FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

FLEISCHER STUDIOS, INC., 

Plaintiff-Appellant,

v. No. 09-56317

A.V.E.L.A., INC., DBA Art & D.C. No.

Vintage Entertainment Licensing  2:06-cv-06229-

Agency; ART-NOSTALGIA.COM, INC.; FMC-MAN

X ONE X MOVIE ARCHIVE, INC.; OPINION BEVERLY HILLS TEDDY BEAR CO.;

LEO VALENCIA,

Defendants-Appellees. 

Appeal from the United States District Court

for the Central District of California

Florence-Marie Cooper, District Judge, Presiding

Argued and Submitted

November 2, 2010—Pasadena, California

Filed February 23, 2011

Before: J. Clifford Wallace and Susan P. Graber,

Circuit Judges, and Richard Mills,

Senior District Judge.*

Opinion by Judge Wallace;

Dissent by Judge Graber

*The Honorable Richard Mills, Senior United States District Judge for

the Central District of Illinois, sitting by designation. 

2765
COUNSEL

Robert P. LoBue (argued), Gloria C. Phares, A. Leah Vickers,

Patterson Belknap Webb & Tyler LLP, New York, New

York, and Rex S. Heinke, Akin Gump Strauss Hauer & Feld

LLP, Los Angeles, California, for appellant Fleischer Studios,

Inc.

Douglas D. Winter (argued), The Ball Law Firm, LLP, Los

Angeles, California, for appellees A.V.E.L.A., Inc., DBA Art

& Vintage Entertainment Licensing Agency, et al.

OPINION

WALLACE, Senior Circuit Judge:

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. Fleischer appeals. The district court

2768 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
had jurisdiction pursuant to 28 U.S.C. § 1338(a), and our

jurisdiction arises under 28 U.S.C. § 1291. We affirm.

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., 5 F. Supp. 808, 809 (S.D.N.Y. 1934). Betty

Boop was the creation of Max Fleischer, then head of Fleischer Studios, Inc. (Original Fleischer). Beginning in 1930,

Original Fleischer developed a number of cartoon films featuring 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 abandoned Betty Boop and sold its rights to both her

cartoons and her character. Soon after, in 1946, Original

Fleischer was dissolved. 

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, 462 F.3d 965,

971 (8th Cir. 2006) (“A search warrant was issued, and the

package was opened pursuant to that warrant on January 26,

2004. The package contained a large ceramic Betty Boop doll,

FLEISCHER STUDIOS v. A.V.E.L.A., INC. 2769
with four concealed, separately wrapped plastic bundles of

high-purity-level methamphetamine inside”). 

The defendants in this action, A.V.E.L.A., Inc., ArtNostalgia.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 A.V.E.L.A.

licenses its products is based on vintage posters featuring

Betty Boop’s image that A.V.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 regarding the

transfer of rights from UM&M to NTA and from NTA to

Republic Pictures. 

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 own2770 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
ership 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, 206

F.3d 1322, 1325 (9th Cir. 2000). Under section 3 of the 1909

Act:

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., 330 F.3d 1170, 1175-76 (9th Cir. 2003)

(“[C]haracters that are ‘especially distinctive’ or the ‘story

being told’ receive protection apart from the copyrighted

work”, citing Olson v. Nat’l Broad. Co., 855 F.2d 1446, 1452

(9th Cir. 1988)).

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, 670 F.2d 826, 832 n.3 (9th Cir.

1982); see also Rice, 330 F.3d at 1175-76. The logical result

FLEISCHER STUDIOS v. A.V.E.L.A., INC. 2771
of this concession is that Original Fleischer owned “all the

rights in respect [to Betty Boop] which [it] would have if” it

had individually copyrighted it.1 17 U.S.C. § 3; Kaplan v. Fox

Film Corp., 19 F. Supp. 780, 781 (S.D.N.Y. 1937).

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, 357

F.3d 1072, 1075 (9th Cir. 2004).

II.

