I bet you all were wondering where I was last week. Every now and then, I too need to check out for a bit. That is exactly what The Hubs and I decided to do! Even with us both catching a bad cold, we had a really wonderful vacation in Sandestin Beach Resort.
One night we headed over to Baytown Wharf for dinner and shopping. In one of the souvenir shops selling Florida shot glasses, beach towels and funny t-shirts we ran across the following shirt. 
Do you recognize the distinctive font? What about those white gloves outlined in black? I would dare say that anyone reading this blog would not associate that photo with one of my favorite companies – Disney. The message on the shirt is certainly not one that is generally associated with the family friendly theme of The Disney Company; however, the general public would do a double-take. Perhaps those same individuals would even purchase the shirt simply because it looks like a Disney product. An inspection of the tag showed it was not a Disney product.
If Disney wanted to pursue some type of intellectual property claim against the seller of the above shirt, more than likely that claim would fall under trademark law rather than copyright law. Copyright law protects creative works of authorship that are fixed in a tangible medium of expression. Examples such as a play, a book, a film or music are subject to protection under copyright law.
In the alternative, trademark law protects trademarks. A trademark is any word, name, symbol or device, or any combination thereof used by a person who has a bona fide intention to use in commerce to identify and distinguish his or her goods from those sold by others. In plain language, you can have a word, a color, a font, a logo or anything else that points to what company made the product. When you hear the word trademark you should think source – what company created the product and what type of quality you can expect from the products coming from that company. The earlier post Should I Register My Trademark discusses the value of strong trademarks such as Disney.
Since my above example is not a Disney movie, a Disney coloring book or even Disney kitchen gadget with some creative element fixed in a tangible medium, copyright would not apply. Yet, one would still assume the source of the shirt would be from Disney because of the font and gloves. Since the issue is one of source/manufacturer, trademark law would be the proper avenue. For Disney to be successful in a trademark infringement lawsuit, Disney would need to prove that the t-shirt was (1) used in commerce and (2) that the use was likely to cause confusion.
A court would look at eight (8) factors as established in the Polaroid Corp v. Polarad Electronics Corp case to determine likelihood of confusion. For each of the eight factors listed below, evidence, briefs and arguments would be presented by both Disney and shirt manufacturer/seller. The factors a court would consider are:
1. Strength of Plaintiff’s (in our case Disney) Trademark;
2. Degree of similarity between plaintiff’s (Disney) and defendant’s (shirt seller) trademarks;
3. Proximity of the products or services;
4. Likelihood that plaintiff will bridge the gap;
5. Evidence of actual confusion;
6. Defendant’s good faith in adopting the trademark;
7. Quality of defendant’s product or service;
8. Sophistication of the buyers
Of course all of this is contingent upon Disney actually caring that t-shirts are being sold in a Florida based souvenir shop and infringing upon the Disney brand. Would Disney find it worth the time of their attorneys to go after every mom and pop that put out something with similar Disney trademarks? Maybe or maybe not.
During Sundance Film Festival the independent film Escape from Tomorrow screened. The film is a horror film where portions were allegedly filmed and take place inside Disney theme parks. Further, the film features Disney copyrighted characters in less than Disney family-friendly ways. As pointed out in this week’s Hollywood Reporter article, at this time Disney is not legally responding or even really acknowledging this independent film. While I am sure this is some sort of legal strategy, I cannot help but wonder if Disney ultimately chooses to never respond are they failing to defend their mark, thus opening up a defense for future users/potential dilutors of the Disney trademark? As you will see from the article, the poster for the film uses the white glove outlined in black with the special font to announce the movie – much like the souvenir shop shirt I ran across.
Maybe the souvenir shop is okay. Maybe Disney is getting out of the business of protecting their trademark so fiercely. It is going to be interesting to watch how the independent film story plays out and what great legal strategy the Happiest, and potentially smartest, Legal Team on Earth develops. What do you think about the non-responsive strategy? Will it hurt future Trademark claims? Take part in the comments below.
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