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-
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
FLEISCHER STUDIOS v. A.V.E.L.A., INC. 11035
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F.3d 1115 (9th Cir. 2011), is hereby withdrawn and super-
ceded 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).
11036 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
OPINION
WALLACE, Senior Circuit Judge:
This appeal stems from the district court’s summary judg-
ment dismissing Fleischer Studios, Inc.’s (Fleischer) copy-
right 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. Freun-
dlich, Inc., 5 F. Supp. 808, 809 (S.D.N.Y. 1934). Betty Boop
was the creation of Max Fleischer, then head of Fleischer Stu-
dios, 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. Approxi-
mately ten years after creating her, Original Fleischer aban-
doned Betty Boop and sold its rights to both her cartoons and
her character. Soon after, in 1946, Original Fleischer was dis-
solved.
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 STUDIOS v. A.V.E.L.A., INC. 11037
Fleischer believes that its intellectual-property-rights pur-
chases have made it the exclusive owner of the Betty Boop
character copyright and trademark. Based on this belief, Fleis-
cher 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., Art-
Nostalgia.com, Inc., X One X Movie Archive, Inc., and Leo
Valencia (collectively, A.V.E.L.A.), also license Betty Boop
merchandise. The copyright pursuant to which 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 exclu-
sive 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 Fleis-
cher 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 Pic-
tures 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 Fleis-
11038 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
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 fed-
eral trademark in the name “Betty Boop,” the fractured own-
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 Fel-
lowship 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 copy-
righted, and all matter therein in which copyright is
already subsisting, but without extending the dura-
tion or scope of such copyright. The copyright upon
composite works or periodicals shall give to the pro-
prietor thereof all the rights in respect thereto which
he would have if each part were individually copy-
righted 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)
FLEISCHER STUDIOS v. A.V.E.L.A., INC. 11039
(“[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 copy-
rightable 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 owner-
ship. 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 ear-
lier, Fleischer asserts ownership of a copyright in the Betty
Boop character through the following chain of title: Original
1
Fleischer 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 Dis-
ney 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 lan-
guage 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 con-
trols this issue.
11040 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
Fleischer to Paramount to UM&M to NTA to Republic Pic-
tures 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, how-
ever, 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 mate-
rial upon which they are based and the instruments
whereby Paramount acquired its right, title and inter-
est 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 Photo-
plays:
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 charac-
ters and characterizations, or to use said characters
and characterizations or the names of said charac-
ters 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 particu-
FLEISCHER STUDIOS v. A.V.E.L.A., INC. 11041
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 con-
tractual 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
11042 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
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 sce-
nario 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 indivisibil-
ity may have prohibited UM&M from renewing the film
copyright if, for example, it did not obtain the DVD distribu-
tion 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 Pic-
tures, 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 contra-
2
We 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 exe-
cution of the UM&M agreement, the doctrine’s continued vitality in cer-
tain 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).
FLEISCHER STUDIOS v. A.V.E.L.A., INC. 11043
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, Para-
mount’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). How-
ever, Paramount’s subsequent conduct is not evidence of Par-
amount’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 sub-
sequent behavior supports our conclusion that it did not trans-
fer 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
3
We are perplexed by the dissent’s complaint that, in reaching this con-
clusion, we have “adopt[ed] a theory rejected by the district court and
advanced by neither party on appeal.” Dissent at 11055. It is beyond dis-
pute 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.” Jack-
son 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.
11044 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
issue raised by Fleischer on appeal is whether Fleischer
obtained the Betty Boop copyright via the chain of title Origi-
nal 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 res-
urrect 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 Fleis-
cher’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 rea-
son, 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 character-
carveout argument, it is clear that Paramount did not transfer
the copyright to the Betty Boop character to UM&M. Because
the chain of title is broken, and the only chain of title at issue
in this appeal is this one involving UM&M, the district court
properly dismissed Fleischer’s copyright-infringement claim.
FLEISCHER STUDIOS v. A.V.E.L.A., INC. 11045
III.
Fleischer also sued A.V.E.L.A. for trademark infringement.
The district court dismissed these claims, holding that Fleis-
cher 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 feder-
ally registered trademark in the words “Betty Boop,” Fleis-
cher’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 reg-
istration in the image of Betty Boop. During summary judg-
ment 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 Fleis-
cher’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 argu-
ments.” 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,”
11046 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
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 accept-
ed”). 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 Fleis-
cher does not account for our holding in Jespersen v. Har-
rah’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
FLEISCHER STUDIOS v. A.V.E.L.A., INC. 11047
decline to take judicial notice of the Betty Boop image trade-
mark registration.
B.
[11] Fleischer’s failure to provide timely evidence of a fed-
eral 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 unregis-
tered mark. Without a federal registration, however, the
claimant loses out on the presumption of validity that registra-
tion confers. Toho Co. v. Sears, Roebuck & Co., 645 F.2d
788, 790 (9th Cir. 1981).
[12] To succeed without the presumption of validity, Fleis-
cher 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 con-
nected 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 ori-
gin. “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 tran-
scend 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
11048 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
summary judgment. Id. Thus, the company CEO’s “uncorrob-
orated, 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 submit-
ted 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 trade-
mark rights. 578 F. Supp. 911, 923-25 (S.D.N.Y. 1983).
Applying that theory, the court held that the plaintiff ’s trade-
mark rights, if any, in the image of Godzilla were unenforce-
able. Id.
FLEISCHER STUDIOS v. A.V.E.L.A., INC. 11049
[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 simi-
lar 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 licens-
ees 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 mean-
ing.
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 trade-
marks, [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.
11050 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
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 Stu-
dios, 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
FLEISCHER STUDIOS v. A.V.E.L.A., INC. 11051
to certain cartoons and to the character Betty Boop herself.
Max Fleischer died in 1972.
After Fleischer’s death, some of his descendants incorpo-
rated Fleischer Studios, which is Plaintiff here. Part of Plain-
tiff’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 merchan-
dise, 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 eventu-
ally sold it to Plaintiff. Plaintiff argued, alternatively, that
even if Paramount did not sell the copyright to UM&M, Para-
mount 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 rul-
ings and in its conclusion that the link between UM&M and
Plaintiff was broken. In their answering brief, Defendants
11052 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
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 agree-
ment 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.
1
Because the majority, too, rejects Defendants’ argument, I do not
explain in detail how the doctrine of indivisibility would operate. Briefly,
Defendants’ explanation for how the doctrine would operate would be
contrary to the parties’ subsequent conduct, whereas an alternative inter-
pretation 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.”).
FLEISCHER STUDIOS v. A.V.E.L.A., INC. 11053
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 Har-
vey 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 pos-
sesses the copyright via the Harvey Films chain of title. I dis-
agree 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. Fur-
thermore, after Defendants did advance a new argument,
Plaintiff immediately retorted, in its reply brief, that even if
2
The majority reaches that result by concluding that the doctrine of indi-
visibility 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 never-
theless prevails for the reasons stated in text.
11054 FLEISCHER STUDIOS v. A.V.E.L.A., INC.
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 possi-
ble 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 rea-
soning 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 dis-
trict court and on appeal is ignored, while a wholly new the-
ory 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 par-
3
The 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 reason-
ably 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.
FLEISCHER STUDIOS v. A.V.E.L.A., INC. 11055
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 copy-
right 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 copy-
right transferred neither to UM&M nor to Harvey Films.
Accordingly, I would reverse the district court’s grant of sum-
mary 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 poten-
tial interplay between the doctrines, the district court ruled on the trade-
mark 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 reconsidera-
tion, if necessary, in light of the correct copyright analysis.