Fleischer Studios, Inc. v. A.V.E.L.A., Inc.

STUDIOS, INC., FLEISCHER

Plaintiff-Appellant, Vintage

A.V.E.L.A., INC., DBA Art & Licensing Agency;

Entertainment Inc;

Art-Nostalgia.com, X X One Inc; Beverly Archive, Hills

Movie Valencia,

Teddy Co.; Leo Defen- Bear

dants-Appellees.

No. 09-56317. Appeals, States Court of

United

Ninth Circuit. Nov. 2010.

Argued and Submitted Aug.

Filed 2011.

NY, of Akin Gump and Rex S. Heinke LLP, Strauss Hauer & Feld Angeles, Los CA, appellant for Inc. Douglas (argued) D. Ball Winter The Firm, LLP, CA, Angeles, Law David Los Gerber, Offices, Oxnard, A. D. Law Gerber CA, A.V.E.L.A., INC., appellees for DBA Art & Vintage Licensing Entertainment Agency; al. et Before: J. CLIFFORD WALLACE and GRABER, Judges, SUSAN P. Circuit and MILLS, RICHARD Senior District Judge.* ORDER WALLACE, Judge: Senior Circuit 23, 2011, Opinion February The filed published at 636 F.3d 1115 Cir. 2011), hereby superceded withdrawn and Opinion concurrently filed herewith. filing With the of the new opinion, Ap- pellant’s pending petitions rehearing for and rehearing en banc are DENIED as moot, prejudice without to refiling a subse- quent petition rehearing for rehear- and/or 5.3(a). ing en banc. See 9th Cir. G.O. OPINION This appeal stems from the district summary court’s judgment dismissing (Fleischer) Inc.’s infringement and trademark action. The district court ruled that Fleischer held Robert P. LoBue (argued), Gloria C. neither a valid nor a valid trade- Phares, A. Leah Vickers of mark in Patterson cartoon character LLP, York, Webb & Belknap Tyler standing New and thus lacked to sue. Fleiseh- Mills, Illinois, sitting by designation. *The Honorable Richard Senior United Judge States District for the Central District (8th Cir.2006) (“A search juris- The district had appeals. er 1338(a), issued, § and the pursuant package to 28 U.S.C. warrant was diction jurisdiction arises under U.S.C. our opened pursuant warrant on Janu- affirm. § 1291. We ary package 2004. contained doll, four large ceramic with

I. concealed, wrapped separately plastic bun- appearance Betty Boop “combined methamphetamine of high-purity-level dles sophisticated large with childish inside”). —a eyes and baby big a nose round face action, defendants button, in a care- like a framed somewhat A.Y.E.L.A., Inc., Inc., Art-Nostalgia.com, coiffure, very body.” small ful with a Archive, Inc., X Leo One X Movie and Freundlich, A. Ralph Fleischer Studios v. A.V.E.L.A.), (collectively, li- Valencia also (S.D.N.Y.1934). Inc., 808, Betty Boop cense merchandise. The Betty Boop the creation of Max was right pursuant to which AV.E.L.A. licens- Fleischer, Fleischer then head of products vintage posters es its is based Fleischer). Beginning in (Original Inc. featuring Betty Boop’s image developed a num- Original Fleischer AV.E.L.A. has restored. featuring Betty Boop. of cartoon films ber time, Original For a licensed During summary judgment proceedings dolls, toys, in Betty Boop image for use court, parties before the district dis- Approximately other merchandise. and puted Fleischer owned an exclu- whether her, creating Original years after ten Betty Boop charac- sive Betty Boop and sold Fleischer abandoned ownership that its ter. Fleischer asserted to cartoons and her rights its both her was copyright, of the which first owned after, in Original character. Soon Fleischer, Original through arises several was dissolved. title. chain Only alternative chains of one family attempted re- Max Fleischer’s to however, here, Fleisch- is relevant because in the the Fleischer cartoon business vive appeal. er has abandoned others on family incorporated early 1970s. The its The title chain is as follows: purported entity Origi- name new under the same Original rights its Fleischer transferred repurchase attempted to nal Fleischer and (Paramount) Pictures, Inc. in property rights intellectual the Bet- 1941; rights Paramount transferred those clear, Fleischer, ty Boop character. To be (UM M) 1955; Corp. in to UM M TV & & action, is a distinct and plaintiff this rights M these UM & transferred entity Orig- now defunct separate from the Associates, Inc. to National Telefilm Betty first owned inal (NTA), Republic Pictures which became Boop. 1986; Republic trans- finally, Pictures its Fleischer believes that intellectual- copyright to Fleischer ferred the exclusive have purchases made property-rights in 1997. the exclusive owner this chain of disputed alleged A.V.E.L.A. trademark. character title, arguing that there no admissible belief, Based on this Fleischer licenses each link in the chain evidence to establish dolls, toys, for use Betty of the transfer from exception This merchandise and other merchandise. The dis- Original Fleischer Paramount. level of high popularity reached such a has and held that Fleischer agreed trict court drug have been known that even dealers proof regard- burden of satisfy failed its Lakoskey, it. use See United States individually from each part copyrighted UM & M to were ing the transfer Republic Pictures. NTA and from NTA under this title. added); § also dismissed (repealed) (emphasis district U.S.C. 3 claim, Co., infringement

