Mad Hatter as Trademark for Kitchenwares

Dear Rich: If a literary character is in the public domain, like 'The Mad Hatter' could I create a brand of kitchenwares called 'The Mad Hatter's Kitchen'? I understand I'd have to make sure any imagery didn't look like the Disney versions of the characters.
If you're registering the name "MAD HATTER" beware that Disney has registered at least seven MAD HATTER trademarks for, among other things, books, films, figurines, backpacks, clocks, jewelry, action figures and cell phones. Unless Disney can demonstrate a likelihood of expanding into kitchenwares, you should be entitled to register your mark (assuming you meet all other trademark requirements). On the other hand, Disney is an aggressive trademark owner and has a tendency to hassle those seeking MAD HATTER registrations for various goods (including cannabis). Prior to applying for registration, you should perform a trademark search of Class 21 (household utensils) and Class 11 (appliances) and Class 8 (hand tools).

Wants to Make Sexy Snow White

Dear Rich: I am planning to publish a book on Snow White and the 7 Dwarves that will be, shall we say, salacious in nature. I read Disney created a trademark for Snow White in 2010 but that it won't apply to written works. Even if their trademark did apply to written works, could I still publish my book? Or would it be considered a parody of sorts? Or, should I simply change all the characters' names (of course, readers would know who I was referring to all along)? Would that protect me from Disney's wrath? If not, do you have any ideas how to protect myself? Disney sought to register a trademark for SNOW WHITE in 2008. The application was for the exclusive right to use the slumbering superstar's name in connection with movies. The USPTO approved the application in April, 2010, but Disney never completed the registration process and as far as we can tell, the registration remains in hibernation awaiting that awakening kiss from Disney's legal staff. That doesn't mean Disney is backing off its IP chivalry, it just means it hasn't completed the process. You are correct in that none of the registrations filed by Disney are for printed matter (although the company does own rights to Sleeping Beauty bed linen -- clever, huh?). By the way, for the whole story of Disney's plunder of the public domain, check out this letter to European IP HQ.)
Right you had a question.  Legally, you're in the clear to create a book involving lubricants, handcuffs, and latex dwarf costumes, provided it's not based on or does not borrow from the Disney movie. You should probably include a disclaimer on the book stating that it is loosely based upon the original Grimm story and that is not affiliated with any entity that claims trademark rights to Snow White ... and of course avoid using the names popularized for the dwarves and which were created by Disney. Finally, you should avoid any visual reference to Disney characters, parody or not. Even if you do all this, that doesn't mean you won't get scary letters from Disney lawyers ... but your legal position should be fortified.
P.S. Here's a film that was made despite Disney trademark claims. Check out the director's response to a question about copyright and trademark.

Why Not Get Rid of Copyright When Trademarks Are So Much Better?

Dear Rich: I recently looked into whether Mickey Mouse or any of Walt Disney's old videos like Steamboat Willie were in the public domain. They were created in the late 1920's. I'm a little shocked to realize none of them are public domain. I don't understand the details, but what I understand is Mickey Mouse is a "trademark" of Disney, as are several of its characters. That makes me wonder, why don't we just get rid of copyrights altogether, and get these far superior "trademarks" that last forever on everything? What is stopping me, or anyone else from "trademarking" everything that I create? Why is copyrighting essentially "free", and trademarking very costly? Why isn't trademarking free? I'm not asking for a prescriptive rehashed response. I'm really looking for a critical poke at this entire system. Here at Dear Rich headquarters we're not into critical pokes, we're more in to  prescriptive rehashed responses that have some practical value. In this case, the best we can do is answer some of your questions.

