Copyright vs. Trademark Claims

Copyright Law Encourages Original Expression

Copyright law provides a very different type and scope of protection than trademark law, reflecting the fundamentally different purposes that each law serves.

Copyright law fulfills a constitutional mandate “to promote the Progress of Science and useful Arts.” U.S. CONST., art. I, ' 8, cl. 8. It acknowledges that overprotection would stifle the very creativity that copyright law is intended to encourage. Stewart v. Abend, 495 U.S. 207, 236 (1990). Accordingly, Congress carefully limited the exclusive rights granted under the Copyright Act to balance the interests of authors and the public. Only expression is eligible for copyright protection. See 17 U.S.C. ' 102(b). Facts, data and ideas remain securely in the public domain. Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 344-45 (1991). The Copyright Act additionally recognizes as “fair use” those instances in which the public is permitted to use copyrightable expression. 17 U.S.C. ' 107.

Copyright Office regulations and judicial decisions also limit copyright protection to preserve the public's interest in accessing common building blocks of expression. For instance, names, titles and short phrases are generally not copyrightable. 37 C.F.R. 202.1(a). Nor are familiar symbols and designs (see Compendium II of Copyright Office Practices ' 503.02(a)), typefaces (see Eltra Corp. v. Ringer, 579 F.2d 294 (4th Cir. 1978)), or “common property” such as schedules or useful charts. See 37 C.F.R. ' 202.1(d) (1995). Moreover, ideas that can only be expressed in a limited number of ways are deemed to have “merged” with the expression, and therefore are not copyrightable. See, e.g., Kregos v. Associated Press, 937 F.2d 700, 705 (2d Cir. 1991). Likewise, expression that is dictated by functional considerations is not copyrightable. See, e.g., CMM Cable Rep, Inc. v. Ocean Coast Properties, Inc., 97 F.3d 1504, 1520 (1st Cir. 1996). All of these limitations are intended to encourage original authorship.

Trademark Law Encourages Fair Competition in the Marketplace

Trademark law serves very different purposes from copyright law. Most fundamentally, trademark law is designed to protect consumers and producers from confusion and other deception in the marketplace, thereby promoting legitimate competition. See, e.g., Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.14 (1982). Trademark law “reduce[s] the customer's costs of shopping and making purchasing decisions” and “helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product.” Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164 (1995) (citations omitted).

The Lanham Act codifies “in the broadest of terms” the “universe” of what may be eligible for trademark protection, including “any word, name, symbol, or device, or any combination thereof.” Id. at 162; 15 U.S.C. ' 1127. That definition encompasses shape, color, scent, and even sound. See Qualitex Co., 514 U.S. at 162 (citing cases), 166. It can also encompass “trade dress” ' the design or packaging of products or services. See, e.g., Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 209 (2000). Unlike copyright (or patent) rights, however, trademark protection is not intended to stimulate innovation or creativity. Trademark rights are uninterested in “novelty, invention, discovery or any work of the brain.” The Trademark Cases, 100 U.S. 82, 94 (1879). What is critical to protectability under trademark law is that a mark serves to identify a source and distinguish it from other sources. “The prime question is whether the designation in question, as actually used, will be recognized in and of itself as an indication of origin for this particular product or service.” 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition ' 3:3 (4th ed. 1996).

Supreme Court Guidance on The Boundaries Between Different Types of IP Protection

Recent Supreme Court cases offer courts and litigants guidance on the appropriate boundaries between trademark rights and other intellectual property protections available under U.S. law.

In Dastar, the Court addressed the distinctions between trademark and copyright protection in a case involving a party's creation and resale of a set of videotapes derived from a public domain work without any attribution to the creator of the original work. In the context of a claim for “reverse passing off” (i.e., alleging that the responding party improperly “passed off” the moving party's work as his own), the Court was charged with determining whether the petitioner was required to acknowledge the creator of the original, public domain work. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 31 (2003).

