In a decision issued on February 20, 2014, in re “Berrino María Guadalupe and others v. Walt Disney Company Argentina S.A.”, Division 1 of the Federal Court of Appeals on Civil and Commercial Matters upheld the first instance Court’s decision that rejected the plaintiffs´ claim requesting the injunction of a trademark use and collection of damages for the unauthorized use of the cartoon character “Morph” in the movie “Treasure Planet”.
The plaintiffs had requested an injunction against the use of the cartoon character named “Morph” in the movie “Treasure Planet” by the defendant Walt Disney Company Argentina S.A. (Disney), and the commercial exploitation of this character by several Disney licensees (in advertising, packaging, stickers, toys, books for children, magazines, etc.), along with an award of damages.
They argued that the film character was confusingly similar to their trademark “MORF” (and device), registered in International classes 16, 25, 28, 29, 30, 38 and 41, so that consumers believed that the puppet contained in their trademark was a Disney creation instead of Carlos Berrino’s and Ruben Lamponi’s. They also explained that a short film had been made between 1992 and 1994 where the puppet “Morf” changed its shape into those of consumer goods, and that no authorization had been given to Disney to use their mark.
Regarding the use of “Morph” in the movie, the Court of Appeals concluded that the plaintiffs’ trademark was not infringed by Disney since there had been no trademark use and, furthermore, the trademark “MORF” (and device) was not registered in class 9.
Turning to the use carried out by the licensees, the Court held that there had been trademark use of the character “Morph” in the products and services included in classes 16, 28 and 41 (by Arcos Dorados S.A. –McDonald´s licensee in Argentina– in its “Happy Meal” packaging; by Nestlé Argentina S.A. in cereal packaging and stickers; and by Kapeluz Editora S.A. in magazines and children’s books).
However, the judges compared the images and decided that they were not confusingly similar: the plaintiffs’ trademark consisted in the word “MORF” with a particular font and a character that looked like a ghost with a big mouth; while the cartoon character “Morph” of the movie “Treasure Planet” had an irregular shape, similar to a jellyfish or a blow fish, which inspired friendliness and optimism, and was not at all phantasmagorical.
In view of this, the Court found no likelihood of confusion between the device mark and the cartoon, even if the images were compared considering “MORPH” in its plain shape. Consequently, the decision of the first instance court that rejected the complaint was confirmed.
The case at hand illustrates that while interference between trademarks and copyrights is possible, likelihood of confusion is necessary for an infringement to exist.