Lead Opinion
ORDER
The Opinion filed February 23, 2011, and published at
With the filing of the new opinion, Appellant’s pending petitions for rehearing and rehearing en banc are DENIED as moot, without prejudice to refiling a subsequent petition for rehearing and/or rehearing en banc. See 9th Cir. G.O. 5.3(a).
OPINION
This appeal stems from the district court’s summary judgment dismissing Fleischer Studios, Inc.’s (Fleischer) copyright and trademark infringement action. The district court ruled that Fleischer held neither a valid copyright nor a valid trademark in the Betty Boop cartoon character and thus lacked standing to sue. Fleiseh
I.
Betty Boop “combined in appearance the childish with the sophisticated — a large round baby face with big eyes and a nose like a button, framed in a somewhat careful coiffure, with a very small body.” Fleischer Studios v. Ralph A. Freundlich, Inc.,
Max Fleischer’s family attempted to revive the Fleischer cartoon business in the early 1970s. The family incorporated its new entity under the same name as Original Fleischer and attempted to repurchase the intellectual property rights to the Betty Boop character. To be clear, Fleischer, the plaintiff in this action, is a distinct and separate entity from the now defunct Original Fleischer which first owned Betty Boop.
Fleischer believes that its intellectual-property-rights purchases have made it the exclusive owner of the Betty Boop character copyright and trademark. Based on this belief, Fleischer licenses the Betty Boop character for use in toys, dolls, and other merchandise. This merchandise has reached such a high level of popularity that even drug dealers have been known to use it. See United States v. Lakoskey,
The defendants in this action, A.Y.E.L.A., Inc., Art-Nostalgia.com, Inc., X One X Movie Archive, Inc., and Leo Valencia (collectively, A.V.E.L.A.), also license Betty Boop merchandise. The copyright pursuant to which AV.E.L.A. licenses its products is based on vintage posters featuring Betty Boop’s image that AV.E.L.A. has restored.
During summary judgment proceedings before the district court, the parties disputed whether Fleischer owned an exclusive copyright to the Betty Boop character. Fleischer asserted that its ownership of the copyright, which was first owned by Original Fleischer, arises through several alternative chains of title. Only one chain is relevant here, however, because Fleischer has abandoned the others on appeal. The purported title chain is as follows: Original Fleischer transferred its rights to Paramount Pictures, Inc. (Paramount) in 1941; Paramount transferred those rights to UM & M TV Corp. (UM & M) in 1955; in 1958, UM & M transferred these rights to National Telefilm Associates, Inc. (NTA), which became Republic Pictures in 1986; and finally, Republic Pictures transferred the exclusive copyright to Fleischer in 1997.
A.V.E.L.A. disputed this alleged chain of title, arguing that there was no admissible evidence to establish each link in the chain with the exception of the transfer from Original Fleischer to Paramount. The district court agreed and held that Fleischer failed to satisfy its burden of proof regard
The district court also dismissed Fleischer’s trademark infringement claim, holding that Fleischer failed to submit proper evidence of a registered federal trademark in the Betty Boop image, and, although it had evidence of a registered federal trademark in the name “Betty Boop,” the fractured ownership and use of that mark destroyed Fleischer’s trademark rights. The court further held that Fleischer did not establish that it owned common-law trademarks in Betty Boop’s name or image.
There is no doubt that a separate Betty Boop character copyright exists. Although there is no evidence in the record that Original Fleischer filed a copyright registration for the Betty Boop character, that is of no moment. Because all of the copied works were created before 1978, both parties agree that the Copyright Act of 1909 (1909 Act) applies to the copyrights at issue in this litigation. See Self-Realization Fellowship Church v. Ananda Church of Self-Realization,
The copyright provided by this title shall protect all the copyrightable component parts of the work copyrighted, and all matter therein in which copyright is already subsisting, but without extending the duration or scope of such copyright. The copyright upon composite works or periodicals shall give to the proprietor thereof all the rights in respect thereto which he would have if each part were individually copyrighted under this title.
