Mickey Mouse in the Year 2023: What Happens Now?

By   /   April 15, 2013 

 

Mickey Mouse in the Year 2023: What Happens Now?

Jackson Gerber*

 

There comes a time in the life of an expression, which is both copyrighted and trademarked, when the copyright will expire but the trademark will still exist.1  Consider a person wanting to use that expression, which would now be available for public use, but using it in a way that may infringe on the trademark owner’s rights or may tarnish the trademark owner’s reputation.  What rights does the trademark owner have?  What remedies can he or she acquire?  The year is 2023.  Mickey Mouse has just come into the public domain ninety-five years after his first publication in Steamboat Willie.2  What sort of havoc will befall the Disney Corporation and its mascot, one of the most recognizable images in the entire world, when the copyrighted expression of Mickey may be used by anyone?3  An expired copyright, that is also a registered trademark, will still have protection granted to it by the Lanham Act4 under the areas of trademark dilution5 and trademark infringement.6

Section I will discuss Mickey Mouse’s commercial uses in the public eye and within the market place, by Walt Disney and the Disney Corporation (“Disney”) since Mickey’s birth and into his future.  The section will discuss Walt Disney’s and Ub Iwerk’s, co-creators of Mickey Mouse,7 intent regarding Mickey’s personality and commercial uses.  Section II will introduce a hypothetical scenario, which will help support the argument in regard to copyright and trademark protection.  The hypothetical scenario will make this discussion more tangible by giving a backdrop in which to converse about this topic.  Section III will encompass trademark infringement.8  Section IV will discuss dilution of a trademark and analyze whether Mickey Mouse is a famous and distinctive mark.9  Section IV will also cover what other uses of Mickey Mouse may be considered blurring10 or tarnishment.11  Section V will introduce the idea of fair use allowed under the hypothetical stated in Section II.  The final section will conclude the discussion, arguing that trademark law will still protect the Mickey Mouse mark, even without the Mickey Mouse copyright enforced.

 

I.               Mickey’s Past, Present, and Future

“I only hope that we never lose sight of one thing—that it was all started by a mouse.”12

The best place to start with Mickey Mouse is how it all began.  Most of the tales of Mickey’s birth are considered to be apocrypha.13  The basic facts of Mickey’s history stem from Walt Disney’s loss of the rights to Oswald the Lucky Rabbit.14  When Walt returned to Hollywood from New York after losing his artistic rights to Oswald, he was disheartened.15  Walt Disney, Roy Disney, and Ub Iwerks decided to collaborate and create a new character.16  At the time, mouse characters were uncommon within the comic strip and animation world and, once Lillian Disney, Walt’s wife, gave the character its name, Mickey, the team created Mickey’s first story, Plane Crazy.17  Apocrypha exists stating that the initial name for Mickey Mouse was to be Mortimer Mouse, however, Lillian destroyed that initial name because the name Mortimer made “the mouse sound like a sissy.”18

Walt Disney designed Mickey for “ ‘maximum ease of animation’ ” using “ ‘circular forms [which] were simpler to animate effectively.’ ”19  He designed Mickey with a “ ‘[p]ear-shaped body, [a] ball on top, [and a] couple of thin legs. . . . [w]ith an elongated nose, it became a mouse.’ ”20  No matter what direction Mickey held his head, his ears remained round, which gave him “an aura of ‘cartoon resilience and indestructibility,’ a key aspect of his character.”21

Over the course of Mickey’s history, his personality has changed.  When Walt Disney created Mickey, he intended Mickey to be “an adventurous character.”22  Mickey’s major flaws did not allow him to be the perfect hero.23  However, even though Mickey could be insolent and rebellious, both aspects becoming part of “his comic failure[s],” he triumphed.24  The rebellious attitude is most evident in Mickey’s signature appearance, The Sorcerer’s Apprentice, from the movie Fantasia, in which Mickey mischievously “borrows” Yen Sid’s hat and creates havoc only to be taught a lesson by Yen Sid, who fixed the chaos Mickey created.25  Since then Mickey has become a squeaky clean version of himself that kept him “frozen under glass [for decades], fearful that even the tiniest tinkering might tarnish the brand.”26  However, Disney recently announced plans to rebrand the Mickey image starting with the video game Epic Mickey, which was released in 2010 and depicts Mickey acting as his former cantankerous and cunning, yet heroic, self.27  This version of Mickey has been slated for at least one full-length feature film to be released in the near future.28

In regard to trademarks for Mickey Mouse, Disney has created eighteen different live marks for the name alone, dating from 1928 to 2011.29  Mickey Mouse’s appearance has sixteen live marks with an extra three that have been published for opposition.30  The most notable marks cover the motion picture and audiovisual markets.31  In addition, Disney has marks for Mickey covering everything from clothing, linens, toys, video games, board games, Christmas tree decorations, kitchenware, and jewelry, to non-medicated toiletries and food products, such as coffee and tea.32  Mickey’s mark is prevalent, not only within the United States, but all over the world, accordingly making him “ ‘one of the most recognizable icons on Planet Earth.’ ”33

 

II.             The Story of Mortimer Mouse

For purposes of this Comment, the hypothetical laid out in this section will be assumed in order to discuss how a court may view a controversy in regard to a Mickey Mouse trademark infringement.  For certain points within the discussion, the hypothetical may be altered to discuss issues that could arise under other possible scenarios.  This argument supposes that the applicable laws will not change between now and 2023, that Disney will still have an active and viable trademark in Mickey Mouse, and that no court decisions have changed any of this reasoning.

The year is 2023.  Joe Artist, an acclaimed comic book artist, has come up with a brilliant idea.  He wants to create the next great comic strip character.  He wants it to be a mouse-like character that he will name Mortimer Mouse.  Mortimer will have crazy adventures.  He might even cause them, but, in the end, he will always learn a moral lesson.  A female mouse, Lillian, will join him in his adventures.  The artist, Joe, wants Mortimer to be easily recognizable and easy for other animators on his team to draw.  Joe opts to use ovals as his basis for simplicity’s sake.  Joe decides that Mortimer will wear black shorts with two white buttons and a white shirt with black buttons.  Also, Joe chooses to animate Mortimer to bring his creation to life.

 

III.            Is Mortimer infringing on Mickey?

15 U.S.C. § 1114 allows a plaintiff to assert a claim of trademark infringement.34  The statute states that any person who:

use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive . . . shall be liable in a civil action.35

The purpose of the infringement statute is “to protect consumers who have formed particular associations with a mark from buying a competing product using the same or substantially similar mark and to allow the mark holder to distinguish his product from that of his rivals.”36  To prove infringement, a “plaintiff must demonstrate that ‘it has a valid mark entitled to protection and that the defendant’s use of it is likely to cause confusion.’ ”37  The plaintiff must succeed in two factors in order to gain protection.  The first factor requires that the mark is distinctive.38  The second factor demands that the junior mark will most likely cause confusion in the market.39  Cases from the Second  and Ninth Circuits have been chosen because Disney’s base of operations falls primarily within these two circuits.40  Disney’s headquarters for ABC, ESPN, and Disney Theatrical fall within the Second Circuit, while headquarters for Disney itself falls within the Ninth Circuit.41