[1] Fleischer bears the burden of proving copyright ownership. Litchfield v. Spielberg, 736 F.2d 1352, 1355 (9th Cir.

1984) (“To prove copyright infringement, the plaintiff must

show . . . ownership of the copyright . . .”). As mentioned earlier, Fleischer asserts ownership of a copyright in the Betty

Boop character through the following chain of title: Original

Fleischer to Paramount to UM&M to NTA to Republic Pictures to Fleischer. Because this complete chain is necessary to

establish ownership, Fleischer’s copyright action requires it to

establish each link.

[2] 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:

1Fleischer cites Walt Disney Productions v. Air Pirates, 581 F.2d 751

(9th Cir. 1978), in support of its conclusion that there is no stand-alone

copyright to Betty Boop the character. Fleischer is correct that Walt Disney held that character copyrights may be created as component parts of

a film or cartoon booklet. Id. at 754. But that holding does not lead to the

conclusion that once created, the character copyright cannot be transferred

or sold separately from the copyright-creating work. Given the clear language of section 3 of the 1909 Act and the absence of an on-point binding

precedent, we disagree with Fleischer’s conclusion that Walt Disney controls this issue. 

2772 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
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 . . . .

[3] 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 . . . .

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., 508 U.S.

10, 17 (1993) (“[T]he use of such a ‘notwithstanding’ clause

clearly signals the drafter’s intention that the provisions of the

‘notwithstanding’ section override conflicting provisions of

any other section”). 

FLEISCHER STUDIOS v. A.V.E.L.A., INC. 2773
[4] 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.,

863 F.2d 1465, 1469 (9th Cir. 1988), aff’d on other grounds

sub nom., Stewart v. Abend, 495 U.S. 207 (1990). “Under the

doctrine, a ‘licensee’ of a copyright—i.e., someone who holds

only partial copyright privileges—may not copyright a work

in the licensee’s name.” Id. Fleischer argues that if, as we

hold here, Paramount retained the copyright to the Betty Boop

character but transferred the copyright to the films to UM&M,

the doctrine of indivisibility would have prevented UM&M

from renewing its copyright. That renewal-blocking result is

evidence, according to Fleischer, that neither party intended

to separate the Betty Boop character and film rights. “At

most,” Fleischer states, “Paramount may have retained a contractual right (or license back) to exploit the character apart

from the films.”

[5] 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 example, he or she had

previously sold the magazine-publishing rights to his or her

story. Id.2 Or, because the law abhors a forfeiture, a court

would deem the purported owner of the magazine-publishing

rights to be a mere licensee, thereby allowing the author to

renew the copyright. Sybersound Records, Inc. v. UAV Corp.,

2We use the word “may” because it is far from certain that the doctrine

of indivisibility applies to copyright registration or renewals. See Abend,

863 F.2d at 1469 (doctrine of indivisibility did not preclude publisher from

registering copyright in rights-divided work). Even at the time of the execution of the UM&M agreement, the doctrine’s continued vitality in certain contexts was in considerable doubt. See, e.g., Wodehouse v. Comm’r

of Internal Revenue, 166 F.2d 986, 989 (4th Cir. 1948) (“[S]erial rights,

book rights, dramatic production rights and motion picture rights of a literary production are rights which may be and are separately and effectively

bought and sold in the literary market”), overruled on other grounds by

Comm’r of Internal Revenue v. Wodehouse, 337 U.S. 369 (1949); Herwig

v. United States, 105 F. Supp. 384, 389 (Ct. Cl. 1952) (similar). 