Fleischer’s trademark see Broad. also Rice v. Fox (9th Cir.2003) (“[Characters failed to submit holding that Fleischer 1175-76 registered federal proper evidence of that are ‘especially ‘story distinctive’ or the and, Boop image, trademark being apart told’ protection receive registered of a although it had evidence work”, copyrighted citing Olson v. “Betty in the name federal (9th Co., Nat’l Broad. ownership Boop,” the fractured and use of Cir.1988)). destroyed that mark Fleischer’s trade- parties agree Boop be mark court further rights. The held that separate came a copyrightable component that it Fleischer did not establish owned films, of one of Original Fleischer’s 1930 in Betty Boop’s common-law trademarks accept pur and we that concession for the name image. or Amerco, poses of appeal. Shivers v. separate that a There is no doubt 826, Cir.1982); 670 F.2d 3 832 n. see copyright Boop character exists. Al- Rice, also 330 at 1175-76. The logi in though there is no evidence the record cal result Original of this concession is that Original that filed a copyright Fleischer rights Fleischer the respect owned “all registration Betty Boop character, for the Betty Boop] [to if’ [it] which have that is of no moment. Because all of the individually copyrighted had it.1 17 U.S.C. 1978, copied works were created before 3;§ Kaplan Corp., v. Fox Film 19 that parties agree Copyright both the Act (S.D.N.Y.1937). 780, 781 (1909Act) of 1909 to the applies copyrights Fleischer appeals, objecting now to both litigation. at issue this See Self-Real- copyright the district court’s and trade- ization Church v. Fellowship Ananda mark rulings. review the We district Self-Realization, Church 206 F.3d of court’s summary judgment de novo. Elli- (9th Cir.2000). Under section 3 of (9th Robertson, son v. 357 F.3d

