Photo Credit: https://www.dailymail.co.uk/news/article-3354564/Hilariously-named-fake-Star-Wars-toys-including-Toby-One-Kenobi-sent-shop.html
Disney recently sued Characters for Hire, LLC, a company that has character mascots make an appearance at children’s birthday parties and special events. The judge threw out Disney’s trademark claims against the defendant for characters such as “The Princess” (meaning Star Wars’ Princess Leia) or “Big Hairy Guy” (as in Chewbacca).
The judge held that Disney and Characters for Hire do not compete in the same business and that Characters for Hire’s customers are not victims of actual confusion, since it is usually the adults planning the parties and adults are aware these are character actors.
Disney failed to provide proof of the likelihood of confusion, providing only screenshots of customer reviews on Characters for Hire’s website referencing the actual names of the characters. The judge further stated the only claim remaining is one for trademark dilution. Since Disney’s marks are used in connection with character-for-hire business, Disney’s marks are tarnished.
Trademark dilution gives the owner of a well-known trademark standing to stop others from using that mark too much in a way that would lessen the mark’s uniqueness. There is no need to prove a likelihood of confusion to protect a mark.
Disney’s copyright claims also failed in court, as they only provided low quality screenshots of Characters for Hire’s website, social media, and videos, which have not been authenticated. There is a dispute as to whether the images, personas, and “story lines” on Characters for Hires website are similar to Disney’s. If both parties cannot reach a settlement, then it’s likely this case will be taken to court.
Would you be confused if you saw a “Princess” or a “Big Hairy Guy” at the next birthday party or event you attended?
Article by Carissa Chow