17 U.S.C. § 3 (repealed) (emphasis added); see also Rice v. Fox Broad. Co.,
The parties agree that Betty Boop became a separate copyrightable component of one of Original Fleischer’s 1930 films, and we accept that concession for the purposes of this appeal. Shivers v. Amerco,
Fleischer now appeals, objecting to both the district court’s copyright and trademark rulings. We review the district court’s summary judgment de novo. Ellison v. Robertson,
II.
Fleischer bears the burden of proving copyright ownership. Litchfield v. Spielberg,
It is undisputed that in 1941 Paramount obtained from Original Fleischer the rights to both the Betty Boop character and numerous Betty Boop cartoons. What is disputed, however, is whether Paramount then transferred the Betty Boop character to UM & M. Fleischer argues that it did so by a 1955 purchase agreement that stated, in part:
Paramount hereby grants and assigns to [UM & M] all of Paramount’s right, title and interest in and to said Photoplays [of Betty Boop] which are deliverable by Paramount to [UM & M] hereunder and do not revert to Paramount under Paragraph 11 hereof, hereinafter for convenience referred to as “Sold Photoplays”, any copyrights subsisting therein, the literary material upon which they are based and the instruments whereby Paramount acquired its right, title and interest in and to such literary material....
However, a key provision in that same agreement carved out the transfer of the characters in those Sold Photoplays:
Anything to the contrary notwithstanding, no grant or assignment is made hereunder to [UM & M] of the characters and characterizations contained in said Sold Photoplays or said literary material, or of the copyrights in said characters or characterizations, or of any production or other rights in said characters and characterizations; or to use said characters and characterizations or the names of said characters or trade names, trademark and names of the series of Sold Photoplays or of said literary material in any manner except ... only as part of the particular Sold Photoplay in which they or any of them are contained....
(emphasis added)
In other words, the purchase agreement explicitly provided that the right to the Betty Boop character copyright was retained by Paramount, rather than transferred to UM & M. The “[a]nything to the contrary notwithstanding” clause is unambiguous. See Cisneros v. Alpine Ridge Grp.,
The “doctrine of indivisibility” has no impact on this conclusion. “[T]he doctrine of indivisibility is a judge-made rule that relates primarily to standing.” Abend v. MCA, Inc.,
Fleischer is mistaken. Under the 1909 Act, the doctrine of indivisibility may have prohibited a copyright owner from renewing his or her copyright if, for exam-
Contrary to another of Fleischer’s arguments, Paramount’s conduct subsequent to the execution of the contract does not cast doubt on our conclusion. Fleischer is correct that subsequent conduct can be used in some instances to discern contractual intent. See Wolkowitz v. FDIC (In re Imperial Credit. Indus., Inc.),
The dissent states that we are “answering] only half of the issue[ ] by failing to explain what happened to the copyright after it transferred to Harvey Films in the 1950s.” Dissent at 971. That complaint is not well-taken. In this case, the only issue raised by Fleischer on appeal is whether Fleischer obtained the Betty Boop copyright via the chain of title Original Fleischer to Paramount to UM & M to NTA to Republic to Fleischer. In the district court, Fleischer raised a number of other chain-of-title theories but the district court held all of them to be faulty. By not seeking review of those holdings here, Fleischer has abandoned them. See Cook v. Schriro,
Perhaps Fleischer should have argued that A.V.E.L.A. waived its characterearveout argument by not asserting it to the district court. Resolution Trust Corp. v. First Am. Bank,
Upon review of the merits of A.V.E.L.A.’s character-carveout argument, it is clear that Paramount did not transfer the copyright to the Betty Boop character to UM & M. Because the chain of title is broken, and the only chain of title at issue in this appeal is this one involving UM & M, the district court properly dismissed Fleischer’s copyright-infringement claim.
III.
