Disney Wins Again!
- Post by: Bill Hood
- June 26, 2021
- Comments off
Yet, another example of a screenprinter believing that they can create T-shirts and other products that are similar to trademarked images and get away with it. In fact, in some cases, the images were not similar, but the implication was enough for the judge to rule in favor of the trademark holder – Disney Enterprises and Lucasfilm Entertainment.
March 24, 2020 – The DisGear online store run by Eric Wichhart of Winter Garden, Florida (operating as Mouseprint Media LLC) was sent multiple cease and desist letters prior to the actual filing of the lawsuit, and Disney unsuccessfully attempted to reach out to the owner of DisGear before taking legal action.
The lawsuit claimed that Mouseprint Media LLC, also known as DisGear, sells products on an online store and calls itself the “#1 source for themed Disney t-shirts.”
Disney Enterprises and Lucasfilm Entertainment contended that Mouseprint Media was selling merchandise that includes copied Disney logos, designs, and products, The lawsuit cited several examples of this — from the use of Mickey Mouse and Darth Vader to Tinkerbell and Goofy — even noting that the DisGear logo itself infringes on copyright. The lawsuits also stated that Mouseprint Media previously filed a trademark application with the US Patent and Trademark Office, but the company was denied based on “confusing similarity.”
U.S. District Judge Roy B. Dalton, Jr. today awarded the victory to Disney Enterprises and Lucasfilm Entertainment who argued they had concerns the public would assume Disney and Lucasfilm were working with Mouseprint Media. In the court order, Judge Dalton outlined the steps which essentially shuttered Disgear, and they must hand over all merchandise to Disney to be destroyed within 20 days, the company’s website has been shut down, and that DisGear must abandon trademark applications they have on the products. Disgear has agreed with the court order.
Although Disney is known for its aggressive intellectual property (IP) protection, the law states that the holder of a copyright or trademark must defend any and illegal use the intellectual property, or they stand to lose the rights of such claims. This puts large companies that have invested fortunes in their brand to every company that uses their intellectual property no matter how small.
There are many myths being floated on social media by people who no real knowledge and often they will tell everyone that:
- You can change an image by 15% (or some other number) and there is nothing the IP holder can do about it.
- You can print anything that is copyrighted or trademarked as long as you don’t charge for the artwork.
- Just keep printing until you a cease and desist letter, and you get to keep the money.
None of those statements are true! Nor are the hundreds of other crazy social media opinions that tell you that you have nothing to worry about. You can be sued for anything and it is up to the judge to decide who wins and who loses. In truth, there have been many companies that lost their building and equipment in similar lawsuits. Disney did not go to that extreme in this case, but other companies have.
In the instance where the products are very similar to the IP holder’s product, they only need to call the Federal Marshal’s office and report the products as counterfeit. In that case, it becomes a criminal matter and the Federal Marshal’s come in with guns on their hips and take everything including equipment and the building if owned by the defendants. In some cases, homes and vehicles have been seized if it is thought that they were purchased from the revenue of the illegal sales.
The gears of justice sometimes turn very slowly as they did in this case. Mouseprint Media started selling the products in 2014, and Disney sent a cease and desist as soon as they found out about the products, but it took 6 years before the case was finalized in favor of Disney.
Images from Disgear website