TRADE MARK / COPYRIGHT
Artistes, broadcasting, internet
Disney is going after Deadmau5 (Joel Zimmerman) and his logo, opposing a trademark application he submitted in the US last year. The company made a move to block Zimmerman from trademarking his familiar Mau5 head in the U.S., claiming the image is too similar to its iconic mascot Mickey Mouse, who first appeared in the 1928 animated short Steamboat Willie.
In a statement earlier this week, the producer’s lawyer Dina LaPolt pointed out that Deadmau5 has been using his logo, based on his on-stage headgear, for almost a decade and that he’s already managed to secure the trademark in 30 other countries, and she added that her client “will not be bullied by Disney and is prepared to fight to protect his rights to his property”. Zimmerman himself said ““Disney thinks you might confuse an established electronic musician/performer with a cartoon mouse. That’s how stupid they think you are” and Deadmau5 tweeted “Lawyer up, Mickey,” to his three million followers.
But in a twist to this tale, Zimmerman found another way to fight back: he and his lawyer discovered that between 2009 and 2012, the Disney Channel ran a series called ‘Have A Laugh!‘ One segment of this show was called ‘Re-Micks’, in which classic Mickey Mouse cartoons were cut up and turned into short music videos for a variety of songs by artists including The Black Eyed Peas, Miley Cyrus and The Beach Boys – and Deadmau5. Since then, these videos have been pulled out of the show and turned into standalone videos and put up on the Disney website. While the music was seemingly cleared for the TV show, putting it on online is something, seemingly, for which Disney had not secured the proper rights – and so the Mau5’s lawyer sent a cease and desist letter to the company. In her letter, LaPolt states in no uncertain terms that Disney is infringing the copyright of her client. Not only that, but the copyright of EMI Music Publishing, Virgin Records and Ultra Records too. LaPolt added: “In addition to Disney’s numerous acts of copyright infringement, the infringing video implicates the Zimmerman’s trademarks and rights in and to his name and likeness”, she continued. “Disney prominently features the deadmau5 mark next to the infringing video, implying a non-existent endorsement by Zimmerman”. The letter goes on “Again, we are unaware of any license allowing you the right to reproduce, distribute or otherwise exploit the deadmau5 mark or to exploit Zimmerman’s name and likeness in connection with same. Therefore, Disney’s current exploitation and for distribution of the infringing video constitutes infringement of Zimmerman’s rights of privacy and publicity, as well as unfair competition, trademark infringement, and interference with economic relations, among other causes of action under the California Civil Code (Sec. 3344), the United States Lanham Act (See. 1 125) and other applicable law”. 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!”
And lo – within hours the video featuring the producer’s track ‘Ghosts N Stuff’ was gone from the Disney website. In fact every single Re-Micks video that had been on the website previously was also gone. Disney later said: “The music was appropriately licensed, and there is no merit to his statement”.
Disney responded on the trade mark dispute in a statement saying: “Disney vigorously protects its trademark rights, and we oppose Mr. Zimmerman’s attempt to register a logo that is nearly identical to our trademarks for his commercial exploitation,” wrote a spokesperson. “Our opposition is not about the use of the Deadmau5 costume. The music was appropriately licensed, and there is no merit to his statement.”
Deadmau5 is also in receipt of a cease and desist letter from Ferrari of all people. Why? Well earlier this year, Zimmerman de-branded his Ferrari and affixed a wrap in the design of the Nyan Cat 2011 YouTube phenomenon, a ‘Purrari’ badge and the image of a prancing cat on the bumper. He then drove the car in the 2014 Gumball 3000 rally from Miami to Ibiza and afterwards offered the car for sale. This appeared to be the last straw for Ferrari. Deadmau5 expressed his outrage about Ferrari’s sense of humour failure on the social media but has nonetheless undone his alterations to the car branding.
More on the trade mark dispute on the IPKat here http://ipkitten.blogspot.co.uk/2014/09/a-most-un-magical-of-us-trade-mark-and.html where Lucas Michels notes “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”. But would the public be confused between the two mice marks – and are Disney’s marks diluted by the Mau5 mark? That remains to be seen.