To gain registration, a mark must be distinctive.42  A mark gains distinctiveness by either being inherently distinctive or through secondary meaning.43  There are four categories of distinctiveness for a trademark: “(1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary or fanciful.”44  If an arbitrary or fanciful mark’s fundamental nature identifies a certain source, then it is deemed distinctive and authorized for protection.45  If the mark is descriptive, or in other words, if it tells something about the product, then the mark must acquire secondary meaning to obtain protection.46  A suggestive mark is one that subtly implies something about the product and will be afforded protection without secondary meaning, but it is seen as being less distinctive than an arbitrary or fanciful mark.47

A court has never decided in which category the Mickey Mouse mark belongs.48  First, and most likely, Mickey would not be seen as generic.  The name Mickey Mouse has come to signify more than just a name, but has become a symbol for a corporation and for certain ideals in this day and age.49  Second, although it is possible that the name Mickey Mouse may not be seen as arbitrary and fanciful, because the name was created for the specific character, the mark is still a name, just as Walt Disney is a name.50  That leaves “suggestive” and “descriptive” as the possible choices for this mark.  Names tend to fall under descriptive, seeing as they describe the person in question, but, as such, they require a secondary meaning to show their distinctiveness.51  If Mickey were considered distinctive, it would likely be noted that his name has acquired secondary meaning.  Most likely, this secondary meaning would occur because of the long history attached to the character.  Mickey Mouse has long been the symbol attached to Disney and is even more prevalent now, with the emergence of the Steamboat Willie character in regards to any hand-drawn animation feature film displayed by Disney.52  Mickey’s image has created a connection between Disney and Mickey, signifying that Mickey means Disney.  Of course, the court will make the final decision, but the choice of either “descriptive” or “fanciful” marks is Mickey’s most likely outcome in regard to his distinctiveness.

To determine the likelihood of confusion, each circuit court uses a set of standards determined by a specific case.53  For instance, the Second Circuit bases its analysis of infringement on Polaroid Corp. v. Polarad Elec. Corp.,54 while the Ninth Circuit uses AMF, Inc. v. Sleekcraft Boats.55  The threat to the reputation of a trademark owner’s mark is the primary reason for preventing the use of the mark on related goods.56  Even if the quality of the goods is equal between each mark, quality is no defense against infringement because “present quality is no assurance of continued quality.”57  Depending on the jurisdiction, there are a different number of factors that are assessed to determine whether trademark infringement has occurred.58  For the purposes of this discussion the eight Sleekcraft factors will be used.59

Strength of the Mark

Stronger marks are afforded a greater degree, and larger scope of protection.60  If the mark is more distinctive (i.e. if the mark were arbitrary or fanciful), then the mark has greater strength.61  The strength of the mark can be fortified by factors such as “commercial success of the product, advertising expenditures of the mark’s owner, and media coverage of the mark.”62

The distinctiveness of the Mickey Mouse mark was discussed in the previous section.  As such, a court would most likely determine that Mickey is a strong mark.  The designation a court may give to a mark determines the strength of the mark, i.e., generic, descriptive, suggestive, arbitrary or fanciful.63  The court may deem Mickey to be a fanciful name attached to a character or, more likely, a descriptive mark with a multitude of secondary meanings.  In either case, the court would consider Mickey’s mark strong.

Proximity of the Goods

Product proximity is “ ‘the likelihood that customers may be confused as to the source of the products, rather than as to the products themselves.’ ”64  The danger is that consumers might assume a relationship between the producers of the goods, although no relationship exists.65  Less similarity between the marks will be required if the public is likely to believe such a relationship exist between the goods.66  The proximity of the goods can be “complementary [if] the products are sold to the same class of purchasers, or the goods are similar in use and function.”67

The proximity of Joe Artist’s Mortimer and Disney’s Mickey would be quite close.  At the very least, they both exist in the comic strip and animation market.  The look and name of Mortimer Mouse could confuse customers as to his source, and customers would likely assume an association with Mickey Mouse.68  More importantly, the products would be sold to the same class of purchasers, i.e. comic and animation purchasers, and would be similar in their use and function for entertainment purposes.69

Similarity of the Marks

The similarity of the marks is determined by factoring in three parts of the mark: sight, sound, and meaning.70  The court must view the marks as they would be “encountered in the marketplace.”71  The marks in their entirety should be measured for similarities; however, similarities are more heavily weighted than differences.72  Adding a logo to the marks in question can remove some of the similarity.73  On the other hand, common endings or replacement of letters within words can add similarity to marks.74  The way that a mark sounds, for example, Mickey Mouse’s distinctive voice, can be important since reputations are usually expressed by word of mouth.75  Finally, “closeness in meaning can itself substantiate a claim of similarity of trademarks.”76

The marks in question can be separated down to their name and to their image.  If looking at the names only, Mortimer Mouse and Mickey Mouse can be considered similar.  They share a common ending to their mark, i.e., Mouse.  “Mouse” could be disclaimed as generic; however, it can still add a look of similarity between the two marks.77  Even the images of the characters can be seen as similar.  Though Mortimer would wear clothes, it would be easy to identify that his structure is based around oval shapes, very similar to Mickey’s circular shapes.  The differences between an oval and a circle would probably not be important enough to a court in deciding their similarity.  A consumer could think that Mortimer and Mickey are relatives or that Mortimer is a relative of Mickey’s love, Minnie Mouse.  In all instances, the senior mark and the junior mark should be viewed together, and when doing so, the marks appear similar.78

Evidence of Actual Confusion

The fact that actual confusion already exists, as shown through evidence, is “persuasive proof that future confusion is likely.”79  However, proving actual confusion is quite difficult, and courts have discounted evidence of such confusion because it can be unclear or insignificant.80  If there is proof of past confusion, or if circumstances provide the availability of such proof, only then is this factor weighed heavily.81  Because it can be difficult to gather actual evidence, failure to provide proof “of actual confusion is not dispositive.”82

This factor relies on evidence to prove the confusion within the marketplace.83  If evidence shows that Mortimer Mouse confuses the consumer into thinking that he represents Disney or connects to Mickey, then this factor favors infringement.84  However, the Lanham Act only requires a likelihood of confusion, and “ ‘particularly where, as here, the junior mark has been in the marketplace for a relatively short period of time,’ ” likelihood may be shown to a court even “ ‘without proof of actual confusion.’ ”85

Marketing Channels Used

A likelihood of confusion occurs when the markets the goods sold are intertwined.86  Even if the products are being sold as different services or in a different market, differing usage does not invalidate the possibility of confusion.87  “[T]he concern is not direct diversion of purchasers but indirect harm through loss of goodwill or tarnishment of reputation.”88  Likelihood of confusion is more likely to be found where consumers may believe that the junior mark “ ‘is . . . sponsored, endorsed, or authorized by [the senior mark’s] owner.’ ”89

The primary market in which Mortimer will exist is the comic strip or comic book market, and Mickey Mouse shares this market.90  If a consumer were to walk along a wall of comic books and see a book for Mortimer Mouse and a book for Mickey Mouse, the consumer might think that Mortimer is sponsored or associated with Disney and the Mickey Mouse title.  Proximity on the shelf would enhance this misperception.

