Morgan and Morgan is a plaintiffs firm specializing in personal injury (though they have other areas of practice). For those not familiar with the US system, if someone hits a victim with their car, a victim slips and falls in a store, etc. and the victim sues, Morgan and Morgan commonly handles that type of case for the victim. Basically the usual "Americans will sue each other for anything" type of law firm (though I don't strictly mean that to be criticism). Morgan & Morgan's business model places a heavy emphasis on convincing the defendant to settle before litigation. They also depend heavily on advertising. Regardless of what happens next, this story is a free "Morgan and Morgan stands up to the big guy for you" headline.
Apropos of nothing, the firm's founder, John Morgan, has been instrumental in attempting to legalize marijuana in Florida, which some have identified as a potential, but very funny, conflict of interest given the type of work Morgan and Morgan does.
That's true, though I wonder at times how much of that is because of the way plaintiff's firms set the market up. And, again, I don't really mean to criticize them--I tend to err on the side of access to justice--as much as to explain to anyone non-US who tf M&M are and why this is interesting.
Jury trials involve a lot of time, costs, and uncertainty. Juries are human and their verdicts need not be rational.
For claims significantly less than the defendant's assets, if the defendant is likely to be found liable, they may need to pay the plaintiff's losses as well as lawyer and court costs; settling before court most likely reduces the cost and provides certainty. For the plaintiff, settling before court may reduce the award, but provides it faster and with certainty.
For claims larger than the defendant's assets, typical cases involve an insurance company and in some cases a trial award that's above policy limits may be payable the insurance company if a settlement offer below the limits was offered by the plaintiff and not accepted by the insurance company (keyword: excess judgement), but if the plaintiff is on their own they may not care one way or the other --- a settlement they can't pay might be the same as a judgement they can't pay, perhaps delay and hope is preferred, perhaps they may be able to negotiate a settlement that they can pay. For the plaintiff, if there's only $X from the defendant, using it on legal costs is a loss, so settlement is preferable, especially if there's a chance of the defendant making the assets unavailable.
The incentives for settlement aren't so much about what plaintiffs' lawyers or defendants' lawyers are up to, but about how courts operate. Certainly lawyers have some influence on operation of courts, but it's a big combination of things, and IMHO, it falls more under government policy than anything else. If courts were staffed such that you could reliably expect to take an injury case from complaint to judgement in 6 weeks, maybe more people would do it. Of course, that might require more omniscience than is possible.
The idea that cases settle before trial because of Plaintiff's and not defendants is pretty silly. I'm not sure where everyone got the idea that the powerful people in this country are personal injury attorneys and not the gigantic insurance companies they are always battling.
For example, Florida Bar Rule 4-1.5(a) prohibits "clearly excessive" attorney's fees, while 4-1.5(f)(4)(B) sets several criteria for contingency fees (typically the sort of fees a plaintiff's firm would charge) that, if not met, renders a fee presumptively "clearly excessive".
This is basically what we have in the US instead of a strong regulatory state. One of the few ways consumers might seek justice against a giant corporation.
And it's advertised relentlessly on Youtube like Honey, BetterHelp, SurfShark, NordVPN, RocketMoney, Incogni, and Ground News so it's probably trash too.
I think when places have such huge advertising budgets does that means you're paying more or getting less. Do you think that applies to law firms like Morgan and Morgan?
Good change it’s all for free press. Morgan and Morgan is huge, and John Morgan is toying with a run for Florida governor. He was a big force behind a marijuana legalization push, first medical, then recreational.
Title is incorrect. The firm isn't taking Disney to court. They are asking the court to look at their ad and confirm that it doesn't infringe on Disney's trademark, thus shielding themselves from future lawsuits from Disney.
Isn’t Disney a party to the declaratory judgment action which Morgan and Morgan filed, but without Disney having chosen to include itself in the action? That counts as the firm taking Disney to court.
Am I wrong in thinking this makes more sense than decades/centuries long copyrights?
Let the copyright on a work expire so I can share my copy of Toy Story with my friends, but retain a trademark on the characters so that I can't go around making new Toy Story movies (or theme parks or pajamas).
This isn't a copyright case, it's a trademark case.
The issue is that some of the specific expressions of the elements may be extremely distinctive, and trademarked by a person (or company) for commercial use. In those situations, you can still use the element, but not the specific expression of that element that is trademarked because that specific expression is being used by another person for ongoing commercial activities. However, unlike copyright, trademarks die if they are not kept in relatively continuous commercial use, generally 3 years after last use.
For example: the Winnie the Pooh horror movie. The specific version of Winnie the Pooh in the animated films is trademarked by Disney. The version that is a serial killer wearing a costume is not. Disney didn't bother to try and stop the film. So, if you wanted to make versions of the Toy Story character that don't look like the animated versions, you'd be in the clear once the copyright expires.
