Paraguay Loves Mickey, the Cartoon Mouse. Disney Doesn't
(nytimes.com)177 points by howard941 5 days ago
177 points by howard941 5 days ago
Paraguayan lawyer here. Paraguayan trademark law states that every trademark title is valid for a 10-year term, and then it has to be renewed, with a 6-month grace period for renewal. Otherwise the trademark expires and it has to be registered using the whole process (which can be long).
Apparently, Disney failed to register its trademark for a long time while [Paraguayan] Mickey dutifully did so, and also being careful not to overreach its trademark categories, things that helped it.
I've always wondered how all this mickey branded stuff exists since I got here, especially with major brands.
Do you have any insight into why so many signs are in English? I can understand maybe foreign brands, but local mom and pop stores have giant signs like "50% Off. #partytime" especially businesses where no one speaks english.
> Do you have any insight into why so many signs are in English? I can understand maybe foreign brands, but local mom and pop stores have giant signs like "50% Off. #partytime" especially businesses where no one speaks english.
That "casual English" is somewhat part of the language of the new generation. They're more like catchwords, because people don't really speak the language. People, especially young urban folks, use it to appear "cool".
> That "casual English" is somewhat part of the language of the new generation.
It's a near global lingua franca and the Internet has only accelerated that.
I wonder how long it will be until English just sort of becomes first language in non-native English speaking countries with the current trajectory and momentum of English-first Llama.
Shame it couldn't be a more cohesive spoken language.
Does that mean that Disneys Mickey Mouse cartoons can’t be shown in Paraguay due to trade mark infringement?
Trademarks have categories, e.g. "grocery store", "consumer electronics", etc.; that's what the GP's "also being careful not to overreach its trademark categories" refers to. If they tried to register the trademark for cartoons or animation, they'd likely lose it under some prior preference law.
(I don't know that law, I have no clue about Paraguay's legal system, but most trademark systems have something that allows a prior/established user to kill "aggressive" trademarks. But Disney is not an established grocery store, that's the crux of this.)
> Trademarks have categories, e.g. "grocery store", "consumer electronics", etc.; that's what the GP's "also being careful not to overreach its trademark categories" refers to. If they tried to register the trademark for cartoons or animation, they'd likely lose it under some prior preference law.
That's indeed the case, imho.
My experience when involved in product naming was that lawyers tend to very conservative about such things but, yes, in theory if you're clearly an unrelated category you can reuse an existing trademark. Historically, the purpose of trademark was essentially consumer protection to avoid confusion about who made something. It's actually quite different from copyright in that regard.
Famously, Apple the computer company has been sued by Apple the music company many times since its founding, usually when Apple Inc. adds or releases new music-related features.
https://en.m.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer
you'd think an article nominally about 'intellectual property' would mention that mickey mouse is out of copyright now, at least in countries that apply the rule of the shorter term
It's still a trademark for perpetuity. Copyright expiration on specific films doesn't change that. This is why Disney started using the pie-eyed mickey more heavily in their marketing 10+ years ago to reinforce their trademark over that version of the character.
It's in trademark as long as Disney registers and renews the trademark in whatever country.
And trademark doesn't protect against any and all use in the same way copyright does -- only uses that might create consumer confusion with the trademark owner's uses.
Presumably, a company that has been selling grocery staples since 1935 with that logo isn't creating much confusion.
Arguably, Paraguayan Mickey has a better claim that modern do-everything Disney Mickey is infringing on its long-established trademark...
> Presumably, a company that has been selling grocery staples since 1935 with that logo isn't creating much confusion.
Yes, though their mascot might be? The article itself clearly states that the locals seem to associate the man-in-costume-mascot with going to Disneyland.
Disney’s claims and paperwork has to be accepted by the Paraguayan trademark office specifically in this case, not just any trademark office.
