Fleischer Studios, Inc. v. A.V.E.L.A., Inc., CV 06–6229 ABC (MANx).

• Decision Date: 14 November 2012
• Docket Number: No. CV 06–6229 ABC (MANx).,CV 06–6229 ABC (MANx).
• Citation: 925 F.Supp.2d 1067
• Parties: FLEISCHER STUDIOS, INC., Plaintiff, v. A.V.E.L.A., INC. d/b/a/ Art & Vintage Entertainment Licensing Agency, Art–Nostalgia.com, Inc., and X One X Movie Archive, Inc., and Leo Valencia, Defendants.
• Court: U.S. District Court — Central District of California

925 F.Supp.2d 1067

FLEISCHER STUDIOS, INC., Plaintiff,

v.A.V.E.L.A., INC. d/b/a/ Art & Vintage Entertainment Licensing Agency, Art–Nostalgia.com, Inc., and X One X Movie Archive, Inc., and Leo Valencia, Defendants.

No. CV 06–6229 ABC (MANx).

United States District Court,

C.D. California.

Nov. 14, 2012.

Michael M. Kowsari, Robert C. O'Brien, Steven E. Bledsoe, Arent Fox LLP, Los Angeles, CA, Robert P. Lobue, Patterson Belknap Webb & Tyler LLP, New York, NY, for Plaintiff.

James E. Doroshow, Fox Rothschild LLP, Byron T. Ball, The Ball Law Firm LLP, Los Angeles, CA, Melissa W. Woo, A.V.E.L.A. Inc., Carlsbad, CA, David Albert Gerber, D. Gerber Law Offices, Oxnard, CA, for Defendants.

Stephen Gerard Larson, Arent Fox LLP, Los Angeles, CA.

ORDER RE: MOTIONS FOR SUMMARY JUDGMENT

AUDREY B. COLLINS, District Judge.

Pending before the Court are the following Motions: Plaintiff Fleischer Studios, Inc.'s (“Fleischer”) Motion for Summary Judgment (docket no. 177), and Defendant A.V.E.L.A., Inc., et al.'s (“Defendants”) Motion for Summary Judgment (docket no. 175). The parties filed Oppositions and Replies. The Court finds these matters appropriate for resolution without oral argument and therefore VACATES the hearing set for November 19, 2012. SeeFed.R.Civ.P. 78, Local Rule 7–15. For the following reasons, the Court DENIES Plaintiff's Motion and GRANTS Defendants' Motion.

I. FACTUAL AND PROCEDURAL BACKGROUND

This matter is before the Court following the Ninth Circuit's Opinion vacating one ruling in the Court's June 29, 2009 Order granting summary judgment for Defendants on all of Plaintiff's claims. See Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 654 F.3d 958 (9th Cir.2011) (“Fleischer II ”), affirming in part and vacating in part Fleischer Studios, Inc. v. A.V.E.L.A. Inc., 772 F.Supp.2d 1155 (C.D.Cal.2009).

Fleischer II remanded for further proceedings Plaintiff's claim for trademark infringement relating to the word mark “Betty Boop.” The Court set out a detailed factual background in its December 16, 2008 and June 29, 2009 Orders. Thus, here, the Court provides only a sketch of the facts, and summarizes the procedural history relevant to the remaining claim.

A. Factual Overview

This litigation concerns ownership of the intellectual property in the cartoon character Betty Boop. The following facts are undisputed and are adopted from prior orders and the parties' submissions.

Starting in or around 1930, Max Fleischer, then head of Fleischer Studios, Inc. (“Original Fleischer”) developed a number of cartoon films featuring the fictional character Betty Boop. For a time, Original Fleischer licensed the Betty Boop image for use in toys, dolls, and other merchandise. Approximately ten years after creating her, Original Fleischer sold its rights to the Betty Boop cartoons and to her character. In 1946, Original Fleischer was dissolved.

Max Fleischer's family attempted to revive the Fleischer cartoon business in the early 1970s. The family incorporated a new entity, Fleischer Studios, Inc. (“Fleischer”), with the same name as the first entity and attempted to repurchase the intellectual property rights to the Betty Boop character. Fleischer is the Plaintiff in this action and is a distinct legal entity from the long-defunct Original Fleischer that first owned Betty Boop.¹Based on its view that it owns the intellectual property (copyrights and trademarks) in the Betty Boop character, Fleischer licenses the Betty Boop character for use in toys, dolls, and other merchandise.

Defendants, A.V.E.L.A., Inc., et al., also license Betty Boop merchandise such as posters, dolls, and apparel. Defendants' merchandise includes or incorporates elements from vintage Betty Boop movie posters that Defendants argue were in the public domain and that they have restored. As relevant here, the elements derived from the posters include images of Betty Boop, the words Betty Boop, or both.

Plaintiff asserts that Defendants' Betty Boop merchandise is unauthorized and infringes on its rights in the character Betty Boop. Plaintiff therefore pled claims for copyright infringement, trademark infringement, and several related state law claims.

