UK Company Sues Disney Over Its Use Of The Same Public Domain Book Title

from the public-domain,-private-domination dept

Because the Disney corporation is so overprotective of its IP and generally willing to pull the trigger on legal threats/lawsuits, it's always a bit entertaining to see lawsuits filed against it for alleged infringement. But the quality of lawsuits brought against the entertainment giant are very much hit-and-miss. And just because it's the courtroom villain being sued, it doesn't automatically make those bringing the suits the heroes.

UK company Alice Looking Ltd. has registered trademarks on the phrase "Alice Through The Looking Glass" covering a wide variety of products, most of them being expensive shirts. What it doesn't have is any claim to "Alice" the character, or anything from the Lewis Carroll original, or really anything else other than those words in that order. (h/t Courthouse News Service)

Disney, on the other hand, recently released a film entitled "Alice Through The Looking Glass" -- a live-action take on the Carroll original and yet another rerub of stuff taken from the public domain by a studio that has done its best for the last 70 years to ensure nothing it owns will ever end up in the public's control. Alice Looking Ltd. feels the release of the Disney movie undercuts the US market for high-end goods with its trademarked phrase on them.

The lawsuit [PDF] makes plenty of trademark infringement allegations but presents almost nothing as evidence of these claims. The only exhibits attached are Alice Looking's US trademark registrations.

The crux of the plaintiff's argument is that Disney could have worked with it in some form of partnership but chose not to. Therefore: infringement.

Defendants were aware of Plaintiff's marks since at least December 2014. In connection with Defendants' announced intention to make and release a film using Plaintiff's trademarks, Defendants were put on notice of Plaintiff's marks. In a December 9, 2014 initial letter from Plaintiff's counsel, Defendants were advised as follows:

"The marketing of the Film under terms identical to the Mark is plainly of concern to Our Client because it is also likely that members of the public will associate Our Client's products under the Mark with products (the Film and associated merchandise) of Disney's. Furthermore given the significant resources that Disney has available (and will no doubt utilize) for marketing, it is likely Our Client's Mark will be swamped by Disney's use of the Mark and that members of [the] public may therefore believe that Our Client is seeking to trade off Disney's film."

More meetings followed, with Disney more interested in showing its film to the UK company than finding some way to work together to keep its trademarks on solid footing. At the end of it all, Disney allegedly hinted it would try to work something out. That never happened.

In one of Plaintiff's last substantive communication with Defendants, Disney misled plaintiff into thinking it would not market infringing products by saying to Plaintiff that, if an agreement could not be reached, Defendants would instead utilize a different merchandising mark.

Defendants have attempted to register one or more marks similar to those of Plaintiff. For example, the US Patent and Trademark Office refused registration of Disney Enterprises, Inc.'s application number 86827745 for "DISNEY ALICE THROUGH THE LOOKING GLASS" on the grounds, inter alia, of likelihood of confusion with Plaintiff's registration.

What Looking Glass is worried about is ongoing infringement based on the movie's existence in Disney's catalog. Disney may suffer through box office busts but it never gets tired of marketing tie-ins. That's where the problem lies in relation to the UK company's trademarks. The company is concerned people will be confused about the origin of its products, perhaps mistaking Alice Looking's goods for being Disney-produced. I think the opposite is far more likely (even if neither scenario is particularly likely): buyers may feel Alice Looking's pop-up shops in the US are an attempt to cash in on Disney's success.

Either way, the only "smoking gun" in the case is Disney's denied attempt to register the same mark. Other than that, this is two companies arguing over their slice of a public domain work. The words are taken directly from the title of Lewis Carroll's 1871 original, and if anyone "owns" them, it's no one, considering the book's current public domain status.

And from there we have at least an 8-month delay between the film's release and this lawsuit. The delay is even longer if the UK company was following Disney's development plans closely after its discussions with it in 2015. One wonders if this gap between claimed "willful infringement" and the lawsuit's filing was the plaintiff allowing Disney's marketing power to rack up some damages it could swoop in and claim. Alice Looking is seeking an injunction prohibiting Disney for further exploiting its under-performing film.