• Why isn't Steamboat Willie in the public domain? Works published before 1923 are in the public domain. Steamboat Willie debuted in 1928 and was later renewed. It's true that there is still some dispute as to whether copyright in the film was lost due to an issue over "formalities," but nobody has used that evidence to challenge Disney in court. So the presumption is that Steamboat Willie has not fallen into the public domain. It's also true that the copyright extensions that have kept Steamboat Willie alive were partially funded by Disney lobbying efforts but that shouldn't surprise anyone. Many, if not most, laws are the result of lobbying efforts. Separate from Steamboat Willie films (and any other narrative content), the character of Mickey is protected under copyright and trademark law. When Steamboat Willie falls into the public domain, you are free to copy those videos. But you will not be free to create new Mickey video or artwork-- that is you can't create new examples of the character. 
• Why not trademark everything? Because you can't. Assuming you're referring to registering the trademark with the U.S. Patent and Trademark Office, you must go through an examination procedure that's fairly rigorous. You must demonstrate that consumers associate your business with the mark on a specific class of goods. In addition, there are lots of rules and hurdles to overcome. For example, a single book cannot acquire trademark protection, only a series of books. Only characters that have achieved significant recognition make it into the pantheon of character trademarks.
• Why is copyright free and why are trademarks costly? The fee for registering ($35-$65 for a copyright v. $275 to $325 for a federal trademark registration) is higher for trademarks but by itself, that's not an accurate measure of the cost of protection. The fees merely reflect the level of government examination (little or no substantive examination at the Copyright Office versus a full exam for trademarks at the USPTO). That may be why the validity of a federally registered trademark is sometimes easier to defend than the validity of a copyright registration. In any case, these initial fees are the starting point for protection; the real cost is in the policing and enforcement. By those standards, the costs of hiring lawyers, writing letters and going to court, are fairly similar for copyrights and trademarks.
• Why don't we get rid of copyrights? Sometimes it feels like we have.

Can I Be A Disney Party Princess Impersonator?

Dear Rich: I want to be a princess party entertainer for kids. If I make a costume (not licensed) and NOT call the princess by its "Disney" name, can I charge for my party entertainment services? Is there a loophole on the whole copyright thing? What about celebrity impersonators? Can't I be the blue princess celebrity impersonator? (Dress blue and white, not licensed). Sorry, I'm not trying to get you in trouble with "The Mouse." We're not sure what you mean about being a celebrity impersonator princess ... is it something like this. As for a copyright loophole, we assume you're seeking a legal means of escaping liability for infringement. We doubt whether you would qualify for any of the existing methods -- for example, fair use, the first sale doctrine, etc. Under copyright law, Disney can go after anyone who reproduces or exploits a substantially similar version of one of their proprietary princesses. Even so, we believe most "liability evasion" occurs because Disney hasn't learned about the infringement or is so booked up with legal matters that it cannot act on princess rip-offs. As usual, the lower your profile -- don't book a show on Buena Vista Street in Burbank -- the better your odds of evading detection. Also, you might want to check out our past entry on Disney princesses

Wants to Use Statler and Waldorf Puppets

Dear Rich: Can you tell me if I can use the original Statler & Waldorf masks on YouTube without getting into copyright problems? I want to do an item in our show (which is being planned at the moment) with us wearing the masks and do activities and visit events and comment on it! We are planning to earn money with YouTube (don't think the chance is big, but we don't want trouble if we would start earning money with it) Or is there a website where I can find out stuff about the copyright of the muppets? Statler and Waldorf -- the heckling Muppets named after New York City hotels -- are both protected under copyright law. The copyright is owned by Disney. Your use is likely to be considered infringing --  you are creating a substantially similar work that does not seem to be transformative, such that it would be permitted as a fair use. (BTW, The copyrights for Muppets that first appeared on Sesame Street are owned by the Sesame Workshop).
Bottom Line Dept. We've written several times about getting permission from Disney (put "Disney" into search box on right), but you don't need to bother reading those entries. Disney is highly unlikely to give you permission. The bigger issue is whether they'll notice your use, and if they do notice whether they'll care. As always, the more popular you become, the more likely you'll get a cease and desist letter.

Wants to Use Lion King Screenshot

Dear Rich: I want to use a YouTube screenshot of Lion King, the scene where he talks to the ghost of his father, as an example of human trait of denying death, and clinging to dead parents. From what I've read, I think I'm clearly within "fair use," but would still like permission. When I mail my request, I do not know whether to include the screenshot, or just a description. Would just having the screenshot be considered an infringement? We wouldn't worry about possessing the screenshot or furnishing it as part of request for permission. That's fairly common when asking for permission and Disney is not going to call in the lawyers over that.
Fair use? You haven't explained in what media you intend to use the screenshot or what size. In general, your intended republication sounds like a fair use --  you're using the photo for a transformative purpose, to comment on an anthropomorphic personality trait. Of course, the less prominent your use (for example, not on the cover of a book or your use of a smaller image versus a large one), the more likely the fair use defense may work. But as we always say, you can only prove fair use in court ... which means that if Disney learns of your use (and cares) you'll have to give up on the imagery or go toe-to-toe (or is it head-to-head) with the Disney legal team.
Speaking of the Disney legal team ... We have a feeling that unless you're representing a major website, book publisher, or film production company, Disney is unlikely to respond to your permission request (or if they do, they will deny it). That's because it's generally inefficient for the company to deal with and track minor requests, and much easier to simply deny them. In that case, you'll be in the odd position of having been told by Disney that you can't use it. Because of that potential result, many people with self-published or independently distributed works bypass the permission request. These people don't expect Disney will learn of their use and (like you) they may have a decent fair use defense as backup.

