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

https://www.clickorlando.com/news/local/2025/09/17/morgan-morgan-takes-disney-to-court-over-rights-to-feature-steamboat-willie-in-law-firm-ads/
72•wrayjustin•2d ago

Comments

cognomano•2d ago
I suppose trademark law will be the catch-all protection Disney will be using from now.
joecool1029•2h 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
hamdingers•2h 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•2h ago
But why shouldn't you be able to make a new Toy Story movie 100 years, give or take, after the original?
worik•47m ago
Yes

But ten years

A decade is enough

IP is a trade off, and the balance is wonky

themafia•1h ago
With the copyright expired you can do more than share. You could make copies and then sell them.
Terr_•1h 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•1h ago
There's not much point to the thought exercise. You wouldn't get the trademark in the first place.
Terr_•1h 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/

marcosdumay•49m ago
You can't get the trademark on the parts that are in common use, and you can't the trademark in a way that harms language. You can get protection over stuff that you invented and doesn't limit how people talk to each other.

On this case specifically, you can't make a Mickey Mouse cartoon in a way that looks like it came from Disney. That's all that the trademark protects.

smelendez•1h 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•2d 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•2d ago
To help understand your comment, are you a lawyer?
gamblor956•1d 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•2h 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•2h 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•1h 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.
klustregrif•2d ago
Lego already tried this approach and it doesn’t work. You cannot use trademark law to extend expired patents or copyrights.

The real ad here is them baiting Disney and running this fairly open and shut case. Of cause they can use public domain material in their commercial and Disney can’t prevent them.

gamblor956•1d ago
Copyright only applies to specific expressions.

Mickey is still a trademark of the Disney corporation.

You're right though. This is an open and shut case that Morgan and Morgan will lose. There's only several decades of case law on this...

freejazz•2h ago
>Mickey is still a trademark of the Disney corporation.

Mickey, yeah. But steamboat willie is covered by a copyright that has now since expired.

joecool1029•2h ago
We're talking about parody though, there's case law suggesting it would be fine: https://www.americanbar.org/groups/intellectual_property_law...
toast0•1h ago
Maybe I'm just not up on my understanding, but I don't see how this is parody? There's not really any jokes, it's not a commentary on Disney, Disney's Mice, or boating or driving or society at large. Maybe running into a car on the road with a boat is a joke, I guess.
dylan604•48m ago
A ship running into a car isn't a joke to you?
shmerl•2h 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•2h 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•2h ago
It's just their attempt to weasel out of the actual copyright expiration.
Terr_•2h 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.

wingspar•2h 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...

flkiwi•2h 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.

technothrasher•2h 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.

flkiwi•1h ago
That's true, though I wonder at times how much of that is because of the way plaintiff's firms set the market up. And, again, I don't really mean to criticize them--I tend to err on the side of access to justice--as much as to explain to anyone non-US who tf M&M are and why this is interesting.
umpalumpaaa•1h 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•1h ago
I’ve never heard of a regulation governing attorney’s fees. Which regulations might you be referring to?
JohnMakin•1h ago
Presumably talking about damages.
flkiwi•1h ago
For example, Florida Bar Rule 4-1.5(a) prohibits "clearly excessive" attorney's fees, while 4-1.5(f)(4)(B) sets several criteria for contingency fees (typically the sort of fees a plaintiff's firm would charge) that, if not met, renders a fee presumptively "clearly excessive".
raybb•1h ago
I think when places have such huge advertising budgets does that means you're paying more or getting less. Do you think that applies to law firms like Morgan and Morgan?
softwaredoug•1h ago
This is basically what we have in the US instead of a strong regulatory state. One of the few ways consumers might seek justice against a giant corporation.
flkiwi•31m ago
That's why I called out that I didn't mean my description of their work as criticism, strictly speaking.
yieldcrv•2h 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•1h 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•1h ago
https://en.wikipedia.org/wiki/Declaratory_judgment
5f3cfa1a•46m ago
Awesome, exactly what I wanted to learn. Thanks!
xnx•1h ago
Well known for their commercials: https://www.youtube.com/watch?v=NYtQXtUMWvQ
paxys•1h 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•29m 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.

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