Without further proof of willful infringement, this will be a tough case to win. In some ways it resembles programmer Robin Antonick's lawsuit against EA for allegedly ripping off his source code to create new versions of the Madden football game. His case rested almost entirely on a theory of means and motive, of which EA had both. But what he didn't have was evidence of this infringement, and that's what finally cost him his case.

In this lawsuit, means and motive are asserted, but very little is given to show Disney went out of its way to violate the plaintiff's trademarks. It may have been aware of their existence, but its film title -- and all the marketing/ancillary sales tied to it -- was pulled from Carroll's original.

As for any customer confusion, it's hard to see how many would view the two as being competitive markets. Sure, both sell goods based on Carroll's characters and stories, but they take very different approaches. Disney is mass market. Alice Looking is upmarket. People can almost always tell when they're getting a Disney product because the company never shies away from slapping its logo all over it. The more genteel (and more expensive) products sold by Alice Looking are only going to be associated with Carroll's original work -- something greatly helped by the company's selling of 100+ year-old prints of Carroll's book for hundreds of dollars a piece.

But there's always a chance a court will see some form of customer confusion or dilution considering both sets of products spring from the same 1871 source. The chances of Disney's lawyers allowing an injunction to be leveled against the company without a fight, however, are slim to none.


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  • identicon
    Anonymous Coward, 17 Jan 2017 @ 3:57am

    The words are taken directly from the title of Lewis Carroll's 1871 original, and if anyone "owns" them, it's no one, considering the book's current public domain status.

    Ugh. Can't Mike find someone who understands basic trademark law to write articles reaching legal conclusions about basic trademark law? This is embarrassing.

    reply to this | link to this | view in chronology ]

    • identicon
      Lurker Keith, 17 Jan 2017 @ 4:18am

      Re:

      Public Domain is Public Domain. There's no need to bring in an expert. The Book is so ancient, it automatically qualifies in full, no matter how you look at it, including the Title.

      It should be illegal to even try to get a trademark on something that belongs to everyone already, especially with no room for uncertainty.

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 17 Jan 2017 @ 5:39am

        Re: Re:

        Public Domain is Public Domain. There's no need to bring in an expert. The Book is so ancient, it automatically qualifies in full, no matter how you look at it, including the Title.

        It should be illegal to even try to get a trademark on something that belongs to everyone already, especially with no room for uncertainty.

        Wow. Your understanding is so bad that you could write for Techdirt. I'm sure it pays several pennies. You should ask!

        I love that Mike thinks it's super-important to include legal documents when writing about them, but then he doesn't hire anyone qualified to write about the legal documents that are included.

        D'oh!

        reply to this | link to this | view in chronology ]

        • icon
          PaulT (profile), 17 Jan 2017 @ 5:49am

          Re: Re: Re:

          I always find it fascinating when a person attacks others for not having their superior knowledge of a subject, but falls short of explaining exactly what is wrong with the other person's opinion. Especially when they insist on doing so anonymously, so that readers have no reason to believe them without any further context.

          I'm not saying you're wrong, but an anonymous comment going "duuur you're dumb" doesn't add anything to the conversation, nor shed any real doubt on the people you're attacking.

          reply to this | link to this | view in chronology ]

          • identicon
            Anonymous Coward, 17 Jan 2017 @ 6:40am

            Re: Re: Re: Re:

            Trolls rarely desire engagement, they thrive on bullshit.

            reply to this | link to this | view in chronology ]

          • identicon
            Bruce C., 17 Jan 2017 @ 11:34am

            Re: Re: Re: Re:

            The bottom line is that there's no such thing as "public domain" in trademark law. That's a concept from copyright. Since the lawsuit is a trademark lawsuit, the considerations are a) Does the term or phrase satisfy the requirements to be deemed a valid trademark (presumably yes, as a trademark was issued), b) Is the trademark in active use to sell a product or service and c) is there a likelihood of customers being confused by other companies offering products or services using the same trademark. IANAL, so there may be others, but those are the main ones.

            reply to this | link to this | view in chronology ]

            • icon
              PaulT (profile), 18 Jan 2017 @ 1:47am

              Re: Re: Re: Re: Re:

              Oh, I'm sure that's somewhere towards what he was getting at. But his obnoxious immature attitude combined with no attempt to even state the problem warranted a bit of poking.

              reply to this | link to this | view in chronology ]

        • identicon
          Anonymous Coward, 17 Jan 2017 @ 5:50am

          Re: Re: Re:

          Obviously this article has rubbed you up the wrong way.

