Crimes Of The Heart: A Trademark Valentine To Betty Boop

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 thisand 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...