2774 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
517 F.3d 1137, 1145 (9th Cir. 2008). But that is not the scenario here. Through the UM&M agreement, UM&M obtained

the “totality of rights commanded by copyright” for the Betty

Boop films, id., quoting Gardner v. Nike, Inc., 279 F.3d 774,

778 (9th Cir. 2002); what it did not obtain were the rights to

the Betty Boop character. While the doctrine of indivisibility

may have prohibited UM&M from renewing the film copyright if, for example, it did not obtain the DVD distribution

rights to the Betty Boop films it purchased, the doctrine

would have had no impact on UM&M’s attempt to renew its

copyright if it did not own a character copyright component

part of the film. See Richlin v. Metro-Goldwyn-Mayer Pictures, Inc., 531 F.3d 962, 976 (9th Cir. 2008) (renewal of

motion picture permitted without owning all component

parts); cf. Self-Realization Fellowship Church, 206 F.3d at

1325 (“[A] blanket copyright gives a magazine publisher

rights in an individual contribution only if the publisher owns

the common law copyright as the author of the contribution,

or as the author’s assignee”, citing Mail & Express Co. v. Life

Pub. Co., 192 F. 899 (2d Cir. 1912)). In short, the doctrine of

indivisibility does not deprive copyright holders of the right

to transfer or, in this case, retain the component parts of their

copyrights. If we held otherwise, we would be directly contravening section 3 of the 1909 Act by depriving Paramount of

“all the rights in respect [to the component part] which [it]

would have if each part were individually copyrighted.” 17

U.S.C. § 3 (repealed).3

[6] Contrary to another of Fleischer’s arguments, Paramount’s conduct subsequent to the execution of the contract

3We 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 2787. 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., 881 F.2d 638, 643 (9th Cir. 1989). The law is the law.

Regardless of whether the parties correctly interpreted the doctrine of indivisibility, we are still obliged to do so. 

FLEISCHER STUDIOS v. A.V.E.L.A., INC. 2775
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 Industries, Inc.), 527 F.3d 959, 966 (9th Cir. 2008).

However, Paramount’s subsequent conduct is not evidence of

Paramount’s intent to transfer the Betty Boop character to

UM&M. Paramount did not stand idly by while UM&M

renewed the copyrights and profited from ownership of those

copyrights. Instead, the record suggests that three years after

entering into the UM&M agreement, Paramount transferred

its Betty Boop character copyright to Harvey Films. While we

have doubts as to whether the use of subsequent behavior in

this instance—where the contractual language is unambiguous

—is appropriate, see Wells Fargo Bank & Trust Co. v.

McDuffie, 71 F.2d 720, 728 (9th Cir. 1934), Paramount’s subsequent behavior supports our conclusion that it did not transfer the rights to the Betty Boop character copyright by the

UM&M agreement. 

The dissent states that we are “answer[ing] 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

2787. 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, 538

F.3d 1000, 1014 n.5 (9th Cir. 2008) (issue not raised on

appeal is abandoned); United States v. Gregory, 322 F.3d

1157, 1160 n.2 (9th Cir. 2003) (same). The dissent cannot resurrect them. It would be patently unfair to A.V.E.L.A. to rule

in favor of Fleischer on one of the theories not raised in Fleischer’s opening brief. See Stuard v. Stewart, 401 F.3d 1064,

1067 (9th Cir. 2005) (“[W]e are not going to construct an

2776 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
argument for the state sua sponte, depriving Stuard’s counsel

of a fair chance to respond to it”).

Perhaps Fleischer should have argued that A.V.E.L.A.

waived its character-carveout argument by not asserting it to

the district court. Resolution Trust Corp. v. First Am. Bank,

155 F.3d 1126, 1129 (9th Cir. 1998) (explaining that issues

not raised before the district court are generally forfeited).

Perhaps Fleischer does not object to A.V.E.L.A.’s argument

on this ground because, as A.V.E.L.A. argues, it raised the

issue with sufficient clarity to preserve it. Whatever the reason, Fleischer’s failure to argue that A.V.E.L.A. waived this

argument requires us to reach its merits. Norwood v. Vance,

591 F.3d 1062, 1068 (9th Cir. 2010) (“this court will not

address waiver if not raised by the opposing party”).