the 1909Act: Cir.2004). by The copyright provided this title protect copyrightable shall all the com- II. ponent parts the work copyrighted, of the and all bears burden of matter therein which proving copyright ownership. right already subsisting, but v. without Litchfield Spielberg, or extending scope the duration of such Cir. 1984) (“To copyright. prove copyright upon compos- copyright infringement, periodicals give plaintiff ite works or shall the ... ownership to the must show ”). proprietor earlier, all rights copyright thereof in re- ... As mentioned spect thereto he would ownership copyright which have if Fleischer asserts of a created, Disney 1. Fleischer cites Walt Productions v. lead to the that once conclusion Pirates, (9th Cir.1978), Air 581 F.2d 751 character cannot be transferred or support separately copyright-creating of its conclusion that there is sold no from Betty Boop language stand-alone work. the char- Given the clear of section 3 Disney acter. correct that of the Fleischer is Walt 1909 Act and absence of an on- copyrights may point binding precedent, disagree held that character be created component parts Disney as aof film or cartoon book- Fleischer’s that Walt conclusion con- holding let. Id. at that 754. But does not trols this issue. only part particular Sold ... through the Boop character in the they any or of them Photoplay in which Original title: following chain of M to NTA contained.... to UM & are Paramount Because to Fleischer. added) Pictures Republic (emphasis necessary to estab- chain is complete words, agreement purchase other ac- ownership, Fleischer’s lish that to the explicitly provided link. each it to establish requires tion re- in 1941 Paramount undisputed It is Paramount, than trans- rather tained Original obtained “[a]nything to UM & M. ferred and nu- Betty Boop character to both is unam- contrary notwithstanding” clause is dis- Betty Boop cartoons. What merous Alpine Ridge See Cisneros biguous. however, Paramount is whether puted, 10, 18, 113 S.Ct. Grp., 508 U.S. Betty Boop character then transferred (1993) (“[T]he use of such a L.Ed.2d it did so argues that M. Fleischer to UM & clearly signals the ‘notwithstanding’ clause stated, agreement that purchase by a 1955 provisions intention drafter’s part: ‘notwithstanding’ section override con- assigns to hereby grants and section”). flicting other provisions title right, Paramount’s all of M]&[UM indivisibility” The “doctrine Photoplays in and to said and interest impact “[T]he no on this conclusion. has are deliverable Boop] [of indivisibility judge-made is a doctrine & hereunder M] Paramount to [UM primarily standing.” rule that relates Para- Paramount under revert to do not MCA, Inc., 863 F.2d Abend v. hereof, for conven- 11 hereinafter graph (9th Cir.1988), grounds sub on other affd Photoplays”, to as “Sold ience referred Abend, nom., v. 495 110 Stewart U.S. therein, subsisting any copyrights (1990). 1750, 109 L.Ed.2d 184 “Un S.Ct. they are literary upon material which doctrine, copy ‘licensee’ of a der the a whereby Par- instruments based and the only partial someone who holds right i.e.,— in- right, title and acquired amount its copyright a privileges may not — literary materi- in to such terest name.” Id. Fleisch in the licensee’s work al.... here, if, Para as we hold argues er However, that same key provision a Betty to the mount retained transfer of the carved out the agreement copy transferred Boop but Photoplays: in those Sold characters M, the doctrine to the films to UM & right contrary notwithstand- Anything to the indivisibility prevented have UM of would made assignment or ing, grant no That renewing copyright. from its & M charac- & [UM M] hereunder of evidence, ac renewal-blocking result characterizations contained ters and Fleischer, that neither cording to literary Photoplays or said said Sold Betty Boop char separate intended material, said copyrights or of most,” rights. “At Fleisch acter and film characterizations, or characters or of states, a “Paramount have retained er rights in said or other any production back) (or license to ex right contractual characterizations; or to characters and apart from the films.” ploit the character and characteriza- use said characters Under the Fleischer is mistaken. characters or or the names said tions Act, indivisibility may 1909 the doctrine names, and names trade a owner prohibited have said Photoplays or of series Sold if, for exam- renewing his or her except manner literary material pie, previously he or she had sold the common law copyright as the author of the magazine-publishing rights contribution, to his or her or assignee”, as the author’s Or, story. Id.2 because the law abhors citing Co., Express Mail & Co. v. Pub. Life forfeiture, pur- a court would deem the (2d Cir.1912)). short, 192 F. 899 ported owner of the magazine-publishing of indivisibility doctrine deprive does not licensee, rights thereby to be a mere allow- copyright holders of the to transfer ing the author to renew the copyright. or, case, in this component retain the parts Records, Sybersound Inc. v. UAV Corp., copyrights. otherwise, of their If we held (9th Cir.2008). 