual step of withdrawing its February 23, 2011, opinion in Fleischer Studios Inc. v. A.V.E.L.A. Inc. (aka the “Betty Boop” case) and superseded it with a new opinion. In the February opinion, the Ninth Circuit Court of Appeals revived the dormant doctrine of “defensive aesthetic functionality” to declare that unauthorized use of the “Betty Boop” name and character (both registered trademarks) was “functional” and therefore immune to charges of trademark infringement. The plaintiff sought rehearing and was joined by amici curiae for the International Trademark Association, a few professional sports leagues, and some entertainment interests, including Edgar Rice Burroughs, Inc.

Rehearing was denied as moot after the withdrawal of the old opinion. Fish & Richardson published its Spring 2011 Trademark Thoughts on the original opinion here.

The district court’s denial of claims of trademark infringement was vacated and remanded for further consideration. Functionality, aesthetic or otherwise, was not mentioned by the appellate court. Because it was never considered by, or raised before in, the district court, aesthetic functionality appears now to be gone from the case, although it remains to be seen how the trial court will respond if the defendant attempts to raise the issue.

There remain ample grounds for the district court to find again for the defendant: the Betty Boop trademark registrations were not pled and were sought to be raised rather late in the proceedings – possibly too late – and the fractured copyright ownership of Betty Boop may have precluded the possibility of proving the secondary meaning necessary to establish common law trademark (or trade dress) ownership by Fleischer. Also, it is at least theoretically conceivable that the district court will adopt the doctrine of defensive aesthetic functionality as its basis for deciding in favor of the defendant. But it seems clear that the present panel of the court of appeals has no desire to revisit it.

This does not mean the doctrine of defensive aesthetic functionality will not rise again, in the Ninth Circuit or some other. Betty Boop commanded widespread attention, and it is possibly the only defense to certain kinds of counterfeiting or infringement that can claim any intellectual acceptability whatever. But for now, it appears that defensive aesthetic functionality has been put back to bed, where many believe it belongs.