Warner Bros. Launches Trademark Fights With Disney and Others

[crazy4wdw]

'Wizard Of Oz' Disputes: Warner Bros. Launches Trademark Fights With Disney, Wine Company And More

'Wizard Of Oz' Disputes: Warner Bros. Launches Trademark Fights With Disney, Wine Company And More

First Posted: 02/13/2012 4:00 pm Updated: 02/15/2012 2:05 pm

If you were planning on calling your dog Toto, you may want to pick another name. In an assault of Oz-like proportions, Warner Bros. has launched several trademark disputes with companies who are -- as the studio claims -- looking to capitalize off the 1939 classic, "The Wizard of Oz" (you can see the full list below).

According to THR, Warner Bros. has gone after several companies who've tried to make a buck off Dorothy and friends over the last year. The one currently making headlines is the dispute with Disney and their upcoming film, "Oz: The Great and Powerful." This past October, Warner filed a trademark registration on "The Great and Powerful Oz," one week after Disney filed its own. Yet despite the United States Trademark Office suspending Warner's attempt on the grounds that Disney asked first, as THR points out, both companies could be in for a future fight.

Last year, the 8th Circuit Court of Appeals gave Warner Bros. character protection over its copyright on "The Wizard of Oz." The studio has also been filing oppositions with the USPTO's Trademark Trial & Appeal Board, for merchandising rights and other uses of the "Oz" brand.

What makes this whole dispute even more complicated is the fact that the 1899 book the film is based on is currently in the public domain, meaning anyone can use the story's characters however they see fit. (As one of the oppositions lawyer's stated, the products being used are "taken directly from the book, which ... is in the public domain and out of copyright and a very public story, not created by [Warner Bros.]")

THE "OZ" DISPUTE: COMPANIES WARNER BROS. IS FIGHTING

Disney over "Oz: The Great and Powerful"

Wicked 'Wiches Wickedly Delicious Sandwiches, a California restaurant

Halloween costumes under the "Wizard of Oz" brand name

Wine brands including, "Dorothy of Kansas and Toto Wine," "Ruby Slippers Wine," "Broomstick Wine," "The Lion's Courage," and "Flying Monkey Wine

"If I Only Had A Brain," a neuroscience book

But, the studio is standing tall, saying that statements against their recent activity are "akin to saying that anyone should be entitled to use famous, widely licensed marks such as 'Harry Potter' or 'Roadrunner' merely because they were able to find those marks mentioned in a book."

It may be awhile before these disputes get resolved. For Warner Bros., they're likely hoping to do it before "Oz: The Great and Powerful" hits theaters March 8, 2013.

 

[nytimez]

Sounds like they want a cut of the action. They'll probably get it, too, even though technically I don't think they'd be entitled to it if Disney is truly sticking to the 1899 book as its source.

 

[doconeill]

I vaguely recall something like this coming up before somewhat recently - possibly when WB first started the action against Disney - or perhaps it was Disney going after one of the Snow White movies coming up? I forget exactly...but it sounded like it was coming down to imagery - as long as nothing resembles the images we have of the characters, etc. from the classic movie, it shouldn't be a problem. However, resemblance is subjective.

And how do you avoid it if the object is described clearly in the book(s)? I don't remember the details of the Oz books, but for example, if Dorothy Gale is described as wearing a blue and white gingham jumper in the books, how do you make it not look like the one from the movie but to NOT make it a blue and white gingham jumper? I don't know if WB could win based on that, but doesn't stop them from trying.

On the other hand, if Disney were to use ruby slippers, or even red ones, they could be at fault, since those were an invention for the film, and they were silver in the book.

I don't know the details of the other cases, but I hate how megacorps can go after small fry on weak cases and "win" by squeezing them out of business. About the only reason I can see them going after "Wicked 'Wiches" is because they have a witch as part of their logo. Doesn't look anything like one from the movie at all. I'm not sure anything about it would confuse a customer in to thinking they were eating in Oz or anything like that. There's a food truck with the same name - but no witch logo. They don't seem to be named.

 

[nytimez]

I vaguely recall something like this coming up before somewhat recently - possibly when WB first started the action against Disney - or perhaps it was Disney going after one of the Snow White movies coming up? I forget exactly...but it sounded like it was coming down to imagery - as long as nothing resembles the images we have of the characters, etc. from the classic movie, it shouldn't be a problem. However, resemblance is subjective.

And how do you avoid it if the object is described clearly in the book(s)? I don't remember the details of the Oz books, but for example, if Dorothy Gale is described as wearing a blue and white gingham jumper in the books, how do you make it not look like the one from the movie but to NOT make it a blue and white gingham jumper? I don't know if WB could win based on that, but doesn't stop them from trying.

On the other hand, if Disney were to use ruby slippers, or even red ones, they could be at fault, since those were an invention for the film, and they were silver in the book.

I don't know the details of the other cases, but I hate how megacorps can go after small fry on weak cases and "win" by squeezing them out of business. About the only reason I can see them going after "Wicked 'Wiches" is because they have a witch as part of their logo. Doesn't look anything like one from the movie at all. I'm not sure anything about it would confuse a customer in to thinking they were eating in Oz or anything like that. There's a food truck with the same name - but no witch logo. They don't seem to be named.

This is a prequel, so there's no Dorothy as far as I know. But your point stands -- the witches and Oz and all will almost certainly match to some extent what's in the book, so there are certainly bound to be similarities.