          To put it bluntly the trademark should obviously not have been granted in the first place on a set of words that are the title of a book that has long been in the public domain.

          If you think otherwise then one might assume that you have some kind of vested interest in this case.

          reply to this | link to this | view in chronology ]

          • identicon
            Anonymous Coward, 17 Jan 2017 @ 6:49am

            Re: Re: Re: Re:

            There is another question you might ask:

            If a work goes into Public Domain (from, you know, not being in public domain), does it invalidate any trademarks based on it?

            reply to this | link to this | view in chronology ]

            • identicon
              JEDIDIAH, 17 Jan 2017 @ 10:03am

              Clearly not everyone agrees here.

              There were likely no trademarks present when the work went into the public domain. The company in question is likely a vulture that managed to get one by the UK trademark office.

              I expect that Disney will attack the validity of the mark.

              reply to this | link to this | view in chronology ]

          • icon
            Richard (profile), 17 Jan 2017 @ 6:58am

            Re: Re: Re: Re:

            o put it bluntly the trademark should obviously not have been granted in the first place on a set of words that are the title of a book that has long been in the public domain.

            The public domain is a copyright/patent concept. It has no meaning in Trademark law. The nearest equivalent in Trademark is the concept of a generic term.

            Of course you can Trademark many things that you cannot copyright - they are quite different concepts.

            For example "Amazon". How can you possibly trademark that when it has been the name of a major river for hundreds of years?

            But of course they could and I could trademark it again - provided I did it for anopther type of business.

            The world is awash with overlapping trademarks - eg Lotus Cars - Lotus Software- Lotus Watches.

            Please don't conflate Trademark and copyright together - copyright maximalists just love it when you do - it gives them a power -up.

            Just remember trademark is there to protect the consumer from being deceived - anyu other use of the law is abuse.

            reply to this | link to this | view in chronology ]

        • icon
          zerosaves (profile), 17 Jan 2017 @ 5:51am

          Re: Re: Re:

          Care to enlighten us to how he's wrong?

          reply to this | link to this | view in chronology ]

        • identicon
          Anonymous Coward, 17 Jan 2017 @ 10:42am

          Re: Re: Re:

          Why bother hiring someone who knows nothing about what he's talking about, when you already do that for free.

          reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 17 Jan 2017 @ 6:21am

      Re:

      Next thing you're going to say is that Otis Wright is no fan of copyright law...

      reply to this | link to this | view in chronology ]

    • icon
      Wyrm (profile), 17 Jan 2017 @ 9:22am

      Re:

      And your problem is not making the difference between someone evaluating the legal basis of a lawsuit (which you seem to do) and someone criticizing the rational and moral basis of the law itself (which Techdirt often does, as I think is the case here).

      Not to mention that the author here is Tim, not Mike.

      reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 17 Jan 2017 @ 4:41am

    I expect no one selling anything high-end would want their product labeled/associated with "Mickey Mouse."

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 17 Jan 2017 @ 6:52am

      Re:

      Its all in the perspective.

      In the US we use the term of something being 'Mickey Mouse' to say it is cheap, plastic, or fake. We've mostly lost the illusion of magic as American adults and we can see the castle is made of cardboard and dreams.

      But go to other countries overseas and the take is different. I have been to a few places in Europe (mostly poorer countries) and found that they consider 'Mickey Mouse' to be a good thing and to show an example of American quality goods (something that is hard for poorer European countries to get). As my wife's young Greek cousin would say, 'America? Mickey Mouse... freedom... good!'

      reply to this | link to this | view in chronology ]

  • icon
    Richard (profile), 17 Jan 2017 @ 4:53am

    It should be illegal to even try to get a trademark on something that belongs to everyone already, especially with no room for uncertainty.

    That translates to:

    "It should be illegal to even try to get a trademark on anything"

    Since all individual words and short phrases and specifically titles don't qualify for copyright and are hence in the public domain. (How come there are so many in copyright songs called "The Power of Love" otherwise.)

    However the real crux of the matter is that this is trademark - and the concept of the public domain is rather different here - if it exists at all.