The Court recognized that conflating the creator of original expression with the creator of the product incorporating that expression may put trademark law and copyright law on a collision course. It therefore rejected respondent's Lanham Act claim, as improperly encroaching upon rights afforded under copyright law. “[A]llowing a cause of action under ' 43(a) for th[e] representation [that one was the source of a good incorporating expression in the public domain] would create a species of mutant copyright law that limits the public's federal right to copy and to use expired copyrights.” Id. at 33, 37 (citation and quotation omitted).

Dastar relied on a series of other Supreme Court cases that clarified the demarcations between trademark law, on the one hand, and copyright and patent law on the other. In Traffix, the Court rejected a trade dress claim predicated upon a product feature that had previously been the subject of a utility patent. It held that the respondent “cannot gain the exclusive right to produce sign stands using [the formerly patented feature] by asserting that consumers associate [that feature] with the look of the invention itself.” Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33-34 (2001).

In Qualitex, the Court considered whether color alone may serve as a trademark. Qualitex, 514 U.S. at 161. The Court recognized that “[i]f a product's functional features could be used as trademarks ' a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).” Id. at 164-65. Nevertheless, because “sometimes color is not essential to a product's use or purpose and does not affect cost or quality ' the doctrine of 'functionality' does not create an absolute bar to the use of color alone as a mark,” it held that a single color could serve as a trademark if it has attained secondary meaning. Id. at 163-65.

Likewise, in Wal-Mart, the Court held that litigants may only bring claims for infringement of unregistered product design trade dress upon a showing that such trade dress has acquired secondary meaning. Wal-Mart, 529 U.S. 205, 216. The Court noted that, “[i]n the case of product design, as in the case of color, we think consumer predisposition to equate the feature with the source does not exist” (Id. at 213) and that “the producer can ordinarily obtain protection for a design that is inherently source identifying (if any such exists), but that does not yet have secondary meaning, by securing a design patent or a copyright for the design.” Id. at 214. The availability of these alternative intellectual property protections counsels in favor of requiring a demonstration that a product design serves a source identifying function before trade dress protection in the product design will be recognized. Id.

Taken together, these cases stand for the proposition that, when faced with trademark claims that overlap with copyright (or patent) claims, courts must carefully scrutinize whether the claimed trademark or trade dress actually serves as a source identifier. While multiple legal regimes can protect the same article of intellectual property, trademark protection should only be afforded if the plaintiff has sufficiently alleged trademark rights and trademark harm.

The Persistent Problem of Overlapping Trademark and Copyright Claims

Trademark and copyright protection are often thought of together because they both cover the appearance/expression of something rather than the inherent idea embodied therein. But merely because they can cover the same subjects does not mean that they offer equivalent protections. See, e.g. United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918) (It is “fundamental error [to] suppos[e] that a trade-mark right is a right in gross or at large, like a statutory copyright or a patent for an invention, to either of which, in truth, it has little or no analogy ' “).

Nevertheless, it is not uncommon for litigants and courts alike to invoke trademark protection where only copyright protection properly exists. In Romm Art, for example, the court held the mistaken belief that “one salutary purpose of the Lanham Act ' is to protect a creative artists' rights in his or her creation and thus provide incentive to be creative,” leading it to conclude erroneously that the style of an artist's paintings constituted protectable trade dress that was infringed by thematically similar works produced by a competitor. Romm Art Creations Ltd. v. Simcha Int'l, Inc., 768 F. Supp. 1126, 1135 (E.D.N.Y. 1992) (citation and quotation omitted). Although the court never seriously considered whether the alleged trade dress served as a source identifier, it concluded that ' 43(a) of the Lanham Act could “provide[ ] relief for a claim of infringement of the trade dress of commercial reproductions of particular art works.” Id. at 1134.

