6 ms·

Morgan and Morgan takes Disney to court over 'Steamboat Willie' in ads

101 points by wrayjustin 1y ago

cognomano 1y ago
I suppose trademark law will be the catch-all protection Disney will be using from now.
- joecool1029 1y ago
  That was the plan for years now. They made steamboat willie a part of their animation wing's trademark more than a decade ago: https://m.youtube.com/watch?v=MJkQ-1Jvf0g https://m.youtube.com/watch?v=MJkQ-1Jvf0g
- hamdingers 1y ago
  Am I wrong in thinking this makes more sense than decades/centuries long copyrights? Let the copyright on a work expire so I can share my copy of Toy Story with my friends, but retain a trademark on the characters so that I can't go around making new Toy Story movies (or theme parks or pajamas).
  - cool_dude85 1y ago
    But why shouldn't you be able to make a new Toy Story movie 100 years, give or take, after the original?
    - deleted 1y ago
      [deleted]
    - worik 1y ago
      Yes But ten years A decade is enough IP is a trade off, and the balance is wonky
    - hamdingers 1y ago
      Depends, is there still a Disney making official Toy Story products that your products could be confused with? If not, fair game.
  - themafia 1y ago
    With the copyright expired you can do more than share. You could make copies and then sell them.
  - Terr_ 1y ago
    > retain a trademark on the characters so that I can't go around making new Toy Story movies Here's a quick thought experiment: Suppose I create a small movie company based on another character also in the public domain, and I successfully receive a trademark for my logo, which is... Jesus Christ. Does/Should that give me control over anyone selling or distributing other books, movies, pictures, and songs depicting Jesus? In a sane world, the answer is "heck no", because trademarks are really about stopping fraud, where someone else is trying to leech off my good reputation by confusing people into doing business with them instead. Now, one might plausibly argue that Jesus is "generic" and thus the original trademark was wrongly granted, but the same principles apply even if I rebrand under just one of the less-popular characters or symbols. ("As the owner Pontius Pilate Productions, your story violates my trademark!")
    - zdragnar 1y ago
      There's not much point to the thought exercise. You wouldn't get the trademark in the first place.
      - Terr_ 1y ago
        > There's not much point to the thought exercise. You wouldn't get the trademark in the first place. My brother in Jesus Christ paperwork, even now there are already 236 active and formally-registered trademarks which have been granted involving "Jesus Christ", 18 if you limit it to "wordmarks." [0] Also, as per the concurrent(?) edited-in last paragraph, the basic idea remains even if the scope is, er, less-grandiose. [0] https://tmsearch.uspto.gov/search/ https://tmsearch.uspto.gov/search/
        gamblor956 1y ago
        USPTO search reveals...0 trademarks of "Jesus Christ" because its not trademarkable. There are a number of longer phrases which include the phrase "Jesus Christ" that are trademarked (either as logos or as phrases), but that is a very different thing.
  - smelendez 1y ago
    I’d rather a trademark approach that says you can use the characters but you can’t call it Toy Story, Disney, Pixar, etc.
  - gamblor956 1y ago
    This isn't a copyright case, it's a trademark case. The issue is that some of the specific expressions of the elements may be extremely distinctive, and trademarked by a person (or company) for commercial use. In those situations, you can still use the element, but not the specific expression of that element that is trademarked because that specific expression is being used by another person for ongoing commercial activities. However, unlike copyright, trademarks die if they are not kept in relatively continuous commercial use, generally 3 years after last use. For example: the Winnie the Pooh horror movie. The specific version of Winnie the Pooh in the animated films is trademarked by Disney. The version that is a serial killer wearing a costume is not. Disney didn't bother to try and stop the film. So, if you wanted to make versions of the Toy Story character that don't look like the animated versions, you'd be in the clear once the copyright expires. But the Morgan and Morgan ad is different. They're attempting to use trademarked characters for their own commercial purposes. (And there's no clear parody of Steamboat Willie; in the original cartoon he causes a bunch of