517 F.3d But directly we would be contravening section that is not scenario Through here. 3 of the 1909 by depriving Act agreement, UM & M UM & M obtained rights of “all the in respect compo- [to the “ ‘totality rights commanded part] nent [it] have each ” id., copyright’ films, for the Boop part were individually copyrighted.” Nike, Inc., quoting Gardner v. 279 F.3d § (repealed).3 U.S.C. 3 (9th Cir.2002); what it did not Contrary to another of Fleisch obtain were the arguments, er’s Paramount’s conduct sub character. While the doctrine of indivisi- sequent to the execution of the contract bility may prohibited have UM & M from does not cast doubt on our conclusion. if, renewing the film copyright for exam- Fleischer is subsequent correct that con ple, it did not obtain the DVD distribution duct can be used some instances to rights to the Betty Boop films it pur- discern contractual intent. See Wolkowitz chased, the doctrine would have had no (In Indus., Imperial FDIC re Credit. impact on UM & attempt M’s to renew its Inc.), (9th Cir.2008). copyright if it did not own a character However, subsequent Paramount’s conduct copyright component part of the film. See is not evidence of Paramount’s intent Richlin v. Metro-Goldwyn-Mayer Pic- tures, Inc., transfer the Cir.2008) Boop character to UM (renewal & M. Paramount idly of motion did not stand picture permitted with- out while owning all UM & M component parts); renewed the copyrights cf. Self- Church, profited Realization and Fellowship from ownership 206 F.3d copy those (“[A] at 1325 Instead, blanket copyright gives rights. a the record suggests that magazine publisher rights in an years individual three entering after into the UM & only contribution publisher owns the M agreement, transferred its (1949); 2. We "may” States, use the word because it Herwig is far v. United 122 Ct.Cl. from certain that the indivisibility doctrine of 493, 384, (1952) (similar). 105 applies copyright registration to or renewals. Abend, (doctrine See 863 F.2d at 1469 perplexed by 3. We are complaint the dissent’s indivisibility preclude did publisher not that, conclusion, reaching we have registering work). rights-divided ”adopt[ed] theory rejected a by the district Even at the time of the execution of the UM & by court and advanced ap- neither agreement, M vitality doctrine’s continued peal.” beyond dispute Dissent at 971. It is in certain contexts was in considerable doubt. correct, that ”[i]f the decision below is it must See, Comm'r, e.g., Wodehousev. 166 F.2d affirmed, be even if the district court relied on (4th Cir.1948) ("[S]erial rights, book wrong grounds wrong reasoning.” or rights, production dramatic rights and motion Co., Jackson v. S. Cal. Gas 881 F.2d picture rights literary production of a are (9th Cir.1989). Regard- The law the is law. rights separately be and are and parties less effectively bought correctly interpret- of whether the literary and sold in the market”), grounds indivisibility, overruled ed the by on other doctrine of we are still U.S. 69 S.Ct. obliged 93 L.Ed. 1419 to do so. forfeited). Fleischer does not ally Perhaps Harvey Boop character on this argument as to wheth- object have doubts to A.V.E.L.A.’s Films. While in this because, behavior subsequent argues, the use as A.V.E.L.A. ground er language the contractual clarity instance—where the issue with sufficient raised see Wells appropriate, unambiguous—is reason, it. Whatever preserve v. Trust Co. & Union Fargo Bank argue that McDuf- failure Fleischer’s (9th Cir.1934), Para- 720, 728 71 F.2d fie, argument requires waived this A.V.E.L.A. our supports subsequent behavior mount’s Vance, v. its merits. Norwood us to reach transfer it did not conclusion (“this Cir.2010) (9th 1062, 1068 591 F.3d Betty Boop character to the rights if not waiver raised court will not address agreement. & M by the UM right (brackets in- by opposing party” omitted)). quotation marks ternal “an that we are dissent states failing only issue[ ] half of the swering] the merits Upon review of happened what explain argument, character-carveout A.V.E.L.A.’s Harvey Films in the it transferred to after that Paramount did not transfer it is clear complaint is at 971. That Dissent 1950s.” case, only issue In this well-taken. not M. Because the chain of title is to UM & is whether appeal Fleischer on raised broken, title at issue only and the chain of Boop copy obtained Fleischer involving UM & appeal in this is this one Fleisch Original chain of title via the M, dismissed properly district court to NTA to & M Paramount to UM er to claim. copyright-infringement Fleischer’s In the district Fleischer. Republic to court, a number of other raised Fleischer III. theories but the district chain-of-title for also sued A.Y.E.L.A. Fleischer faulty. By not them to be held all of The district infringement. trademark here, holdings of those seeking review claims, holding that these court dismissed them. See Cook has abandoned timely evidence of did not submit Schriro, 1000, 1014 n. 5 v. federally registered Cir.2008) (issue appeal raised on not no that Fleischer had image Boop, abandoned); Gregory, States United im common-law trademark (9th Cir.2003) (same). 1160 n. that, did sub although age, It them. cannot resurrect The dissent federally reg that it owned a mit evidence unfair to A.V.E.L.A. patently be “Betty in the words istered trademark one of the in favor of Fleischer on rule action was Fleischer’s trademark Boop,” opening raised in Fleischer’s theories not fractured owner because of the deficient Stewart, 401 F.3d v. brief. See Stuard intellec Cir.2005) (“[W]e history Betty Boop-related of (9th ship not 1064, are 1067 property. tual argument an for to construct going coun Stuard’s sponte, depriving sua state A. it”). respond to to a fair chance