The court in Showtime also found trademark infringement in a situation more appropriately addressed under other law. The court held that defendant's unauthorized retransmission of intercepted satellite television programming constituted trademark infringement, because the trademarks of the plaintiff-television-channels appeared in the programming retransmitted by the defendant. Showtime/The Movie Channel, Inc. v. Covered Bridge Condominium Ass'n, Inc., 693 F. Supp. 1080, 1089 (S.D. Fla. 1988). Likewise, the court in Marling mistakenly held that “in misappropriating plaintiffs' copyrighted material without acknowledgment of plaintiffs' ownership rights in [the copyrighted books at issue], th[e] defendant has violated ' 43(a) of the Lanham Act.” Marling v. Ellison, 218 USPQ 702, 714 (S.D. Fla. 1982). These cases are emblematic of the confused manner in which courts have sometimes approached trademark infringement allegations pleaded as backups for, or in place of, claims properly brought under copyright law.

This problem persists even in the wake of guidance from the Supreme Court in Dastar and the other cases discussed above. Addressing copyright and trademark infringement claims stemming from the alleged copying of plaintiff's sculptural works, the court in Huebbe parsed Dastar and correctly interpreted it as not “precluding all copyright infringement plaintiffs from also asserting ' 43(a) claims.” Huebbe v. Oklahoma Casting Co., Case No. 06-cv-306, 2009 WL 3245404, at *8 (W.D. Okla Sept. 30, 2009). But the court did not even consider whether the sculptural works at issue served as source identifiers. Instead, it allowed the trademark infringement claim to proceed to trial based on the confused assertion that, “[u]nlike the plaintiff in Dastar, Plaintiff in this case does not appear to seek ' 43(a) protection for his ideas; he directs this claim at the goods manufactured and sold by Defendants.”

Likewise, despite Wal-Mart's holding that product packaging trade dress infringement claims must be accompanied by a showing of secondary meaning, the court in Blue Nile permitted plaintiff to proceed on a claim for trade dress infringement of its website without identifying the asserted trade dress elements in its complaint. The court was satisfied with plaintiff's explanation that the trade dress at issue was the unspecified “look and feel of its website.” Blue Nile, Inc. v. Ice.com, Inc., 478 Supp. 2d 1240, 1244 (W.D. Wash. 2007).' Even with the benefit of relevant Supreme Court cases, these courts still did not scrutinize whether the alleged trademarks actually served as source identifiers.

Fleischer I Properly Distinguished Trademark From Copyright

The Ninth Circuit did not make the same mistake in Fleischer I. Upon affirming the district court's ruling that the plaintiff lacked a valid copyright interest in the Betty Boop image, the Ninth Circuit properly resisted the urge to conflate the two legal regimes by offering the protections of trademark law in place of the failed copyright claim. Instead, it carefully examined whether trademark protection was warranted under the circumstances. Accordingly, it considered:

• Whether Fleischer Studios was using the Betty Boop image as a source identifier. Fleischer I, 636 F.2d at 1123.
• Whether defendant's use of the mark was “for functional or trademark purposes.” Id. at 1123-1124.
• Whether granting trademark rights would improperly encroach upon protection that is properly within the realm of copyright law. Id. at 1124-25.
• The effect that granting trademark rights to plaintiff would have on others. Id.

'These are precisely the questions that courts and litigants should be asking in every case in which overlapping copyright and trademark rights are claimed. Ultimately, the court ruled that the Betty Boop image was ineligible for trademark protection under the aesthetic functionality doctrine. This controversial (and subsequently withdrawn) ruling should not detract from what the court did right. It properly addressed the distinct purposes of trademark and copyright law to evaluate the scope of protection available to the mark claimed by the plaintiff.

