Disney Trademark Infringement: Everything You Need to Know
The Disney Group takes Disney trademark infringement seriously and has copyright and trademark registrations to protect its characters.7 min read
2. Permission to Use Disney Characters
3. Fair Use of Disney Characters
4. Transformative Use of Disney Characters
5. Disney Anti-Piracy
6. The Disney Group's Rights
7. Examples of Lawsuits for Disney Trademark Infringement
8. When Is Unauthorized Use Not Trademark Infringement?
Updated July 8, 2020:
Legal Use and Intellectual Property Protection of Disney Characters
The Disney Group takes Disney trademark infringement seriously and has copyright and trademark registrations to protect its characters. Anyone who wants to use the characters from the Disney franchise must follow all legal requirements to avoid infringing on the company's intellectual property rights. The Disney Group and Walt Disney have created a series of extremely memorable and beloved fictional characters in modern culture. Some of the newer characters, such as Nemo the clownfish, are just as beloved as Disney's classic characters like Donald Duck and Mickey Mouse.
A copyright exists to protect original works, such as books and movies, while trademarks protect brand names. A copyright or trademark owner for a character will help to prevent anyone else from using the same character without the owner's permission. For example, Disney filed a lawsuit against the Academy of Arts and Sciences in 1989 when an entertainer portrayed the character of Snow White as part of an opening act of the Academy Awards telecast. The Academy did not have permission from Disney to use the character and faced repercussions.
Permission to Use Disney Characters
In order to use the characters legally, you must request permission from Disney Enterprises. Multiple corporate entities of Disney own many of the intellectual property rights of Disney characters. To learn more about which Disney entity owns the character you want to use, visit the Disney website. This site will also include information about how to request permission to use the Disney character. You may receive permission from Disney by email or mail.
If you or your company wants to use Disney characters on a long-term basis, Disney might require a licensing agreement, which involves the payment for the rights to use the characters. Disney can also decline to give permission for the use of its characters.
Fair Use of Disney Characters
One of the potential loopholes for using Disney's characters is referred to as fair use. The United States Patent and Trademark Office (USPTO) allows some limited circumstances in which an entity can reproduce a sample of or make reference to a protected character. This policy, called fair use, doesn't require Disney's permission.
For example, if a movie review included an image of one of the characters, this might be considered fair use. In the example of the Academy Awards telecast, Disney filed a lawsuit for copyright infringement due to the use of Snow White in the opening act. Based on the doctrine of fair use, a professor of law could show video clips of both the Academy Awards telecast and the movie “Snow White and the Seven Dwarves” as part of a lesson about intellectual property protection and rights.
Transformative Use of Disney Characters
You could also legally use Disney's characters under the transformative use law. The transformative use law requires that you transform or change the character to ensure that it isn't an identical copy. After changing the character, the resulting product may be referred to as a derivative work.
One example might be an artist who creates an original oil painting of a family, which includes Tinkerbell. In this case, using the Tinkerbell character as a member of the family may qualify the piece as fair use. Using Tinkerbell in the piece of art could also be considered a transformative use of the character, and the completed painting might be referred to as a derivative work.
All intellectual property rights on the brands, characters, titles, and other properties are owned by the Walt Disney Company and its affiliates.
Disney's anti-piracy clause restricts:
- Feature-length motion pictures
- Animated productions
- Other elements from Disney productions
The Disney Group's Rights
In order to ensure Disney can continue providing quality entertainment that measures up to its previous standards and the expectations of its customers, the company protects its rights. In order to prevent their brand from becoming diluted, Disney wants to be notified of cases of infringement. Any possible infringements of Disney's rights can be reported via:
- Email: firstname.lastname@example.org
- Phone: 818-560-3300 (voicemail box)
- Mail: The Walt Disney Company Antipiracy Group, 500 South Buena Vista Street, Burbank, CA 91521-0644
Examples of Lawsuits for Disney Trademark Infringement
Disney Sues Lightsaber Academy (2016)
Probably everybody who has watched a Star Wars movie has wanted to swing a light-saber around like Obi-Wan Kenobi. Michael Brown most likely had this in mind when he established the Lightsaber Academy. However, Disney, which owns the Star Wars franchise, was not pleased with this business venture.