Type of Goods and Purchaser Care

The term “type of good” refers to the quality and price of the good.91  When determining the likelihood of confusion to the public, “the standard used by the courts is the typical buyer exercising ordinary caution,” however, this standard includes everyone from the ignorant and naïve to the intellectual and experienced.92  Therefore, if the typical buyer is more experienced within the field of the mark, then the standard becomes higher.93  Also, when the price of the goods is higher, a buyer is presumed to take more time and deliberate more when contemplating the purchase.94  In either case, confusion can still occur.95  If it is found that trademarks are unimportant to a typical buyer, then “[t]his inattention to trade symbols does reduce the possibilities for confusion.”96  But, if the similar quality “may actually contribute to the assumption [that] a common connection” exists between the marks if the quality of the goods is equivalent.97

Because of Disney’s long commercial history, Disney most likely would be considered a producer of high quality goods.98  Joe Artist is an acclaimed comic book artist.  The quality of their goods will probably be equal to each other, and the price for comic books is almost standard, and fairly inexpensive, across the board.99  Because of the relatively equal quality and price, in the case of comics, the characters and, thus, the trademarks are important to the typical buyer.  A reader buys a comic book because they like the character, the publisher, or the writer.  So if a reader were to think that Mortimer Mouse is a product of Disney because of the name and look of the character, it is likely that the goods could be confused.

Defendant’s Intent

This factor looks at whether the junior mark’s owner adopted the mark with the intention of being similar to the senior mark to piggyback off of the senior mark owner’s good will.100  If bad faith is discovered, then it is presumed that the owner of the junior mark has succeeded in causing confusion.101  A claim of bad faith can be defeated by the owner of the junior mark if it is shown that he or she did either a trademark search, or relied on the advice of counsel.102  The burden is on the defendant to disprove the presence of bad faith, or prove that he or she acted in good faith in the use of the junior mark.103

Joe Artist’s intent could be seen as Joe wanting to misappropriate his work as Disney’s work.  Without evidence given by Joe Artist to disprove his bad faith in creating Mortimer Mouse, the court would have to assume he acted in bad faith, and therefore, confusion would exist.104

Likelihood of Expansion

Along with the protection against competing goods, if there seems to be a strong probability that either the junior mark or senior mark owners are trying to compete and expand in a market with the other, then that probability will count in favor of the present use being an infringement.105  Direct competition would likely result from any expansion if the goods are closely related.106

The Mickey Mouse mark is prevalent in many areas and in many different markets.107  Joe Artist may only promote his work within comic books right now, according to the hypothetical, but he has stated that he wants to expand the Mortimer Mouse mark for use in clothing and animation markets.  This displays a willingness to expand his mark, whereby it could directly compete with the Mickey Mouse mark.

In conclusion, it would be likely that infringement of the Mickey Mouse mark will succeed.  The marks will be shown to be similar and competing in the same market; furthermore, Joe’s intent was to misappropriate his own mark as a Disney product.

 

IV.           Is Mickey being diluted?

15 U.S.C. §1125(c) defines what, when, and how a trademark can be diluted.108  The mark must first be deemed famous and distinctive to be covered by §1125(c).109  Once found famous, the mark is either diluted by blurring or diluted by “tarnishment of the famous mark.”110  Section A will discuss Mickey Mouse and its possibility of being a famous mark.  Section B will look at Mickey’s mark being blurred by Mortimer, while section C will examine Mortimer’s mark tarnishing Mickey’s mark.  Dilution should not be mistaken as confusion, like in infringement, since “dilution occurs when consumers form new and different associations with the plaintiff’s mark.”111

A.    Famous Mark

A famous mark must be widely known by the general public designated to a certain source.112  Section 1125(c)(2)(A) supplies factors to determine whether a mark is famous or not.113  There are four factors designated in the statute that the courts look at to decide if the mark is famous.114  The first involves the breadth and length of publicity attached to the mark.115  This would consist of the amount of advertising that includes the mark or reference to the mark.116  The second factor concerns the amount of sales of goods.117  To define the second factor, courts look to see how prevalent the mark is displayed within the market on the goods offered by the mark’s owner and how much of those goods are sold.118  The third factor is the extent of actual recognition of the mark.119  A court will question how well known the mark is to the general public.120  The final factor considers whether the mark exists on the principal registry or has been registered under a previous act.121  None of these factors automatically grant famousness nor deter famousness; they all work together to define the mark.122

As well known as a mark might be, the court still may not find it to be famous.  The decisions of the courts have created a short list of some famous marks.  Included in the toy world list are Beanie Babies,123 Barbie,124 and Toys“R”Us.125  The food product list includes the Pepsi line of drinks,126 Budweiser,127 and Hershey’s.128  In the case of the hypothetical presented, the court has decided that James Bond129 and Playboy, with its rabbit head logo,130 are both famous marks, accordingly granting this privilege and title to a character or image instead of just a company, product name, or slogan.131

However, some marks that many would consider famous have been determined not to be famous.  One of the most surprising marks not to be deemed famous is Milton Bradley’s board game Clue.132  Even though the board game Clue is very well known throughout the United States and the world, the court determined that Clue’s mark was not famous because Hasbro’s use of Clue is consistent with the word’s common meaning and, thus, Hasbro cannot block the word from being used in other trademarks.133

Even with Mickey Mouse’s worldly recognition, the four factors of the statute must be analyzed.  Mickey Mouse easily satisfies all the factors for famousness, as set out in the statute.  The use of Mickey Mouse in advertising is global.134  Mickey was shown around the world not too long after his birth in 1928.135  Mickey’s image has been on everything from television shows, such as the Mickey Mouse Club and Mickey specials, to advertisements for the Disney theme parks, and to fruit and vegetable packages.136  The volume of sales surrounding an image of Mickey satisfies the second requirement.  Some example categories of items stated in their trademark listings for Mickey include motion pictures, plush toys, video games, board games, action figures, coffee, and tea.137  The entire list is incredibly long and includes many more areas of sales, which proves that, in regard to the third factor, Mickey is one of the most recognizable images around the world.  As to the fourth factor, Mickey has been registered with the Trademark Office since 1928, which establishes longevity.138  In conclusion, it is extremely likely that Mickey Mouse will be seen as a famous mark and subject to the two forms of dilution.

B.    Blurring

Dilution by blurring, as defined in the statute, concerns “ ‘association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.’ ”139  In other words, when blurring, the junior mark damages the reputation of the famous mark.  Placing this in context of the hypothetical, the question becomes whether Mortimer Mouse blurs the uniqueness of the Mickey Mouse mark.  One of the most in-depth analyses of blurring was evoked by the District Court for the Northern District of Texas in Cottonwood Financial Ltd. v. Cash Store Financial Services, Inc.140  The case arose when Cash Store Financial Services, Inc. (“CSFS”) wanted to move into the United States, where Cottonwood Financial Ltd.’s “Cash Store” had already been operating in seven states for about fifteen years.141  The court found that CSFS was likely to cause blurring of Cottonwood’s trademark.142

To determine if blurring would likely occur by the junior mark, the statute provides six factors for the court to review.143  The first factor involves the similarity between the junior mark and the famous mark.144  When Mortimer and Mickey meet in court, the court will look to decide if the two marks are similar.  To decide whether the marks are similar, the court will probably compare the appearance, sound, and meaning of the marks.145  The statute directs the court to look at the degree of similarity, with the need to show substantial similarity between the marks.146  To put it another way, under the circumstances of how the junior mark is used, “ ‘the marks are sufficiently similar that prospective purchasers are likely to believe that the two [marks] are somehow associated.’ ”147  To judge similarity, the court must look at the overall picture or the “total effect” of the marks.148  The court must determine whether the “ ‘overall impression created by the [marks] and the context in which they are found and consider the totality of factors that could cause confusion.’ ”149

Starting with the similarity of the appearance between Mickey and Mortimer, if the clothes are removed, the court would likely deem, from how Mortimer is described in the hypothetical, that that the two marks have a similar appearance.  Both are based on circles and both use mice as their animal basis.  The sound of each mark’s name would not establish much as to similarity, since one is Mortimer Mouse and the other is Mickey Mouse.  However, it could be shown, through evidence, that Mortimer is thought to be a relative of Mickey.  When looking at the meaning of each mark, the court would probably consider how each character is used in their stories.  As described in the hypothetical, Joe Artist wants Mortimer Mouse to enjoy many hijinks, sometimes caused by his own doing, and by the end of the story Mortimer will learn a moral from the events.  Disney originally created the same kind of stories for Mickey, yet over time Mickey became a clean-cut, nice character.150  But Disney is starting to rework Mickey by returning Mickey to the roots of his personality.151  If this reinvention survives until 2023, then a similarity could be more easily assigned between the two marks in regard to their meanings, seeing as their appearances and personalities will be closely linked.

