Image source: https://blog.ipleaders.in/primer-indian-trademark-classifications/

This article has been written by Ananya Agarwal, pursuing the Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.

Introduction

Disney, a diversified multinational mass media and entertainment conglomerate with annual revenue of around US$65.388 billion surely knows a thing or two about protecting its massive IP asset collection. Disney became a mega-conglomerate once it acquired the Marvel and Star Wars franchise and has permeated popular culture so much that it is difficult to avoid infringement of its trademark or copyright. Any unauthorized use of Disney’s intellectual property or violation of exclusive authorship rights can count as an infringement of its intellectual property. This intellectual property refers to various items that can be either trademarked or copyrighted, depending on their nature. To make the difference clear, here is a table enumerating Disney’s different IP assets:

COPYRIGHT

TRADEMARK

Movie

Logos 

Music and music compositions

Slogans and catchphrases

Literary works

Brand names

Art including photography and digital imagery

Words, phrases, designs, or symbols used for distinguishing one brand from others

Video Games

For example, when Lion King was released, one of its songs ‘Hakuna Matata’ became very popular. Composed by Elton John with lyrics by Tim Rice, this song signified ‘no worries’ in Swahili. As the success of the movie grew, so did the popularity of the song. Thus, in 1994, Disney filed for a trademark on the phrase ‘Hakuna Matata’ and the mark was registered in 2003. The effect of this trademark is that the phrase cannot be used on clothing or other merchandise resembling Disney’s Lion King. However, the phrase may be used conversationally elsewhere as long as it is not connected to a Disney knock-off.

Concept of character rights

When discussing Disney’s trademark infringement, it is important to glance at the concept of character rights as well since it makes up an important part of Disney’s trademarks. Essentially, character rights and personality rights overlap, however, character right encompasses fictitious personalities in mainly comics and cartoons. Personality rights, on the other hand, include real human beings. Further, personality rights are owned by the celebrity, but character rights are owned by the ones producing the character. For example, if Iron Man’s character is infringed it would be Marvel’s concern but if the personality of Robert Downey Jr., who plays Iron Man, is infringed, it would be the actor’s concern. Since Disney has evolved multiple famous characters, it owns a host of character rights. Disney holds numerous copyrights and trademarks that restrict the use of the names and images of its characters. The trademarks allow Disney to prevent others from using certain fixed images of characters and many character names in a manner that could cause consumers to think the product or service in question was from Disney

For example, Disney can prevent others from using Elsa, a character from “Frozen,” in other movies, TV shows, or books. Disney could prevent someone from using the name “Minnie Mouse” on the box of a plush toy mouse.

Disney’s attitude towards infringement

Back in 1928, Walt Disney had a shocking realization that he did not own the rights to his dream project, Oswald the Lucky Rabbit. Since Disney had created the character for Universal Studios, the right of use existed solely with Universal. In the Spring of 1928, on a train journey after failed negotiations with Universal to increase his salary, Walt Disney vowed to create a character that would eclipse the fame of Oswald the Lucky Rabbit and whose rights Disney would retain. Thereafter, Mickey Mouse was born. But Walt was cautious now and designed the attitude of the Disney Corporation to be maximalists of trademarks and copyrights. 

Walt’s aggressive protection of Mickey Mouse made him his fortune and developed the reputation which prevailed even beyond 2010: ‘Don’t Mess with the Mouse’. This referred to both the internal reverence employees were said to hold for the company’s lead trademark character and to a warning to external creators, including fans, who wanted to make secondary works based on Disney properties—including ones based on their adaptations of works in the public domain.

In lieu of its extremely protective stance regarding rights, trademark seems to be a crucial issue, especially with classics like Cinderella. It is important to note that although now there exist industry standards with respect to the title of movies, it is still not a trademark. So, it was common for other, smaller studios to release videos and DVDs of classic fairy tales at the same time that the same title would appear in theatres or home releases from Disney. Thus, it became frustrating for Disney to create so much hype for its content only to see small production houses riding on the coattails of its excitement via adaptations from the public domain. 

Thus, to avoid trademark infringement of its content, Disney came up with two main ways to deal with this issue:

  1. Business solutions involving tweaking of names
  2. Legal solutions involving takedown notices and litigation

Business solutions to avoiding infringement

After facing constant tension with regard to their movie titles being infringed, Disney decided to tweak names of movies to terms that were not in the public domain to retain more protection over them. Thus, when they were releasing Rapunzel in 2010, they changed the title to ‘Tangled (2010)’ just before its release. Doing so separated Disney’s Rapunzel from any other Rapunzel adoption because now the public wanted the Tangled merchandise and not just any Rapunzel merchandise. Similarly, when Disney adapted ‘The Snow Queen’, they titled it ‘Frozen (2013)’ pre-release. Since there were several adaptations titled ‘Snow Queen’, Disney’s adaptation differentiated itself with a unique name. Even the names of the main characters were tweaked making them unique trademarks as well. 

