The growing tresses in IP claims in fictional characters

No, I am not posting a picture of the fun we had at Meet the Bloggers 2018 in Seattle! Rather, it’s this business:


The copyright part of it is a hard issue, and one that has been wrestled — by me and by the likes of Matthew David Brozik — with in these pages before. It can get hairy (Rapunzel pun not intended — but enjoyed all the same). But what happens when copyright baloney threatens to become trademark salami?
Let’s zoom in on Ed Timberlake’s original inquiry:


Quoting the opposition:

Applicant’s mark fails to function as a trademark under Sections 1, 2 and 45 of the Trademark Act (15 U.S.C. §§1051, 1052 and 1127), as it is purely information and highly descriptive, if not a generic descriptor, of Applicant’s goods. Additionally, Applicant’s mark is merely informational under section 2(e)(1) of the Trademark Act (15 U.S.C. §1052(e)(1)) in that it merely describes and names a well-known fictional character. In that sense, the “mark conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods.” TMEP §1209.01(b). The public knows Rapunzel as the character name of a fictional fairy tale character, not as a source indicator. Trademark protection may be precluded in those instances where the proposed mark does not function as a source indicator. In the case of Rapunzel, consumers are accustomed to encountering the name in an associational or information manner unconnected with any goods/services. Here, Applicant is attempting to snatch the name Rapunzel out of the public domain, which would prevent others from referring to their Rapunzel dolls, characters and toy figures by their true name — Rapunzel. As a result, the Board should deny registration of the opposed mark under Section 2(e)(1) of the Trademark Act (15 U.S.C. §1052(e)(1)) as well as Sections 1, 2 and 45 of the Trademark Act (15 U.S.C. §§1051, 1052 and 1127).

I like it. Is Roberto Ledesma correct that literary characters should be protected by trademark as well as copyright? Well, this is merely the eternal Mickey Mouse question — no, not the copyright one, the trademark one:

For Disney, Mickey Mouse is not just a huge money maker, but the company’s most coveted piece of intellectual property. Mickey is Disney, and Disney is Mickey: the two are simply one and the same, and nothing is more important to Disney than his well-being. (“I love Mickey Mouse more than any woman I have ever known,” Walt Disney once famously said).

For this reason, Disney has done everything in its power to make sure it retains the copyright on Mickey — even if that means changing federal statutes. Every time Mickey’s copyright is about to expire, Disney spends millions lobbying Congress for extensions, and trading campaign contributions for legislative support. With crushing legal force, they’ve squelched anyone who attempts to disagree with them. . . .

 

Ultimately, none of this may matter: Even if Mickey’s copyright does expire in 2023, Disney has no less than 19 trademarks on the words “Mickey Mouse” (ranging from television shows and cartoon strips to theme parks and videogames) that could shield him from public use.

 

While a copyright protects works of art from being manipulated by the public, a trademark “protects words, phrases and symbols used to identify the source of the products or services.

 

According to a precedent set in a 1979 court case, a trademark can protect a character in the public domain as long as that character has obtained what is called “secondary meaning.” This means that the character and the company are virtually inseparable: upon seeing it, one will immediately identify it with a brand. Copyright lawyer Stephen Carlisle contends that Mickey Mouse would meet this qualification with flying colors, should he need to:

Disney has made Mickey Mouse so prominent in all of their corporate dealings, that he is effectively the pre-eminent symbol of the Walt Disney Company. There can be little doubt that anyone seeing the image of Mickey Mouse (or even his silhouette), immediately thinks of Disney.

In other words, Disney has ingrained Mickey Mouse so deeply in its corporate identity that the character is essentially afforded legal protection for eternity, so long as Disney protects him (trademarks last indefinitely, so long as they are renewed).

 

It’s a sad truth for crusaders of the public domain: the more powerful and recognizable a piece of corporate property is (and thus, the more coveted it is by society at large), the less likely it is to be relinquished.

Sound right to me. But is Rapunzel an original fictional work such as Mickey Mouse, Sherlock Holmes or Stormy Daniels? No. Does that answer Ed Timberlake’s standing question? Here’s how Rebecca Curtin, in the opposition, asserts that she has standing:

Opposer, Rebecca Curtin, as a private citizen, has a legitimate interest in the outcome of this proceeding. By allowing an individual private company to trademark the name of a famous fairy tale character in the public domain, consumers such as Opposer will be denied access to healthy marketplace competition for products that represent the well known fictional character. Consumers such as Opposer will also likely face an increased cost of goods associated with Rapunzel merchandise, given the lack of competition. Opposer believes that a trademark registration in the fairy tale character’s name for dolls could chill the creation of new dolls and toys by fans of the fairy tale, crowding out the substantial social benefit of having diverse interpreters of the fairy tale’s legacy. Consumers such as Opposer will also be denied access to classic, already existing, Rapunzel merchandise whose sale may be precluded if Applicant receives a registration for the name “Rapunzel.” Finally, Opposer is a professor of law teaching trademark law and has a scholarly interest in the robust development and consistent application of the doctrine of trademark law.

Asserted robustly, indeed, and in compelling fashion. But, no.  Marty Schwimmer already settled this. A long time ago, in a post I linked to myself… a long time ago, and which sort of opened an unrelated (to standing) Pandora’s box for me, as it happens.


No. He may not. This will have to be handled by the professionals at the USPTO. I’d bet every hair on my head — or something even more rare — that they will do the right thing.

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