[7] Upon review of the merits of A.V.E.L.A.’s charactercarveout 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.V.E.L.A. for infringing its trademarks. The A.V.E.L.A. products to which Fleischer objected

include Betty Boop dolls as well as t-shirts and handbags

prominently displaying her image. The district court dismissed Fleischer’s trademark-infringement claim, holding that

Fleischer did not provide evidence, in the time required by the

Federal Rules of Civil Procedure, that Fleischer owned either

the common law or federally registered trademarks that

A.V.E.L.A. allegedly infringed. 

Both parties’ briefs discuss the details of whether the district court’s decision was correct, including the issue of

whether cartoon characters are protectable as trademarks,

FLEISCHER STUDIOS v. A.V.E.L.A., INC. 2777
whether Fleischer owns a registered image trademark in Betty

Boop’s image and name, whether Fleischer owns a commonlaw trademark in “Betty Boop”, whether the fractured ownership of the Betty Boop copyright precludes Fleischer from

asserting a trademark claim, and, finally, whether A.V.E.L.A.

infringed Fleischer’s marks. But all of these arguments are

mooted by controlling precedent that neither party cited:

International Order of Job’s Daughters v. Lindeburg & Co.,

633 F.2d 912 (9th Cir. 1980). 

Although the parties did not cite or argue the application of

Job’s Daughters to the facts of this case, and while the district

court did not base its decision on that case, “it is clear that we

have the power to affirm [the district court’s decision] on an

alternate basis” if it is supported by the record. Badea v. Cox,

931 F.2d 573, 575 n.2 (9th Cir. 1991). Because resolving this

issue is in the interest of judicial economy, we elect to do so.

See United States v. Koyomejian, 970 F.2d 536, 541 (9th Cir.

1992), citing Badea, 931 F.2d at 575 n.2.

In Job’s Daughters, plaintiff Job’s Daughters sued defendant Lindeburg “for trademark infringement arising out of

Lindeburg’s manufacture and sale of jewelry bearing the

Job’s Daughters insignia.” 633 F.2d at 914. Job’s Daughters

was a young women’s organization that used its name and

emblem as trademarks. Id. Lindeburg was a maker and

retailer of fraternal jewelry. Id. Lindeburg began selling jewelry and related items bearing the Job’s Daughters insignia

and, after failing to negotiate a license, Job’s Daughters sued

Lindeburg for trademark infringement. Id.

When the case came to us on appeal, we evaluated the same

trademark infringement claims that are asserted here: those

based on 15 U.S.C. §§ 1114 and 1125(a). Job’s Daughters,

633 F.2d at 917. We held that “Lindeburg was not using the

Job’s Daughters name and emblem as trademarks.” Id. at 920.

That conclusion, and the reasoning that Job’s Daughters used

to reach it, are directly applicable to the case before us.

2778 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
[8] “In general,” Job’s Daughters stated,

trademark law is concerned only with identification

of the maker, sponsor, or endorser of the product so

as to avoid confusing consumers. Trademark law

does not prevent a person from copying so-called

“functional” features of a product which constitute

the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a

particular entity made, sponsored, or endorsed a

product.

. . . .

It is not uncommon for a name or emblem that

serves in one context as a collective mark or trademark also to be merchandised for its own intrinsic

utility to consumers. We commonly identify ourselves by displaying emblems expressing allegiances. Our jewelry, clothing, and cars are

emblazoned with inscriptions showing the organizations we belong to, the schools we attend, the landmarks we have visited, the sports teams we support,

the beverages we imbibe. Although these inscriptions frequently include names and emblems that are

also used as collective marks or trademarks, it

would be naive to conclude that the name or emblem

is desired because consumers believe that the product somehow originated with or was sponsored by

the organization the name or emblem signifies.

Id. at 917 (internal citations omitted; emphases added).

