UNITED STATES OF AMERICA—TRADEMARKS
US TRADEMAR
marks against third-party merchandising and assert trademark rights when related copyrights had fallen into the public domain.
Fleischer Studios claimed trademark rights in the Betty Boop cartoon character name and image, and claimed infringement by AVELA, which licensed Betty Boop merchandise. The Ninth Circuit affirmed the dismissal of the trademark claims by relying on the doctrine of aesthetic functionality, which had not been raised by the district court. Relying on its 1991 decision in International Order of Job’s Daughters v Lindeburg & Co, the court held that trademark law does not prevent third party use of the “functional” features of a product, which constitute the benefit that is sought by the consumer as distinguished from the source-identifying feature of the product. In other words, if the trademarked element was deemed to be a functional aesthetic component of a product because it is aesthetically pleasing, like the Betty Boop image, then use of the trademarked element does not constitute infringement.
The court went further, stating that even if Fleischer did hold trademarks in the Betty Boop name or image, they could not be asserted because to do so would prevent the character from ever entering the public domain, in contradiction with the US Supreme Court’s decision in Dastar Corp v Twentieth Century Fox Film Corp. The Ninth Circuit’s opinion precluded the protections of trademark law when related copyright material has fallen into the public domain.
As a result, the opinion had the potential to limit markedly brand owner rights. The concern was that, as expressed in the International Trademark Association’s (INTA’s) amicus brief, the ruling would allow third parties to use any mark that has “aesthetic” value to customers, which would upend trademark law, and it was inconsistent with established precedent recognising independent copyright and trademark rights in the same product.
Without rehearing, the Ninth Circuit withdrew its February 2011 decision and issued a new decision in August, which makes no reference to aesthetic functionality or Dastar, thereby leaving the extremely limited application of the doctrine undisturbed and the relationship between trademark and copyright in a product unchanged.
A second closely watched case that dealt with aesthetics and functionality in the fashion industry was Christian Louboutin SA v
258 World Intellectual Property Review e-Digest 2012
Yves Saint Laurent Am, Inc in the US District Court for the Southern District of New York, which was also decided in August 2011. Louboutin brought claims of trademark infringement based on its federally registered trademarks for the red sole of its shoes.
It is well established that a colour must have acquired secondary meaning in order to be protected under federal trademark laws. However, the court denied Louboutin’s motion for a preliminary injunction and suggested that its registered marks may not be protectable despite having established acquired distinctiveness. The court asserted that, in fashion, “color serves ornamental and aesthetic functions”, and no amount of acquired distinctiveness can overcome functionality.
Louboutin has appealed against the decision to the Second Circuit and amicus briefs have been filed by Tiffany and INTA arguing against the court’s application of the aesthetic functionality doctrine. The outcome of the case may have far-reaching consequences for brand owners in the fashion industry.
SOPA story
There is pending US legislation that trademark owners should be aware of, namely, the Stop Online Piracy Act (SOPA). The SOPA bill was introduced in the US House of Representatives on October 26, 2011. The bill aims to provide additional mechanisms for copyright and trademark owners to combat online piracy of copyrighted works and counterfeit goods, particularly against foreign-owned and -operated websites beyond the reach of enforcement under current laws. The bill provides mechanisms for barring US-based advertisement networks and payment facilities from conducting business with infringing sites, barring search engines from linking to infringing sites and requiring Internet service providers to block access to such sites.
Many support the underlying goals of the legislation. However, the language of the bill has drawn calls for both revisions and a complete rewrite.
The bill’s supporters seek stronger enforcement tools to protect intellectual property (IP) rights and the corresponding industries, jobs and revenue, and argue that the bill specifically targets websites that are dedicated to illegal and infringing activity.
www.worldipreview.com
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