Before it was sold to Disney, Lucasfilm did not challenge every unlicensed Star Wars venture it was aware of. For example, when Lucasfilm found out about Charles Ross' “One Man Star Wars Trilogy” stage show, it even invited the actor to perform the show for its arts executives. Disney, however, is a different company in that it places more importance on controlling its brand.
The Hollywood Reporter reported that Michael Brown had many businesses that used the Star Wars trademark, such as the Lightsaber Academy, Thrills and Skills, and New York Jedi. After sending multiple cease and desist letters to Brown, Disney eventually filed a complaint with a federal court in California.
In the complaint, it said that the defendant was regularly using the Lucasfilm trademarks in connection with its business activities without authorization. One of the infringing activities was the use of a logo that is almost identical to the trademarked Jedi Order logo. The logo is round in shape, has six wing-like shapes that curve upward, and an eight-pointed star that features elongated points at the top and bottom that form a vertical line. Fans of Star Wars who are familiar with the logo can easily tell that the two logos are indeed very similar.
After acquiring multiple intellectual properties, Disney has established itself as one of the world's largest entertainment companies. If anybody has a good business idea that involves the use of Disney trademarks, the best thing to do is to consult the company's lawyers first.
Disney Sues a Family-Owned Small Business (2008)
David and Marisol Chaveco, a couple from Clermont, Florida, own a small party business. They became national news when Disney filed a lawsuit against them for trademark infringement, seeking damages worth $1 million. They allegedly committed infringement 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.
Since Disney is very determined to protect its trademarks and intellectual properties, its attorneys were quick to act. The lawyers sent the couple three letters demanding a total of seven items. One of the demands was a request for the couple to send the costumes to Disney, where they will be destroyed. The couple responded by meeting six of the seven requests. Instead of sending the costumes to Disney, they sent them back to the eBay seller to get a refund. As a result of that, Disney filed a lawsuit against the couple for $1 million, plus legal expenses.
Opinions on the lawsuit were split. Some saw Disney as a giant corporation bullying a small family business, while others said the couple knew the consequences of their actions and deserved the lawsuit. The couple defended themselves by saying that Disney was not even in their thoughts when they bought the costumes. If they had known that their actions would lead to a lawsuit, they would not have purchased the costumes. They only saw the costumes as a tiger and a donkey and did not have the intention of impersonating anything.
However, many people were not convinced by the couple's statements and said that they would not have been sued if they had met all of Disney's requests. Instead, they tried to recover their investment, which was $500 plus shipping, by returning the costumes. Consequently, they had to face a much greater loss.
Disney contends that it has the legal right to prevent intentional and willful infringement of its trademarked properties so that its characters will not be misused. In addition, it said that it has been notified of the unauthorized use of its characters in the past. Without strong licensing agreements, the company will not be able to control the nature and quality of the performance, the costumes' quality, or the background or quality of the individuals who are delivering the performance.
When Is Unauthorized Use Not Trademark Infringement?
In the U.S., individuals and companies that hold federally registered trademarks have the legal right to file lawsuits against other parties who use their trademarks without authorization if the use can cause confusion to existing or potential customers. If the products or services from the unauthorized user come from or are endorsed by the holder of the registered trademark, a lawsuit can be filed for trademark infringement. However, there are two exceptions to this: nominative fair use and functional use.
Nominative fair use is a concept that is similar in some ways to a copyright's fair use exception, which permits certain uses of copyrighted work without authorization or payment. These uses include parody, news reporting, and other uses that have been determined by Congress and the courts to be protected under the First Amendment, not undermine the market for the copyrighted work, or a combination of both.
Basically, if an individual is unable to say what he or she wishes to say without using a certain portion of the copyrighted work, then he or she is allowed to use as much of the work as needed to say it.
If the use of a trademark is functional, it may not constitute trademark infringement even if it is unauthorized. Functional use is somewhat similar to fair use. If a person is using the trademark for purposes other than letting the public know the source of products or services, the use may be considered functional.
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