sel of we must rulings, these addressing ar should have Perhaps Fleischer evidentiary issue related resolve an first character waived its that A.V.E.L.A. gued registration trademark alleged Fleischer’s asserting it to argument by not earveout Boop. During sum- image Betty in the Corp. Trust court. Resolution the district the district mary judgment proceedings, 1126, Bank, 1129 Am. 155 v. First briefs on supplemental for court asked Cir.1998) (9th issues not (explaining days Four claims. Fleischer’s trademark gener- are the district court raised before 966

before those briefs were due and well after served and filed with the notice of motion: (b) summary it judgment first submitted its ... upon evidence the mov evidence, Fleischer submitted evidence ing party rely support will of the mo federally that it registered owned a trade- By submitting tion.” its evidence with its Betty mark in image Boop. Based brief, supplemental opposed to with its evidence, asserted, on its new for original summary judgment, motion for time, theory the first a new of trademark by failing file a motion to show infringement: infring- that A.V.E.L.A. was excusable, why neglect cause its ing statutory Fleischer’s trademark rights comply Fleischer failed to with Local Rule image. 7-5 and Federal Rule Civil Procedure 6(b). objected Thus, A.V.E.L.A. both to this new judge the district not did evidence and Fleischer’s use of it. The abuse her in refusing discretion to consid turn, court, district refused to consider er proposed Fleischer’s evidence. Lu See parties sought because neither “[t]he nor 898, 110 jan, 497 U.S. at S.Ct. 3177. obtained leave to submit additional evi- are done alleged We not with the support dence in their argu- claims or trademark Boop image registration, ments.” Inc. v. however, because Fleischer now asks us Inc., F.Supp.2d A.V.E.L.A 772 judicial take of it. problem notice (C.D.Cal.2009). n. 15 We review that deci- here is that does not account for sion for an abuse of discretion. Fonseca v. our holding Jespersen Oper Harrah’s Sens, Sysco Ariz., Inc., Food 374 F.3d Co., ating which stated “Our ... rules Cir.2004). provide may that a plaintiff not her cure 6(b) Federal Rule of Civil Procedure present failure to trial court with facts “[wjhen requires that an act or must sufficient validity to establish the of her time,” specified be done within a a party claim requesting that this court take must file a “motion ... after the time has judicial notice of such facts.” 444 F.3d expired if party failed to act because of (9th Cir.2006) (en banc); see neglect.” excusable The Supreme Court Bank, Huynh also v. Chase Manhattan has held that it is an never abuse of discre (9th Cir.2006) (“It tion for a district untimely exclude rarely appropriate for an appellate court to evidence when a fails to submit that judicial take of facts that notice were not motion, pursuant evidence as Rule (internal before the district court” quota 6(b) expressly Lujan requires. v. Nat’l omitted)). tion marks We therefore de Fed’n, 871, 895-98, 497 U.S. Wildlife judicial cline to take notice of the (1990) (“Per S.Ct. L.Ed.2d Boop image registration. haps it is true that District Court could have overcome all the obstacles we have B. motion, apparent lack of a of a described — provide Fleischer’s failure to time showing, neglect and of excusable ad —to ly registration evidence of a federal mit the issue affidavits at here. But the Betty Boop’s image, while detrimental proposition compelled it was to re claim, Fleischer’s trademark does not com ceive them —that it anwas abuse of discre 43(a) pletely resolve it. Under section reject tion to accepted”). them —cannot be 1125(a) Act, § the Lanham Fleischer’s U.S.C. untimely falls directly evidence (1976), may prove a still holding. within this The claimant the valid Central District 7-5, ity of California’s Rule of an a unregistered Local titled “Mov mark. Without “[tjhere ing Papers,” however, registration, states that shall be federal the claimant evidence, validity again supple- seeks to presumption out on the loses record, time with registration confers. Toho Co. ment the this documents that Co., Sears, 645 F.2d allegedly Roebuck & that that establish Fleischer’s Cir.1981). mark has achieved “incontestable” word evaluating argu- After Fleischer’s status. presump without the To succeed inclusion, for the we will ments documents’ “that validity, Fleischer must show tion of supplemental consider Fleischer’s evi- not with the the mark has become identified for the same reasons declined dence ‘secondary by acquiring a manufacturer ” untimely its other trademark evi- consider of sec meaning.’ “The basic element Id. dence. ondary recognition a mental meaning is buyers’ minds that buyers’ potential and Moving procedural from the to the sub- with the ema products [mark] connected stantive, the district court held that the same nate from or are associated with history property “fractured” of intellectual Bell, & Co. v. Blue source.” Levi Strauss featuring Boop pre- in works (9th Cir.1980). Inc., 632 F.2d proving secondary cludes meaning elementary of the features —one only evidence Fleischer’s of an enforceable trademark that is neces- decla secondary meaning comes from the sary to demonstrate association of (CEO) its Executive ration of Chief Officer producer. mark with a single See Clairol presence he attests to Fleischer’s (2d Co., Inc. v. Gillette 389 F.2d licensees, shows, and numerous at trade its Cir.1968) (“It elementary is func- that the commercial increasing suc Betty Boop’s origin a to indicate tion of trademark is is problem evidence cess. this attached”). it is products to which mean origin. secondary “Evidence of its possesses very from a ing partial source history theory The fractured that served Yellow probative Filipino limited value.” ruling the basis for the district court’s Inc., Publ’ns, Inc. v. Journal Pages, Asian that neither this nor circuit has one (9th Cir.1999); see adopted. originated It yet Universal (“trademark skeptical law is also id. Co., City Inc. v. Nintendo where ability an of a hold associate trademark that a the district court held when trade- give an personal er to transcend biases to copyrighted extensively mark is used of the value of the hold impartial account firms, secondary no many there can be (brackets quota mark” and internal er’s in it no meaning and thus trademark omitted)). probative value tion marks (S.D.N.Y. rights. 923-25 fact, limited, that is so of such evidence 1983). theory, Applying that standing alone, not sufficient to with it is plaintiffs trademark rights, held that Thus, summary judgment. stand Id. in the Godzilla were unen- any, image of “uncorroborated, company CEO’s Id. forceable. not clearly testimony did self-interested agree We that the fractured own genuine a issue for trial as create legally a it ership of make Boop] acquired has second [Betty whether prove for a trademark holder to impossible ary meaning.” Id. secondary meaning, disagree but we that C. law, establish, facts here as matter of theory applies. logical From a alleged trade image Unlike the fact of own standpoint, mere fractured mark, proof has submitted not, itself, ership conclusive evidence in the trademarks possesses registered There secondary meaning. lack of Not content with of a “Betty Boop.” words Universal, “(b) something any must more. In no that be was evidence of more the something that was evidence of poster [A.V.E.L.A.’s] uses of its artwork im- licensing extensive and of similar use represent use of word mark [Fleischer]’s ages by companies, oddly-de- the other (c) commerce, in that or that legally fined trademark was carved uses of the word mark [A.V.E.L.A.’s] are images out from of the same charac- other to likely cause consumer confusion.” ter, amongst po- the confusion widespread Studios, F.Supp.2d at 1170. tential and licensors regarding licensees large of complex Given number issues mark, from whom one should license the it faced the minimal assistance from image the other same character briefs, parties’ it is understandable secondary meaning. that had acquired Id. might that the district court have deemed at 924-25. All these facts led to the unnecessary to these address issues in conclusion there could be no second- greater depth, provide more detailed ary meaning. reasoning, authority, to cite to relevant or Universal, in Unlike the facts those at identify a basis in the record for these merely issue show that than here more one Nonetheless, apparent conclusions. be- entity rights Betty Boop-relat- owns to use cause are unable to ascertain a legal ed intellectual As district property. basis for the district reasoning court’s on stated, court record, the current we conclude that more Here, Universal, in merchandising necessary. We therefore vacate the rights intellectual property a famous on holding this issue and remand to the fictional par- character were divided and district court for proceedings further celed out many to various entities over infringement Fleischer’s trademark claims Although decades.... there no evi- regarding Betty word Boop mark. current, dence other authorized uses parties The shall their bear own costs. trademarks, [Fleischer] acknowledges other entities retain PART, AFFIRMED IN VACATED copyrights Betty in various Boop works. AND REMANDED IN PART. Studios, F.Supp.2d at 1171 added). (emphasis GRABER, Judge, dissenting: Circuit Without type present the evidence respectfully I dissent. Universal—confusion the market- beginning ending and the of this place regarding Betty who owns Boop story undisputed. are Max Fleischer cre- image, “extensive use of merchandising Betty ated the lovable character Boop in Betty Boop] images,” [other or other im- the 1930s. he sold ages of Betty Boop acquired that have the copyright Pictures certain cartoons secondary meaning, 578 at 925— and to character Boop herself. all we possibility have is the that other Max Fleischer died in 1972. destroying owners be secondary meaning Boop death, After Fleischer’s some of his de- mark. possibility enough That is not incorporated scendants rule in summary favor of A.V.E.L.A. on which is Plaintiff here. Part of Plaintiffs judgment. agree thusWe with Fleischer plan to bring back into circulation that the district erred on this issue. Boop. Carrying out that plan, Plaintiff stated, purchased expla- district court Bet- without nation, ty ruling two other reasons various entities for 1980s against It Fleischer. stated that there began and 1990s. When Defendants sell- merchandise, Plaintiff evant statements the 1997 settlement ing brought alleging, among exception this action other agreement qualify as an to hear- things, copyright infringement. say under Rule Federal of Evidence 808(15) link and establish the between UM the of title

