An early image of Mickey Mouse from the 1928 “Steamboat Willie” cartoon is featured in the Morgan & Morgan legal ad.
Morgan & Morgan’s effort to shield a legal ad featuring images from the 1928 “Steamboat Willie” cartoon from potential trademark litigation ended last week when the personal injury firm dropped a federal lawsuit against Disney Enterprises Inc.
The lawsuit filed by Orlando-based Morgan Global PLLC earlier this year in the Middle District of Florida sought a court declaration that the trial attorney firm’s ad, which features early images of Mickey Mouse, did not infringe on any trademark or intellectual property rights held by Disney. The animated short film is now in the public domain after its U.S. copyright expired.
A letter Morgan & Morgan sent to Disney in July also sought an assurance that the company would not allege the legal ad violated any of Disney’s copyright or trademark rights. But Disney responded that it does hold certain trademark rights related to the film and that it would not provide “legal advice to third parties.”
In its legal complaint, the law firm alleged that the litigation threat from Disney was causing Morgan & Morgan harm to its business based on its “lawful use of public-domain content.”
The ad in question depicts Mickey Mouse casually piloting a steamboat that eventually collides with a car driven by Minnie Mouse. The latter character then uses a cellphone to call Morgan & Morgan for help. An unhappy Mickey is later shown turning over a bag of money to Minnie.
“Disney’s history of aggressive enforcement of intellectual property rights, including recent trademark litigation against third parties using the same public-domain work, combined with Disney’s refusal to disclaim an intent to engage in enforcement against Morgan & Morgan’s proposed use, has created a real, immediate and substantial controversy,” the law firm’s complaint states.
The firm’s notice of voluntary dismissal of the case on Nov. 12 indicates that Disney was not served and had not provided an answer or motion for summary judgment. In turn, the lawsuit was dismissed this week without prejudice by Judge Julie S. Sneed.
“Morgan & Morgan is known for its ongoing, extensive and highly creative media advertising,” the law firm’s lawsuit said. “As with its other advertising, Morgan & Morgan’s advertisement promotes the Morgan & Morgan law firm and its legal services, not goods or services that compete with any product or service of Disney.”
The lawsuit also pointed out that Disney filed a trademark infringement lawsuit in a federal court in California against a third party which had been selling goods depicting elements from “Steamboat Willie.” In that action, Disney argued that the expiration of the “Steamboat Willie” copyright did not give the defendant the right to infringe on existing Disney trademarks, including the role that Mickey Mouse plays as the company’s “global ambassador.”
Neither Disney nor Morgan & Morgan responded to a request for comment about the voluntary dismissal of the lawsuit in Florida. But Disney released a statement to other media outlets saying that “Disney remains committed to guarding against unlawful copyright and trademark infringement to avoid consumer confusion caused by unauthorized uses of Mickey Mouse and our other iconic characters.”
“Steamboat Willie” has been recognized in popular culture as the first time the Mickey Mouse character appeared before the public, according to the Morgan & Morgan lawsuit. The complaint also alleged that Disney’s conduct caused the law firm to face “irreparable harm, including loss of marketing opportunities, chilled speech and uncertainty affecting its business.”
Morgan & Morgan bills itself as the largest personal injury law firm in the U.S., employing more than 1,000 lawyers and operating in all 50 states.
