24 October 2003

Watch Out For That [Dead] Treeeeeeeee!
The recent dispute between Disney and Caterpillar over the appearance of Cat's trademark on construction equipment that appears in George of the Jungle 2 is a bit ridiculous—on both sides. On the one hand, Disney's position that it is entitled to use the equipment with the marks showing in an arguably derogatory manner on First Amendment grounds (among others) is not consistent with the Mickey MouseSonny Bono Copyright Term Extension Act of 1998 that formed the basis for the opinion earlier this year in Eldred. On the other hand, if Disney had covered up or altered the Caterpillar mark on the construction equipment, it could have been at fault in trademark law for falsely designating the origin; and Caterpillar isn't exactly a company well-known for its proactive environmental concerns in the first place, given its longstanding efforts to ensure that construction machinery is exempt from clean air standards.

   Laura Hodes, a columnist at Findlaw, closes her analysis with the following:

The law should not let Disney and other creators and disseminators of mass entertainment carelessly use trademarks in which companies have invested. (After all, Disney itself is quick to litigate against a company that harms one of its trademarks and to work to get Congress to extend the duration of its copyrights.) To do so is to begin on a slippery slope to a world in which trademark owners have no control over the use of their trademarks in mass media—and in which the trademarks therefore lose their distinctiveness and value.

"Caterpillar v. Disney" (23 Oct 03). I must beg to differ with Ms. Hodes. To begin with, her analysis depends upon a line of wrongly decided cases out of the Ninth Circuit that give excessive control to celebrities (Vanna White) in exemplary depiction, and to authors (Theodore Geiskel, aka Dr. Seuss) for imitation of their style. Even if this line of cases is correctly decided, Judge Kozinski of the Ninth Circuit had a much more cogent response to the issue.

   After Mattel filed suit, Mattel and MCA employees traded barbs in the press. When an MCA spokeswoman noted that each album included a disclaimer saying that ["]Barbie Girl["] was a “social commentary [that was] not created or approved by the makers of the doll,” a Mattel representative responded by saying, “That’s unacceptable…. It’s akin to a bank robber handing a note of apology to a teller during a heist. [It n]either diminishes the severity of the crime, nor does it make it legal.” He later characterized the song as a “theft” of “another company’s property.”
   MCA filed a counterclaim for defamation based on the Mattel representative’s use of the words “bank robber,” “heist,” “crime” and “theft.” But all of these are variants of the invective most often hurled at accused infringers, namely “piracy.” No one hearing this accusation understands intellectual property owners to be saying that infringers are nautical cutthroats with eyepatches and peg legs who board galleons to plunder cargo. In context, all these terms are nonactionable “rhetorical hyperbole,” Gilbrook v. City of Westminster, 177 F.3d 839, 863 (9th Cir. 1999). The parties are advised to chill.

Mattel, Inc. v. MCA Records, Inc. (9th Cir. 2002) (emphasis added). However, I suppose that asking Disney to grow up when the underlying dispute is over a putative children's film depends upon an excessively generous evaluation of Disney's capacity for learning and maturation. Asking Caterpillar to do so, given the way it treats its employees, is probably equally futile. The irony that this litigation has undoubtedly killed a few trees all by itself seems lost on both parties—they can't seem to see the deforestation for the dead trees.

   I really dislike seeing the courts resemble elementary-school recess. Judge Kozinski's advice is quite sound. Since the film in question is a sequel to a film loosely based upon a 1960s satiric animated TV series—a film that largely missed whatever point there was to the TV series—I shouldn't be surprised. I'm not angry; I'm just terribly, terribly hurt.