NEWS Betty Boop amici: aesthetic functionality could be ruinous
Te International Trademark Association (INTA) and other interested parties have requested that the US Court of Appeals for the Ninth Circuit rehears a trademark and copyright infringement complaint involving cartoon character Betty Boop.
Te Motion Picture Association of America, licensing arms of major US sports leagues, and the Edgar Rice Burrows Corporation, the company responsible for licensing the Tarzan literary works, have also filed amicus briefs in support of a rehearing.
Tey say that the US Court of Appeals for the Ninth Circuit has incorrectly resurrected the ‘aesthetic functionality’ doctrine.
Merchandisers Fleischer Studios and Avela are clashing over ownership of the Betty Boop copyright and trademarks. Both companies license Betty Boop rights for merchandise such as toys, dolls and clothing.
Te US District Court for the Central District of California dismissed Fleischer Studio’s complaint, and the US Court of Appeals affirmed that decision on February 23.
INTA said that the US Court of Appeals incorrectly concluded that Avela “is not using Betty Boop as a trademark, but instead as a functional product”.
Seattle IP investor sues four
A patent-licensing organisation based in Seattle has accused mobile phone manufacturers Sony Ericsson, LG Electronics, Samsung and Nokia of infringing its patents with the FM radios and Bluetooth technology present in some of their handsets.
Te patent infringement complaint was filed at the US District Court for Western District of Washington on April 15.
Te Washington Research Foundation licenses patents from various Washington-based institutions—including the University of Washington—through licensing and enforcement programmes.
Te foundation is asserting patents that cover Low IF radio frequency receiver technology used in Bluetooth, FM and GSM radio data communication systems.
It has secured licensing deals for its patents with Low IF radio chipset companies, including Broadcom, Infineon and Toshiba.
But the Washington Research Foundation has failed to agree a licensing deal with ST-Ericsson,
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which has “emerged as an unlicensed supplier of Low IF chipsets aſter a series of complex corporate transformations that occurred over a period of several years”.
Infringing mobile phones contain Bluetooth, Bluetooth radio or FM radio technology, according to the complaint. Tese include Sony Ericsson’s C905, K530i and K850i phones; LG Electronics’ CF360, Xenon GR500 and Secret KF750 phones; Samsung’s SGH-A187 and SGH- T249 phones; and Nokia’s 1661 phone.
Te complaint also stated: “Nokia’s N8 phone contains ST-Ericsson’s ‘RF Transceiver’... If the ST-Ericsson GSM ‘RF Transceiver’ is based on the Aero GSM design and operates in a manner consistent with [the Washington Research Foundation’s] information and belief, it is asserted to infringe [certain Washington Research Foundation patents].”
It added: “[Te Washington Research Foundation] will...employ the tools of discovery to determine which of
the...Alleged Direct Infringers similarly infringed during the past six years due to the use of Low IF chipsets manufactured or sold
“ [T]HE WASHINGTON RESEARCH FOUNDATION HAS FAILED TO AGREE A LICENSING DEAL WITH ST-ERICSSON, EMERGED AS AN UNLICENSED SUPPLIER OF LOW IF CHIPSETS AFTER A SERIES OF COMPLEX CORPORATE TRANSFORMATIONS THAT OCCURRED OVER A PERIOD OF SEVERAL YEARS.”
by ST-Ericsson and its predecessors (including STMicro, and ST-NXP), before seeking to add such infringers as additional defendants herein.”
Te Washington Research Foundation is seeking an injunction preventing the handset manufacturers from infringing its patents, damages and attorney fees.
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In its amicus brief, INTA said: “[The] majority erred
by...reincarnating the outdated and much-criticized aesthetic functionality
doctrine...In so doing, the majority essentially overruled Au-Tomotive Gold, Inc. v. Volkswagen of America,
Inc...in which this Court substantially limited the aesthetic functionality doctrine.”
David Bernstein, a partner at Debevoise & Plimpton LLP and chair of INTA’s US Amicus Subcommittee of the International Amicus Committee, said: “What the Court of Appeals essentially held is that the images on the T-shirts and handbags are not being used to indicate a source or a brand. Instead, the images are aesthetically pleasing—they’re being used because they look nice.”
He added: “Tat reasoning is very troubling. If it is carried to its logical extreme, the aesthetic functionality doctrine could swallow up trademark law—it could allow anyone to take virtually any trademark, slap it on other items, and say this isn’t indicating another source, it just looks nice.”
Avela has been given until May 4 to respond to the petition for a rehearing.
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