accidents that harm other characters including the character that would become Minnie, so what is the parody here?) Unless they've made a sizable donation to the judge's bank account, they have no chance of winning their motion as there is over a century of case law against. OTOH, given the current administration and the openness of his appointees to disregarding centuries of existing law, it's very possible that Morgan and Morgan expects to win this case. As an aside, Morgan and Morgan is generally regarded as the worst of the large personal injury law firms. In cases in which other PI firms sued the same defendants, the M&M plaintiffs got the smallest settlements, because M&M settles as early in the case as possible (usually before discovery) as their business model is based on quick, cheap settlements and they'll put heavy pressure on clients to accept the low-ball offers to avoid having to spend the time or labor costs of going through discovery. There are many complaints of M&M pressuring their own clients, fraudulent billing, withheld settlements, dropped cases, and bait-and-switch fees. They're the most sanctioned law firm in the country...by a lot...
    - kbelder 1y ago
      This is what's keeping me from working on my own "John Carter of Mars" game. The books (at least the first 5-6) are public domain, but Edgar Rice Burroughs, inc has John Carter, Dejah Thoris, etc., all trademarked, and can continue that indefinitely. I don't think it would be a slam dunk legal case, but it's enough to discourage me from trying (I've heard they are litigious).
gamblor956 1y ago
Lawyers aren't expected to know the law outside of their specialty, but a law firm that doesn't understand basic trademark law is probably not a firm you want to trust with your legal matters, because it indicts a failure to perform even the most basic due diligence.
- nomel 1y ago
  To help understand your comment, are you a lawyer?
  - gamblor956 1y ago
    Yes. If this was a case that Morgan and Morgan expected to win they would not have withdrawn the ad. That they did indicates that they don't even believe their own claims.
    - eYrKEC2 1y ago
      In law, isn't the process the punishment frequently? What if they're just expecting Disney to drain their coffers with frivolous legal work? Isn't that a reasonable response then?
      - freejazz 1y ago
        It prevents Disney from being able to file TRO or preliminary injunction preventing the commercial from being aired (and protected M&M from having to spend resources fighting that, which will do nothing to actually determine the overall outcome of the case). Skeptical that gamblor is an attorney, they certainly do not seem to know what they are talking about.
    - toast0 1y ago
      OTOH, making a bunch of noise about the case gets the ad and their product seen by a different demographic than paying for the ad to be placed wherever they would have. IMHO, this is an alternate marketing campaign, costs go to the courts instead of broadcasters. There's some public benefit if the case generates precedent, so that's nice that they want to spend their ad budget on this.
shmerl 1y ago
Typical. They want to profit from copyright but they don't want it to ever expire even if the law requires it. Mickey Mouse curve is their invention.
- crooked-v 1y ago
  The suit is about trademark. Whether it'll fly or not is up in the air, but that's the reason that Disney actively made the "Steamboat Willie" version part of their pre-film branding.
  - shmerl 1y ago
    It's just their attempt to weasel out of the actual copyright expiration.
  - Terr_ 1y ago
    I think in a sane world (heh) using "Steamboat Willie" should only be impaired by Disney trademark exactly as much (or as little) as people would be prevented from sharing pictures of the Statue of Liberty just because some tax-preparation company has a photo-realistic outline in their logo. In both cases the company has zero rights to the underlying public thing, and the court just needs to ask: "Is someone trying to trick consumers into mis-identifying the company or product?" P.S.: Even if the company transitioned into being a seller of commemorative Statue of Liberty figurines, their trademarked logo shouldn't give them the ability to monopolize the subject matter. In that other context it might even be revoked as too-generic and unenforceable.
    - xp84 1y ago
