Betty Boop, the cartoon character created by Max Fleischer in 1930, has always been associated with the trappings of Valentine’s Day. She is frequently depicted on merchandise alongside symbols of love, especially the heart shape. But in 2011, the 9th Circuit Court of Appeals arguably killed Betty Boop’s trademark with that very shape. Why would 9th Circuit do such a thing? The answer is found in the doctrine of aesthetic functionality.

What is aesthetic functionality?

Aesthetic functionality derives from the doctrine of utilitarian functionality, which provides that a product feature cannot enjoy trademark or trade dress protection if it is essential to the use or purpose of the product. This prevents inventors from using trademark law to extend patent terms. For example, if you invent the wheel, you can patent it and maybe have exclusive rights to the round shape for a limited term.  But after that term, you cannot use trademark law to prevent others from selling round wheels, because the roundness — even if it operates as a source identifier — is essential to a wheel’s function.

In 1938, the Restatement of Torts complicated the doctrine with a hypothetical that has haunted trademark law ever since.  The Restatement opined that some goods are purchased for their aesthetic value, so the features that create that aesthetic value may be functional.  Thus, a “candy box in the shape of a heart may be functional, because of its significance as a gift to a beloved one.”  In other words, because consumers expect Valentine’s Day candy to be in a heart-shaped box, the heart shape is just as essential to the box’s function as the round shape is to a wheel’s function. As one court later put it, “fashion is a form of function.” This was the birth of aesthetic functionality.

A Cruel Joke

The first notable application of the doctrine was in Pagliero v. Wallace China Co, 198 F. 2d 339 (9th Cir. 1952). The 9th Circuit found that the floral patterns on the plaintiff’s dinnerware were popular not because they identified the source of the product, but because they were pretty.  Since the pretty patterns were “an important ingredient in the commercial success of the product,” i.e., aesthetically functional, they were not protected by trademark law.

Criticisms of this and other formulations of aesthetic functionality have proliferated ever since. The 7th Circuit has described it as “a cruel joke” that tends to punish pleasing designs and promote repugnant ones. Nevertheless, Professor McCarthy argues that the doctrine applied literally could “negate[] protection for all trademarks.” McCarthy also asserts that the doctrine is unnecessary:  in the case of the candy box, for example, the heart shape is generic and therefore not enforceable as a trademark in the first place, so we don’t need a confusing new doctrine to get to the right result. By 2006, even though the doctrine arguably had been endorsed in at least one Supreme Court opinion, a robust and continuing chorus of criticism from other courts and scholars prompted many to assume that aesthetic functionality was practically dead.

The Astonishing Demise of Betty Boop

But Betty Boop learned the hard way that it wasn’t. In 2006, the heirs of Max Fleischer, doing business as Fleischer Studios, brought a trademark action against the seller of unauthorized products depicting the name and image of Betty Boop.  The Central District of California issued summary judgment for the defendant because Fleischer Studios could not prove that it owned the Betty Boop mark.

When Fleischer Studios appealed to the 9th Circuit, something weird happened. Neither party had raised the issue of aesthetic functionality below, but the 9th Circuit raised it sua sponte and affirmed on that basis alone. The court held that the use of Betty Boop’s name and image bred commercial success not because Betty Boop identified the source of any product, but because she was pleasing to look at. Therefore, Betty Boop was a “functional aesthetic component” that the defendant – and presumably almost anyone else – was free to use.

The Astonishingly Short Revival of Betty Boop

After six months of increasingly heated criticism from trademark lawyers and the licensing industry, the 9th Circuit withdrew its Betty Boop opinion without explanation and issued a new opinion containing nary a mention of aesthetic functionality.  Happy ending for critics of aesthetic functionality, right?

Wrong.  In a further bizarre twist, on remand a new District Court judge relied on the reasoning of the withdrawn 9th Circuit opinion and issued summary judgment on the grounds of….yep…. aesthetic functionality.  Why? Well, the defendant’s products would be less desirable to consumers without Betty Boop’s name on them — like Valentine’s Day candy in a square box — and therefore the name was aesthetically functional and not protected by trademark law.

If you don’t agree with this holding, you are not alone. Stunned academics have described the outcome as “astonishing,” “bad law” and “plainly incorrect.”  We may never know for sure because Fleischer Studios, perhaps exhausted in spirit and wallet, did not appeal.  Other courts have continued to endorse the doctrine, but often in a more constrained and circumspect manner, most notably the Second Circuit’s 2012 opinion in Louboutin v. Yves Saint Laurent. Meanwhile, the original heart-shaped candy box hypothetical still resides among the volumes of modern legal scholarship, now relocated to Section 17 of the Restatement of Unfair Competition.