Plaintiff must establish chain & M and Plaintiff. to the character copyright that Paramount Boop. undisputed It sum, copyright In if the transferred to 1941. The dis- copyright the as of owned M, prevails. UM Plaintiff & the chain of title pute focuses on between Plaintiff. In the district Paramount and Theory: Copy- B. New Defendants’ court, argued, that Par- primarily, Plaintiff right to No One Transferred to UM copyright amount sold the entirely also an Defendants raised new eventually M which Corporation, & TV They argued that theory. the district argued, Plaintiff. Plaintiff alter- sold it to concluding court erred in that Paramount if natively, that even Paramount did not & copyright sold the UM M. Defendants M, copyright sell the UM & Paramount argued that, the because of doctrine of copyright Harvey sold the in 1958 to indivisibility, passed copyright neither Films, eventually copyright sold the Films; words, instead, M Harvey to UM & nor to In other one chain of to Plaintiff. public through copyright title UM & M and another entered the domain leads Films, through Harvey by leads but both virtue Paramount’s failure to renew paths lead Plaintiff. copyrights certain cartoons. argument Defendants’ fails on its own Copy- A.The View: District Court’s Even if the terms. doctrine of indivisibili- to UM & M Transferred assert, ty applied, as Defendants The district court held right nevertheless transferred to &UM & M in sold the UM 1955. short, accept M.1In even we Defendants’ held, however, The that the district court premise, change does not the result: M pos1>-l950s link between UM & M. The transferred to UM & broken, largely because of Plaintiff Because, above, explained the copyright evidentiary rulings. the court’s Plaintiff Plaintiff, then & M to passed from UM appealed. prevails. Plaintiff precisely appeal, On Plaintiff made arguments expect: one would The district Majority’s Copyright C. The View: evidentiary rulings court erred in its Harvey Films Transferred in its link UM conclusion between majority out on own and strikes its M broken. In their & and Plaintiff was position rejected the district adopts brief, answering Defendants defended the court and advanced neither on points. holdings district court’s those view, appeal. majority holds that Para- my Plaintiff is correct that the mount did not sell the to UM & example, district court erred. For rel- too, rejects that the transferred majority, 1. Because the Defen- the conclusion (In argument, explain doI not in detail dants’ to UM & M. See v. FDIC re Wolkowitz oper- indivisibility how the would doctrine Indus., Inc.), Imperial Credit Briefly, explanation ate. for how Defendants’ contract, Cir.2008) ("As our operate contrary would be doctrine goal give is to effect to the mutual intent of conduct, subsequent parties' whereas permits parties [which ... examination interpretation an alternative consistent with parties.”). subsequent conduct of] subsequent parties’ conduct and leads to 970 Harvey litigants sold it to protect against

