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

from the public-domain,-private-domination dept

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Filed Under: alice in wonderland, alice through the looking glass, public domain, trademark
Companies: alice looking, disney

Copyright Maximalist Disney Accused Of Copying Artist's Painting On Cosmetic Bag

from the copyright-is-for-me,-not-for-thee dept

It is always interesting to see how the strongest defenders of copyright can often be found infringing -- sometimes in the most obvious ways imaginable. A bunch of folks have sent in variations on this story, concerning Katie Woodger, an artist who did a painting of Alice in Wonderland a few years ago, and later discovered that the same image was clearly copied onto a cosmetic bag that Disney is selling. Woodger also claims that a similar work is used on a t-shirt. Here's the graphic comparison she put together. This is complicated on a variety of levels. I don't find the final image to be problematic at all, because (at best) you could argue that Disney copied the idea. But copyright is about expression, not the idea. As for the bag, it's clear that Disney copied Woodger's image, but even that raises some interesting questions. The original Alice in Wonderland by Lewis Carroll (Charles Lutwidge Dodgson) has long since passed into the public domain. The original illustrations by John Tenniel have also gone into the public domain. However, the popular Disney movie is still covered by copyright. You could ask a question as to whether or not Woodger's image draws on any of the copyright protected elements of the Disney movie, in which case her own copyright claims on her image may be limited. Still, even in that case, it would seem that there could be some copyright claims in parts of her creation and that certainly would not allow Disney to wholesale copy the image.

That said, it does feel a little bit shady for Woodger to complain about someone else using her image, when her image is clearly based on the work of others as well. That's how creativity works. Still, given Disney's general maximalist tendencies, it's telling that even it can be found to copy the work of others without permission. For what it's worth, there are lots of stories of companies pulling random designs and artwork that they find on the internet and placing it on t-shirts and bags and other products. It's just somewhat ironic to see it being done by Disney in particular.

Filed Under: alice in wonderland, copying, copyright, katie woodger
Companies: disney

Chair Designer Sues Disney Over Chair Used In Alice In Wonderland Movie

from the down-the-rabbit-hole dept

Reader ScaredOfTheMan points us to the news that a chair designer is suing Disney for allegedly using one of "his" chairs in the movie Alice in Wonderland. He's demanding a $50,000 "decoration fee." We've pointed out the ridiculous lengths filmmakers must go to these days -- with lawyers scouring every part of a film to make sure no intellectual property is used without a license, but at some point you have to just ask what these people are thinking. Imagine if every chair in every movie required a "decoration fee." And if we're doing chairs, then tables must be included as well. And couches. And doors. Don't forget the windows. Wall paper on the walls? Did you pay the designer? Welcome to the logical conclusion of permission culture run amok.

Filed Under: alice in wonderland, chair, designer
Companies: disney

Alice In Public Domainland; Just Because Something Is Free And Open Doesn't Mean You Can't Make Money Off Of It

from the thank-you-public-domain dept

Back in December, we wrote about a submission from someone talking about the new Sherlock Holmes movie, and how it was possible because of the public domain. The truth turned out to be more complicated, but perhaps a better (and more accurate) example of the same point is the new Alice in Wonderland film. There have been a bunch of different movies based on the famous Lewis Carroll book, which has been in the public domain for quite some time.

Michael Weinberg does an excellent job highlighting how the various Alices demonstrate that those of us who support a stronger public domain aren't doing so because we think everything "must be free" or, to quote RIAA boss Mitch Bainwol's insulting falsehood, that we're "against those who actually create the intellectual property." Instead, as the various Alices show, the public domain has freed up tremendous creativity, while still allowing content creators to make plenty of money:

Each of these versions are inspired by the original Alice's Adventures in Wonderland. Each was made with commercial motives in mind, not some urge to set information free (and generally made a lot of money for their creators to boot). Each, at least according to the descriptions in the Times, is bizarre. However what is most striking is that each is bizarre in a way that was probably unanticipated by Alice's original author.

Even though they are strikingly different in almost every imaginable way, we can understand them to be related through that original story. Beyond that, they are stronger works because we understand them in the context of a shared cultural touchstone. They aren't all just freaky movies about some girl and a rabbit. They are Alice in Wonderland stories. That changes how we watch them, think about them, and talk about them.

One of the reasons that the creators of these many versions (who, again, didn't do it for free -- they made the movies to make money) felt free to be as strange as they wanted was because they did not need permission to create their version of Alice. They could take the original story, freak it up however they wanted, and create something new. Creators are better off because they had a way to link a new story to something that people understood (and probably made more money in the process). The public is better off because they can choose between a number of freaky Alice in Wonderlands, or even make their own. Even Alice is better off because she lives on as a cartoon, a little girl, a warrior princess, and whatever else people can dream up for her.

And, of course, this is the original story behind so many classic Disney films as well -- but, Disney has too often focused on then locking up the content that it copied from the public domain.

But the point raised here is an important one. No one is saying that everything must be free and open, and that content creators shouldn't make money. Obviously (to most, but not all, apparently) we've been talking about ways to better make money while also encouraging more widespread access and creativity. Getting away from strict copyright protections is not anti-content creator at all. It's very much pro-creativity. And, as we can see from all the new versions of movies about Alice in Wonderland, even Hollywood knows that the public domain doesn't mean no one makes money.

Filed Under: alice in wonderland, free, movies, profit, public domain

Odeon Cinemas Admit The Experience At Their Theaters Is So Bad It Can't Compete With Your Home Theater

from the can't-compete? dept

We've seen this before, but it's still really incredible. The Odeon movie theater chain is apparently refusing to show the new Alice in Wonderland film, directed by Tim Burton, in the UK, Ireland and Italy, because Disney is (smartly) trying to shorten the "window" between the cinema release and the DVD release. Basically, what Odeon is admitting here is that it knows the experience of going to its theaters is so bad that it simply can't compete with watching the movie at home. This is a rather stunning admission by Odeon and probably should make you think twice before going to any Odeon theaters.

The reason that the box office had its best year ever last year was because people like going out to the movies, for the experience, even if they can watch the movie at home. Odeon's admission that it can't compete even with a 12-week head start is really incredible. Disney isn't even really pushing the bar that much. Many of us believe that there shouldn't be any window at all, but Disney is just trying to reduce the window on this movie from 17-weeks down to 12-weeks. And Odeon is giving up all the revenue from people wanting to see the movie because it's afraid it might make slightly less in just 12 weeks? This makes no sense at all. Not only is Odeon guaranteeing no revenue at all from this movie, it's publicizing the fact that it believes its theaters aren't worth going to.

Filed Under: alice in wonderland, competition, movies, releases, windows
Companies: odeon

Great Moments In Marketing: Disney Pulls Movie Trailer Off YouTube For Copyright Claims

from the it's-a-COMMERCIAL dept

Ah, the stories that just make you shake your head in wonder. The purpose of a movie trailer is that it's a commercial. It's a pure advertisement with the math being simple: the more people you get to see it, the more likely you are to get people interested in shelling out cash to see the actual film. As such, you would think that anyone would be thrilled if people are actively promoting that advertisement for you. Not at the Walt Disney company, apparently. After a trailer of the hotly-anticipated Tim Burton adaptation of Alice in Wonderland hit YouTube, Disney sent a takedown notice to pull it offline. Because heaven forbid people actually want to see the advertisement they put out.

Filed Under: advertisement, alice in wonderland, commercial, movies, trailer
Companies: disney, google