The second factor is the strength associated with the distinctiveness of the famous mark.152  The court must determine how unique the mark is to the public and must consider the intrinsic originality of the mark itself and the degree of third-party usage of the mark.153  Basically, this factor evaluates how strong or weak the famous mark is within the law and the world.154  The greater the strength of the mark, the greater the interest is to protect it; however, the weaker the senior mark is, the more unlikely a finding for dilution is possible.155  The least common denominator of distinctiveness will not prevail in a dilution claim.156

The name Mickey Mouse, as discussed supra, can either be seen as fanciful because it is the name of a character or, at the very least, it can be seen as descriptive, with secondary meaning, because it is a name that has acquired recognition with more significance behind it.157  A court will likely find in favor of famousness because of the strength of the Mickey Mouse trademark.

The third factor is to what degree the owner of the famous mark is using the mark.158  The court looks to the length of use of the famous mark.159  Before the claim for distinctiveness is made, if the mark has been continually used in the marketplace for five years, then that use becomes prima facie evidence of distinctiveness.160

Mickey is “one of the most recognizable icons on Planet Earth.”161  He has been in the limelight almost since his birth in 1928 and has not really slowed down in growth or popularity since.162  One of Disney’s first marks in Mickey was from 1928 and is still alive today.163  Accordingly, a court would likely find the third factor in favor of Mickey’s mark being famous.

The fourth factor is the level of recognition of the famous mark.164  Once the mark has been shown to be distinctive, the court should then determine the extent of the protection applied to that mark.165  If the mark is more widely recognized, then the more likely a similarity will exist between the junior mark and the famous mark.166  It is not required for the mark to acquire fame nationwide.167

Mickey’s name and image are well known in the world market, showing up on everything from movies to toys.168  The Steamboat Willie version of Mickey is now used as the introduction to any hand-drawn animation made and distributed by Disney.169  The Mickey logo is also on clothing for men and women.170  Mickey’s famous silhouetted head is used on most of Disney’s kitchenware lines.171  In addition, Mickey’s image appears throughout all the Disney theme parks in Los Angeles, Orlando, France, Japan, Hong Kong, and soon-to-be Shanghai.172

The fifth factor examines the junior mark’s intent to associate with the famous mark.173  Knowledge of the famous mark alone is not enough to show the intent of the junior mark.174  This “predatory intent” must show that the artist adopted the junior mark in a hope to gain greater success by associating his mark with the famous mark.175

The hypothetical stated in the above does not discuss Joe Artist’s intent in creating Mortimer, thus, it would be difficult to discuss this section in detail.   Assuming that Joe Artist knew Mickey Mouse existed, that knowledge alone is not enough to show his intent.176  It can be argued that the way in which Joe Artist designed Mortimer’s look and characterization was done with the aim of equating Mortimer to Mickey.  It can even be viewed that the choice of Mortimer’s name, which was Mickey’s original name, shows the intent to palm off the artist’s mark as the Disney trademark.  More evidence would be required to prove to a court that this factor applies.

The final factor analyzes any actual association between the junior mark and the famous mark.177  Lack of actual association does not make association unlikely.178  The time that the association could have occurred can help guide the court’s decision.179

The hypothetical does not put a timetable on the events of Joe Artist, but the assumption will be that Mortimer Mouse is out in the marketplace at this time.  Any actual association would be shown through evidence, either by surveys or expert testimony.  This final judgment will depend on when Disney found out about the junior mark and subsequently decided to press charges to prove that an association had occurred.

It is highly likely that a court will find that the Mortimer Mouse mark blurs Mickey Mouse, a distinctive mark.  Mortimer can blur Mickey by his look and the possibility that his name may show him as a relative of Mickey.  Mickey’s use in the market, and across the world, affords Disney the right to look for possible blurring by Mortimer.  The intent and actual association is somewhat inconclusive, but given the familiarity of Mickey Mouse, it is unlikely that some association and bad intention are not involved.  However, the statute states that the court may consider any relevant facts along with the factors, meaning that the factors are not dispositive of the outcome.180

C.    Tarnishment

After the Supreme Court’s decision in 2003 of Moseley v. V Secret Catalog, Inc.,181 which required that an actual showing of tarnishment182 be made for a claim of dilution because dilution by tarnishment was the only claim brought before the Court,183 Congress changed the law in 2006 to require only a likelihood of tarnishment to provide an action for dilution.184  The leading case in the area is the continuation of Moseley, which has recently been decided in the Sixth Circuit.185  The case involved the lingerie store Victoria’s Secret and an adult shop named Victor’s Secret/Victor’s Little Secret.186  The court held that tarnishment tends to, but may not always, occur when an association between a famous mark and a sexual activity would defame the famous mark and reduce the value and reputation of that mark.187  The burden to disprove this likelihood of tarnishment is placed on the owner of the junior mark to bring forward evidence of no likelihood.188  Expert testimony, surveys, polls, or customer testimonies are some forms of evidence that may be used.189  Without this evidence, the court’s decision on the tarnishing effect of the junior mark is speculative but has not been disproven either.190

Tarnishment is unlikely to fall on Joe Artist’s Mortimer Mouse since Mortimer Mouse is not portrayed in a pornographic or illegal light, which could tarnish the name and history attributed to Mickey Mouse and/or Disney.  It is far more likely that a claim of blurring would succeed because the image of Mortimer, as far as the hypothetical shows, would not be doing anything in his use that would tarnish the good will of Mickey Mouse or Disney.