After setting forth these principles, Job’s Daughters

explained the role of the court in determining whether an

infringer’s use of an image and name was for functional or

trademark purposes: “[A] court must closely examine the articles themselves, the defendant’s merchandising practices, and

FLEISCHER STUDIOS v. A.V.E.L.A., INC. 2779
any evidence that consumers have actually inferred a connection between the defendant’s product and the trademark

owner.” Id. at 919. Accordingly, we held:

Lindeburg was not using the Job’s Daughters name

and emblem as trademarks. The insignia were a

prominent feature of each item so as to be visible to

others when worn, allowing the wearer to publicly

express her allegiance to the organization. Lindeburg

never designated the merchandise as “official” Job’s

Daughters’ merchandise or otherwise affirmatively

indicated sponsorship. Job’s Daughters did not show

a single instance in which a customer was misled

about the origin, sponsorship, or endorsement of

Lindeburg’s jewelry, nor that it received any complaints about Lindeburg’s wares. Finally, there was

evidence that many other jewelers sold unlicensed

Job’s Daughters jewelry, implying that consumers

did not ordinarily purchase their fraternal jewelry

from only “official” sources. We conclude that Job’s

Daughters did not meet its burden of proving that a

typical buyer of Lindeburg’s merchandise would

think that the jewelry was produced, sponsored, or

endorsed by the organization. The name and emblem

were functional aesthetic components of the product,

not trademarks. There could be, therefore, no

infringement.

Id. at 920. 

[9] Job’s Daughters is directly applicable to Fleischer’s

trademark claims. Even a cursory examination, let alone a

close one, of “the articles themselves, the defendant’s merchandising practices, and any evidence that consumers have

actually inferred a connection between the defendant’s product and the trademark owner,” reveal that A.V.E.L.A. is not

using Betty Boop as a trademark, but instead as a functional

product. See id. at 919. Just as in Job’s Daughters, Betty

2780 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
Boop “w[as] a prominent feature of each item so as to be visible to others when worn . . . .” Id. A.V.E.L.A. “never designated the merchandise as ‘official’ [Fleischer] merchandise or

otherwise affirmatively indicated sponsorship.” Id. Fleischer

“did not show a single instance in which a customer was misled about the origin, sponsorship, or endorsement of

[A.V.E.L.A.’s products], nor that it received any complaints

about [A.V.E.L.A.’s] wares.” Id. Given the marked similarity

between the facts of Job’s Daughters and the appeal before

us, we reach the same conclusion here as in our earlier decision. “The name and [Betty Boop image] were functional aesthetic components of the product, not trademarks. There could

be, therefore, no infringement.” Id.; see also New Kids on the

Block v. News Am. Pub., Inc., 971 F.2d 302, 309 (9th Cir.

1992) (“[T]he trademark laws do not give the New Kids the

right to channel their fans’ enthusiasm (and dollars) only into

items licensed or authorized by them”), citing Job’s Daughters.

Dastar Corp. v. Twentieth Century Fox Film Corp., another

case that both parties failed to cite, is also relevant. 539 U.S.

23 (2003). Dastar held that where a copyright is in the public

domain, a party may not assert a trademark infringement

action against an alleged infringer if that action is essentially

a substitute for a copyright infringement action. Id. at 33. To

do so would be to circumvent the Copyright Act and allow

trademark holders perpetual rights to exploit their creative

work. Id. The Court explained,

The right to copy, and to copy without attribution,

once a copyright has expired, like the right to make

an article whose patent has expired—including the

right to make it in precisely the shape it carried when

patented—passes to the public. In general, unless an

intellectual property right such as a patent or copyright protects an item, it will be subject to copying.

The rights of a patentee or copyright holder are part

of a carefully crafted bargain, under which, once the

FLEISCHER STUDIOS v. A.V.E.L.A., INC. 2781
patent or copyright monopoly has expired, the public

may use the invention or work at will and without

attribution. Thus, in construing the Lanham Act, we

have been careful to caution against misuse or overextension of trademark and related protections into

areas traditionally occupied by patent or copyright.

Id. (internal quotations, citations and alterations omitted;

emphases added). 

If we ruled that A.V.E.L.A.’s depictions of Betty Boop

infringed Fleischer’s trademarks, the Betty Boop character

would essentially never enter the public domain. Such a result

would run directly contrary to Dastar. 539 U.S. at 37 (“To

hold otherwise would be akin to finding that § 43(a) created

a species of perpetual patent and copyright, which Congress

may not do”).

