This is not legal advice but for clarification. Looking at US Patent and Trademark Office site, I noticed that Disney has trademarks for titles like "Peter Pan", "Pinocchio", and "Snow White" for the categories of entertainment, including movies. While there have been other movie adaptations, I think Disney made the most famous of these.
I don't understand how they are allowed to do this. If I was directing a "Snow White" movie, even if I wasn't elements from the Disney version, I still essentially have to ask them to use said title. While trademarking a public domain title that you didn't originally publish or create is 1 thing, doesn't essentially barring another director from doing their own take on Snow White under that title fall under unfair competition?
Also, even though the House of Mouse did their own take on Pinocchio, how is adding "Walt Disney's" to the movie on the Pinocchio movie poster not necessarily reverse passing off? I say reverse passing off because Italian author Carlo Collodi wrote the Pinocchio in the early 1880s. Even if they acknowledge it in the credits, I still see that as a mix of reverse passing off and almost plagiarism.
They were the first to claim the titles as a trademark as used in connection with the sale of products. Thus, using it as a title without more, may not necessarily be either infringement or passing off.
First, you start with great gobs of money...no really, Disney has seven registered marks for Cinderella. The goods include leather articles, cushions, clothing, jewelry, candle holders, magnets, and a series of CDs with the stories...they do not have a monopoly on the Cinderella story.
I didn't look up Pinocchio, but I suspect the same thing is true there.
It is common for people to try to make it look like they have a mark to monopolize an entire story, and one must always consider whether they want to tackle Disney or some similar huge organization. But fear not....just make sure to get an opinion from a professional before deciding to deliberately poke the bear.
I'm not your attorney; my answer includes assumptions. If you want me to be your attorney, I'm easy to find.
If you review the trademarks registered by Disney for these titles, you will see that they do not claim to trademark the title of the movie. They trademark lots of other things, like action figures or film production but not the movie title. In fact you can't normally trademark a movie title, which is why you see multiple movies, from different studios, with the same title.
If you really want to get a better understanding of the wild world of trademarks, I would recommend INTRODUCTION TO INTELLECTUAL PROPERTY IN AMERICA, available from Kindle for under $10.
You are confusing copyright and trademark concepts. While the copyright for a work may be expired, Disney may use the movie title as part of a brand for their own movie adaptation of the story. No reverse passing off. No trademark infringement. I don't understand, however, your numerous Disney mixed Copyright and Trademark questions. Have you been sued or threatened by Disney. If you did, you should retain an experienced Trademark attorney, not ask questions on a public forum.
For more detailed advice, I recommend that you contact an experienced Trademark/IP Infringement litigation attorney to advise you in confidence about your options and potential costs. Many IP specialty firms, like ours, offer an initial free conference by telephone, video conference or in person if you are available locally and would be happy to speak with you. Call and speak with an experienced Trademark Infringement attorney who can assist you.
Mr. Sack's postings on Avvo are of a general nature, based on the facts provided and are not intended to be taken as legal advice or to establish an attorney-client relationship.
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