      After some AI-assisted probing, it seems like if Disney wants to challenge this use, they'll likely be arguing that S.W. is a "famous mark" akin to Coca-Cola or Nike and thus merits additional broad protection under the Trademark Dilution Revision Act of 2006 (TDRA). (I haven't checked to see whether one of Disney's pet congresscritters sponsored that one, as was the case with at least one of the copyright extension acts that kept SW out of the public domain on a few occasions). If they can meet the bar established in TDRA they can probably squash all usage of Willie, even in unrelated-industries usage not intended to confuse consumers, in the same way that you can't market "Coca-Cola bedsheets" or a "Google Bicycle" without a license from the trademark holder.
wingspar 1y ago
Good change it’s all for free press. Morgan and Morgan is huge, and John Morgan is toying with a run for Florida governor. He was a big force behind a marijuana legalization push, first medical, then recreational. https://www.politico.com/news/2025/05/15/john-morgan-florida-governor-run-00351005 https://www.politico.com/news/2025/05/15/john-morgan-florida...
flkiwi 1y ago
Morgan and Morgan is a plaintiffs firm specializing in personal injury (though they have other areas of practice). For those not familiar with the US system, if someone hits a victim with their car, a victim slips and falls in a store, etc. and the victim sues, Morgan and Morgan commonly handles that type of case for the victim. Basically the usual "Americans will sue each other for anything" type of law firm (though I don't strictly mean that to be criticism). Morgan & Morgan's business model places a heavy emphasis on convincing the defendant to settle before litigation. They also depend heavily on advertising. Regardless of what happens next, this story is a free "Morgan and Morgan stands up to the big guy for you" headline. Apropos of nothing, the firm's founder, John Morgan, has been instrumental in attempting to legalize marijuana in Florida, which some have identified as a potential, but very funny, conflict of interest given the type of work Morgan and Morgan does.
- burnt-resistor 1y ago
  And it's advertised relentlessly on Youtube like Honey, BetterHelp, SurfShark, NordVPN, RocketMoney, Incogni, and Ground News so it's probably trash too.
- technothrasher 1y ago
  > Morgan & Morgan's business model places a heavy emphasis on convincing the defendant to settle before litigation. To be fair, "ambulance chaser" lawyer or not, over 90% of civil cases in general in the US settle before a trial commences.
  - umpalumpaaa 1y ago
    And to be even more fair: It is strictly regulated how much money Morgan and Morgan can get out of someone who they represent.
    - abduhl 1y ago
      I’ve never heard of a regulation governing attorney’s fees. Which regulations might you be referring to?
deleted 1y ago
[deleted]
yieldcrv 1y ago
Hmmm this is a preemptive lawsuit from Morgan and Morgan for clarity, which seems to be in bad form Morgan and Morgan should just launch the commercial, it sounds hilarious
- 5f3cfa1a 1y ago
  > Hmmm this is a preemptive lawsuit from Morgan and Morgan for clarity, which seems to be in bad form Not a lawyer, but to bring a lawsuit in the US you typically have to show that you've suffered a real injury that the court can remedy. How can Morgan and Morgan establish standing here?
  - eurleif 1y ago
    https://en.wikipedia.org/wiki/Declaratory_judgment https://en.wikipedia.org/wiki/Declaratory_judgment
    - 5f3cfa1a 1y ago
      Awesome, exactly what I wanted to learn. Thanks!
xnx 1y ago
Well known for their commercials: https://www.youtube.com/watch?v=NYtQXtUMWvQ https://www.youtube.com/watch?v=NYtQXtUMWvQ
paxys 1y ago
Title is incorrect. The firm isn't taking Disney to court. They are asking the court to look at their ad and confirm that it doesn't infringe on Disney's trademark, thus shielding themselves from future lawsuits from Disney.
- jkaplowitz 1y ago
  Isn’t Disney a party to the declaratory judgment action which Morgan and Morgan filed, but without Disney having chosen to include itself in the action? That counts as the firm taking Disney to court.
gpm 1y ago
Complaint for anyone else looking for it: https://storage.courtlistener.com/recap/gov.uscourts.flmd.447512/gov.uscourts.flmd.447512.1.0.pdf https://storage.courtlistener.com/recap/gov.uscourts.flmd.44...
scotty79 1y ago
> demonstrating Disney’s continued protection of its intellectual property rights despite the copyright expiration That's some insane mental gymnastics. If copyright expired the IP is no longer theirs. And they don't protect but make extortion attempt under false pretense instead with use of fraudulent claims.