B. Procedural History

In two Orders, the Court, Judge Cooper presiding, granted summary judgment for Defendants. The Court found that Plaintiff held neither a valid copyright nor a valid trademark in the Betty Boop cartoon character. SeeOrder, 772 F.Supp.2d 1135 (C.D.Cal.2008); and Order, June 29, 2009 (docket no. 105), Fleischer Studios, Inc. v. A.V.E.L.A. Inc., 772 F.Supp.2d 1155 (C.D.Cal.2009). As to Plaintiff's trademark claim based on the word mark “Betty Boop”, the Court granted summary judgment for Defendants on three grounds. First, the Court found that because of the word mark's fractured history in which “rights ... were divided and parceled out to various entities over many decades,” the mark could not indicate a single source, that is, it could not achieve secondary meaning. Fleischer Studios, 772 F.Supp.2d at 1171. Thus, the mark was not valid. The Court also held that nothing in the record showed “(b) that any of Defendants' uses of its poster artwork represent a use of Plaintiff's word mark in commerce, or (c) that any of defendants' uses of the word mark are likely to cause consumer confusion.” Id. at 1170. Plaintiff appealed.

Initially, the Ninth Circuit upheld Judge Cooper's orders in their entirety. See Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 636 F.3d 1115 (9th Cir.2011) (“Fleischer I ”). However, the Ninth Circuit based its trademark ruling on the doctrine of aesthetic functionality, a theory that none of the parties raised at the district court and that was not a basis for any of Judge Cooper's rulings. Specifically, in Fleischer I, the Court held that Defendant's uses of the Betty Boop trademarks—both the image mark and word mark—were functional and aesthetic, and were not trademark uses; therefore, Defendants' use did not infringe Plaintiff's marks. Plaintiff moved for a rehearing.

The Ninth Circuit then withdrew Fleischer I and issued a new, superceding opinion, Fleischer II, supra. In Fleischer II, the Ninth Circuit upheld judgment for Defendants on the copyright claims and on the image mark claims, but vacated the ruling on the word mark claims. With respect to the word mark claims, the Court made the following rulings. The Court held that Plaintiff had “submitted proof that it possesses registered trademarks in the words ‘Betty Boop’ ”. Fleischer II, 654 F.3d at 967. The Court also reversed the district court's ruling that the word mark's fractured ownership history precluded secondary meaning, finding that that was a triable issue. Finally, as to the remaining two bases upon which the district court granted summary judgment for Defendants, the Ninth Circuit stated that it was “unable to ascertain a legal basis for the district court's” “unexplained” conclusions that Plaintiff failed to show “ ‘(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.’ ” Id. at 968 ( citing Fleischer Studios, 772 F.Supp.2d at 1170). Because these two bases of the word mark ruling were not explained, the Ninth Circuit concluded “that more is necessary”, “vacate[d] the holding on this issue[,] and remand[ed] to the district court for further proceedings on Fleischer's trademark infringement claims regarding the Betty Boop word mark.” Fleischer II, 654 F.3d at 968.

C. Current Proceedings

The parties disagree about the scope of the remand: Defendants contend that the sole purpose of the remand is for the court to provide the legal reasoning behind the dismissal of Plaintiff's word mark claim; Plaintiff contends that, in effect, it has carte blanche to relitigate its word mark claim and present any and all arguments and evidence it has, regardless of whether it presented that material before or whether the district court previously rejected it.²

The Ninth Circuit did not reverse the district court's prior ruling, but remanded because the record was incomplete. However, Fleischer II does not expressly limit the remand to providing the missing reasoning. Nor does Fleischer II require the Court to re-open litigation over this claim entirely, that is, to allow the parties to relitigate the remanded claim anew. It therefore appears that the Court has some discretion as to what “further proceedings” entails and what arguments and evidence it will consider.

Clearly, the Court cannot revisit any matters ruled upon by the Ninth Circuit. Thus, for example, Plaintiff's attempt in its opposition to revive its copyright claims, see Pl.'s Opp'n 12:6–9, is rejected because Fleischer II affirmed the dismissal of those claims. See Fleischer II, 654 F.3d at 965. Similarly, the Court is bound by the Ninth Circuit's acceptance of Plaintiff's “proof that it possesses registered trademarks in the words ‘Betty Boop.’ ” Id. at 967. However, the Court will not consider any arguments that Plaintiff did not present to the district court at the prior proceedings, or that Plaintiff did not pursue on appeal: the Court finds that such matters are waived or abandoned. This includes, for example, the alternative chains of title that Plaintiff abandoned on appeal. That the Court must conduct “further proceedings” on Plaintiff's trademark claim as to the Betty Boop word mark does not allow Plaintiff to present evidence that was previously properly excluded or to revive abandoned arguments. Fleischer II does not require the Court to reconsider any of its prior determinations or to entertain new arguments or evidence, and Plaintiff has not persuaded the Court that it should.

Based on the foregoing, these proceedings will be limited to a re-examination of the Court's “unexplained” prior rulings. This reexamination will be based solely on the evidence previously presented to the...