A Most Un-Magical of U.S. Trade Mark and Copyright Disputes

Deadmau5's Design Mark U.S. Serial No. 85972976

An un-magical U.S. IP dispute has become even more un-magical by the day. In April, I reported that the U.S. family entertainment behemoth Disney filed a notice of extension to oppose a trade mark application with the Trademark Trial and Appeal Board (“TTAB”) for a mouse head design (Serial No. 85972976; the “Application”) filed by a Caribbean holding company on behalf of Canadian electronic musician and performer Deadmau5 (aka Joel Thomas Zimmerman). Although it was undisclosed at the time, it is assumed that Disney's main objection to the Application in April was its confusing similarity to Disney's most iconic cartoon character—Mickey Mouse. On 31 August 31 Disney filed a Notice of Opposition against the Application with the TTAB, claiming that it posed a likelihood of confusion (15 U.S.C. § 1052(d)) and diluted (15 U.S.C. § 1125(c)(1)) dozens of Disney’s federal registered trade marks for Mickey Mouse (the "Mickey Marks").  

Disney's Mickey Mouse Design
Mark  U.S. Serial No. 2784058

Although Disney's Notice of Opposition filing was expected, as well as Deadmau5's opposition, what was not expected was that Deadmau5 would take Disney to task on an unrelated copyright and trade mark matter. On 4 September Deadmau5 sent a cease and desist letter to Disney claiming that Disney used portions of its song  “Ghosts 'n' Stuff” without authorization in an online video starring none other than Mickey Mouse, entitled "Ghosts 'n' Stuff-re-Micks" [subsequently removed from Disney's portal but Merpel reports that you can still find it here] which allegedly infringed Deadmau5's copyright in Ghosts N Stuff, as well as two of his U.S. trade mark registrations (Reg. Nos. 3930481 and 3836647). 

Disney representatives reportedly rejected Deadmau5's allegations, arguing that Disney properly licensed Ghosts N Stuff for its video. To highlight how unpleasant this dispute has become, Deadmau5 tweeted a copy of this cease and desist letter to his nearly 3 million Twitter followers where he referred to Disney as "twats," and wished Disney to "have a magical f--king day!" 

The Counterattack
to Mickey

The main question arising from this deteriorating trade mark and copyright dispute is who is likely to prevail on their claims? 

With Disney’s likelihood of confusion claims against the Application, Deadmau5 may have an uphill battle establishing that the Application does not likely cause confusion with Disney’s Mickey Marks due to their visual similarity, yet Deadmau5 may be able to make distinctions. As I reported recently in another TTAB opposition battle, likelihood of confusion between marks in the U.S. is determined on a 10 factor test, with similarity of the marks' appearance, sound, connotation and commercial impression having substantial weight. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), Federated Foods, Inc. v Fort Howard Paper Co., 544 F.2d 1098, 1103 (C.C.P.A. 1976) and TMEP § 1207.01. Within this factor, the similarity of design marks must be decided primarily on the basis of visual similarity: in re Vienna Sausage Mfg. Co., 16 U.S.P.Q. 2d 2044, 2047 (T.T.A.B. 1990). 

As Disney convincingly showed in its opposition, the Application and several of the Mickey Marks are comprised of similar round-shaped heads and round ears (see above), making visual similarity between such marks hard to deny. Further, as many of the Mickey Marks were federally registered or had obtained common law trade mark rights years before Deadmau5 began using his mouse head logo, Deadmau5 likely cannot claim priority rights in the Application.

However, Deadmau5 may be able to claim that the Application and the Mickey Marks will not confuse the public as to the origin of goods and services. A likelihood of confusion between similar marks is not determined on whether people will be confused between the marks, but rather whether the marks will confuse people into believing that the marks’ goods or services derive from the same origin or sponsorship: Paula Payne Prods. Co. v Johnson’s Publ’g Co., 473 F.2d 901, 902 (C.C.P.A. 1973); TMEP § 1207.01. Although the Application includes many of the same classes of goods and services as the Mickey Marks, Deadmau5 may argue that the general public would not be confused between the source or sponsorship of goods and services utilizing the Application based on Disney and Deadmau5's different markets. Deadmau5's electronic music and associated products are generally offered to adults, and primarily within the electronic music scene, while Disney's Mickey Mouse-related goods and services are geared towards children and customers of family entertainment. To put it another way, would a consumer of electronic music somehow believe that Deadmau5’s merchandise was sponsored by Disney? It may seem unlikely, however such unlikeliness may not be enough to salvage the Application from a TTAB rejection.

Disney’s other claim, trade mark dilution, will likely be easier for Disney to establish based on Deadmau5’s use of its design mark. Under the U.S.’s Federal Trademark Dilution Act, an owner of a famous mark can prevent another party from using a mark that blurs or dilutes that famous mark regardless of actual confusion, competition, or economic injury. There is little disagreement that the Mickey Marks are famous since Mickey Mouse is one of the most recognized cartoon characters of all time. However, there would likely be questions as to whether Deadmau5’s use of the Application in any way lessens the strength of the Mickey Marks, namely the connection the public draws between Disney and the Mickey Marks (aka its uniqueness). Trade mark dilution has not been found in the U.S. when  a famous mark is used for parody (Louis Vuitton Malletier v Haute Diggity Dog, LLC., 464 F. Supp.2d 495, 504-05 (E.D. Va. 2006)) or descriptive purposes (Sunmark, Inc. v Ocean Spray Cranberries, Inc., 64 F.3d 1055, 1060-61 (7th Cir. 1995)).

Unfortunately for Deadmau5, their use of the Application likely does not describe any of the goods and services identified in the Application, nor is there any indication that Deadmau5's logo is a parody of Mickey Mouse. Without evidence of such accepted uses, Deadmau5 is at greater risk of having the Application refused registration before the TTAB.

Despite these assertions, if Deadmau5's copyright and trade mark infringement claims arising out of the Ghosts 'n' Stuff-re-Micks can be upheld, there is a greater chance that the parties will settle their dispute. However, such a settlement is by no means guaranteed. The only thing that is for certain in this dispute is that is it going to get less wholesome, and child-friendly as it proceeds.

In the words of Deadmau5, have a magical f--king day!