FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

FLEISCHER STUDIOS, INC., 

Plaintiff-Appellant,

No. 09-56317 v.

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

2:06-cv-06229- Vintage Entertainment Licensing  FMC-MAN Agency; ART-NOSTALGIA.COM, INC;

X ONE X MOVIE ARCHIVE, INC; ORDER AND

BEVERLY HILLS TEDDY BEAR CO.; OPINION

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 August 19, 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. 

11031
COUNSEL

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

of Patterson Belknap Webb & Tyler LLP, New York, New

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

Feld LLP, Los Angeles, California, for appellant Fleischer

Studios, Inc.

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

Angeles, California, for appellees A.V.E.L.A., INC., DBA

Art & Vintage Entertainment Licensing Agency; et al.

ORDER

The Opinion filed February 23, 2011, and published at 636

F.3d 1115 (9th Cir. 2011), is hereby withdrawn and superceded by the Opinion filed concurrently herewith.

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).

FLEISCHER STUDIOS v. A.V.E.L.A., INC. 11035
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

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.

11036 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
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,

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 FleisFLEISCHER STUDIOS v. A.V.E.L.A., INC. 11037
cher 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 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, 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)

11038 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
(“[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

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

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. 

FLEISCHER STUDIOS v. A.V.E.L.A., INC. 11039
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:

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 particu11040 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
lar 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., 508 U.S.

10, 18 (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”). 

[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

FLEISCHER STUDIOS v. A.V.E.L.A., INC. 11041
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.,

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 contra2We 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,

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 337 U.S. 369 (1949);

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

11042 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
vening 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

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.), 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

11055. That complaint is not well-taken. In this case, the only

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 11055. 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. 11043
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

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” (brackets

and internal quotation marks omitted)).

[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.

11044 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
III.

Fleischer also sued A.V.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.

[8] 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 before those

briefs were due and well after it first submitted its summary

judgment evidence, Fleischer submitted evidence that it

owned a federally registered trademark in the image of Betty

Boop. Based on its new evidence, Fleischer asserted, for the

first time, a new theory of trademark infringement: that

A.V.E.L.A. was infringing Fleischer’s statutory trademark

rights in the Betty Boop image. 

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., 772 F.

Supp. 2d 1155, 1163 n.15 (C.D. Cal. 2009). We review that

decision for an abuse of discretion. Fonseca v. Sysco Food

Servs. of Ariz., Inc., 374 F.3d 840, 845 (9th Cir. 2004). 

[9] Federal Rule of Civil Procedure 6(b) requires that

“[w]hen an act may or must be done within a specified time,”

FLEISCHER STUDIOS v. A.V.E.L.A., INC. 11045
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, 497

U.S. 871, 895-98 (1990) (“Perhaps it is true that the District

Court could have overcome all the obstacles we have

described—apparent lack of a motion, of a showing, and of

excusable neglect—to admit the affidavits at issue here. But

the proposition that it was compelled to receive them—that it

was an abuse of discretion to reject them—cannot be accepted”). Fleischer’s untimely evidence falls directly within this

holding. The Central District of California’s Local Rule 7-5,

titled “Moving Papers,” states that “[t]here shall be served and

filed with the notice of motion: . . . (b) The evidence upon

which the moving party will rely in support of the motion.”

By submitting its evidence with its supplemental brief, as

opposed to with its original motion for summary judgment,

and by failing to file a motion to show cause why its neglect

was excusable, Fleischer failed to comply with Local Rule 7-

5 and Federal Rule of Civil Procedure 6(b). Thus, the district

judge did not abuse her discretion in refusing to consider

Fleischer’s proposed evidence. See Lujan, 497 U.S. at 898.

[10] 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.”

444 F.3d 1104, 1110 (9th Cir. 2006) (en banc); see also

Huynh v. Chase Manhattan Bank, 465 F.3d 992, 1000 (9th

Cir. 2006) (“It is rarely appropriate for an appellate court to

take judicial notice of facts that were not before the district

court” (internal quotation marks omitted)). We therefore

11046 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
decline to take judicial notice of the Betty Boop image trademark registration.

B.

[11] 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 loses out on the presumption of validity that registration confers. Toho Co. v. Sears, Roebuck & Co., 645 F.2d

788, 790 (9th Cir. 1981). 

[12] 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., 632

F.2d 817, 820 (9th Cir. 1980). 

[13] 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., 198 F.3d 1143,

1152 (9th Cir. 1999); see also id. (“trademark law is skeptical

of the ability of an associate of a trademark holder to transcend personal biases to give an impartial account of the value

of the holder’s mark” (brackets and internal quotation marks

omitted)). The probative value of such evidence is so limited,

in fact, that standing alone, it is not sufficient to withstand

FLEISCHER STUDIOS v. A.V.E.L.A., INC. 11047
summary judgment. Id. Thus, the company CEO’s “uncorroborated, and clearly self-interested testimony did not create a

genuine issue for trial as to whether [Betty Boop] has

acquired secondary meaning.” Id.

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., 389 F.2d 264, 269 (2d Cir. 1968) (“It is

elementary that the function of a trademark is to indicate the

origin of the products to which it is attached”).

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. 578 F. Supp. 911, 923-25 (S.D.N.Y. 1983).

Applying that theory, the court held that the plaintiff ’s trademark rights, if any, in the image of Godzilla were unenforceable. Id.

11048 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
[14] 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 must be something more. In Universal, that something

more was the evidence of extensive use and licensing of similar images by other companies, the oddly-defined trademark

that was legally carved out from other images of the same

character, the widespread confusion amongst potential licensees and licensors regarding from whom one should license the

mark, and the other image of the same character that had

acquired secondary meaning. Id. at 924-25. All of these facts

led to the conclusion that there could be no secondary meaning.

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, 772 F. Supp. 2d at 1171 (emphasis added).

[15] 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, 578 F. Supp. at 925—all we

have is the possibility that other copyright owners may be

destroying the secondary meaning in the Betty Boop mark.

FLEISCHER STUDIOS v. A.V.E.L.A., INC. 11049
That possibility is not enough to rule in favor of A.V.E.L.A.

on summary judgment. We thus agree with Fleischer that the

district court erred on this issue.

[16] 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, 772 F. Supp. 2d at 1170. Given the large number of

complex issues it faced and the minimal assistance from the

parties’ briefs, it is understandable that the district court might

have deemed it unnecessary to address these issues in greater

depth, to provide more detailed reasoning, to cite to relevant

authority, or to identify a basis in the record for these apparent

conclusions. Nonetheless, because we are unable to ascertain

a legal basis for the district court’s reasoning on the current

record, we conclude that more is necessary. We therefore

vacate the holding on this issue and remand to the district

court for further proceedings on Fleischer’s trademark

infringement claims regarding the Betty Boop word mark.

The parties shall bear their own costs.

AFFIRMED IN PART, VACATED AND REMANDED

IN PART.

GRABER, Circuit Judge, 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

11050 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
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 rulings and in its conclusion that the link between UM&M and

Plaintiff was broken. In their answering brief, Defendants

FLEISCHER STUDIOS v. A.V.E.L.A., INC. 11051
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

explained above, the copyright then passed from UM&M to

Plaintiff, Plaintiff prevails.

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.”). 

11052 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
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 11043 (“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

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

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. 11053
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 11043-44, the majority

excuses Defendants from having failed to raise a “doctrine of

indivisibility” argument, on the ground that Plaintiff waived

the waiver, id. at 11044. 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 address only the issues raised by the par3The 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. 

11054 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
ties. 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

4

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. 

FLEISCHER STUDIOS v. A.V.E.L.A., INC. 11055