But the Morgan and Morgan ad is different. They're attempting to use trademarked characters for their own commercial purposes. (And there's no clear parody of Steamboat Willie; in the original cartoon he causes a bunch of accidents that harm other characters including the character that would become Minnie, so what is the parody here?) Unless they've made a sizable donation to the judge's bank account, they have no chance of winning their motion as there is over a century of case law against. OTOH, given the current administration and the openness of his appointees to disregarding centuries of existing law, it's very possible that Morgan and Morgan expects to win this case.
As an aside, Morgan and Morgan is generally regarded as the worst of the large personal injury law firms. In cases in which other PI firms sued the same defendants, the M&M plaintiffs got the smallest settlements, because M&M settles as early in the case as possible (usually before discovery) as their business model is based on quick, cheap settlements and they'll put heavy pressure on clients to accept the low-ball offers to avoid having to spend the time or labor costs of going through discovery. There are many complaints of M&M pressuring their own clients, fraudulent billing, withheld settlements, dropped cases, and bait-and-switch fees. They're the most sanctioned law firm in the country...by a lot...
This is what's keeping me from working on my own "John Carter of Mars" game. The books (at least the first 5-6) are public domain, but Edgar Rice Burroughs, inc has John Carter, Dejah Thoris, etc., all trademarked, and can continue that indefinitely. I don't think it would be a slam dunk legal case, but it's enough to discourage me from trying (I've heard they are litigious).
The Winnie the Pooh books by A. A. Milne are no longer under copyright, that copyright expired. However, the Disney animations of Winnie the Pooh are still under copyright, and they have a distinctive style compared to the illustrations in the books. It's mainly about copyright, not trademarks.
> retain a trademark on the characters so that I can't go around making new Toy Story movies
Here's a quick thought experiment: Suppose I create a small movie company based on another character also in the public domain, and I successfully receive a trademark for my logo, which is... Jesus Christ.
Does/Should that give me control over anyone selling or distributing other books, movies, pictures, and songs depicting Jesus?
In a sane world, the answer is "heck no", because trademarks are really about stopping fraud, where someone else is trying to leech off my good reputation by confusing people into doing business with them instead.
Now, one might plausibly argue that Jesus is "generic" and thus the original trademark was wrongly granted, but the same principles apply even if I rebrand under just one of the less-popular characters or symbols. ("As the owner Pontius Pilate Productions, your story violates my trademark!")
You can't get the trademark on the parts that are in common use, and you can't the trademark in a way that harms language. You can get protection over stuff that you invented and doesn't limit how people talk to each other.
On this case specifically, you can't make a Mickey Mouse cartoon in a way that looks like it came from Disney. That's all that the trademark protects.
> There's not much point to the thought exercise. You wouldn't get the trademark in the first place.
My brother in Jesus Christ paperwork, even now there are already 236 active and formally-registered trademarks which have been granted involving "Jesus Christ", 18 if you limit it to "wordmarks." [0]
Also, as per the concurrent(?) edited-in last paragraph, the basic idea remains even if the scope is, er, less-grandiose.
USPTO search reveals...0 trademarks of "Jesus Christ" because its not trademarkable.
There are a number of longer phrases which include the phrase "Jesus Christ" that are trademarked (either as logos or as phrases), but that is a very different thing.
But your example just proves that the trademark avenue is not a genuine moat for Disney. If dozens of trademarks have been given for logos containing Jesus Christ, then there can be dozens of logos containing Steamboat Willie.
You can trademark a novel turn of phrase that includes historical figures, but not the actual names, as that falls under the "right of publicity" and protections against false endorsement.
So, you could start a new church and trademark "Terr's Church of Jesus Christ", as the trademark covers the organization, but you cannot trademark the name "Jesus Christ" itself.
> not the [historical figure] actual names, as that falls under the "right of publicity"
IANAL but I don't think it'd be blocked for that reason: "Right of publicity" is a per-state affair, where it exists it may not be posthumous, where it is posthumous it may not include historical figures, and even if it could apply, there's there's no credible estate/heir of Jesus Christ with standing.
... But I gotta admit it would be amusing to watch someone try to fill that role.
As an example, see Pirone v. MacMillan [0], where there was no posthumous "right of publicity" for Babe Ruth's daughter to draw upon. (At least, not back then.)
Hence why I included the bit about false endorsement, which is a federal rule.
Notably, from your link:
> Therefore, a trademark is "not property in the ordinary sense," but only a word or symbol indicating the origin or source of a product.
> Although its registration is limited to the words "Babe Ruth," Pirone would have us read her rights in that word mark to include every photograph of Ruth ever taken. We decline to do so.
The product in question didn't use Babe Ruth's name in any way implying an endorsement or origination of the calendar; it merely included some pictures. The ruling determined that trademark does not apply here.