M but instead Films. the waiver doc- (“Paramount maj. op. forma, at 964 by asserting, See trans- trine in pro their ferred its opening possible briefs and all theories Films.”).2 the Harvey majority’s But victory, possible in the that event the analysis stops mid-stream. Plaintiff ar- opposing party completely will raise a new the gued, ap- before district court and on argument answering in its brief. the peal, that if transferred to Second, the majority uses the waiver Films, prevails then Plaintiff Harvey be- a doctrine as both sword and a shield. Harvey Films sold the cause later Immediately holding after that Plaintiff right to Plaintiff. argument, maj. op. 964-65, waived this at majority inexplicably fails to The re- majority the excuses Defendants from hav- spond theory, asserting only to that that ing failed to raise a “doctrine indivisibili- argument pos- Plaintiff waived the that it ty” argument, on ground the that Plaintiff Harvey sesses the via the Films waiver, waived the id. at It 965. is unclear I disagree majori- chain of title. the with why to me reasoning similar does not ap- ty’s for four assertion reasons. ply majority’s case, theory the First, it is true that Plaintiff did not majority because a adopts theory the ad- Harvey raise the Films chain of title in its by appeal. vanced neither That opening brief. But its in failure that re- is, argument an advanced before the dis- gard perfectly is understandable. The dis- trict court and on appeal ignored, while trict court had in ruled Plaintiffs favor on a wholly theory by new advanced neither every link in the except UM & M chain party prevails. challenged one. Plaintiff only thus the Third, discretion, as a matter of I would portion opinion of the district court’s Harvey reach the Films chain of title. strategy Plaintiff lost. That makes question basic raised by appeal is particular sense because Defendants had ownership copyright. I see argument never before advanced the made nothing gained, unfair be and no advan- Furthermore, answering their brief. tage conferred, by to be resolving this after Defendants did a argu- advance new day, issue to present rather than arbi- ment, retorted, immediately Plaintiff in its trarily our stopping analysis as of the brief, reply that even if the doctrine of 1950s. indivisibility applied, prevails Plaintiff via Harvey Films chain title.3 I Finally, see are strictly to adhere nothing gained to be waiver, encouraging doctrine of I then would ad- majority 2. The by reaches 3. background that result conclud- rule is that we affirm any ground supported ing by district court on indivisibility that the doctrine of does not Quan Computer Corp., the record. v. Scis. apply in these circumstances. I am uncertain (9th Cir.2010). According- F.3d indivisibility applies whether the doctrine of ly, appellant argues when the that the district Compare Kaplan here. Corp., v. Film Fox particular court step analy- erred at in the (S.D.N.Y.1937) (stating 781-82 sis, appellant reasonably may rely on the indivisibility apply that does not circum- rulings district court’s in its on the other favor here), stances similar to the circumstances steps analysis. appellee in the If the then Entm’t, Inc., Sony Silvers Pictures asserts that the district court erred at one of (en Cir.2005) banc) (sug- steps, appellant respond those is free to gesting indivisibility applied that before the theory that it wins even advanced under laws). change Even if the lead, appellee. contrary A rule correct, however, majority text, Plaintiff never- repetitive as noted formalistic prevails theless briefing by appellant. for the stated reasons in text. parties. only the issues raised dress McCOY, A. on behalf of himself James the district argues