Fleischer also sued A.Y.E.L.A. for trademark infringement. The district court dismissed these claims, holding that Fleischer did not submit timely evidence of a federally registered trademark in the image of Betty Boop, that Fleischer had no common-law trademark rights in that image, and that, although Fleischer did submit evidence that it owned a federally registered trademark in the words “Betty Boop,” Fleischer’s trademark action was deficient because of the fractured ownership history of Betty Boop-related intellectual property.
A.
In addressing these rulings, we must first resolve an evidentiary issue related to Fleischer’s alleged trademark registration in the image of Betty Boop. During summary judgment proceedings, the district court asked for supplemental briefs on Fleischer’s trademark claims. Four days
A.V.E.L.A. objected both to this new evidence and Fleischer’s use of it. The district court, in turn, refused to consider it because “[t]he parties neither sought nor obtained leave to submit additional evidence in support of their claims or arguments.” Fleischer Studios, Inc. v. A.V.E.L.A Inc.,
Federal Rule of Civil Procedure 6(b) requires that “[wjhen an act may or must be done within a specified time,” a party must file a “motion ... after the time has expired if the party failed to act because of excusable neglect.” The Supreme Court has held that it is never an abuse of discretion for a district court to exclude untimely evidence when a party fails to submit that evidence pursuant to a motion, as Rule 6(b) expressly requires. Lujan v. Nat’l Wildlife Fed’n,
We are not done with the alleged Betty Boop image trademark registration, however, because Fleischer now asks us to take judicial notice of it. The problem here is that Fleischer does not account for our holding in Jespersen v. Harrah’s Operating Co., which stated “Our rules ... provide that a plaintiff may not cure her failure to present the trial court with facts sufficient to establish the validity of her claim by requesting that this court take judicial notice of such facts.”
B.
Fleischer’s failure to provide timely evidence of a federal registration in Betty Boop’s image, while detrimental to Fleischer’s trademark claim, does not completely resolve it. Under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1976), a claimant may still prove the validity of an unregistered mark. Without a federal registration, however, the claimant
To succeed without the presumption of validity, Fleischer must show “that the mark has become identified with the manufacturer by acquiring a ‘secondary meaning.’ ” Id. “The basic element of secondary meaning is a mental recognition in buyers’ and potential buyers’ minds that products connected with the [mark] emanate from or are associated with the same source.” Levi Strauss & Co. v. Blue Bell, Inc.,
Fleischer’s only evidence of secondary meaning comes from the declaration of its Chief Executive Officer (CEO) in which he attests to Fleischer’s presence at trade shows, its numerous licensees, and Betty Boop’s increasing commercial success. The problem with this evidence is its origin. “Evidence of secondary meaning from a partial source possesses very limited probative value.” Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns, Inc.,
C.
Unlike the alleged image trademark, Fleischer has submitted proof that it possesses registered trademarks in the words “Betty Boop.” Not content with this evidence, Fleischer again seeks to supplement the record, this time with documents that allegedly establish that Fleischer’s word mark has achieved “incontestable” status. After evaluating Fleischer’s arguments for the documents’ inclusion, we will not consider Fleischer’s supplemental evidence for the same reasons we declined to consider its other untimely trademark evidence.
Moving from the procedural to the substantive, the district court held that the “fractured” history of intellectual property rights in works featuring Betty Boop precludes Fleischer from proving secondary meaning — one of the elementary features of an enforceable trademark that is necessary to demonstrate association of the mark with a single producer. See Clairol Inc. v. Gillette Co.,
The fractured history theory that served as the basis for the district court’s ruling is one that neither this nor any circuit has yet adopted. It originated in Universal City Studios, Inc. v. Nintendo Co., where the district court held that when a trademark is copyrighted and extensively used by many firms, there can be no secondary meaning in it and thus no trademark rights.