Assuming that Joe Artist intends to use Mortimer Mouse either for cartoon pornography or illegal activity then dilution by tarnishment could apply.  For example, if a mark that looks similar to Mickey Mouse or shows a relation to Mickey Mouse performs a pornographic act, this artistic expression could be seen as defaming the Mickey Mouse mark.191  Disney might claim that, despite the expiration of the copyright, the trademark has been tarnished.  It will be Joe Artist’s duty to bring forth evidence that this use of Mortimer Mouse is not tarnishing the Mickey Mouse mark.192  In the above instance, where Mortimer Mouse performs a sex act, the court will probably rule that the Mortimer Mouse mark is tarnishing the Mickey Mouse mark as long as there is a likelihood of tarnishment.193

 

V.             Can Mortimer be seen in a fair use context?

Trademark fair use194 is defined for infringement in 15 U.S.C. §1115(b)(4), which “ ‘in essence, forbids a trademark registrant to appropriate a descriptive term for his exclusive use and so prevent others from accurately describing a characteristic of their goods.’ ”195  The statute allows for the use of a registered mark to be descriptive of the goods or services of that mark or their geographic origin.196  Additionally, trademark fair use has been expanded for a nominative use of a mark, whereby “the only word reasonably available to describe a particular thing is pressed into service.”197  A classic example of nominative fair use is the car mechanic placing an advertisement stating that he is able to service Volkswagen vehicles, which references the car company’s trademark “product in order to help better describe the [mechanic’s] product of service.”198  To decide if the fair use defense will succeed, the party claiming fair use must establish that (1) it used the mark in question in a non-trademark way; (2) the mark is descriptive of the opposing party’s goods or services; and (3) the claiming party used the mark “fairly and in good faith only to describe the goods or services of such party or their geographic origin.”199  A prime example comes from the Ninth Circuit where the court allowed the use of the trademark name “New Kids on the Block” when it was being used to describe the band itself.200  However, in any case of descriptive fair use, the Supreme Court has ruled, per KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.,201 that the burden to prove likelihood of confusion is on the plaintiff, while the “defendant’s burden is only to show the affirmative defense of fair use.”202

In the case of Mortimer Mouse versus Mickey Mouse, no scenario would protect Mortimer Mouse under this aspect of fair use.  Mortimer Mouse is neither being used to describe Mickey Mouse or Disney, nor is Mortimer being used in a nominative fair use to reference Disney.  The dilution section may hold another option for Mortimer Mouse to succeed under fair use.

The other form of trademark fair use applies only to famous marks.203  15 U.S.C. § 1125(c)(3)(A) covers the fair use exemption in regards to dilution by blurring or tarnishment suits.204  It allows for a person to claim fair use under parody, criticism, and commentary.205  However, the statue is not a complete defense if the one claiming fair use employs the parody mark as “its own designation of source.”206  For example, the case Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC207 dealt with a pet supply company, Haute Diggity Dog, who created chew toys and beds to parody high-end brands such as “Chewy Vuiton (LOUIS VUITTON)—Chewnel No. 5 (Chanel No. 5), Furcedes (Mercedes), Jimmy Chew (Jimmy Choo), Dog Perignonn (Dom Perignon), Sniffany & Co. (Tiffany & Co.), and Dogior (Dior).”208  These toys and beds were made to loosely look like their high-end counterpart’s signature product.209  The Fourth Circuit held that Haute Diggity Dog’s products were a successful parody because, as the court states, the “dog toys convey ‘just enough of the original design to allow the consumer to appreciate the point of parody,’ but stop well short of appropriating the entire marks that [Louis Vuitton] claims.”210  Thus, “parodying a famous mark is protected by the fair use defense only if the parody is not ‘a designation of source for the person’s own goods or services.’ ”211  The use of the junior mark as a parody can play into the factors for blurring.212  Even though the parody mark creates a relationship between itself and the famous mark to cause the parody, “it also intentionally communicates, if it is successful, that it is not the famous mark, but rather a satire of the famous mark.”213  Thus, a parody of a mark is a complete fair use defense, but using the parody as a mark for oneself does not support a fair use defense. It does allow it, however, to be considered in determining dilution.214

The facts, for the purposes of this Comment, do not truly lend themselves to a parody fair use defense, seeing as Joe Artist is not trying to create a satire or parody on the Mickey Mouse mark.  In the hypothetical, Joe is trying to make a living by creating an entirely new mark for his own use.  This displays that fair-use would not apply since the fair-use defense cannot promote one’s self interest.215

The facts of the hypothetical must be altered slightly to discuss this issue in more detail.  If Joe decides that he will use Mortimer Mouse to make comments on the Disney Corporation and its practices around the world, is this covered by fair use?  This argument would depend on whether the court deems that the Mortimer Mouse mark is now a parody.216  Most likely, the fact that Mortimer Mouse’s name is similar to Mickey Mouse but not exactly Mickey Mouse will not favor the argument that Mortimer Mouse is being used as a parody and would not allow Joe Artist to use the fair use defense in this circumstance.  However, if Joe decided to use the Mickey Mouse mark instead of creating his own character to satirize or criticize Disney, then he would have a more likely chance to raise and defend a fair use defense, with the reasoning that Mickey Mouse is not his mark and, thus, cannot claim it as a parody of a mark.  However, in an infringement claim, Joe would still be liable for infringement since §1115(b)(4) does not allow for a parody fair use defense; it only allows for a descriptive or nominative fair use of the mark.217

 

VI.            Conclusion

Would Mickey Mouse still be protected for the Disney Corporation in 2023 once the copyright on his expression expires?  Based on the hypothetical proposed in this paper and created by the author, a scenario that could occur in the future, the answer would be yes.  In regards to infringement, Mickey still has the protection afforded to him that trademark infringement allows, protection of the famous mark against a likelihood of confusion within the market from a junior mark.  Finally, as it concerns dilution, Mickey, and therefore Disney, will have a better chance of claiming blurring of the mark rather than tarnishment, unless the use of Mickey is of a sexual nature.  Mickey will be found to be a famous mark because of the global recognition and length of use of the mark in the public’s eye.

 


* Jackson Philip Gerber is a third year student at Touro Law, graduating in May 2013.  He graduated from the University of Miami in 2004 with a Bachelor of Science in Motion Pictures and a Bachelor of Arts in Theatre Arts.  He will be attending New York Institute of Technology starting in the fall of 2013 to pursue a science degree to attain the privilege of taking the patent bar exam.

 

 

 

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Footnotes:

  1. See 17 U.S.C. § 301 (2006) (generally, a copyright will survive for the life of the author plus seventy years); see also 15 U.S.C. §§ 1058-59 (2006) (generally, the duration of a trademark lasts ten years plus a renewal every ten years after as long as the mark is consistently used by the owner).
  2. Steamboat Willie (Walt Disney Studio 1928).
  3. Pursuant to 17 U.S.C. § 304(b) (2006), which states that “[a]ny copyright still in its renewal term at the time that the Sonny Bono Copyright Term Extension Act becomes effective shall have a copyright term of 95 years from the date copyright was originally secured,” Mickey’s first copyright was in Steamboat Willie back in 1928.  By adding 95 years to 1928 gives the end date of the copyright 2023.  Although there has been skepticism regarding the validity of Mickey Mouse’s original copyright, this Comment takes the view (along with the Walt Disney Corporation) that there are no problems with the original copyright and that a federal court would come to the same conclusion.  See Joseph Menn, Whose Mouse Is It Anyway?, L.A. Times, Aug. 22, 2008, at A2.
  4. 15 U.S.C. § 1051 (2006) (primary trademark law for the United States).
  5. See 15 U.S.C. § 1125 (2006).
  6. See 15 U.S.C. § 1114 (2006).
  7. See Steamboat Willie, supra note 2 (for Mickey Mouse’s first appearance).
  8. Particularly, could an artist confuse the public by making the public think that the artist’s creation, similar to Mickey Mouse, is the real Mickey Mouse and, thus, make the public believe that Disney sponsors the artist’s work?  What areas of commercial use would be considered proper use within the same market of the Mickey Mouse trademark?
  9. Black’s Law Dictionary 1631 (9th ed. 2009) (defining “distinctive trademark” as “[a] very strong trademark, one that consumers immediately and consistently associate with specific goods and services” and “famous trademark” as “not only distinctive but also has been used and heavily advertised or widely accepted in the channels of trade over a long time, and is so well known that consumers immediately associate it with one specific product or service”).
  10. Id. at 196 (“A form of dilution in which goodwill in a famous mark is eroded through the mark’s unauthorized use by others on or in connection with dissimilar products or services.”).
  11. Id. at 1594 (“A form of dilution that occurs when a trademark’s unauthorized use degrades the mark and diminishes its distinctive quality.”).
  12. Disneyland (ABC 1954).
  13. Floyd Gottfredson, Walt Disney’s Mickey Mouse: “Race to Death Valley” 222 (David Gerstein & Gary Groth eds., 2011).
  14. Id.
  15. Id. at 223.
  16. Id.
  17. Id.; Plane Crazy (Walt Disney Studio 1928).
  18. Gottfredson, supra note 13.
  19. Neal Gabler, Walt Disney: The Triumph of the American Imagination 113 (2006) (quoting an unnamed animation historian).
  20. Id. (quoting Ub Iwerk).
  21. Gottfredson, supra note 13, at 224 (quoting John Updike).
  22. Id. at 225.
  23. Id.
  24. Id.
  25. Fantasia (Walt Disney Productions 1940).
  26. Brooks Barnes, After Mickey’s Makeover, Less Mr. Nice Guy, N.Y. Times (Nov. 4, 2009), www.nytimes.com/2009/11/05/business/media/05mickey.html?hp.
  27. Id.
  28. Brendon Connelly, SCOOP: Mickey Mouse’s First Feature Length Film Being Developed at Disney, Bleeding Cool (Mar. 24, 2011), www.bleedingcool.com/2011/03/24/scoop-mickey-mouses-first-feature-length-film-being-developed-at-disney/.
  29. MICKEY MOUSE, Registration Nos. 0,247,156, 0,315,056, 1,152,389, 3,002,503, 3,006,349, 3,006,350, 3,007,745, 3,011,935, 3,036,883, 3,115,395, 3,308,015, 3,562,423, 3,584,466, 3,588,873, 3,750,188, 3,765,407, 3,767,849, 3,990,270.
  30. MICKEY MOUSE IMAGE, Registration Nos. 2,704,887, 2,784,058, 3,313,624, 3,341,092, 3,580,903, 3,580,904, 3,580,905, 3,580,906, 3,587,507, 3,587,508, 3,587,509, 3,598,848, 3,619,662; WALT DISNEY RECORDS, Registration No. 2,310,987; DISNEY’S SODA FOUNTAIN AND STUDIO STORE, Registration Nos. 3,722,910, 4,077,375.  U.S. Trademark Application Serial No. 77,623,965 (filed Dec. 1, 2008); U.S. Trademark Application Serial No. 77,623,979 (filed Dec. 1, 2008); U.S. Trademark Application Serial No. 85,143,652 (filed Oct. 1, 2010).
  31. See, e.g., MICKEY MOUSE, Registration No. 0,247,156 (assigned to “motion pictures reproduced in copies for sale”); MICKEY Mouse, Registration No. 3,308,015 (assigned to “presentation of motion picture films, namely, in motion picture theaters”); MICKEY MOUSE, Registration No. 3,588,873 (assigned to “audio and visual recordings in all media featuring live action and animated entertainment”).
  32. See trademarks cited supra notes 29, 30.
  33. Barnes, supra note 26 (quoting Warren Spector).
  34. 15 U.S.C. § 1114 (2006).  See also Black’s Law Dictionary 851 (9th ed. 2009) (“An act that interferes with one of the exclusive rights of a patent, copyright, or trademark owner.”) (emphasis added).
  35. 15 U.S.C. § 1114(1)(a).
  36. Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 676 (9th Cir. 2005).
  37. Pfizer Inc. v. Sachs, 652 F. Supp. 2d 512, 520 (S.D.N.Y. 2009) (quoting Time, Inc. v. Petersen Publ’g Co. LLC, 173 F.3d 113, 117 (2d Cir.1999)).
  38. Pfizer Inc., 652 F. Supp. 2d at 520.
  39. Id.
  40. The Walt Disney Co., Quarterly Report (Form 10-Q) (Mar. 31, 2012) [hereinafter “Quarterly Report”].
  41. Id.  See also The Walt Disney Co., Annual Financial Report and Shareholder Letter (Form 10-K) 7, 32 (2011) [hereinafter “Annual Financial Report”].
  42. Pfizer Inc., 652 F. Supp. 2d at 520.
  43. Id.
  44. Id.
  45. Id.
  46. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979).
  47. Id.
  48. See Quarterly Report, supra note 40 (if a case is brought, it will likely be in the Second or Ninth Circuits).
  49. See Barnes, supra note 26 (stating how Mickey Mouse “remains a superstar in many homes” in today’s age).
  50. See, e.g., WALT DISNEY, Registration Nos. 1,141,312, 1,267,000.
  51. See, e.g., MORGAN FREEMAN, Registration No. 3,144,316.
  52. See Bolt (Walt Disney Animation Studios 2008); Meet the Robinsons (Walt Disney Animation Studios 2007); Tangled (Walt Disney Animation Studios 2010); The Princess and the Frog (Walt Disney Animation Studios 2009); Winnie the Pooh (Walt Disney Animation Studios 2011).
  53. See Anheuser-Busch, Inc. v. Balducci Publ’n, 28 F.3d 769, 774 (8th Cir. 1994) (reciting a six factor test); Universal Money Ctrs. v. Am. Tel. & Tel. Co., 22 F.3d 1527, 1530 (10th Cir. 1994) (reciting a four factor test); McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163, 1167-68 (7th Cir. 1986) (reciting a seven factor test); Pizzeria Uno Corp. v. Temple, Jr., 747 F.2d 1522, 1527 (4th Cir. 1984) (reciting a seven factor test); Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 462-63 (3d Cir. 1983) (reciting a ten factor test); John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 972 (11th Cir. 1983) (reciting a seven factor test); Frisch’s Rests., Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th Cir. 1982) (reciting an eight factor test); Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir. 1981) (reciting an eight factor test); AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-50 (9th Cir. 1979) (reciting an eight factor test); Roto-Rooter Corp. v. O’Neal, 513 F.2d 44, 45 (5th Cir. 1975) (reciting a seven factor test); Polaroid Corp. v. Polarad Elec. Corp., 287 F.2d 492, 495 (2d Cir. 1961) (reciting an eight factor test); In re E. I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) (reciting thirteen factors to consider).