Betty Boop Redux

In Fleischer II, the Ninth Circuit wisely avoided the controversial aesthetic functionality doctrine, and instead grounded its opinion in secondary meaning. Thus, instead of asking whether the Betty Boop image was aesthetically functional, it asked whether plaintiff had established “a mental recognition in buyers' and potential buyers' minds that products connected with the [Betty Boop image] emanate from or are associated with the same source.” Fleischer II, 654 F.3d at 967. In many respects, the inquiries are not very different. Both seek to determine whether the primary significance of a mark is to identify its source. Perhaps unsurprisingly, the Ninth Circuit reached the same conclusion the second time around ' plaintiff could claim no valid trademark rights in the Betty Boop image. Despite the Ninth Circuit's circuitous path to the right result, it should be applauded for asking the right questions. By focusing on whether Fleischer had developed trademark rights in the Betty Boop image, the court properly rejected a disguised copyright claim and refused to recognize a trademark claim where none existed.

Colleen Bal is a partner and Evan M. W. Stern is an associate at Wilson Sonsini Goodrich & Rosati.

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The original decision by the Ninth Circuit Court of Appeals in Fleischer v. A.V.E.L.A. has been discussed at length for its reliance on the aesthetic functionality doctrine to find the “Betty Boop” cartoon character unprotectable under trademark law. Fleischer Studios, Inc. v. A.V.E.L.A., Inc. , 636 F.3d 1115 (9th Cir. 2011) (“ Fleischer I “). That decision received substantial criticism, and after a petition for rehearing supported by several amicus briefs, it was withdrawn and replaced with a new opinion that makes no mention of aesthetic functionality. Fleischer Studios, Inc. v. A.V.E.L.A. , 654 F.3d 958 (9th Cir. 2011) (“ Fleischer II “). Whatever one thinks of the ruling in Fleischer I, the decision serves as an important reminder of something for which it has received far less attention: its careful consideration of the distinctions between copyright and trademark protection. Too often, parties and the courts treat trademark claims as ill-fitting substitutes for a copyright claim. But there are fundamental differences in the protections afforded under each body of law, resulting from the very different purposes that they serve. Fleischer I should be applauded for properly delineating copyright and trademark protections.

The Betty Boop Case

The Betty Boop character was developed by Max Fleischer and appeared in animated cartoons and merchandise beginning in 1930. Fleischer later sold his rights in the cartoons and character, but the Fleischer family (as Fleischer Studios, Inc.) attempted to reacquire rights and revive the cartoon business in the early 1970s. Id. In Fleischer v. A.V.E.L.A., Fleischer Studios brought claims against defendant A.V.E.L.A. for copyright and trademark infringement of the Betty Boop image. The district court granted summary judgment for the defendant, finding that Fleischer Studios failed to demonstrate ownership of the copyright for the Betty Boop image or any protectable trademark rights in the image. On appeal, the Ninth Circuit was therefore called upon to determine whether the plaintiff held any valid copyright or trademark rights in the image. Id. at 1119.

Copyright Law Encourages Original Expression

Copyright law provides a very different type and scope of protection than trademark law, reflecting the fundamentally different purposes that each law serves.

Copyright law fulfills a constitutional mandate “to promote the Progress of Science and useful Arts.” U.S. CONST., art. I, ' 8, cl. 8. It acknowledges that overprotection would stifle the very creativity that copyright law is intended to encourage. Stewart v. Abend , 495 U.S. 207, 236 (1990). Accordingly, Congress carefully limited the exclusive rights granted under the Copyright Act to balance the interests of authors and the public. Only expression is eligible for copyright protection. See 17 U.S.C. ' 102(b). Facts, data and ideas remain securely in the public domain. Feist Publ'ns, Inc. v. Rural Tel. Serv. Co. , 499 U.S. 340, 344-45 (1991). The Copyright Act additionally recognizes as “fair use” those instances in which the public is permitted to use copyrightable expression. 17 U.S.C. ' 107.

