New York Trademark Attorney Blog
Disney filed a lawsuit in a California Federal Court, Disney Enterprises, Inc. v. Phase 4 Films, Inc. et al, 2:13-cv-09401, alleging trademark infringement and unfair competition. Phase 4 Films released its movie entitled “The Legend of Sarila” on November 1, 2013, generating low box office revenue. Three weeks later on November 19, 2013 Disney released its animated film Frozen. Disney alleges that once Phase 4 Films learned about the success of Frozen, they decided to retitle the film to Frozen Land. In addition, Phase 4 Films redesigned its artwork, packaging, and logo to take advantage of the financial success of the Disney Film.
To compare the promotional materials and looks of the logos, review the Complaint filed by Disney. Make your own decision as to whether Phase 4 Films replicated the trademark logo and look of Disney’s Frozen. Phase 4 Films may have hoped to rely on the fact that the title of a single creative work can not receive federal trademark protection and it may have overlooked the other legal protections available. See Trademark Manual of Examining Procedure (TMEP) §1202.08. However, a name of a series of creative works can be registered with the United States Patent & Trademark Office (USPTO) under TMEP §1202.08(c). For example, the series titles of the Star Wars movies could seek protection while the single title of the movie Titanic could not.
The next logical question is how can the single title of a creative work be protected under the law? One means of protection would be to include a cause of action for unfair competition under §43(a) the Lanham Act in your federal complaint, if appropriate. See Lanham Act §43(a) 15 U.S.C. §1125(a). Disney included an unfair competition action in its lawsuit against Phase 4 Films. Keep in mind that this is a difficult case to prove because you must show that the title achieved secondary meaning. This usually requires demonstrating high advertising expenditures, significant media coverage, and consumer surveys. One may also consider filing for a state trademark registration as a means of protection. The registration process is much simpler than the federal process and its filing fees are lower. There is also no established legal mechanism to cancel a state registration. If you want to challenge a state trademark registration, you must file a civil action. Lastly, a state registration will have a strong deterrent effect on third parties because the state registration will appear in trademark search reports.