  54. 287 F.2d 492 (2d Cir. 1961).
  55. 599 F.2d 341 (9th Cir. 1979).
  56. Id. at 353.
  57. Id.
  58. See cases cited supra note 53.
  59. As the Walt Disney Company’s principal place of business is in Burbank, California, which is situated within the Ninth Circuit, the Sleekcraft factors are being chosen.  See Quarterly Report, supra note 40.
  60. Sleekcraft Boats, 599 F.2d at 349.
  61. Pfizer Inc., 652 F. Supp. 2d at 521-22.
  62. Id. at 522.
  63. Id. at 521-22 (citing Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1044 (2d Cir. 1992).
  64. Id. at 522 (quoting Arrow Fastener Co., Inc. v. Stanley Works, 59 F.3d 384, 396 (2d Cir. 1995)).
  65. Sleekcraft Boats, 599 F.2d at 350.
  66. Id.
  67. Id. (internal citations omitted).
  68. Mead Data Cent., Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1029-30 (2d Cir. 1989) (holding that changing the “u” in “LEXUS” to an “i” to make it “LEXIS” is not enough to confuse the customer).
  69. Compare Pfizer Inc., 652 F. Supp. 2d at 519, 523 (stating “Pfizer’s international marketing campaigns have made the Viagra Marks widely recognizable” and “consumers are likely to be confused as to whether Defendants are engaged in marketing services for Plaintiff” when they are displaying a “twenty foot decommissioned . . . missile bearing the Viagra brand . . . parked . . . in front of Pfizer’s world headquarters” so that they could hand out pamphlets of their business), with Mead Data Cent., Inc., 875 F.2d at 1031 (focusing on the limited market of Lexis to attorneys and accountants and that outside of that market “LEXIS has very little selling power. . . .  [O]nly one percent of the general population associates LEXIS with the attributes of Mead’s service”).
  70. Sleekcraft Boats, 599 F.2d at 351.
  71. Id.
  72. Id.
  73. Id.
  74. Id.
  75. Sleekcraft Boats, 599 F.2d at 351.
  76. Id. at 352.
  77. Pfizer Inc., 652 F. Supp. 2d at 521-22.
  78. Sleekcraft Boats, 599 F.2d at 351.
  79. Id. at 352.
  80. Id.
  81. Id. at 353.
  82. Id.
  83. Sleekcraft Boats, 599 F.2d at 352.
  84. See id. at 352-53 (stating evidence of confusion occurring in the trade and to the consumer, including sales records and advertising, was considered negligible for past confusion; and that “this factor is weighed heavily only when there is evidence of past confusion or, perhaps, when the particular circumstances indicate such evidence should have been available”);  see also Pfizer Inc., 652 F. Supp. 2d at 523 (stating that the factor is neutral because the “Viagra-branded missile was in the marketplace for just 10 days before it was enjoined”).
  85. Pfizer Inc., 652 F. Supp. 2d at 523 (quoting MGM-Pathe Commc’n Co. v. Pink Panther Patrol, 774 F. Supp. 869, 875 (S.D.N.Y. 1991)).
  86. Sleekcraft Boats, 599 F.2d at 353.
  87. Pfizer Inc., 652 F. Supp. 2d at 522.
  88. Id. (quoting McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1134-35 (2d Cir. 1979)) (internal quotation marks omitted).
  89. Id. (quoting N.Y. Stock Exch., Inc. v. N.Y., N.Y. Hotel, LLC, 293 F.3d 550, 555 (2d Cir. 2002)).
  90. See Annual Financial Report, supra note 41, at 15, 28, 65.
  91. Sleekcraft Boats, 599 F.2d at 353.
  92. Id.
  93. Id.
  94. Id.
  95. Id.
  96. Sleekcraft Boats, 599 F.2d at 353.
  97. Id. at 354.
  98. See id. at 353 (citing that the “findings of fact” state that the goods produced were “high quality [and] expensive goods”).
  99. Brent Cox, How Much More Do Comic Books Cost Today?, The AWL (May 2, 2012), http://www.theawl.com/2012/05/how-much-do-comic-books-cost.
  100. Pfizer Inc., 652 F. Supp. 2d at 523.
  101. Id.
  102. Id.
  103. Sleekcraft Boats, 599 F.2d at 354.
  104. Pfizer Inc., 625 F. Supp. 2d at 523 (“This [bad faith] presumption may be overcome by evidence that Defendants conducted a trademark search before using the mark, or that Defendants sought and relied on the advice of counsel.”).
  105. Sleekcraft Boats, 599 F.2d at 354.
  106. Id.
  107. See trademarks cited supra note 29 and 30; see also financial reports cited supra notes 40 and 41.
  108. 15 U.S.C. § 1125(c) (2006).  See also Black’s Law Dictionary 523 (9th ed. 2009) (“The act or an instance of diminishing a thing’s strength or lessening its value.”).
  109. 15 U.S.C. § 1125(c)(1) (“[T]he owner of a famous mark . . . shall be entitled . . . . ”).
  110. Id.
  111. Visa Int’l Serv. Ass’n v. JSL Corp., 610 F.3d 1088, 1090 (9th Cir. 2010).
  112. 15 U.S.C. § 1125(c)(2)(A).  See also Black’s Law Dictionary 1631 (9th ed. 2009) (“A trademark that not only is distinctive but also has been used and heavily advertised or widely accepted in the channels of trade over a long time, and is so well known that consumers immediately associate it with one specific product or service.”).
  113. 15 U.S.C. § 1125(c)(2)(A)(i)-(iv).
  114. Id.
  115. Id. at § 1125(c)(2)(A)(i).
  116. Id.; see also Visa Int’l Serv. Assoc. v. JSL Corp., 533 F. Supp. 2d 1089, 1096 (D. Nev. 2007) (second and third factors).
  117. 15 U.S.C. § 1125(c)(2)(A)(ii).
  118. See Visa Int’l Serv. Assoc., 533 F. Supp. 2d at 1096-97 (fourth and fifth factors).
  119. 15 U.S.C. § 1125(c)(2)(A)(iii).
  120. See Visa Int’l Serv. Assoc., 533 F. Supp. 2d at 1097 (sixth and seventh factors).
  121. 15 U.S.C. § 1125(c)(2)(A)(iv).
  122. Id. at § 1125(c)(2)(A); Visa Int’l Serv. Assoc., 533 F. Supp. 2d at 1095 (“The [Federal Trademark Dilution Act] sets forth . . . nonexclusive factors that a court may consider in determining whether a mark is distinctive and famous . . . .”).
  123. Ty, Inc. v. Perryman, 306 F.3d 509 (7th Cir. 2002).
  124. Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002).
  125. Toys “R” Us Inc. v. Akkaoui, No. C 96-3381 CW, 1996 WL 772709 (N.D. Cal. Oct. 29, 1996).
  126. Pepsico, Inc. v. CA Sec. Cans, No. CV-02-5321 NM (RZx), 2002 U.S. Dist. LEXIS 22404 (C.D. Cal. Nov. 4, 2002).
  127. Anheuser-Busch Inc. v. Andy’s Sportswear Inc., No. C-96-2783 TEH, 1996 WL 657219 (N.D. Cal. Aug. 28, 1996).
  128. Hershey Co. v. Art Van Furniture, Inc., No. 08-14463, 2008 U.S. Dist. LEXIS 87509 (E.D. Mich. Oct. 24, 2008).
  129. Danjaq LLC v. Sony Corp., No. CV97-8414-ER (Mcx), 1998 WL 957053 (C.D. Cal. July 29, 1998), aff’d, 165 F.3d 915 (9th Cir. 1998).
  130. Playboy Enter. Int’l, Inc. v. Muller, 314 F. Supp. 2d 1037 (D. Nev. 2004).