We agree that the fractured ownership of a trademark may make it legally impossible for a trademark holder to prove secondary meaning, but we disagree that the facts here establish, as a matter of law, that the theory applies. From a logical standpoint, the mere fact of fractured ownership is not, by itself, conclusive evidence of a lack of secondary meaning. There
Unlike the facts in Universal, those at issue here merely show that more than one entity owns rights to use Betty Boop-related intellectual property. As the district court stated,
Here, as in Universal, merchandising intellectual property rights in a famous fictional character were divided and parceled out to various entities over many decades.... Although there is no evidence of other current, authorized uses of Betty Boop trademarks, [Fleischer] acknowledges that other entities retain copyrights in various Betty Boop works.
Fleischer Studios,
Without the evidence of the type present in Universal — confusion in the marketplace regarding who owns the Betty Boop image, “extensive merchandising use of [other Betty Boop] images,” or other images of Betty Boop that have acquired secondary meaning,
The district court stated, without explanation, two other reasons for ruling against Fleischer. It stated that there was no evidence “(b) that any of [A.V.E.L.A.’s] uses of its poster artwork represent a use of [Fleischer]’s word mark in commerce, or (c) that any of [A.V.E.L.A.’s] uses of the word mark are likely to cause consumer confusion.” Fleischer Studios,
The parties shall bear their own costs.
AFFIRMED IN PART, VACATED AND REMANDED IN PART.
Notes
. Fleischer cites Walt Disney Productions v. Air Pirates,
. We use the word "may” because it is far from certain that the doctrine of indivisibility applies to copyright registration or renewals. See Abend,
. We are perplexed by the dissent’s complaint that, in reaching this conclusion, we have ”adopt[ed] a theory rejected by the district court and advanced by neither party on appeal.” Dissent at 971. It is beyond dispute that ”[i]f the decision below is correct, it must be affirmed, even if the district court relied on the wrong grounds or wrong reasoning.” Jackson v. S. Cal. Gas Co.,
Dissenting Opinion
dissenting:
I respectfully dissent.
The beginning and the ending of this story are undisputed. Max Fleischer created the lovable character Betty Boop in the 1930s. In 1941, he sold to Paramount Pictures the copyright to certain cartoons and to the character Betty Boop herself. Max Fleischer died in 1972.
After Fleischer’s death, some of his descendants incorporated Fleischer Studios, which is Plaintiff here. Part of Plaintiffs plan was to bring back into circulation the character Betty Boop. Carrying out that plan, Plaintiff purchased the rights to Betty Boop from various entities in the 1980s and 1990s. When Defendants began sell
Plaintiff must establish the chain of title of the copyright to the character Betty Boop. It is undisputed that Paramount owned the copyright as of 1941. The dispute focuses on the chain of title between Paramount and Plaintiff. In the district court, Plaintiff argued, primarily, that Paramount sold the copyright in 1955 to UM & M TV Corporation, which eventually sold it to Plaintiff. Plaintiff argued, alternatively, that even if Paramount did not sell the copyright to UM & M, Paramount sold the copyright in 1958 to Harvey Films, which eventually sold the copyright to Plaintiff. In other words, one chain of title leads through UM & M and another leads through Harvey Films, but both paths lead to Plaintiff.
A.The District Court’s View: Copyright Transferred to UM & M
The district court held that Paramount sold the copyright to UM & M in 1955. The district court held, however, that the pos1>-l950s link between UM & M and Plaintiff was broken, largely because of the court’s evidentiary rulings. Plaintiff appealed.
On appeal, Plaintiff made precisely the arguments one would expect: The district court erred in its evidentiary rulings and in its conclusion that the link between UM & M and Plaintiff was broken. In their answering brief, Defendants defended the district court’s holdings on those points. In my view, Plaintiff is correct that the district court erred. For example, the relevant statements in the 1997 settlement agreement qualify as an exception to hearsay under Federal Rule of Evidence 808(15) and establish the link between UM & M and Plaintiff.
In sum, if the copyright transferred to UM & M, Plaintiff prevails.
B. Defendants’ New Theory: Copyright Transferred to No One
Defendants also raised an entirely new theory. They argued that the district court erred in concluding that Paramount sold the copyright to UM & M. Defendants argued that, because of the doctrine of indivisibility, the copyright passed neither to UM & M nor to Harvey Films; instead, the copyright entered the public domain by virtue of Paramount’s failure to renew the copyrights to certain cartoons.