Copyright Office regulations and judicial decisions also limit copyright protection to preserve the public's interest in accessing common building blocks of expression. For instance, names, titles and short phrases are generally not copyrightable. 37 C.F.R. 202.1(a). Nor are familiar symbols and designs ( see Compendium II of Copyright Office Practices ' 503.02(a)), typefaces ( see Eltra Corp. v. Ringer , 579 F.2d 294 (4th Cir. 1978)), or “common property” such as schedules or useful charts. See 37 C.F.R. ' 202.1(d) (1995). Moreover, ideas that can only be expressed in a limited number of ways are deemed to have “merged” with the expression, and therefore are not copyrightable. See, e.g., Kregos v. Associated Press , 937 F.2d 700, 705 (2d Cir. 1991). Likewise, expression that is dictated by functional considerations is not copyrightable. See, e.g., CMM Cable Rep, Inc. v. Ocean Coast Properties, Inc. , 97 F.3d 1504, 1520 (1st Cir. 1996). All of these limitations are intended to encourage original authorship.

Trademark Law Encourages Fair Competition in the Marketplace

Trademark law serves very different purposes from copyright law. Most fundamentally, trademark law is designed to protect consumers and producers from confusion and other deception in the marketplace, thereby promoting legitimate competition. See, e.g., Inwood Labs., Inc. v. Ives Labs., Inc. , 456 U.S. 844, 851 n.14 (1982). Trademark law “reduce[s] the customer's costs of shopping and making purchasing decisions” and “helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product.” Qualitex Co. v. Jacobson Prods. Co. , 514 U.S. 159, 164 (1995) (citations omitted).

The Lanham Act codifies “in the broadest of terms” the “universe” of what may be eligible for trademark protection, including “any word, name, symbol, or device, or any combination thereof.” Id. at 162; 15 U.S.C. ' 1127. That definition encompasses shape, color, scent, and even sound. See Qualitex Co., 514 U.S. at 162 (citing cases), 166. It can also encompass “trade dress” ' the design or packaging of products or services. See, e.g., Wal-Mart Stores, Inc. v. Samara Bros., Inc. , 529 U.S. 205, 209 (2000). Unlike copyright (or patent) rights, however, trademark protection is not intended to stimulate innovation or creativity. Trademark rights are uninterested in “novelty, invention, discovery or any work of the brain.” The Trademark Cases, 100 U.S. 82, 94 (1879). What is critical to protectability under trademark law is that a mark serves to identify a source and distinguish it from other sources. “The prime question is whether the designation in question, as actually used, will be recognized in and of itself as an indication of origin for this particular product or service.” 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition ' 3:3 (4th ed. 1996).

Supreme Court Guidance on The Boundaries Between Different Types of IP Protection

Recent Supreme Court cases offer courts and litigants guidance on the appropriate boundaries between trademark rights and other intellectual property protections available under U.S. law.

In Dastar, the Court addressed the distinctions between trademark and copyright protection in a case involving a party's creation and resale of a set of videotapes derived from a public domain work without any attribution to the creator of the original work. In the context of a claim for “reverse passing off” (i.e., alleging that the responding party improperly “passed off” the moving party's work as his own), the Court was charged with determining whether the petitioner was required to acknowledge the creator of the original, public domain work. Dastar Corp. v. Twentieth Century Fox Film Corp. , 539 U.S. 23, 31 (2003).

The Court recognized that conflating the creator of original expression with the creator of the product incorporating that expression may put trademark law and copyright law on a collision course. It therefore rejected respondent's Lanham Act claim, as improperly encroaching upon rights afforded under copyright law. “[A]llowing a cause of action under ' 43(a) for th[e] representation [that one was the source of a good incorporating expression in the public domain] would create a species of mutant copyright law that limits the public's federal right to copy and to use expired copyrights.” Id. at 33, 37 (citation and quotation omitted).

Dastar relied on a series of other Supreme Court cases that clarified the demarcations between trademark law, on the one hand, and copyright and patent law on the other. In Traffix, the Court rejected a trade dress claim predicated upon a product feature that had previously been the subject of a utility patent. It held that the respondent “cannot gain the exclusive right to produce sign stands using [the formerly patented feature] by asserting that consumers associate [that feature] with the look of the invention itself.” Traffix Devices, Inc. v. Marketing Displays, Inc. , 532 U.S. 23, 33-34 (2001).