Pictures have been deemed eligible for copyright, but that's neither here nor there. The name "Jesus Christ" is not eligible for trademark.
> Hence why I included the bit about false endorsement, which is a federal rule.
That obviously can't apply to use of the name or imagery of Jesus Christ; there is a much more important federal rule that says it is everyone's God-given right to assert directly that they are endorsed by Jesus Christ.
(This comment is imbued with the divine grace of the Messiah.)
A person may assert their beliefs, but those beliefs do not extend to trademark law, most especially in the context of "sue everyone else who uses the name of a historical religious figure that I have decided to take for myself".
Your argument is gibberish. As I read your comments, you say that:
1. It isn't possible to trademark the name "Jesus Christ";
because
2. This might imply that your company is endorsed by Jesus Christ.
But that is clearly false. Those grounds are illegitimate; the government cannot take a position on whether you are or aren't endorsed by Jesus Christ.
There are no "false endorsement" concerns raised by the hypothetical trademark.
That was the plan for years now. They made steamboat willie a part of their animation wing's trademark more than a decade ago: https://m.youtube.com/watch?v=MJkQ-1Jvf0g
> Hmmm this is a preemptive lawsuit from Morgan and Morgan for clarity, which seems to be in bad form
Not a lawyer, but to bring a lawsuit in the US you typically have to show that you've suffered a real injury that the court can remedy. How can Morgan and Morgan establish standing here?
The suit is about trademark. Whether it'll fly or not is up in the air, but that's the reason that Disney actively made the "Steamboat Willie" version part of their pre-film branding.
I think in a sane world (heh) using "Steamboat Willie" should only be impaired by Disney trademark exactly as much (or as little) as people would be prevented from sharing pictures of the Statue of Liberty just because some tax-preparation company has a photo-realistic outline in their logo.
In both cases the company has zero rights to the underlying public thing, and the court just needs to ask: "Is someone trying to trick consumers into mis-identifying the company or product?"
P.S.: Even if the company transitioned into being a seller of commemorative Statue of Liberty figurines, their trademarked logo shouldn't give them the ability to monopolize the subject matter. In that other context it might even be revoked as too-generic and unenforceable.
After some AI-assisted probing, it seems like if Disney wants to challenge this use, they'll likely be arguing that S.W. is a "famous mark" akin to Coca-Cola or Nike and thus merits additional broad protection under the Trademark Dilution Revision Act of 2006 (TDRA). (I haven't checked to see whether one of Disney's pet congresscritters sponsored that one, as was the case with at least one of the copyright extension acts that kept SW out of the public domain on a few occasions).
If they can meet the bar established in TDRA they can probably squash all usage of Willie, even in unrelated-industries usage not intended to confuse consumers, in the same way that you can't market "Coca-Cola bedsheets" or a "Google Bicycle" without a license from the trademark holder.
Yeah they might want to argue that. It's not going to get very far considering that the issue is they are actually just trying to turn their copyright into a trademark, so no court is just going to ignore that the way your stupid AI did.
"the issue is they are actually just trying to turn their copyright into a trademark"
That is certainly your opinion of "the issue," but that is a complete begging of the question. That would have to be argued in court. They do have a trademark which includes that public domain character in it, that much is fact. This is no less of a trademark than any other trademark that consists of non-copyrightable elements. The rulings on a trademark case would simply be based on the intent or likelihood to mislead people into believing there's an endorsement or association there.
> demonstrating Disney’s continued protection of its intellectual property rights despite the copyright expiration
That's some insane mental gymnastics. If copyright expired the IP is no longer theirs. And they don't protect but make extortion attempt under false pretense instead with use of fraudulent claims.
Lawyers aren't expected to know the law outside of their specialty, but a law firm that doesn't understand basic trademark law is probably not a firm you want to trust with your legal matters, because it indicts a failure to perform even the most basic due diligence.
Lego already tried this approach and it doesn’t work. You cannot use trademark law to extend expired patents or copyrights.
The real ad here is them baiting Disney and running this fairly open and shut case. Of cause they can use public domain material in their commercial and Disney can’t prevent them.
No, the Louis Vitton cases would not help M&M here.
To successfully make a parody case in regards to trademark the parody itself must make it obvious that the defendant is not in anyway connected to the owner of the trademarked thing. The Morgan and Morgan ad doesn't do that; without the disclaimer at the beginning it wouldn't be obvious that the ad wasn't a animation created by Disney. (In the original Steamboat Willie, Mickey causes a number of accidents that harm other characters. Causing a car accident would not stand out from the list of things he does.) Importantly, a disclaimer doesn't really mean much for trademark law since this body of law is about how the trademark is used.
Why does MOB get away with parodying the LV bag (in the case you cite)? Well, for starters they didn't just rip off the look of an LV bag; they stylized their renderings of the LV bags to over-emphasize aspects of the LV bags that weren't actually present in the LV bags (but were clearly evocative of the bags). They also were juxtaposing the stylized LV bag against their own product.