    The problem is not in trademarking "Through the looking glass" it is in conflating together several different legal things and creating legal theories that have no foundation in the law. Disney does this all the time so there is some poetic justice here.

    The point is this. If Disney creates a line of shirts called "Through the Looking Glass" then Alice Looking have a case - but so long as Disney sticks to movies there is no problem.

    Actually I have some sympathy with Alice Looking here. They are getting their retaliation in first. I suspect that they are worried that Disney will create some merchandise around the film and then sue them. That is perfectly consistent with Disney's past behaviour. Getting their own lawsuit in at an early stage may be a good way to forestall a legal attack from Disney.

    reply to this | link to this | view in chronology ]

    • icon
      Roger Strong (profile), 17 Jan 2017 @ 6:51am

      Re:

      The company's "about us" page states "Established in 2012, we specialize in Alice iconography including first edition books, rare illustrated editions, gifts, fashion and unique objects of desire."

      "Established in 2012....?" When Disney produced its 2010 "Alice in Wonderland" it was a safe bet that a sequel would follow, even if only direct to DVD. And indeed their "Alice Through the Looking Glass" was publicly announced in 2012. Wikipedia: Through the Looking Glass (disambiguation) shows earlier movies titled "Alice Through the Looking Glass" in 1998, 1987 and 1966. Plus endless works titles simply "Through the Looking Glass." It was far too late to "get their own lawsuit in at an early stage."

      When their entire business - name included - is based on IP on a popular work in public domain, already in heavy use in popular culture, movies already produced and others expected, they can only accept that others have the same right to that IP and will be using it too. Otherwise they're either two-bit scammers or they're doing for stupidity what Stonehenge does for rocks. And I don't think they're that stupid.

      reply to this | link to this | view in chronology ]

    • identicon
      JEDIDIAH, 17 Jan 2017 @ 10:05am

      Yes Virginia there are rules on Trademarks.

      There are a number of restrictions on trademarks. Bogus marks get approved all the time leaving a lot of room for litigation.

      reply to this | link to this | view in chronology ]

  • identicon
    Little correction, 17 Jan 2017 @ 5:39am

    Little correction

    Alice through the looking glass isn't a life action version of the original, it's a sequel to a rather free reinterpretation of the original.

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 17 Jan 2017 @ 6:46am

      Re: Little correction

      Um, what?

      reply to this | link to this | view in chronology ]

      • identicon
        Little correction, 17 Jan 2017 @ 6:50pm

        Re: Re: Little correction

        Alice through the looking glas is a sequel to Alice in Wonderland (Movie with Jonny Depp).
        Latter doesn't even retell the novell but is rather a Alice's return to wonderland and with some, let's say, creative freedoms taken upon the source material.

        If you don't mind spoilers look up the Nostalgia Critic review of it.

        reply to this | link to this | view in chronology ]

    • icon
      Ninja (profile), 17 Jan 2017 @ 6:49am

      Re: Little correction

      But... But... How is Carroll going to make an after-living if others are so shamelessly stealing from him!! - Copyright maximalist

      reply to this | link to this | view in chronology ]

    • icon
      Roger Strong (profile), 17 Jan 2017 @ 7:40am

      Re: Little correction

      As is commonly said of movie adaptations, "Based on the back cover of the novel."

      The 2001 Planet of the Apes film had virtually nothing to do with the original novel. (That novel is quite good, borrowing from Pierre Boulle's experience as a POW. He also wrote The Bridge over the River Kwai.) So they commissioned at least three novels (adult, young adult, graphic novel) based on the movie.

      Today when a writer sells the movie rights to their novel, they often have to include the rights for a novel based on the movie based on the novel.

      reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 17 Jan 2017 @ 6:03am

    go look at the shirts

    they take gaudy to a new level. In the end this whole story boils to who the hell really cares.

    reply to this | link to this | view in chronology ]

  • icon
    Norahc (profile), 17 Jan 2017 @ 1:20pm

    Something's missing

    Something is missing from this story...I didn't see any references to Disney sending out a Cease and Desist letter to the company. Eight months between the movie release and the lawsuit without a C&D from Disney? Somebody there is slacking on the job.

    /sarcasm

    reply to this | link to this | view in chronology ]


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