101 points by wrayjustin 1y ago

cognomano 1y ago

I suppose trademark law will be the catch-all protection Disney will be using from now.

joecool1029 1y ago
That was the plan for years now. They made steamboat willie a part of their animation wing's trademark more than a decade ago: https://m.youtube.com/watch?v=MJkQ-1Jvf0g https://m.youtube.com/watch?v=MJkQ-1Jvf0g
hamdingers 1y ago
Am I wrong in thinking this makes more sense than decades/centuries long copyrights? Let the copyright on a work expire so I can share my copy of Toy Story with my friends, but retain a trademark on the characters so that I can't go around making new Toy Story movies (or theme parks or pajamas).
- cool_dude85 1y ago
  But why shouldn't you be able to make a new Toy Story movie 100 years, give or take, after the original?
  - deleted 1y ago
    [deleted]
  - worik 1y ago
    Yes But ten years A decade is enough IP is a trade off, and the balance is wonky
  - hamdingers 1y ago
    Depends, is there still a Disney making official Toy Story products that your products could be confused with? If not, fair game.
- themafia 1y ago
  With the copyright expired you can do more than share. You could make copies and then sell them.
- Terr_ 1y ago
  > retain a trademark on the characters so that I can't go around making new Toy Story movies Here's a quick thought experiment: Suppose I create a small movie company based on another character also in the public domain, and I successfully receive a trademark for my logo, which is... Jesus Christ. Does/Should that give me control over anyone selling or distributing other books, movies, pictures, and songs depicting Jesus? In a sane world, the answer is "heck no", because trademarks are really about stopping fraud, where someone else is trying to leech off my good reputation by confusing people into doing business with them instead. Now, one might plausibly argue that Jesus is "generic" and thus the original trademark was wrongly granted, but the same principles apply even if I rebrand under just one of the less-popular characters or symbols. ("As the owner Pontius Pilate Productions, your story violates my trademark!")
  - zdragnar 1y ago
    There's not much point to the thought exercise. You wouldn't get the trademark in the first place.
    - Terr_ 1y ago
      > There's not much point to the thought exercise. You wouldn't get the trademark in the first place. My brother in Jesus Christ paperwork, even now there are already 236 active and formally-registered trademarks which have been granted involving "Jesus Christ", 18 if you limit it to "wordmarks." [0] Also, as per the concurrent(?) edited-in last paragraph, the basic idea remains even if the scope is, er, less-grandiose. [0] https://tmsearch.uspto.gov/search/ https://tmsearch.uspto.gov/search/
      - gamblor956 1y ago
        USPTO search reveals...0 trademarks of "Jesus Christ" because its not trademarkable. There are a number of longer phrases which include the phrase "Jesus Christ" that are trademarked (either as logos or as phrases), but that is a very different thing.
- smelendez 1y ago
  I’d rather a trademark approach that says you can use the characters but you can’t call it Toy Story, Disney, Pixar, etc.
- gamblor956 1y ago
  This isn't a copyright case, it's a trademark case. The issue is that some of the specific expressions of the elements may be extremely distinctive, and trademarked by a person (or company) for commercial use. In those situations, you can still use the element, but not the specific expression of that element that is trademarked because that specific expression is being used by another person for ongoing commercial activities. However, unlike copyright, trademarks die if they are not kept in relatively continuous commercial use, generally 3 years after last use. For example: the Winnie the Pooh horror movie. The specific version of Winnie the Pooh in the animated films is trademarked by Disney. The version that is a serial killer wearing a costume is not. Disney didn't bother to try and stop the film. So, if you wanted to make versions of the Toy Story character that don't look like the animated versions, you'd be in the clear once the copyright expires. But the Morgan and Morgan ad is different. They're attempting to use trademarked characters for their own commercial purposes. (And there's no clear parody of Steamboat Willie; in the original cartoon he causes a bunch of accidents that harm other characters including the character that would become Minnie, so what is the parody here?) Unless they've made a sizable donation to the judge's bank account, they have no chance of winning their motion as there is over a century of case law against. OTOH, given the current administration and the openness of his appointees to disregarding centuries of existing law, it's very possible that Morgan and Morgan expects to win this case. As an aside, Morgan and Morgan is generally regarded as the worst of the large personal injury law firms. In cases in which other PI firms sued the same defendants, the M&M plaintiffs got the smallest settlements, because M&M settles as early in the case as possible (usually before discovery) as their business model is based on quick, cheap settlements and they'll put heavy pressure on clients to accept the low-ball offers to avoid having to spend the time or labor costs of going through discovery. There are many complaints of M&M pressuring their own clients, fraudulent billing, withheld settlements, dropped cases, and bait-and-switch fees. They're the most sanctioned law firm in the country...by a lot...
  - kbelder 1y ago
    This is what's keeping me from working on my own "John Carter of Mars" game. The books (at least the first 5-6) are public domain, but Edgar Rice Burroughs, inc has John Carter, Dejah Thoris, etc., all trademarked, and can continue that indefinitely. I don't think it would be a slam dunk legal case, but it's enough to discourage me from trying (I've heard they are litigious).