The case you cited also specifically refers to other LV cases in which the defendants lost (and LV won). In one case, Hyundai briefly displayed a basketball with a logo very similar to LV's trademarked monogram. Hyundai lost, even though the ad was about the ostentatiousness of luxury goods (i.e., social commentary), because nothing about the parody itself indicated that the trademark owner wasn't involved (and indeed, part of why Hyundai lost was because there was evidence that people believed that LV was making limited-edition basketballs and wanted to buy them).
More on point, the defendant in the Debbie Does Dallas case was sued by the Dallas Cowboy Cheerleaders, and lost, even though DDD is clearly a parody. The problem is that the parody was not sufficiently specific to the trademarked content (in this case, the uniform), and also it wasn't clear from the content of the film itself that the DCC wasn't connected to the film.
> To successfully make a parody case in regards to trademark the parody itself must make it obvious that the defendant is not in anyway connected to the owner of the trademarked thing. The Morgan and Morgan ad doesn't do that; without the disclaimer at the beginning it wouldn't be obvious that the ad wasn't a animation created by Disney.
This is what I was wondering about. Do those disclaimers make it okay? Because without that context it certainly feels like this ad could be officially endorsed by Disney. And that seems to be exactly the kind of thing trademark law is meant to deal with: avoiding trust problems from people being misled about who is selling them what.
Maybe I'm just not up on my understanding, but I don't see how this is parody? There's not really any jokes, it's not a commentary on Disney, Disney's Mice, or boating or driving or society at large. Maybe running into a car on the road with a boat is a joke, I guess.
Steamboat Willie has been part of Disney animations trademark for at least a decade. It is literally the trademark animation used at the beginning of every Disney animation film.
And? Trademark isn't copyright law. It doesn't operate the same way. You can indicate that something isn't being used as a mark to indicate source (all trademark protects) and therefore it isn't necessarily an infringement of someone's mark, the same way direct verbatim copying would most likely be.
What's your point anyway? That copyright should be subsumed into trademark? Some others here are posting it, not that it makes any sense. Even funnier, they complain about the term limitations of copyright... but trademarks are indefinite.
OTOH, making a bunch of noise about the case gets the ad and their product seen by a different demographic than paying for the ad to be placed wherever they would have. IMHO, this is an alternate marketing campaign, costs go to the courts instead of broadcasters. There's some public benefit if the case generates precedent, so that's nice that they want to spend their ad budget on this.
In law, isn't the process the punishment frequently? What if they're just expecting Disney to drain their coffers with frivolous legal work? Isn't that a reasonable response then?
It prevents Disney from being able to file TRO or preliminary injunction preventing the commercial from being aired (and protected M&M from having to spend resources fighting that, which will do nothing to actually determine the overall outcome of the case).
Skeptical that gamblor is an attorney, they certainly do not seem to know what they are talking about.
Morgan and Morgan is a plaintiffs firm specializing in personal injury (though they have other areas of practice). For those not familiar with the US system, if someone hits a victim with their car, a victim slips and falls in a store, etc. and the victim sues, Morgan and Morgan commonly handles that type of case for the victim. Basically the usual "Americans will sue each other for anything" type of law firm (though I don't strictly mean that to be criticism). Morgan & Morgan's business model places a heavy emphasis on convincing the defendant to settle before litigation. They also depend heavily on advertising. Regardless of what happens next, this story is a free "Morgan and Morgan stands up to the big guy for you" headline.
Apropos of nothing, the firm's founder, John Morgan, has been instrumental in attempting to legalize marijuana in Florida, which some have identified as a potential, but very funny, conflict of interest given the type of work Morgan and Morgan does.
> Morgan & Morgan's business model places a heavy emphasis on convincing the defendant to settle before litigation.
To be fair, "ambulance chaser" lawyer or not, over 90% of civil cases in general in the US settle before a trial commences.
That's true, though I wonder at times how much of that is because of the way plaintiff's firms set the market up. And, again, I don't really mean to criticize them--I tend to err on the side of access to justice--as much as to explain to anyone non-US who tf M&M are and why this is interesting.
Jury trials involve a lot of time, costs, and uncertainty. Juries are human and their verdicts need not be rational.
For claims significantly less than the defendant's assets, if the defendant is likely to be found liable, they may need to pay the plaintiff's losses as well as lawyer and court costs; settling before court most likely reduces the cost and provides certainty. For the plaintiff, settling before court may reduce the award, but provides it faster and with certainty.