In Qualitex, the Court considered whether color alone may serve as a trademark. Qualitex, 514 U.S. at 161. The Court recognized that “[i]f a product's functional features could be used as trademarks ' a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).” Id. at 164-65. Nevertheless, because “sometimes color is not essential to a product's use or purpose and does not affect cost or quality ' the doctrine of 'functionality' does not create an absolute bar to the use of color alone as a mark,” it held that a single color could serve as a trademark if it has attained secondary meaning. Id. at 163-65.

Likewise, in Wal-Mart, the Court held that litigants may only bring claims for infringement of unregistered product design trade dress upon a showing that such trade dress has acquired secondary meaning. Wal-Mart, 529 U.S. 205, 216. The Court noted that, “[i]n the case of product design, as in the case of color, we think consumer predisposition to equate the feature with the source does not exist” (Id. at 213) and that “the producer can ordinarily obtain protection for a design that is inherently source identifying (if any such exists), but that does not yet have secondary meaning, by securing a design patent or a copyright for the design.” Id. at 214. The availability of these alternative intellectual property protections counsels in favor of requiring a demonstration that a product design serves a source identifying function before trade dress protection in the product design will be recognized. Id.

Taken together, these cases stand for the proposition that, when faced with trademark claims that overlap with copyright (or patent) claims, courts must carefully scrutinize whether the claimed trademark or trade dress actually serves as a source identifier. While multiple legal regimes can protect the same article of intellectual property, trademark protection should only be afforded if the plaintiff has sufficiently alleged trademark rights and trademark harm.

The Persistent Problem of Overlapping Trademark and Copyright Claims

Trademark and copyright protection are often thought of together because they both cover the appearance/expression of something rather than the inherent idea embodied therein. But merely because they can cover the same subjects does not mean that they offer equivalent protections. See, e.g. United Drug Co. v. Theodore Rectanus Co. , 248 U.S. 90, 97 (1918) (It is “fundamental error [to] suppos[e] that a trade-mark right is a right in gross or at large, like a statutory copyright or a patent for an invention, to either of which, in truth, it has little or no analogy ' “).

Nevertheless, it is not uncommon for litigants and courts alike to invoke trademark protection where only copyright protection properly exists. In Romm Art, for example, the court held the mistaken belief that “one salutary purpose of the Lanham Act ' is to protect a creative artists' rights in his or her creation and thus provide incentive to be creative,” leading it to conclude erroneously that the style of an artist's paintings constituted protectable trade dress that was infringed by thematically similar works produced by a competitor. Romm Art Creations Ltd. v. Simcha Int'l, Inc. , 768 F. Supp. 1126, 1135 (E.D.N.Y. 1992) (citation and quotation omitted). Although the court never seriously considered whether the alleged trade dress served as a source identifier, it concluded that ' 43(a) of the Lanham Act could “provide[ ] relief for a claim of infringement of the trade dress of commercial reproductions of particular art works.” Id. at 1134.

The court in Showtime also found trademark infringement in a situation more appropriately addressed under other law. The court held that defendant's unauthorized retransmission of intercepted satellite television programming constituted trademark infringement, because the trademarks of the plaintiff-television-channels appeared in the programming retransmitted by the defendant. Showtime/The Movie Channel, Inc. v. Covered Bridge Condominium Ass'n, Inc. , 693 F. Supp. 1080, 1089 (S.D. Fla. 1988). Likewise, the court in Marling mistakenly held that “in misappropriating plaintiffs' copyrighted material without acknowledgment of plaintiffs' ownership rights in [the copyrighted books at issue], th[e] defendant has violated ' 43(a) of the Lanham Act.” Marling v. Ellison , 218 USPQ 702, 714 (S.D. Fla. 1982). These cases are emblematic of the confused manner in which courts have sometimes approached trademark infringement allegations pleaded as backups for, or in place of, claims properly brought under copyright law.