Legal solutions to combating infringement

However, business solutions are not effective once infringement has been caused. Here, legal solutions are required and Disney is not afraid to take that step looking at its litigious journey. Following are some instances where Disney has come down hard on the infringers of their trademarks with the help of the legal tools available to them:

Disney v. characters for hire

A discussion about Disney’s trademark infringement is incomplete without mentioning Disney’s most formidable litigious competition in this regard, Characters For Hire, LLC, an internet-based party entertainment for hire business. Disney has been involved in a trademark infringement suit with CFH since 2016, claiming that the latter has infringed several character trademarks by promoting and selling Disney’s Mickey Mouse, Snow White, Ariel, Aladdin, Princess Aurora, Iron Man, Captain America, Hulk, Green Goblin, Luke Skywalker, Yoda, Obi-Wan Kenobi, Darth Maul, and Frozen’s Elsa. 

Importantly, in its defense, CFH never claims in any promotional content that Disney has sanctioned the sale of its characters. Thus, the use is blatant but what CFH relies on is that it has never intended to trick a consumer into believing that it is Disney selling them the characters. CFH claims that reference to the character as Elsa is merely ‘descriptive’ of the services the consumer will receive, i.e., an actor hired to dress like an animated character. 

Interestingly, another defense taken by CFH is an argument that Disney had previously employed against Caterpillar Inc, in 2003. Back then, Disney had decided to use construction equipment with very clear Caterpillar logos in its George of the Jungle movie. To this, Caterpillar had objected stating unauthorized use of the recognizable trademark. Disney responded by stating that it was not their intention to create a likelihood of confusion that Caterpillar had endorsed a Disney movie. One can say that Disney could have simply used a generic logo in the scene and avoided the whole litigation process. The same can be said for CFH as well. However, it cannot be denied that ‘Princess Elsa’ generates a lot more traffic than a generic princess. 

The tables in this particular case have turned for Disney and they are contending trademark tarnishing in that CFH is intending to trick the public into thinking CFH characters are somehow sanctioned by Disney and they will be getting Disney-quality characters at their parties and events. Disney is also pursuing trademark dilution arguing CFHs use of their marks hinders their ability to serve as unique identifiers of the plaintiff’s products and links the mark to a product of inferior quality. Ultimately, the defendants’ motion for summary judgment dismissing the Plaintiffs’ claims for trademark dilution, and copyright infringement were denied but their motion for summary judgment, (ECF No. 66), dismissing the Plaintiffs’ claims for trademark infringement, unfair competition, and false designation of origin was granted.

Star wars controversy

Before LucasFilms was acquired by Disney, the former did not sue every person making some form of derivative of the iconic Star Wars. However, when Disney acquired LucasFilms, this changed. Michael Brown started a ‘Lightsaber Academy’ that also had many Star Wars-related ventures. After sending multiple cease and desist letters to Brown, Disney eventually filed a complaint with a federal court in California. In this complaint. Disney stated that Brown was using several LucasFilms trademarks without authorization as part of his business. It especially contended that one of the activities of Brown was using a deceptively similar version of Disney’s trademarked Jedi Order logo and demanded $2 million in damages for each infringement.

[The complaint can be found at: https://www.documentcloud.org/documents/3143771-Lightsaber.html ]

Disney v. Kool Klown party

This is one instance that shows just how protective Disney is of its trademarks. The defendants were a couple running a small costume party wear shop. They became national news when Disney filed a lawsuit against them for trademark infringement, seeking damages worth $1 million. They allegedly infringed after they advertised the availability of two costumes for parties on their business website. The costumes, which were purchased on eBay, bore a close resemblance to Disney’s trademarked characters Tigger and Eeyore. Before demanding the same, Disney asked the couple to send them the costumes where they would be destroyed. However, on non-compliance, Disney did not hesitate in taking strict legal action against the small family-owned business. 

Practical approach towards avoiding infringement

From the above discussion one thing is clear, ‘Don’t Mess with the Mouse’ is an adage that every new-age creator and seller must keep in mind. If you have an idea that involves the use of Disney’s trademarks, obtain consent from the company first. This consent must be obtained as a license which is a contractual agreement that lays out exactly what types of uses of the intellectual property are permitted and the price the person or business obtaining permission will pay for the uses. Disney has put substantial time and money into developing its characters and so is very restrictive in granting licenses. Prices for licensing Disney characters are not readily available to the public. However, as a general rule in licensing, the broader the rights granted, the more expensive a license will be. If you seek a license to Disney, your first stop will be Disney’s licensing website.


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