  131. See cases cited supra notes 124-130.
  132. Hasbro, Inc. v. Clue Computing, Inc., 66 F. Supp. 2d 117 (D. Mass. 1999).
  133. Id. at 131-32.
  134. See financial reports cited supra notes 40 and 41.
  135. See, e.g., Release Dates for Steamboat Willie,  IMDb,  http://www.imdb.com/title/tt0019422/releaseinfo (last visited Apr. 4, 2013); Steamboat Willie, MoMA http://www.moma.org/collection/object.php?object_id=89284 (last visited Apr. 4, 2013).
  136. See trademarks cited supra notes 29 and 30.
  137. Id.
  138. MICKEY MOUSE, Registration No. 0, 247,156.
  139. Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 105 (2d Cir. 2009) (quoting 15 U.S.C. § 1125(c)(2)(B) (2006)); see also Black’s Law Dictionary 196 (9th ed. 2009) (“A form of dilution in which good will in a famous mark is eroded through the mark’s unauthorized use by others on or in connection with dissimilar products or services.”).
  140. Cottonwood Fin. Ltd. v. Cash Store Fin. Serv., Inc., 778 F. Supp. 2d 726 (N.D. Tex. 2011).
  141. Id. at 730.
  142. Id. at 745.
  143. 15 U.S.C. § 1125(c)(2)(B) (2006).
  144. Id. at § 1125(c)(2)(B)(i).
  145. Cottonwood Fin. Ltd., 778 F. Supp. 2d at 750.
  146. Id.
  147. Id. (quoting Elvis Presley Ent., Inc. v. Capece, 141 F.3d 188, 201 (5th Cir. 1998)).
  148. Id.
  149. Starbucks Corp., 588 F.3d at 106 (quoting Star Indus., Inc. v. Bacardi & Co. Ltd., 412 F.3d 373, 386 (2d Cir. 2005)).
  150. See discussion supra Section I.
  151. Id.
  152. 15 U.S.C. § 1125(c)(2)(B)(ii) (2006).
  153. Cottonwood Fin. Ltd., 778 F. Supp. 2d at 751.
  154. Id. (stating that when analyzing a mark’s distinctiveness courts consider third party usage).
  155. Id.
  156. Id.
  157. See discussion supra Section I.
  158. 15 U.S.C. § 1125(c)(2)(B)(iii) (2006).
  159. Cottonwood Fin. Ltd., 778 F. Supp. 2d at 752.
  160. Id. (quoting Warren Spector) (internal quotation marks omitted).
  161. Barnes, supra note 26.
  162. Id.
  163. MICKEY MOUSE, Registration No. 0,247,156.
  164. 15 U.S.C. § 1125(c)(B)(iv) (2006).
  165. Cottonwood Fin. Ltd., 778 F. Supp. 2d at 753.
  166. Id.
  167. Id.
  168. Barnes, supra note 26.  See  trademarks cited supra notes 29 and 30.
  169. See films cited supra note 53.
  170. MICKEY MOUSE, Registration Nos. 3,011,935 (attributed to many different articles of clothing), 3,007,745 (attributed to jewelry and watches), 3,588,873 (attributed to jewelry and many different articles of clothing), 3,750,188 (attributed to many different articles of clothing); MICKEY MOUSE, Registration Nos. 2,784,058 (Mickey head design attributed to different articles of clothing), 2,704,887 (Mickey full-body design attributed to hats), 3,580903 (Mickey full-body design attributed to many different articles of clothing), 3,580,906 (Mickey full-body design attributed to jewelry).
  171. MICKEY MOUSE, Registration Nos. 3,584,466 (attributed to bath, kitchen, and household linens), 3,765,407 (attributed to aprons, potholders, and many different housewares, including bowls, cups, and dishes); MICKEY MOUSE, Registration Nos. 2,704,887 (Mickey full-body design attributed to linens and dishes and beverage-ware), 3,587,507 (Mickey full-body design attributed to linens), 3,587,508 (Mickey full-body design attributed to dinnerware); U.S. Trademark Application Serial No. 77,623,979 (filed Dec. 1, 2008) (Mickey full-body design attributed to many household items).
  172. See Annual Financial Report, supra note 134, at 17-22; MICKEY MOUSE, Registration No. 3,036,883 (attributed to “[a]musement park and theme park services”).
  173. 15 U.S.C. § 1125(c)(B)(v) (2006).
  174. Cottonwood Fin. Ltd., 778 F. Supp. 2d at 754.
  175. Id.
  176. Id. (“This ‘[p]redatory intent,’ however, must ‘involve[] more than mere knowledge of the senior mark—it requires a showing that the junior user adopted its mark hoping to benefit commercially from association with the senior mark’ ” (alterations in original) (quoting Mead Data Cent., Inc., 875 F.2d at 1037)).
  177. 15 U.S.C. § 1125(c)(B)(vi).
  178. Cottonwood Fin. Ltd., 778 F. Supp. 2d at 755.
  179. Id.
  180. 15 U.S.C. § 1125(c)(2)(B).
  181. 537 U.S. 418, 418 (2003).
  182. Black’s Law Dictionary 1594 (9th ed. 2009) (“A form of dilution that occurs when a trademark’s unauthorized use degrades the mark and diminishes its distinctive quality.”).
  183. V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382, 386 (6th Cir. 2010).
  184. Id. at 387.
  185. Id. at 384-85.
  186. Id.
  187. Id. at 388-89.
  188. V Secret Catalogue, Inc., 605 F. 3d at 388.
  189. Id.
  190. Id. at 389.
  191. Cf. Mattel, Inc. v. Internet Dimensions, Inc., No. 99 Civ. 10066(HB), 2000 WL 973745, *8 (S.D.N.Y. July 13, 2000) (holding that BARBIE being linked with pornography would “adversely color the public’s impressions of BARBIE”).
  192. V Secret Catalogue, Inc., 605 F.3d at 388 (“[This] places on the owner of the new mark the burden of coming forward with evidence that there is no likelihood or probability of tarnishment.”).
  193. Id. at 394 (Gibbons, J., concurring) (stating that “Victor’s Little Secret” could reflect poorly on Victoria’s Secret; however, likelihood of tarnishment must be shown and not a mere possibility).
  194. Black’s Law Dictionary 676 (9th ed. 2009) (“A reasonable and limited use of a [trademark] without the [owner’s] permission . . . .”).
  195. New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302, 306 (9th Cir. 1992) (quoting Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1185 (5th Cir.1980)).
  196. 15 U.S.C. § 1115(b)(4) (2006).
  197. World Impressions, Inc. v. McDonald’s Corp. & Disney Enter., Inc., 235 F. Supp. 2d 831, 842 (N.D. Ill. 2002).
  198. Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 218 (3d Cir. 2005).
  199. 15 U.S.C. § 1115(b)(4).
  200. New Kids on the Block, 971 F.2d at 308.
  201. 543 U.S. 111 (2004).
  202. Century 21 Real Estate Corp., 425 F.3d at 217.
  203. 15 U.S.C. § 1125(c)(3)(A) (2006).
  204. Id.
  205. Id. at § 1125(c)(3)(A)(ii).
  206. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 266 (4th Cir. 2007).
  207. 507 F.3d 252 (4th Cir. 2007).
  208. Id. at 258.
  209. Id.
  210. Id. at 261 (quoting People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 366 (4th Cir. 2001); Jordache Ent., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1486 (10th Cir. 1987)) (internal quotation marks omitted).
  211. Id. at 266 (quoting 15 U.S.C. § 1125 (c)(3)(A)(ii) (2006)) (internal quotation marks omitted).
  212. Louis Vuitton Malletier S.A., 507 F.3d at 266-67.
  213. Id. at 267.
  214. Id.
  215. Id. at 266.
  216. Id. at 260-61.
  217. 15 U.S.C. § 1115(b)(4) (2006) (explaining that “[s]uch conclusive evidence of the right to use the registered mark shall be subject to proof of infringement as defined in section 1114 of this title, and shall be subject to the following defenses or defects: . . . (4) that the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin”).