Unless both the US and Paraguay have ratified a 100% automatic international trademark treaty, which seems unlikely.
copyright is subject to broad international recognition under a couple of very widespread treaties, and the pct provides a weaker way to obtain the same patent in a smaller set of countries, but trademark is an explicitly local thing. even in the usa, a trademark in one town may not be valid in the next (think 'jones's 24-hour laundry') and even registered trademarks are often only registered in the trademark office of one state. (every state has its own trademark office, in addition to the federal pto.) there is no trademark equivalent of the berne convention or the pct
so the idea of a paraguayan company, in paraguay, infringing a us trademark, is legal hogwash. mickey is a disney trademark in paraguay only to the extent that the paraguayan government decides to grant it to them, a decision that should be made on the basis of, among other things, existing uses by other companies. this is a fundamental and intentional feature of trademark law in every jurisdiction i am familiar with, not a bug
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to a significant extent trademark law is arbitrary in the same way traffic laws are. there's no objective reason, nothing justifiable according to some kind of natural law, that says you should drive on the left side of the road, or stop when the traffic light turns red rather than green. if everyone else is driving on the right side of the road, or stopping when their light turns green and your light turns red, that would be a better thing to do. the law in these cases is merely establishing a schelling point that allows a large society to coordinate their actions through more or less random but well-known decisions
the justification for trademark law is to protect consumers from inferior goods bearing the name of a reputable maker, but made by someone else. for this purpose it reserves particular names and logos for the exclusive use of particular makers. which particular names and logos are reserved for which particular makers is essentially arbitrary; what matters is that it be relatively consistent over time, so that consumers aren't buying good mickey-branded bread from the paraguayan mickey company one day and adulterated mickey-branded bread licensed by disney the next
(you can argue that to some extent modern trademark law is failing at this job, due to notorious cases of perfectly legal line extension fraud—such as exploding tempered-soda-lime-glass pyrex, saran-free saran wrap, pseudoephedrine-free sudafed, kaopectate without kaolin or pectin, and generic t-shirts bearing a designer's licensed brand—or the widespread phenomenon of private equity firms buying a quality brand and replacing its products with inferior replacements. but that's the justification for its existence)
Easy there, they're trying to make your tri-star symbol into the https://symbol.fediverse.info/, maybe a case for future trademark/identity law /s
It’s the older version where there’s no division between the sclera (white of eye) and the rest of the skull:
https://upload.wikimedia.org/wikipedia/en/0/0d/Mickey_-_The_...
Compare to later versions, where the eyes are well defined:
https://upload.wikimedia.org/wikipedia/en/f/f6/Mickey_-_Fant...
In recent years, Disney has been using the old version from Steamboat Willie at the start of movies:
https://en.wikipedia.org/wiki/Steamboat_Willie
And even making new shorts with that style:
https://www.youtube.com/playlist?list=PLC6qIbU1olyXQe1WOKt8U...
But the Mickey Mouse that is out of copyright is specifically the one you see in Steamboat Willie from 1928 (and maybe some of their other old movies with Mickey, I don’t remember what other movies Disney made early on around 1928).
Meanwhile the Mickey that is shown posing on top of a building in one of the photos looks like a more recent Mickey. (But I’m no Mickey expert.)
And it is important to keep that in mind.
Which is why Crooked Media can sell a t-shirt of two Steamboat Willies kissing without receiving a cease and desist but can't feature a pair of more modern looking Mickeys going at it: https://store.crooked.com/collections/pride-or-else/products...
fortunately for you, jennifer jenkins, the director of the center for the study of the public domain at duke university's law school, has written a 6000-word explanation of the precise extent to which mickey mouse is or is not out of copyright now, including 21 footnotes which add further detail, which i linked in my comment above and will link again here now for your benefit
It's not. A character by that name from a 1928 animation is out of copyright. It is an entirely open question at what point a derivative work becomes a new stand-alone work and what that actually means for the copyright of the character by the same name with a different character design currently used by Disney as one of their brand characters.
it's possible for a single thing to be subject to both trademark and copyright law, even in the usa; often the owners of the copyright and the trademark are different. this is how graphic designers get paid for designing corporate logos on spec, for example. see for example https://www.copyright.gov/help/faq/faq-protect.html
> How do I copyright a name, title, slogan, or logo?
> Copyright does not protect names, titles, slogans, or short phrases. In some cases, these things may be protected as trademarks. Contact the U.S. Patent & Trademark Office, TrademarkAssistanceCenter@uspto.gov or see Circular 33, for further information. However, copyright protection may be available for logo artwork that contains sufficient authorship. In some circumstances, an artistic logo may also be protected as a trademark.
see also https://www.quisenberrylaw.com/ip-discovery-blog/who-owns-th...
it seems clear that the paraguayan mickey company is the legitimate owner of the paraguayan trademark
They're using Mickey Mouse (or their version of him), as a mascot. Doesn't that mean it's about a trademark?