For claims larger than the defendant's assets, typical cases involve an insurance company and in some cases a trial award that's above policy limits may be payable the insurance company if a settlement offer below the limits was offered by the plaintiff and not accepted by the insurance company (keyword: excess judgement), but if the plaintiff is on their own they may not care one way or the other --- a settlement they can't pay might be the same as a judgement they can't pay, perhaps delay and hope is preferred, perhaps they may be able to negotiate a settlement that they can pay. For the plaintiff, if there's only $X from the defendant, using it on legal costs is a loss, so settlement is preferable, especially if there's a chance of the defendant making the assets unavailable.
The incentives for settlement aren't so much about what plaintiffs' lawyers or defendants' lawyers are up to, but about how courts operate. Certainly lawyers have some influence on operation of courts, but it's a big combination of things, and IMHO, it falls more under government policy than anything else. If courts were staffed such that you could reliably expect to take an injury case from complaint to judgement in 6 weeks, maybe more people would do it. Of course, that might require more omniscience than is possible.
The idea that cases settle before trial because of Plaintiff's and not defendants is pretty silly. I'm not sure where everyone got the idea that the powerful people in this country are personal injury attorneys and not the gigantic insurance companies they are always battling.
> That's true, though I wonder at times how much of that is because of the way plaintiff's firms set the market up.
My understanding is that over 90% of criminal cases also settle before trial commences.
And to be even more fair:
It is strictly regulated how much money Morgan and Morgan can get out of someone who they represent.
I’ve never heard of a regulation governing attorney’s fees. Which regulations might you be referring to?
For example, Florida Bar Rule 4-1.5(a) prohibits "clearly excessive" attorney's fees, while 4-1.5(f)(4)(B) sets several criteria for contingency fees (typically the sort of fees a plaintiff's firm would charge) that, if not met, renders a fee presumptively "clearly excessive".
Most Florida contingency fees will be about 1/3 of collectible settlement/awards.
...after expenses which can be considerable.
[dead]
Presumably talking about damages.
> They also depend heavily on advertising.
They are all over social media ( tiktok,youtube ) crime videos. Never heard of them until I started watching crime videos online.
> Apropos of nothing, the firm's founder, John Morgan, has been instrumental in attempting to legalize marijuana in Florida
Makes sense. There is some correlation between drug use and crime.
This is basically what we have in the US instead of a strong regulatory state. One of the few ways consumers might seek justice against a giant corporation.
That's why I called out that I didn't mean my description of their work as criticism, strictly speaking.
And it's advertised relentlessly on Youtube like Honey, BetterHelp, SurfShark, NordVPN, RocketMoney, Incogni, and Ground News so it's probably trash too.
I think when places have such huge advertising budgets does that means you're paying more or getting less. Do you think that applies to law firms like Morgan and Morgan?
Who's cheaper: The mom-and-pop, or Walmart? According to Wikipedia, Morgan & Morgan has 108 offices and over 3000 employees.
Good change it’s all for free press. Morgan and Morgan is huge, and John Morgan is toying with a run for Florida governor. He was a big force behind a marijuana legalization push, first medical, then recreational.
https://www.politico.com/news/2025/05/15/john-morgan-florida...
Title is incorrect. The firm isn't taking Disney to court. They are asking the court to look at their ad and confirm that it doesn't infringe on Disney's trademark, thus shielding themselves from future lawsuits from Disney.
Isn’t Disney a party to the declaratory judgment action which Morgan and Morgan filed, but without Disney having chosen to include itself in the action? That counts as the firm taking Disney to court.
Well known for their commercials: https://www.youtube.com/watch?v=NYtQXtUMWvQ
I suppose trademark law will be the catch-all protection Disney will be using from now.
Am I wrong in thinking this makes more sense than decades/centuries long copyrights?
Let the copyright on a work expire so I can share my copy of Toy Story with my friends, but retain a trademark on the characters so that I can't go around making new Toy Story movies (or theme parks or pajamas).
But why shouldn't you be able to make a new Toy Story movie 100 years, give or take, after the original?
Depends, is there still a Disney making official Toy Story products that your products could be confused with? If not, fair game.
Yes
But ten years
A decade is enough
IP is a trade off, and the balance is wonky
This isn't a copyright case, it's a trademark case.
The issue is that some of the specific expressions of the elements may be extremely distinctive, and trademarked by a person (or company) for commercial use. In those situations, you can still use the element, but not the specific expression of that element that is trademarked because that specific expression is being used by another person for ongoing commercial activities. However, unlike copyright, trademarks die if they are not kept in relatively continuous commercial use, generally 3 years after last use.
For example: the Winnie the Pooh horror movie. The specific version of Winnie the Pooh in the animated films is trademarked by Disney. The version that is a serial killer wearing a costume is not. Disney didn't bother to try and stop the film. So, if you wanted to make versions of the Toy Story character that don't look like the animated versions, you'd be in the clear once the copyright expires.
