The US Court of Appeals for the Ninth Circuit has issued an amended opinion, in the latest instalment of the Betty Boop trade mark and copyright infringement saga.  This new opinion removes the Court’s controversial findings of no trade mark infringement and remands the trade mark issues to the District Court.

As a reminder, Betty Boop is currently caught up in a legal battle between the family of her creator, Max Fleischer, and a number of companies which license Betty Boop paraphernalia. 

In April 2011 we posted on the Court of Appeals’ original decision.  A few weeks later we posted another update explaining that the International Trademark Association filed an amicus curiae brief in support of a rehearing of this decision.  In what appears to be a direct response to mounting criticism and pressure on the Court, on 19 August 2011 the Court denied the rehearing as moot but issued a significantly amended opinion.

This amended opinion retains the Court’s position regarding copyright, but abandons its original trade mark infringement findings.  Interestingly, the majority’s controversial reasoning regarding the mark’s ‘aesthetic functionality’ and the prohibition on bringing a trade mark claim as a substitute for a copyright claim (see our previous post for more details), has been entirely removed from the Court’s opinion.  Instead, the Court held that while there was insufficient evidence to establish a trade mark in the Betty Boop image, Fleischer may have rights to the Betty Boop name.

In reaching this new decision, the Court addressed the District Court’s finding that the word mark did not have secondary meaning as it had a "fractured history" and so could not be associated with a single producer.  The "fractured history" theory emerged in Universal City Studios, Inc v. Nintendo Co, where it was held that the widespread use of the King Kong name and image precluded Universal from having trade mark rights as consumers did not associate King Kong with a single source.  The Court accepted this theory but explained that demonstrating a fractured history alone is not sufficient to destroy a secondary meaning and that "something more" is required.  In Universal, this "something more" was evidence of extensive use of similar images by various companies and widespread confusion as to the ownership of the image.  The Court held that for Betty Boop the defendants had failed to establish "something more" and therefore the word mark was capable of having a secondary meaning.

The Court left certain issues unresolved and remanded the trade mark infringement claims to the District Court.

So, with this amended opinion the Betty Boop adventure continues.  Stay tuned for the next episode.