Disney Claims over Party Characters Partially Dismissed

Hence “Big Green Guy” instead of Hulk and “The Dark Lord” for Darth Vader (suitable for your Star Battles-themed party, along with “Young Luke” and “The Princess”).

Disney said it wasn't fooled. It complained that Characters for Hire provides “live costumed actors who pass themselves off as plaintiffs' trademarked characters, and who mimic their personas, attributes, and famous story lines. All of these unauthorized uses have caused, and are likely to continue to cause, confusion as to the origin, source, and/or sponsorship of CFH's unlicensed services.”

Moreover, continued Disney counsel Louis S. Ederer of Arnold & Porter, CFH has “shoddy services that are inimical to plaintiffs' reputation for high quality goods and services, and impeccable customer care.”

But Judge Daniels wasn't persuaded of the harm. “The touchstone of a meritorious trademark infringement claim is likelihood of consumer confusion,” he wrote — and Disney fell well short. As Judge Daniels found, “the totality of circumstances surrounding CFH's advertisements and the type of services it offers customers are not likely to suggest to the ordinary, reasonable consumer any affiliation with, or sponsorship by, Plaintiffs.”

Characters for Hire generally avoids using Disney's original fonts, styles or colors, and its characters have “facetious names that are clearly distinct from plaintiffs' marks,” Judge Daniels noted.

While Disney stressed that some customers in online reviews referred to the characters by their actual names (e.g., Chewbacca instead of “Smuggler's Co-Pilot”), the district judge observed that “none of the customer reviews suggested the slightest sign of confusion as to origin, source, affiliation or sponsorship of CFH's services.”

Nor do the enterprises compete. True, Disney in its theme parks features actors dressed up as characters, but it's not in the entertainer-for-hire business. “Theme park guests are in a different market altogether from those looking to hire a costumed character to appear at a child's birthday party,” Judge Daniels explained.

Although Plaintiffs present their trademarked characters in costume at theme parks located in Florida and California, there is no evidence that they currently, or are likely to at any point in the future, compete with CFH by offering character-for-hire services for private entertainment purposes. Nor is there any evidence that Plaintiffs' theme parks and CFH's marketing and provision of character-for-hire services have an overlapping customer base sufficient to create a potential for confusion.”

The judge noted that the relevant market here is not actually children — because “adults, not children, plan parties.” As a veteran birthday party planner, I can also tell you that if you're hiring an Elsa imposter for entertainment, you're definitely going to buy the (official Disney) Frozen party invitations and Frozen plates and Frozen cups and Frozen paper tablecloth and Frozen party favors and Frozen goodie bags. And because you're having a Frozen-themed party, the parents of the guests are likely to buy your child a Frozen-themed toy. And when the faux-Elsa shows up at your house, she reminds every 7-year-old in attendance how awesome Frozen is, and why they too should covet all things Frozen.

On the other hand, what if the fake Elsa is terrible and actually devalues or tarnishes Disney's reputation?

Judge Daniels ruled that such a trademark dilution is an issue for the jury: “Plaintiffs contend that Defendants' use of their marks in connection with the provision of character-for-hire services creates a likelihood of dilution by both blurring and tarnishment. The record evidence does not support a cause of action for trademark dilution based a theory of blurring. However, a genuine issue of fact exists with respect to whether CFH's use of Plaintiffs' marks in connection with its character-for-hire business tarnishes Plaintiffs' marks.”

The judge added if Characters for Hire's services “are of a markedly poor quality, a jury could reasonably find that plaintiffs' marks may suffer from the negative associations formed as a result of defendant's conduct.”

Though declining to dismiss Disney's copyright infringement claim on summary judgment, Judge Daniels sounded skeptical that the allegations have merit. So far, he wrote, Disney did “not point to any admissible evidence demonstrating that defendants have engaged in any of the alleged infringing conduct.”

***** Jenna Greene writes for The Litigation Daily, an ALM sibling of this newsletter. She can be reached at [email protected] or on Twitter @jgreenejenna.