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.