INTA 2016: Disney’s IP moments

With the International Trademark Association’s 2016 annual meeting being hosted in Orlando, the home of Disney, WIPR looks back on five notable IP cases and other events involving the company.

Trademarks that caused a stir

‘Day of the dead’

On May 1, 2013, Disney filed a US trademark for ‘Dia de los muertos’, which is Spanish for ‘Day of the dead’.

It is an ancient Mexican celebration which takes place on October 31 to honour those who are deceased.

Disney filed the trademark for an untitled film about the Mexican holiday, but was forced to withdraw it after there was uproar from the general public.

WIPR reported shortly after that the company withdrew its application due to online protests and an online petition which was set up on change.org to stop it.

Disney made ten individual applications for the mark, which covered goods and services including “Christmas tree ornaments and decorations” and “clothing, footwear and headwear”.

“As we have previously announced, Disney-Pixar is developing an animated feature inspired by the Mexican holiday Día de los muertos,” a studio spokesperson told the  LA Times at the time.

Rachel Kronman, trademark attorney at law firm Frankfurt Kurnit Klein & Selz in New York, told our sister publication TBO in 2014 that the perception was that Disney wanted to control and own the rights to the name of a national holiday.

A spokesperson for Disney-Pixar said: “Disney’s trademark filing was intended to protect any potential title for our film and related activities. It has since been determined that the title of the film will change and therefore we are withdrawing our trademark filing.”

‘Seal Team 6’

Another controversial trademark which Disney applied for is ‘Seal Team 6’.

The mark was applied for at the US Patent and Trademark Office on May 3, 2011 and covered “entertainment and education services” and “action figures”.

The mark was in connection with the branch of the US Naval Special Warfare Development Group (otherwise known as Seal Team Six) which led the operation to kill Osama bin Laden, the founder and head of Islamist group Al Qaeda in 2011.

Disney withdrew its mark because the Navy applied for trademarks related to the term.

Publisher frozen out

Disney could claim to not be able to “Let it go” when it comes to copyright claims, as it was forced to defend copyright claims made against its blockbuster film “Frozen”, which was released in 2013.

In October last year, WIPR reported that Disney had fended off a $250 million payout, after the case was thrown out by the US Court of Appeals for the Third Circuit.

It surrounded Isabella Tanikumi’s claim that the film infringed her copyright.

Her memoir, “Yearnings of the Heart”, published in 2011, focuses on Tanikumi’s family struggles in the Peruvian Andes.

Tanikumi claimed that the Disney film infringed her copyright and filed a lawsuit at the US District Court for the District of New Jersey in September 2014.

She claimed there were 18 instances of “characters, plots, sub-plots and the storyline” lifted by Disney from her work.

“The company’s first trademark for mouse ears was obtained in 1928 and it currently owns 25 registrations related to the design.”

In February 2015 the district court granted Disney’s motion to dismiss the case.

Tanikumi appealed against the district court’s dismissal, arguing that the court erred by comparing the works at the pleadings stage.

The three appeals judges presiding over the case were not convinced by her argument. They said that in determining the similarity of two works a district court judge does not need to assess the factual questions and therefore can compare the works at the pleadings stage.

“While the works both feature a mountain setting, an intense sisterly bond, an untrue lover, and a resolution in which the female protagonist comes into her own without the help of a man, copyright law does not protect such common topics in autobiographical literature and film,” they concluded.

Deadmau5 in the firing line

Canadian musician Deadmau5 was also in Disney’s firing line, in a case which centred on a trademark application filed by the musician at the USPTO in 2013.

The application, intended to be used for clothing, was for a design mark for a mouse head with prominent ears.

Disney claimed that the application was too similar to its mouse head ears trademark and would cause a likelihood of confusion among US consumers.

The company’s first trademark for mouse ears was obtained in 1928 and it currently owns 25 registrations related to the design.

Disney filed its opposition in September 2014.

The dispute was settled on June 22, 2015. The Hollywood Reporter quoted a lawyer representing Deadmau5 who said the parties had “amicably resolved their dispute”.

Stan Lee takes aim

On December 23, 2014 the US Court of Appeals for the Tenth Circuit handed down a decision that dismissed claims by Stan Lee, former president and chairman of Marvel Comics, that Disney infringed his copyright.

The claims derived from a 1998 contractual agreement with Lee in which he transferred all of his ownership rights covering the Marvel Enterprises characters to Stan Lee Media in exchange for other benefits.

In October 2014, Lee brought copyright infringement claims against Marvel Enterprises’ corporate owner, Disney.

In the suit, Disney disputed whether Stan Lee Media had any interest in the Marvel characters. The US Court of Appeals for the Ninth Circuit found that Lee could not assert any ownership to the properties.

However, the US Court of Appeals for the Tenth Circuit found that the Ninth Circuit’s decision on the ownership issue was entitled to collateral-estoppel effect in subsequent cases.

As Stan Lee was “precluded” from alleging ownership, the case was failed as a matter of law.

Trademarks from the past

‘Dumbo’—filed March 2007

The film “Dumbo” was produced by Disney and premiered on October 23, 1941.

The main character, Jumbo Jr but nicknamed ‘Dumbo’, is an anthropomorphic elephant ridiculed for his ears. Dumbo, who is able to fly using them, tells the story of how he learns to be who he is.

At the box office, the film grossed $1.6 million worldwide and had a budget of $950,000.

Head of merchandise licensing at Disney Kay Kamen was involved in the early creation of the Dumbo character in 1939.

Merchandising is still going strong at the company, as in March 13, 2007 it filed a trademark for ‘Dumbo’ which covers “bath towels, clothing, jewellery and motion picture films”.

‘Peter Pan’—filed July 2015

Another book adaptation by Disney was of JM Barrie’s “Peter Pan” which was released in 1953.

It tells the story of Peter Pan, Wendy Darling and the Lost Boys as they try to defeat Captain Hook in Neverland.

The film grossed $84.7 million at the box office and had a budget of $4 million. It starred Bobby Driscoll who provided the voice of Peter Pan.

In July 17, 2015 Disney filed a ‘Peter Pan’ trademark for goods and services covering “breakfast cereals, sandwiches and tea”.

‘The Jungle Book’—filed November 2015

The latest version of “The Jungle Book” was released in April this year and was an adaptation of the book of the same name by Rudyard Kipling.

It follows Mowgli, an orphaned child raised in the Indian jungle by his friends Bagheera the panther and Baloo the bear, who sets out on a journey of self-discovery while trying to avoid evil tiger Shere Kahn.

Perhaps most famous for its song “Bare Necessities”, the film’s first outing was in 1967 and has now been given a re-boot by the studio. It stars Bill Murray, Scarlett Johansson and Idris Elba and is directed by Jon Favreau.

The film has grossed $829.3 million worldwide at the box office and received critical acclaim due to its use of visual effects.

In anticipation of the film, Disney registered trademarks on November 23, 2015 for ‘The Jungle Book’ and the goods and services cover clocks, jewellery, jewellery boxes, cosmetics and perfumes, as well as “juices”.