Plaintiff similarly situated, all others chain analysis of the & M in its UM erred Plaintiff-Appellant argue agree. I Defendants title. I, no one. as the transferred to copyright disagree. If were to majority, we does the only parties’ arguments, the address BANK, USA, MANHATTAN CHASE I the there. would not reach stop ASSOCIATION, NATIONAL majority. reasoning by line invented the Defendant-Appellee. conclusion, a the- majority adopts the In No. 06-56278. ad-

ory by the district court and rejected appeal. Worse by neither vanced Appeals, States United Court still, of the majority only answers half Ninth Circuit.

issue, failing explain happened what Aug. 2011. after it transferred copyright Films in the 1950s. Harvey

D. Conclusion M,

If to UM & copyright transferred held, Plaintiff then

as the district copy- & M sold the

prevails because UM If trans-

right copyright Plaintiff. Films, majority Harvey

ferred to Har-

holds, prevails because then Plaintiff Plaintiff.

vey Films sold argu- for the novel support

There is no

ment advanced Defendants M to UM &

copyright transferred neither I Accordingly, Films. Harvey

nor grant the district court’s

would reverse judgment to Defendants on

summary

copyright claim.4 light analy- disagree majority’s Plaintiff's claim. 4. I do not concerning trade- court's But district errors sis of the trademark issue. claim, I the district court’s related. Be- would vacate mark and claims are decision and remand for reconsid- potential interplay between trademark cause of the eration, doctrines, light necessary, on the correct the district court ruled analysis. only rejected claims after it had

Case Details

Case Name: Fleischer Studios, Inc. v. A.V.E.L.A., Inc.

Court Name: Court of Appeals for the Ninth Circuit

Date Published: Feb 23, 2011

Citation: 654 F.3d 958

Docket Number: 09-56317

Court Abbreviation: 9th Cir.