gamblor956 1y ago

Lawyers aren't expected to know the law outside of their specialty, but a law firm that doesn't understand basic trademark law is probably not a firm you want to trust with your legal matters, because it indicts a failure to perform even the most basic due diligence.

nomel 1y ago
To help understand your comment, are you a lawyer?
- gamblor956 1y ago
  Yes. If this was a case that Morgan and Morgan expected to win they would not have withdrawn the ad. That they did indicates that they don't even believe their own claims.
  - eYrKEC2 1y ago
    In law, isn't the process the punishment frequently? What if they're just expecting Disney to drain their coffers with frivolous legal work? Isn't that a reasonable response then?
    - freejazz 1y ago
      It prevents Disney from being able to file TRO or preliminary injunction preventing the commercial from being aired (and protected M&M from having to spend resources fighting that, which will do nothing to actually determine the overall outcome of the case). Skeptical that gamblor is an attorney, they certainly do not seem to know what they are talking about.
  - toast0 1y ago
    OTOH, making a bunch of noise about the case gets the ad and their product seen by a different demographic than paying for the ad to be placed wherever they would have. IMHO, this is an alternate marketing campaign, costs go to the courts instead of broadcasters. There's some public benefit if the case generates precedent, so that's nice that they want to spend their ad budget on this.

shmerl 1y ago

Typical. They want to profit from copyright but they don't want it to ever expire even if the law requires it. Mickey Mouse curve is their invention.

crooked-v 1y ago
The suit is about trademark. Whether it'll fly or not is up in the air, but that's the reason that Disney actively made the "Steamboat Willie" version part of their pre-film branding.
- shmerl 1y ago
  It's just their attempt to weasel out of the actual copyright expiration.
- Terr_ 1y ago
  I think in a sane world (heh) using "Steamboat Willie" should only be impaired by Disney trademark exactly as much (or as little) as people would be prevented from sharing pictures of the Statue of Liberty just because some tax-preparation company has a photo-realistic outline in their logo. In both cases the company has zero rights to the underlying public thing, and the court just needs to ask: "Is someone trying to trick consumers into mis-identifying the company or product?" P.S.: Even if the company transitioned into being a seller of commemorative Statue of Liberty figurines, their trademarked logo shouldn't give them the ability to monopolize the subject matter. In that other context it might even be revoked as too-generic and unenforceable.
  - xp84 1y ago
    After some AI-assisted probing, it seems like if Disney wants to challenge this use, they'll likely be arguing that S.W. is a "famous mark" akin to Coca-Cola or Nike and thus merits additional broad protection under the Trademark Dilution Revision Act of 2006 (TDRA). (I haven't checked to see whether one of Disney's pet congresscritters sponsored that one, as was the case with at least one of the copyright extension acts that kept SW out of the public domain on a few occasions). If they can meet the bar established in TDRA they can probably squash all usage of Willie, even in unrelated-industries usage not intended to confuse consumers, in the same way that you can't market "Coca-Cola bedsheets" or a "Google Bicycle" without a license from the trademark holder.