The business in question literally has a mouse, named Mickey, that looks a lot like the trademark of Disney, on their packaging, their buildings, and their advertisements. They are literally using Disney's trademark.
Here's a video about a favourite from my youth, kind of a Nordic parallel (though this one is about a duck, not a mouse) -- "How This Duck Outsmarted Disney's Lawyers": https://www.youtube.com/watch?v=D5fNMBqCncg
See Also, Hungry Jack's[1].
They're an Australian fast-food chain, named so because Burger King was already a trademark owned by some small Australian store, and couldn't be used by the company that the rest of the world knows as Burger King.
[1] https://en.wikipedia.org/wiki/Hungry_Jack%27s#:~:text=Hungry....
Growing up in Indiana we had Waffle House which was different than the more famous chain. The chain called themselves Waffle and Steak in Indiana. https://en.wikipedia.org/wiki/Waffle_House#Waffle_and_Steak
Also Taco Bell, which was absent here in Australia for many years, due to a long-running legal battle[1] with local chain Taco Bill. The first Taco Bell only opened in inner Sydney about 3 years ago (after decades of failed attempts).
[1] https://www.smh.com.au/business/companies/taco-bell-and-taco...
Classic New York Times:
> During a recent national holiday, the man inside the Mickey mascot costume was warming up in an air-conditioned metal container inside the company’s factory that serves as his office.
> Ms. Blasco asked The New York Times to withhold Mickey’s identity from the Paraguayan public to preserve some of the “magic” behind the mascot.
Seems all reasonable, until you remember the flimsy justifications for their doxxing of Scott Alexander of Slate Star Codex fame. See eg https://slatestarcodex.com/2020/06/22/nyt-is-threatening-my-...
Sorry, I wasn't clear. I was complaining about the hypocrisy and double standards.
It's all well and good that they didn't doxx the guy in the costume. I'm just saying that they also should have respected Scott Alexander's wishes, which were arguably even more justified.
Mickey was selling foods under that trademark in Paraguay since 1835. When did Disney start competing in that market segment with their Mickey Mouse brand?
well, 01935, not 01835. not a lot of paraguayan businesses from 01835 survive thanks to the war of the triple alliance
Ack, yes, I meant 1935. I'm on mobile and typoed that in a way the spell checker couldn't catch...
Even now in the US I have yet to see Disney selling rice under the Mickey Mouse brand in a way that could be at all confused with the Mickey rice in Paraguay that I grew up with.
This is valid (if somewhat obscure) notation for decimal dates in particular, see e.g. https://en.wikipedia.org/wiki/Long_Now_Foundation
Journalism is at least as much about providing entertainment as about 'problems'. And as far as entertainment goes, producing this article was a lot less effort than eg staging the Olympics.
Btw, generically talking about IP misses important distinctions here: this is an article about trademarks, not about copyright.
To give another example Brooks Brothers is a company founded in 1818, and I presume they still have their trademark. The trademark is not there to protect some creative achievement anyone had in 1818, but to help consumers not confuse the real Brooks Brothers with other people who make apparel.
(Whether you buy that justification or not is a different question. I'm just pointing out that trademark and copyright are two different beasts.
Another distinction: if you sit in your shed isolated from the outside world, and you produce a product to sell, generally whatever comes out of that process can't violate copyright---even if you produce exactly the same thing as an existing product)---but it can violate trademarks and patents. See https://en.wikipedia.org/wiki/Clean-room_design
In much of the modern world copyright is granted automatically, but trademarks have to be registered and defended.)
I am very skeptical of the very idea patents, and somewhat skeptical of copyright, especially long terms. But trademarks are an entirely separate category, with entirely different trade-offs on a societal level. There are things to be skeptical about but indefinitely renewable terms ain't one of them.
>Journalism is at least as much about providing entertainment as about 'problems'.
I disagree and would call this public relations, not journalism which I do agree there should be a space for in media but it's not 'journalism' and I'm kind of tired of public relations being treated as news.
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