Old School v. New School, Disney v. Deadmau5

By: Rachel Bangser

At first blush, it doesn’t seem like the worlds of Mickey Mouse and electronic dance music (EDM) have a great deal in common.  However, these two seemingly disparate entities have recently come into conflict regarding trademark dilution – and the resulting case shows that this is a pretty small world, after all.

On Sept. 2, 2014, The Walt Disney Company submitted a 171-page filing in opposition to EDM musician deadmau5’s attempt to register his “mouse-head” insignia.[1]  Deadmau5, the performing persona of EDM producer Joel Zimmerman, had previously applied to the U.S. Patent and Trademark Office to register his front-facing logo as early as June 2013.[2]  Despite the fact that the most recent registration attempt on August 18, 2014 included the artist’s name at the bottom of the mouse-head image, Disney maintained their position that the logo was in violation of trademark law.[3]

Disney contends that the deadmau5 mouse-head logo is too similar to the iconic “Mickey Mouse ears” graphic that has been a registered trademark of the corporation for over 100 years.  The corporation believes that this similarity dilutes the impact of Disney’s trademark by blurring the lines between the two parties’ marks.[4]  Trademark dilution by blurring is described as “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.”[5]  In this case, the Walt Disney Company believes that allowing deadmau5 to register his mouse-head will “damage their business and mislead consumers.”[6]  Disney fears that the deadmau5 mark will lessen the recognition of the ubiquitous Mickey Mouse ears that have taken pop culture prevalence for several generations.[7]

If this case does result in a trial, several factors will determine whether or not Disney’s trademark will indeed be diluted by the registration of deadmau5’s image.[8]  These factors include the degree of similarity between the marks, the distinctive differences between the marks, the degree of recognition, and any intended or actual association between the two marks.[9]

The law, however, requires that the mark in question be “a mark or trade name […] that impairs the distinctiveness of the famous mark”.[10]  Although Disney has certainly existed longer than deadmau5, the DJ isn’t a small artist – he has been playing for over 10 years, and his trademark is currently registered in 30 countries.[11]  The law states that a famous mark must be “distinctive,” but the deadmau5 mouse-head has facial features that are markedly different from Disney’s solid mouse silhouette.[12]  Deadmau5’s registration attempt in August also includes his artist name underneath the image, which adds further distinction to the trademark.[13]

The audiences for Disney and deadmau5 works are decidedly different, and the prohibition of trademark registration will draw attention to another issue that has gone unnoticed for the past decade.  The copyright protection on some Disney works may expire within the next few years, and its current copyright protection was renewed under controversial circumstances.[14]  Prior to 1998, works that were originally copyrighted in the 1920s – such as Disney’s early animation – would have entered the public domain.[15]  However, President Clinton signed the Copyright Term Extension Act (CTEA) into law in October 1998, and the copyrights for those older works were extended for another 20 years until January 1, 2019.[16]

Detractors of the CTEA believe that prolonging the copyright on certain works prevents the development and expansion within artistic fields.[17]  Only the coming months will tell whether or not the trademark matter is settled or taken to court, but at the end of the day, the battle between the two media icons is likely to be the first of many issues that may arise for Disney in the wake of the pending CETA expiration.