Thursday, December 26, 2019

Disney Princesses, Cosplay, and Trademark Infringement

            In 2016, Disney sued Characters for Hire, LLC (“CFH”)[1]. CFH’s primary business was having performers dress up like Disney Princesses, Star Wars characters, or Avengers characters and performing at themed birthday party celebrations. When Disney sued, it claimed CFH infringed upon its trademark and copyrights through advertisements, marketing materials, and the actors performing at parties.
            In August 2018, the court ruled in a summary judgment motion that CFH’s use did not infringe upon Disney’s trademarks. In promoting its services, CFH used generic substitutes such as Big Green Guy, The Dark Lord, Smuggler’s Co-Pilot, etc., thereby avoiding confusion with Disney’s trademarks. Another factor the court found to weigh against trademark infringement was that Disney does not offer the services provided by CFH, namely character appearances at private birthday parties, and would be unlikely to do so in the future. The court also found no evidence of actual consumer confusion. However, the court did not rule on the trademark dilution and copyright infringement claims.  The case was voluntarily dismissed by the parties in December 2018.
            This case is fascinating to me for a couple of reasons. First, it tests the boundaries of trademark law. How close is too close for something to be considered a trademark infringement? CFH was essentially in the business of hiring out performers dressed as Disney characters. Evidence submitted in the case, such as disclaimers, contract language, and character descriptions, make it clear CFH knew it was walking a fine line. Personally, I think this case could have easily gone the other way. However, the court weighed the factors that go into evaluating a trademark infringement claim very favorably toward CFH.[2] Second, since the case was not appealed and no further courts have considered it, it is a case other accused infringers can look to for guidance and hopeful relief. If CFH could prevail against Disney in this case, with some of the unfavorable facts stacked against it, then others could as well.  
Finally, I’m intrigued by its application to the ever-growing field of professional cosplay. Well-known and well-regarded cosplayers are often compensated to make appearances at events dressed as characters. This case seems to give them, and event organizers, a bit more leeway to do so without worrying about a lawsuit based on their appearance as a character owned by another corporation.

[1] Disney Enterprises, Inc. v. Avi Lieberman, 1:16-cv-02340, (S.D.N.Y. 2016).
[2] “[T]he strength of his mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers.” Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.1961)

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