The Walt Disney Co. has initiated legal proceedings against a Hong Kong jewellery company, accusing it of selling unauthorised Mickey Mouse merchandise.
The entertainment giant filed a lawsuit in a Los Angeles federal court on Wednesday against the Red Earth Group, which operates online under the brand Satéur. Disney alleges that the rings, necklaces, and earrings within Satéur’s ‘Mickey 1928 Collection’ infringe upon its trademark rights. The company further claims that Red Earth Group is intentionally misleading consumers into believing the items are official Disney products.
Satéur, the suit alleges, “intends to present Mickey Mouse as its own brand identifier for its jewelry merchandise and “seeks to trade on the recognizability of the Mickey Mouse trademarks and consumers’ affinity for Disney and its iconic ambassador Mickey Mouse.”
A message seeking comment from representatives of the Red Earth Group was not immediately answered.
The lawsuit is indicative of Disney’s dogged efforts to protect its intellectual property from unauthorized appropriation. Although the earliest version of Mickey Mouse entered the public domain last year after Disney’s copyright expired, the company still holds trademark rights to the character.
Lawyers for Disney argue in the suit that Red Earth’s online marketing efforts “extensively trade on the Mickey Mouse trademarks and the Disney brand” with language that includes describing the jewelry as great for “Disney enthusiasts.”
Such tactics indicate Red Earth was “intentionally trying to confuse consumers,” the lawsuit says. The impression created, it says, “suggests, at a minimum, a partnership or collaboration with Disney.”
The earliest depiction of Mickey Mouse, who first appeared publicly in the film short “Steamboat Willie” in 1928, are now in the U.S. public domain. The widely publicized moment was considered a landmark in iconography going public.
The lawsuit alleges that Red Earth and Satéur are trying to use that status as a “ruse” to suggest the jewelry is legal, by dubbing it the “Mickey 1928 Collection” and saying it is being sold in tribute to the mouse’s first appearance.
The centerpiece of the collection, the suit says, is a piece of jewelry marketed as the “Satéur Mickey 1928 Classique Ring,” which has a Steamboat Willie charm sitting on the band holding a synthetic stone.
But there is an essential difference between copyright — which protects works of art — and trademark — which protects a company’s brand.
Even if a character is in the public domain, it cannot be used on merchandise in a way that suggests it is from the company with the trademark, as Disney alleges Red Earth is doing.
“Disney remains committed to guarding against unlawful trademark infringement and protecting consumers from confusion caused by unauthorized uses of Mickey Mouse and our other iconic characters,” Disney said in a statement Wednesday.
The lawsuit seeks an injunction against Red Earth selling the jewelry or trading on Disney’s trademark in any other way, along with monetary damages to be determined later.