[10] Therefore, even if Fleischer owns trademarks in Betty

Boop, it cannot assert a trademark infringement action against

A.V.E.L.A. Given that A.V.E.L.A.’s use of Betty Boop is

functional and aesthetic, and because ruling in Fleischer’s

favor would prevent the Betty Boop character from ever

entering the public domain, Fleischer’s infringment claim is

barred by Job’s Daughters and Dastar.

In light of our holding, we also deny as moot Fleischer’s

motion to take judicial notice of the incontestible status of its

trademark registrations.

AFFIRMED.

GRABER, Circuit Judge, dissenting:

I respectfully dissent.

2782 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
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 Plaintiff’s 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 selling Betty Boop merchandise, Plaintiff brought this action alleging, among other

things, copyright infringement.

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

post-1950s 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 rulFLEISCHER STUDIOS v. A.V.E.L.A., INC. 2783
ings 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 803(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.1 In short, even

if we accept Defendants’ premise, it does not change the

result: The copyright transferred to UM&M. Because, as

1Because 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.), 527 F.3d 959, 966 (9th Cir.

2008) (“As with any contract, our goal is to give effect to the mutual intent

of the parties . . . [which permits examination of] the subsequent conduct

of the parties.”). 

2784 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
explained above, the copyright then passed from UM&M to

Plaintiff, Plaintiff prevails.

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&M but instead sold it to Harvey Films. See

maj. op. at 2776 (“Paramount transferred its Betty Boop character copyright to Harvey Films.”).2

 But the majority’s analysis stops mid-stream. Plaintiff argued, before the district court

and on appeal, that if the copyright transferred to Harvey

Films, then Plaintiff prevails because Harvey Films later sold

the copyright to Plaintiff.

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

Plaintiff’s 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

2The 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., 19 F. Supp. 780, 781-82 (S.D.N.Y. 1937) (stating that indivisibility

does not apply in circumstances similar to the circumstances here), with

Silvers v. Sony Pictures Entm’t, Inc., 402 F.3d 881, 886 (9th Cir. 2005)

(en banc) (suggesting that indivisibility applied before the 1976 change in

copyright laws). Even if the majority is correct, however, Plaintiff nevertheless prevails for the reasons stated in text. 

FLEISCHER STUDIOS v. A.V.E.L.A., INC. 2785
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.3 I see nothing to be gained from

encouraging litigants to protect against the waiver doctrine by

asserting, pro forma, in their opening briefs any and all possible theories of victory, in the possible event that the opposing

party will raise a completely new argument in its answering

brief.

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 2776-77, the majority

excuses Defendants from having failed to raise a “doctrine of

indivisibility” argument, on the ground that Plaintiff waived

the waiver, id. at 2777. 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.

3The background rule is that we may affirm the district court on any

ground supported by the record. Quan v. Computer Scis. Corp., 623 F.3d

870, 878 (9th Cir. 2010). Accordingly, when the appellant argues that the

district court erred at a particular step in the analysis, the appellant reasonably may rely on the district court’s rulings in its favor on the other steps

in the analysis. If the appellee then asserts that the district court erred at

one of those steps, the appellant is free to respond that it wins even under

the theory advanced by the appellee. A contrary rule would lead, as noted

in text, to formalistic and repetitive briefing by the appellant. 

2786 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
Finally, if we are to adhere strictly to the doctrine of

waiver, then I would address only the issues raised by the parties. Plaintiff argues that the district court erred in its analysis

of the UM&M chain of title. I agree. Defendants argue that

the copyright transferred to no one. I, as does the majority,

disagree. If we were to address only the parties’ arguments,

we would stop there. I would not reach the line of reasoning

invented by the majority.

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.4

4Because 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. 

FLEISCHER STUDIOS v. A.V.E.L.A., INC. 2787