This problem persists even in the wake of guidance from the Supreme Court in Dastar and the other cases discussed above. Addressing copyright and trademark infringement claims stemming from the alleged copying of plaintiff's sculptural works, the court in Huebbe parsed Dastar and correctly interpreted it as not “precluding all copyright infringement plaintiffs from also asserting ' 43(a) claims.” Huebbe v. Oklahoma Casting Co., Case No. 06-cv-306, 2009 WL 3245404, at *8 (W.D. Okla Sept. 30, 2009). But the court did not even consider whether the sculptural works at issue served as source identifiers. Instead, it allowed the trademark infringement claim to proceed to trial based on the confused assertion that, “[u]nlike the plaintiff in Dastar, Plaintiff in this case does not appear to seek ' 43(a) protection for his ideas; he directs this claim at the goods manufactured and sold by Defendants.”

Likewise, despite Wal-Mart's holding that product packaging trade dress infringement claims must be accompanied by a showing of secondary meaning, the court in Blue Nile permitted plaintiff to proceed on a claim for trade dress infringement of its website without identifying the asserted trade dress elements in its complaint. The court was satisfied with plaintiff's explanation that the trade dress at issue was the unspecified “look and feel of its website.” Blue Nile, Inc. v. Ice.com, Inc. , 478 Supp. 2d 1240, 1244 (W.D. Wash. 2007).' Even with the benefit of relevant Supreme Court cases, these courts still did not scrutinize whether the alleged trademarks actually served as source identifiers.

Fleischer I Properly Distinguished Trademark From Copyright

The Ninth Circuit did not make the same mistake in Fleischer I. Upon affirming the district court's ruling that the plaintiff lacked a valid copyright interest in the Betty Boop image, the Ninth Circuit properly resisted the urge to conflate the two legal regimes by offering the protections of trademark law in place of the failed copyright claim. Instead, it carefully examined whether trademark protection was warranted under the circumstances. Accordingly, it considered:

• Whether Fleischer Studios was using the Betty Boop image as a source identifier. Fleischer I, 636 F.2d at 1123.
• Whether defendant's use of the mark was “for functional or trademark purposes.” Id. at 1123-1124.
• Whether granting trademark rights would improperly encroach upon protection that is properly within the realm of copyright law. Id. at 1124-25.
• The effect that granting trademark rights to plaintiff would have on others. Id.

'These are precisely the questions that courts and litigants should be asking in every case in which overlapping copyright and trademark rights are claimed. Ultimately, the court ruled that the Betty Boop image was ineligible for trademark protection under the aesthetic functionality doctrine. This controversial (and subsequently withdrawn) ruling should not detract from what the court did right. It properly addressed the distinct purposes of trademark and copyright law to evaluate the scope of protection available to the mark claimed by the plaintiff.

Betty Boop Redux

In Fleischer II, the Ninth Circuit wisely avoided the controversial aesthetic functionality doctrine, and instead grounded its opinion in secondary meaning. Thus, instead of asking whether the Betty Boop image was aesthetically functional, it asked whether plaintiff had established “a mental recognition in buyers' and potential buyers' minds that products connected with the [Betty Boop image] emanate from or are associated with the same source.” Fleischer II, 654 F.3d at 967. In many respects, the inquiries are not very different. Both seek to determine whether the primary significance of a mark is to identify its source. Perhaps unsurprisingly, the Ninth Circuit reached the same conclusion the second time around ' plaintiff could claim no valid trademark rights in the Betty Boop image. Despite the Ninth Circuit's circuitous path to the right result, it should be applauded for asking the right questions. By focusing on whether Fleischer had developed trademark rights in the Betty Boop image, the court properly rejected a disguised copyright claim and refused to recognize a trademark claim where none existed.

Colleen Bal is a partner and Evan M. W. Stern is an associate at Wilson Sonsini Goodrich & Rosati.

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