Film buffs, roll up! Despite the fact that it probably isn’t showing at your local MegaPlex, Randy Moore’s latest indie horror film ‘Escape from Tomorrow’ has garnered a considerable amount of media attention. Shot on Disney soil without permission, it features iconic (and copyrighted) Disney characters like Mickey Mouse and Donald Duck doing things like attempting to crush a child, and more than one Disney princess features as a prostitute. To cap it all off, the poster for the film shows a blood-soaked, Mickey Mouse-esque hand above the title of the film, which is spelled out in Disney’s all-too-familiar cursive font. Sounds ripe for copyright or trade mark litigation, doesn’t it? It might sound odd, then, to hear that things are very quiet over at the usually litigation-happy House of Mouse.
While shooting inside Disney’s amusements parks isn’t actionable beyond a claim of trespass, Disney could have potential claims under IP protection laws, which we have outlined below.
So why no action? Word on the street is Disney is set to release its own film in December, and is choosing not to add fuel to the fire by turning ‘Escape from Tomorrow’ into “the movie that Disney didn’t want you to see”. The fact that ‘Escape from Tomorrow’ is a low-budget indie flick, probably never destined to be a blockbuster anyway, may also have influenced this decision.
While Disney probably won’t be thrilled with the likenesses of Belle or Jasmine being associated with anything other than princessly conduct, Moore could potentially be protected from a breach of copyright claim.
In Australia, Moore could rely on the “fair dealing” exception. This is quite a narrow test and only permits the use of a copyrighted work for a particular purpose, including research or study, criticism or review, reporting news, parody and satire and seeking professional advice (see ss 40 – 43 of the Copyright Act 1968 (Cwth)). In order to establish “fair dealing”, the use of the work must not only be “fair”, but must fit within one of the above prescribed purposes. For example, if Moore were able to convince a court that he used Disney’s characters and settings for criticism or review purposes (perhaps a critique of the ‘American Dream’, set in ‘the happiest place on earth’), he may be able to satisfy the “fair dealing” exception.
In contrast, “fair use” under U.S. law is a much broader concept, and courts need only consider the purpose and character of the use, the nature of the copyrighted work, the amount of it used and the effect of the use on its potential market value.
Interestingly, at least one author has pointed out a 1978 case whereby Disney was able to defeat a “fair use” defence on the grounds that the parodists used more material than was necessary to make their point. We’re not sure how this argument would stand up to a modern judiciary, but would be very interested in the outcome if Disney tried to run it!
Unauthorised use of Disney’s Trade Marks?
Trade mark law protects a trade mark owner’s right to prevent others from using the mark if it would be likely to cause consumer confusion as to the source or origin of the goods. Given Disney’s presence in the film and entertainment industry, it is not beyond the realm of possibility that it would make a film, or that it would use one of its best-known characters on promotional posters. Might Moore’s use of the iconic cursive ‘Disney’ font, and the Mickey Mouse-esque hand, be a breach of trade mark?
In the U.S., Disney might seek to rely on passing off and dilution to prevent Moore using their characters and images, for which it would need to establish:
- goodwill in their brand or reputation;
- misrepresentation by the defendant, resulting in consumer believing (or being likely to believe) that there was a legitimate connection between ‘Escape from Tomorrow’ and the Disney franchise; and
- damage as a result of the misrepresentation.
Under Australian law, specifically the Trade Marks Act 1995 (Cwth), a court would consider whether the Disney characters, or the ‘Disney’ font, had been used as a trade mark. A decision would then need to be made as to whether the marks on Moore’s poster were substantially identical or deceptively similar to those original registered marks, and whether this would cause consumers to be confused or deceived as to the film’s origins.
If a claim under the Trade Marks Act was unsuccessful, Disney might also consider pursuing a claim of misleading conduct under the Australian Consumer Law, or the common law tort of passing off.
They say a picture is worth a thousand words. Well, we’ve done the hard yards and compiled three in the table below for you, dear reader, to compare and to judge the matter for yourselves. Do you think there is potential for an IP action?