Wants to Entertain at Parties as Mickey Mouse

Dear Rich:Could you please advise on the use of trademarked character costumes, Such as Micky & Minnie Mouse, We are from the UK, We have been thinking of buying one to use at children's parties at a cost to the party organisers, But we are unsure if we need to ask permission and if we need to be CRB checked. A lot has happened since we last addressed this issue in 2008. For one thing, Minnie, Goofy, and Daisy (left) appear to have undergone drastic (and controversial) weight loss regimens. 
First Sale. Once you buy a Disney licensed character costume, you're free to do a lot of things with it. For example, under the first sale doctrine (which applies under copyright and trademark laws), you can wear your costume around the house or in public, burn it as part of an anti-Disney protest, or resell it. 
Disney's rights. However, Disney retains rights over how a proprietary character is commercially exploited. (And BTW, Disney also goes after those who buy and sell unauthorized character costumes.) Sometimes enforcement may seem heavy-handed. That's because companies like Disney view public exploitation -- whether in movies, on a nightclub stage, or entertaining for money at  a children's party -- as a violation of their character rights. On the other hand, party-entertainment is a growth industry  and the possibility of legal action hasn't deterred some character-based businesses that operate under the radar. In other cases, the owner of a licensed character may provide a way to license rights (so you might want to check with Disney UK). (Note, our answers apply in the U.S. only. Despite the similarity of U.S. and U.K. copyright and trademark laws, we can't say for sure whether all principles apply across the Atlantic.)

Can We Do Themed Bento Box Book Using Star Wars, Lego and Snow White?

Dear Rich: I am writing a book about themed-Bento boxes and am getting ready to sign the contract except I'm concerned about  one of the provisions. It says that if I deliver anything that contains "materials produced by another person or taken from another previously published or copyrighted work," I have to get "valid written permission(s) from the proprietors." If I don't do that the Publisher can get the permission and charge me for it. The provision goes on to say that I indemnify the Publisher for any third party claims of infringement. I am planning to include many heavily themed Bento boxes including a Stars Wars box, a Lego shaped box, and a Snow White box. In the Star Wars box, I would include things like a skewer of grapes made to look like a light saber or a Yoda made from apple slices. For the Snow White box, I was thinking that I would use one of those Snow White cookie cutters to make a sandwich, but I could easily skip that part to avoid the Disney reach. The titles for the boxes can be flexible. How does that provision affect what I'm planning to do? We’re very excited about your question because it allows us to use several SEO-busting keywords like “Star Wars,” “Disney,” and “Lego” in our entry (a trifecta for Dear Rich Google Analytics). You've done us a great service, at least until we get dinged by Panda, Penguin, or some other black and white animal Google algorithm. By the way, we’re getting a lot of contract provisions to review these days. We hope that’s a sign that people are getting more contract offers … especially book contracts.
Right, you had a question. Because you're creating a how-to type food book-- not selling themed-Bento boxes -- we don't think you will need trademark permission. Activities like creating and photographing Yoda apple slices or a Snow White shaped sandwich, don't seem to be a trademark problem, especially if you're using a licensed cookie-cutter. (Note that as we speak, Disney lawyers are seeking to register the fairy tale moniker for processed fruit snacks). As for the Lego Bento box, we think an authorized Bento box would be a better choice for your book (versus creating a fake lego box). In general, your use of Disney, Star Wars and Lego, feels like an editorial/informational use (explained in a previous entry). In other words, you're less likely to trigger infringement if you write about or comment on trademarks. What you can't do is imply an association with, or dilute or tarnish these marks, for example, produce a whole Star Wars Bento box book (more Stars Wars recipes, here).
Copyright. You're probably fine reproducing these Bento versions of copyrighted characters without permission. It's possible, though doubtful, that some over-caffeinated general counsel may send a cease and desist claim but nowadays most media-savvy companies shy away from overzealous pursuit of iffy copyright claims (especially claims like these that may be excused by fair use).
Indemnity. Indemnity provisions are really a drag. Under your provision, you must get all necessary permissions and if a third party sues you for infringement, you're on the hook. So, despite our belief that permission may not be necessary, if your publisher disagrees, you'll have to either deal with it (good luck getting permission from this gang), pay for your publisher's permissions, or remove the material upon request by your publisher. Another possibility is that the publisher will be oblivious to the whole issue and nobody will ever complain. We hope that's the case.