wingspar 1y ago

Good change it’s all for free press. Morgan and Morgan is huge, and John Morgan is toying with a run for Florida governor. He was a big force behind a marijuana legalization push, first medical, then recreational. https://www.politico.com/news/2025/05/15/john-morgan-florida-governor-run-00351005 https://www.politico.com/news/2025/05/15/john-morgan-florida...

flkiwi 1y ago

Morgan and Morgan is a plaintiffs firm specializing in personal injury (though they have other areas of practice). For those not familiar with the US system, if someone hits a victim with their car, a victim slips and falls in a store, etc. and the victim sues, Morgan and Morgan commonly handles that type of case for the victim. Basically the usual "Americans will sue each other for anything" type of law firm (though I don't strictly mean that to be criticism). Morgan & Morgan's business model places a heavy emphasis on convincing the defendant to settle before litigation. They also depend heavily on advertising. Regardless of what happens next, this story is a free "Morgan and Morgan stands up to the big guy for you" headline. Apropos of nothing, the firm's founder, John Morgan, has been instrumental in attempting to legalize marijuana in Florida, which some have identified as a potential, but very funny, conflict of interest given the type of work Morgan and Morgan does.

burnt-resistor 1y ago
And it's advertised relentlessly on Youtube like Honey, BetterHelp, SurfShark, NordVPN, RocketMoney, Incogni, and Ground News so it's probably trash too.
technothrasher 1y ago
> Morgan & Morgan's business model places a heavy emphasis on convincing the defendant to settle before litigation. To be fair, "ambulance chaser" lawyer or not, over 90% of civil cases in general in the US settle before a trial commences.
- umpalumpaaa 1y ago
  And to be even more fair: It is strictly regulated how much money Morgan and Morgan can get out of someone who they represent.
  - abduhl 1y ago
    I’ve never heard of a regulation governing attorney’s fees. Which regulations might you be referring to?

deleted 1y ago

[deleted]

yieldcrv 1y ago

Hmmm this is a preemptive lawsuit from Morgan and Morgan for clarity, which seems to be in bad form Morgan and Morgan should just launch the commercial, it sounds hilarious

5f3cfa1a 1y ago
> Hmmm this is a preemptive lawsuit from Morgan and Morgan for clarity, which seems to be in bad form Not a lawyer, but to bring a lawsuit in the US you typically have to show that you've suffered a real injury that the court can remedy. How can Morgan and Morgan establish standing here?
- eurleif 1y ago
  https://en.wikipedia.org/wiki/Declaratory_judgment https://en.wikipedia.org/wiki/Declaratory_judgment
  - 5f3cfa1a 1y ago
    Awesome, exactly what I wanted to learn. Thanks!

xnx 1y ago

Well known for their commercials: https://www.youtube.com/watch?v=NYtQXtUMWvQ https://www.youtube.com/watch?v=NYtQXtUMWvQ

paxys 1y ago

Title is incorrect. The firm isn't taking Disney to court. They are asking the court to look at their ad and confirm that it doesn't infringe on Disney's trademark, thus shielding themselves from future lawsuits from Disney.

jkaplowitz 1y ago
Isn’t Disney a party to the declaratory judgment action which Morgan and Morgan filed, but without Disney having chosen to include itself in the action? That counts as the firm taking Disney to court.

gpm 1y ago

Complaint for anyone else looking for it: https://storage.courtlistener.com/recap/gov.uscourts.flmd.447512/gov.uscourts.flmd.447512.1.0.pdf https://storage.courtlistener.com/recap/gov.uscourts.flmd.44...

scotty79 1y ago

> demonstrating Disney’s continued protection of its intellectual property rights despite the copyright expiration That's some insane mental gymnastics. If copyright expired the IP is no longer theirs. And they don't protect but make extortion attempt under false pretense instead with use of fraudulent claims.