Defendants’ argument fails on its own terms. Even if the doctrine of indivisibility applied, as Defendants assert, the copyright nevertheless transferred to UM & M.
C. The Majority’s View: Copyright Transferred to Harvey Films
The majority strikes out on its own and adopts a position rejected by the district court and advanced by neither party on appeal. The majority holds that Paramount did not sell the copyright to UM &
The majority inexplicably fails to respond to that theory, asserting only that Plaintiff waived the argument that it possesses the copyright via the Harvey Films chain of title. I disagree with the majority’s assertion for four reasons.
First, it is true that Plaintiff did not raise the Harvey Films chain of title in its opening brief. But its failure in that regard is perfectly understandable. The district court had ruled in Plaintiffs favor on every link in the UM & M chain except one. Plaintiff thus challenged only the portion of the district court’s opinion in which Plaintiff lost. That strategy makes particular sense because Defendants had never before advanced the argument made in their answering brief. Furthermore, after Defendants did advance a new argument, Plaintiff immediately retorted, in its reply brief, that even if the doctrine of indivisibility applied, Plaintiff prevails via the Harvey Films chain of title.
Second, the majority uses the waiver doctrine as both a sword and a shield. Immediately after holding that Plaintiff waived this argument, maj. op. at 964-65, the majority excuses Defendants from having failed to raise a “doctrine of indivisibility” argument, on the ground that Plaintiff waived the waiver, id. at 965. It is unclear to me why similar reasoning does not apply to the majority’s theory of the case, because the majority adopts a theory advanced by neither party on appeal. That is, an argument advanced before the district court and on appeal is ignored, while a wholly new theory advanced by neither party prevails.
Third, as a matter of discretion, I would reach the Harvey Films chain of title. The basic question raised by this appeal is the ownership of the copyright. I see nothing to be gained, and no unfair advantage to be conferred, by resolving this issue to the present day, rather than arbitrarily stopping our analysis as of the 1950s.
Finally, if we are to adhere strictly to the doctrine of waiver, then I would ad
In conclusion, the majority adopts a theory rejected by the district court and advanced by neither party on appeal. Worse still, the majority answers only half of the issue, by failing to explain what happened to the copyright after it transferred to Harvey Films in the 1950s.
D. Conclusion
If the copyright transferred to UM & M, as the district court held, then Plaintiff prevails because UM & M sold the copyright to Plaintiff. If the copyright transferred to Harvey Films, as the majority holds, then Plaintiff prevails because Harvey Films sold the copyright to Plaintiff. There is no support for the novel argument advanced by Defendants that the copyright transferred neither to UM & M nor to Harvey Films. Accordingly, I would reverse the district court’s grant of summary judgment to Defendants on the copyright claim.
. Because the majority, too, rejects Defendants’ argument, I do not explain in detail how the doctrine of indivisibility would operate. Briefly, Defendants’ explanation for how the doctrine would operate would be contrary to the parties' subsequent conduct, whereas an alternative interpretation is consistent with the parties’ subsequent conduct and leads to the conclusion that the copyright transferred to UM & M. See Wolkowitz v. FDIC (In re Imperial Credit Indus., Inc.),
. The majority reaches that result by concluding that the doctrine of indivisibility does not apply in these circumstances. I am uncertain whether the doctrine of indivisibility applies here. Compare Kaplan v. Fox Film Corp.,
. The background rule is that we may affirm the district court on any ground supported by the record. Quan v. Computer Scis. Corp.,
. I do not disagree with the majority’s analysis of the trademark issue. But the trademark and copyright claims are related. Because of the potential interplay between the doctrines, the district court ruled on the trademark claims only after it had rejected Plaintiff's copyright claim. In light of the district court's errors concerning the copyright claim, I would vacate the district court’s trademark decision and remand for reconsideration, if necessary, in light of the correct copyright analysis.