But the Morgan and Morgan ad is different. They're attempting to use trademarked characters for their own commercial purposes. (And there's no clear parody of Steamboat Willie; in the original cartoon he causes a bunch of accidents that harm other characters including the character that would become Minnie, so what is the parody here?) Unless they've made a sizable donation to the judge's bank account, they have no chance of winning their motion as there is over a century of case law against. OTOH, given the current administration and the openness of his appointees to disregarding centuries of existing law, it's very possible that Morgan and Morgan expects to win this case.
As an aside, Morgan and Morgan is generally regarded as the worst of the large personal injury law firms. In cases in which other PI firms sued the same defendants, the M&M plaintiffs got the smallest settlements, because M&M settles as early in the case as possible (usually before discovery) as their business model is based on quick, cheap settlements and they'll put heavy pressure on clients to accept the low-ball offers to avoid having to spend the time or labor costs of going through discovery. There are many complaints of M&M pressuring their own clients, fraudulent billing, withheld settlements, dropped cases, and bait-and-switch fees. They're the most sanctioned law firm in the country...by a lot...
This is what's keeping me from working on my own "John Carter of Mars" game. The books (at least the first 5-6) are public domain, but Edgar Rice Burroughs, inc has John Carter, Dejah Thoris, etc., all trademarked, and can continue that indefinitely. I don't think it would be a slam dunk legal case, but it's enough to discourage me from trying (I've heard they are litigious).
The Winnie the Pooh books by A. A. Milne are no longer under copyright, that copyright expired. However, the Disney animations of Winnie the Pooh are still under copyright, and they have a distinctive style compared to the illustrations in the books. It's mainly about copyright, not trademarks.
All things considered, I prefer the original illustrations myself.
Yes they is also true but the point of the comment was the M&M/Disney case is a trademark issue.
> retain a trademark on the characters so that I can't go around making new Toy Story movies
Here's a quick thought experiment: Suppose I create a small movie company based on another character also in the public domain, and I successfully receive a trademark for my logo, which is... Jesus Christ.
Does/Should that give me control over anyone selling or distributing other books, movies, pictures, and songs depicting Jesus?
In a sane world, the answer is "heck no", because trademarks are really about stopping fraud, where someone else is trying to leech off my good reputation by confusing people into doing business with them instead.
Now, one might plausibly argue that Jesus is "generic" and thus the original trademark was wrongly granted, but the same principles apply even if I rebrand under just one of the less-popular characters or symbols. ("As the owner Pontius Pilate Productions, your story violates my trademark!")
You can't get the trademark on the parts that are in common use, and you can't the trademark in a way that harms language. You can get protection over stuff that you invented and doesn't limit how people talk to each other.
On this case specifically, you can't make a Mickey Mouse cartoon in a way that looks like it came from Disney. That's all that the trademark protects.
There's not much point to the thought exercise. You wouldn't get the trademark in the first place.
> There's not much point to the thought exercise. You wouldn't get the trademark in the first place.
My brother in Jesus Christ paperwork, even now there are already 236 active and formally-registered trademarks which have been granted involving "Jesus Christ", 18 if you limit it to "wordmarks." [0]
Also, as per the concurrent(?) edited-in last paragraph, the basic idea remains even if the scope is, er, less-grandiose.
[0] https://tmsearch.uspto.gov/search/
USPTO search reveals...0 trademarks of "Jesus Christ" because its not trademarkable.
There are a number of longer phrases which include the phrase "Jesus Christ" that are trademarked (either as logos or as phrases), but that is a very different thing.
I'm not sure how you got from "the example logo contains Jesus Christ" to "the company name must be this exact string."
But your example just proves that the trademark avenue is not a genuine moat for Disney. If dozens of trademarks have been given for logos containing Jesus Christ, then there can be dozens of logos containing Steamboat Willie.
You can trademark a novel turn of phrase that includes historical figures, but not the actual names, as that falls under the "right of publicity" and protections against false endorsement.
So, you could start a new church and trademark "Terr's Church of Jesus Christ", as the trademark covers the organization, but you cannot trademark the name "Jesus Christ" itself.
> not the [historical figure] actual names, as that falls under the "right of publicity"
IANAL but I don't think it'd be blocked for that reason: "Right of publicity" is a per-state affair, where it exists it may not be posthumous, where it is posthumous it may not include historical figures, and even if it could apply, there's there's no credible estate/heir of Jesus Christ with standing.
... But I gotta admit it would be amusing to watch someone try to fill that role.
As an example, see Pirone v. MacMillan [0], where there was no posthumous "right of publicity" for Babe Ruth's daughter to draw upon. (At least, not back then.)
[0] https://law.justia.com/cases/federal/appellate-courts/F2/894...
Hence why I included the bit about false endorsement, which is a federal rule.
Notably, from your link:
> Therefore, a trademark is "not property in the ordinary sense," but only a word or symbol indicating the origin or source of a product.
> Although its registration is limited to the words "Babe Ruth," Pirone would have us read her rights in that word mark to include every photograph of Ruth ever taken. We decline to do so.
The product in question didn't use Babe Ruth's name in any way implying an endorsement or origination of the calendar; it merely included some pictures. The ruling determined that trademark does not apply here.
Pictures have been deemed eligible for copyright, but that's neither here nor there. The name "Jesus Christ" is not eligible for trademark.
> Hence why I included the bit about false endorsement, which is a federal rule.
That obviously can't apply to use of the name or imagery of Jesus Christ; there is a much more important federal rule that says it is everyone's God-given right to assert directly that they are endorsed by Jesus Christ.
(This comment is imbued with the divine grace of the Messiah.)
A person may assert their beliefs, but those beliefs do not extend to trademark law, most especially in the context of "sue everyone else who uses the name of a historical religious figure that I have decided to take for myself".
Your argument is gibberish. As I read your comments, you say that:
1. It isn't possible to trademark the name "Jesus Christ";
because
2. This might imply that your company is endorsed by Jesus Christ.
But that is clearly false. Those grounds are illegitimate; the government cannot take a position on whether you are or aren't endorsed by Jesus Christ.
There are no "false endorsement" concerns raised by the hypothetical trademark.
I’d rather a trademark approach that says you can use the characters but you can’t call it Toy Story, Disney, Pixar, etc.
With the copyright expired you can do more than share. You could make copies and then sell them.
That was the plan for years now. They made steamboat willie a part of their animation wing's trademark more than a decade ago: https://m.youtube.com/watch?v=MJkQ-1Jvf0g
Complaint for anyone else looking for it: https://storage.courtlistener.com/recap/gov.uscourts.flmd.44...
Hmmm this is a preemptive lawsuit from Morgan and Morgan for clarity, which seems to be in bad form
Morgan and Morgan should just launch the commercial, it sounds hilarious
> Hmmm this is a preemptive lawsuit from Morgan and Morgan for clarity, which seems to be in bad form
Not a lawyer, but to bring a lawsuit in the US you typically have to show that you've suffered a real injury that the court can remedy. How can Morgan and Morgan establish standing here?
https://en.wikipedia.org/wiki/Declaratory_judgment
Awesome, exactly what I wanted to learn. Thanks!
Typical. They want to profit from copyright but they don't want it to ever expire even if the law requires it. Mickey Mouse curve is their invention.
The suit is about trademark. Whether it'll fly or not is up in the air, but that's the reason that Disney actively made the "Steamboat Willie" version part of their pre-film branding.
I think in a sane world (heh) using "Steamboat Willie" should only be impaired by Disney trademark exactly as much (or as little) as people would be prevented from sharing pictures of the Statue of Liberty just because some tax-preparation company has a photo-realistic outline in their logo.
In both cases the company has zero rights to the underlying public thing, and the court just needs to ask: "Is someone trying to trick consumers into mis-identifying the company or product?"
P.S.: Even if the company transitioned into being a seller of commemorative Statue of Liberty figurines, their trademarked logo shouldn't give them the ability to monopolize the subject matter. In that other context it might even be revoked as too-generic and unenforceable.
After some AI-assisted probing, it seems like if Disney wants to challenge this use, they'll likely be arguing that S.W. is a "famous mark" akin to Coca-Cola or Nike and thus merits additional broad protection under the Trademark Dilution Revision Act of 2006 (TDRA). (I haven't checked to see whether one of Disney's pet congresscritters sponsored that one, as was the case with at least one of the copyright extension acts that kept SW out of the public domain on a few occasions).
If they can meet the bar established in TDRA they can probably squash all usage of Willie, even in unrelated-industries usage not intended to confuse consumers, in the same way that you can't market "Coca-Cola bedsheets" or a "Google Bicycle" without a license from the trademark holder.
Oy! Why do people do this?
Yeah they might want to argue that. It's not going to get very far considering that the issue is they are actually just trying to turn their copyright into a trademark, so no court is just going to ignore that the way your stupid AI did.
Oy! Why do people do what?
"the issue is they are actually just trying to turn their copyright into a trademark"
That is certainly your opinion of "the issue," but that is a complete begging of the question. That would have to be argued in court. They do have a trademark which includes that public domain character in it, that much is fact. This is no less of a trademark than any other trademark that consists of non-copyrightable elements. The rulings on a trademark case would simply be based on the intent or likelihood to mislead people into believing there's an endorsement or association there.
It's just their attempt to weasel out of the actual copyright expiration.
> demonstrating Disney’s continued protection of its intellectual property rights despite the copyright expiration
That's some insane mental gymnastics. If copyright expired the IP is no longer theirs. And they don't protect but make extortion attempt under false pretense instead with use of fraudulent claims.
Lawyers aren't expected to know the law outside of their specialty, but a law firm that doesn't understand basic trademark law is probably not a firm you want to trust with your legal matters, because it indicts a failure to perform even the most basic due diligence.
Lego already tried this approach and it doesn’t work. You cannot use trademark law to extend expired patents or copyrights.
The real ad here is them baiting Disney and running this fairly open and shut case. Of cause they can use public domain material in their commercial and Disney can’t prevent them.
Copyright only applies to specific expressions.
Mickey is still a trademark of the Disney corporation.
You're right though. This is an open and shut case that Morgan and Morgan will lose. There's only several decades of case law on this...
We're talking about parody though, there's case law suggesting it would be fine: https://www.americanbar.org/groups/intellectual_property_law...
No, the Louis Vitton cases would not help M&M here.
To successfully make a parody case in regards to trademark the parody itself must make it obvious that the defendant is not in anyway connected to the owner of the trademarked thing. The Morgan and Morgan ad doesn't do that; without the disclaimer at the beginning it wouldn't be obvious that the ad wasn't a animation created by Disney. (In the original Steamboat Willie, Mickey causes a number of accidents that harm other characters. Causing a car accident would not stand out from the list of things he does.) Importantly, a disclaimer doesn't really mean much for trademark law since this body of law is about how the trademark is used.
Why does MOB get away with parodying the LV bag (in the case you cite)? Well, for starters they didn't just rip off the look of an LV bag; they stylized their renderings of the LV bags to over-emphasize aspects of the LV bags that weren't actually present in the LV bags (but were clearly evocative of the bags). They also were juxtaposing the stylized LV bag against their own product.
The case you cited also specifically refers to other LV cases in which the defendants lost (and LV won). In one case, Hyundai briefly displayed a basketball with a logo very similar to LV's trademarked monogram. Hyundai lost, even though the ad was about the ostentatiousness of luxury goods (i.e., social commentary), because nothing about the parody itself indicated that the trademark owner wasn't involved (and indeed, part of why Hyundai lost was because there was evidence that people believed that LV was making limited-edition basketballs and wanted to buy them).
More on point, the defendant in the Debbie Does Dallas case was sued by the Dallas Cowboy Cheerleaders, and lost, even though DDD is clearly a parody. The problem is that the parody was not sufficiently specific to the trademarked content (in this case, the uniform), and also it wasn't clear from the content of the film itself that the DCC wasn't connected to the film.
> To successfully make a parody case in regards to trademark the parody itself must make it obvious that the defendant is not in anyway connected to the owner of the trademarked thing. The Morgan and Morgan ad doesn't do that; without the disclaimer at the beginning it wouldn't be obvious that the ad wasn't a animation created by Disney.
This is what I was wondering about. Do those disclaimers make it okay? Because without that context it certainly feels like this ad could be officially endorsed by Disney. And that seems to be exactly the kind of thing trademark law is meant to deal with: avoiding trust problems from people being misled about who is selling them what.
Maybe I'm just not up on my understanding, but I don't see how this is parody? There's not really any jokes, it's not a commentary on Disney, Disney's Mice, or boating or driving or society at large. Maybe running into a car on the road with a boat is a joke, I guess.
A ship running into a car isn't a joke to you?
>Mickey is still a trademark of the Disney corporation.
Mickey, yeah. But steamboat willie is covered by a copyright that has now since expired.
Steamboat Willie has been part of Disney animations trademark for at least a decade. It is literally the trademark animation used at the beginning of every Disney animation film.
Deliberately so, because they knew it was leaving copyright protection. This was their strategy to keep it locked up.
And? Trademark isn't copyright law. It doesn't operate the same way. You can indicate that something isn't being used as a mark to indicate source (all trademark protects) and therefore it isn't necessarily an infringement of someone's mark, the same way direct verbatim copying would most likely be.
What's your point anyway? That copyright should be subsumed into trademark? Some others here are posting it, not that it makes any sense. Even funnier, they complain about the term limitations of copyright... but trademarks are indefinite.
Oh here I go arguing about IP law on HN again...
To help understand your comment, are you a lawyer?
Yes.
If this was a case that Morgan and Morgan expected to win they would not have withdrawn the ad.
That they did indicates that they don't even believe their own claims.
OTOH, making a bunch of noise about the case gets the ad and their product seen by a different demographic than paying for the ad to be placed wherever they would have. IMHO, this is an alternate marketing campaign, costs go to the courts instead of broadcasters. There's some public benefit if the case generates precedent, so that's nice that they want to spend their ad budget on this.
In law, isn't the process the punishment frequently? What if they're just expecting Disney to drain their coffers with frivolous legal work? Isn't that a reasonable response then?
It prevents Disney from being able to file TRO or preliminary injunction preventing the commercial from being aired (and protected M&M from having to spend resources fighting that, which will do nothing to actually determine the overall outcome of the case).
Skeptical that gamblor is an attorney, they certainly do not seem to know what they are talking about.