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The Courts

Disney Sued by Law Firm Wanting to Use 'Steamboat Willie' in Its Ads (apnews.com) 93

Posted by EditorDavid from the why-because-we-like-you dept.
Mickey Mouse's first movie Steamboat Willie entered the public domain in 2024.

Now one of America's largest personal injury firms is suing Disney, reports the Associated Press, "in an effort to get a ruling that would allow it to use Steamboat Willie in advertisements..." [The law firm said] it had reached out to Disney to make sure the entertainment company wouldn't sue them if they used images from the animated film for their TV and online ads. Disney's lawyers responded by saying they didn't offer legal advice to third parties, according to the lawsuit. Morgan & Morgan said it was filing the lawsuit to get a decision because it otherwise feared being sued by Disney for trademark infringement if it used Steamboat Willie.
"Without waiver of any of its rights, Disney will not provide such advice in response to your letter," Disney's attorneys wrote in their letter (adding "Very truly yours..."). A local newscast showed a glimpse of the letter, along with a few seconds of the ad (which ends with Minnie Mouse pulling out a cellphone to call for a lawyer...)

Attorney John Morgan tells the newscast that Disney's legal team "is playing cute, and so we're just trying to get a yes or no answer.. They wrote us back a bunch of mumbo-jumbo that made no sense, didn't answer the question. We tried it again, they didn't answer the question..." (The newscast adds that the case isn't expected to go to court for at least a year.)
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Disney Sued by Law Firm Wanting to Use 'Steamboat Willie' in Its Ads More

Disney Sued by Law Firm Wanting to Use 'Steamboat Willie' in Its Ads

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  • IANAL but... (Score:5, Insightful)

    by PsychoSlashDot ( 207849 ) on Sunday September 21, 2025 @06:44AM (#65674054)
    Writing a letter to a company asking them a question doesn't entitle you to an answer. Let alone a legally-binding answer.

    I can imagine it's reasonable to expect a positive answer if you are going to get sued. But for a company to explicitly declare you in the clear is a courtesy, not something I'd think you can compel.

    • Writing a letter to a company asking them a question doesn't entitle you to an answer. Let alone a legally-binding answer. I can imagine it's reasonable to expect a positive answer if you are going to get sued. But for a company to explicitly declare you in the clear is a courtesy, not something I'd think you can compel.

      I'm sure M&M would have replied with a clear answer if they represented Disney and the question was put to them. It seems just like another ploy to get news coverage. The more their name is out there, the more people know them and maybe call them when injured. I suspect they have lwayers smart enough to hav answered the question without asking Disney. As for Disney, I suspect they will do anything they can to protect their trademarks.

    • Rich guy privledge. John Morgan isnt just anyone, he's got a lot of money obviously, an army of lawyers and is a bigwig right in Disneys backyard of Orlando. He's toyed around with running for FL governor.

    • Re:IANAL but... (Score:5, Insightful)

      by gnasher719 ( 869701 ) on Sunday September 21, 2025 @08:55AM (#65674232)
      You are not a lawyer. If you want to be sure that you won't be sued, you go to court, and tell the court "I am clearly saying what I want to do, and I want Disney to tell me whether I will be sued or not". And the court will force them to make a statement either way. Google for "declaratory judgement".

      • Re:IANAL but... (Score:4, Interesting)

        by Dragonslicer ( 991472 ) on Sunday September 21, 2025 @02:44PM (#65674668)
        Minor point - it's not exactly that the court will force Disney to make a statement, but that the court will rule on the matter. Obviously Disney will tell the court what they think the answer should be, but if the two sides disagree, the court will make a decision.

    • Re: IANAL but... (Score:5, Insightful)

      by BytePusher ( 209961 ) on Sunday September 21, 2025 @09:35AM (#65674272) Homepage
      I think the subject of your post explains it clearly: You are not a lawyer.

      This is a law firm that wants to use this material to show that they have the legal muscle and expertise to do so. It's fantastic advertising if they can borrow Disney's power and reputation to make themselves a reputable law firm that took a swing at a known corporate bully and emerged unscathed.

    • Sounds like a good idea to do before filing a lawsuit.
      You don't want the suit to be dismissed because you didn't even communicate with the party prior to filing.

      While sending someone a letter doesn't even require them to respond, it shows good faith. Sending the letter is to get the court on your side, not to get a favorable response from Disney.
      And in this case, it's also for publicity.

  • I'm not a huge fan of what Disney has become, but I'm even less of a fan of lawyers, and this sounds like a douche-bag thing that a law firm is doing just because it's easy for them to do. I hope Disney counters for damages and wins.

    • I hope Disney counters for damages and wins.

      What damages? The law firm is suing for declaratory judgment, which means filing the lawsuit that the other party would file, but doing so before you do the thing that you're suing over, specifically so that you know beforehand whether or not the other party will be able to sue you for damages.

      • So the Morgans are deliberately hoping they lose so that the judgement will include a settlement allowing them to use the public domain for a fraction of what it would it might have cost if Disney had sued them and won?

        • My apologies if what I said confused you. The point of suing for declaratory judgment is to get a court to declare that what you want to do is legal. The case proceeds basically the same as if Disney were to sue after the fact; both sides present their arguments, and the court decides who's right. In this case, if the court rules that what Morgan & Morgan wants to do is legal, and they go ahead and do it, Disney can't sue them for it because a court has already ruled on it.

          There is no settlement invo

        • Re:Sounds pretty lame (Score:4, Informative)

          by bsolar ( 1176767 ) on Sunday September 21, 2025 @08:32AM (#65674204)

          So the Morgans are deliberately hoping they lose so that the judgement will include a settlement allowing them to use the public domain for a fraction of what it would it might have cost if Disney had sued them and won?

          They are asking the court for a judicial declaration. The declaration would formally state rights and obligations for the parties relevant to the issue, if any.

          A "win" would be a declaration that states they can do what they want without an obligation toward Disney, a "loss" would be a declaration stating they cannot without some sort of agreement from Disney,

          There are not going to be "damages" as the lawsuit is preventive: they whole point is to formally know the potential legal consequences of an action before performing said action to avoid being exposed to damages.

          TL;DR: they want to know the legal consequences of using the work without a license from Disney but don't want to find that out the hard way.

    • Re: (Score:2)

      by caseih ( 160668 )

      What damages?

      I have to admit I'm a bit confused as to why they are even asking anything from Disney since the likeness they wish to use is in the public domain. But I suppose doing this preemptively is slightly cheaper than Disney launching a frivolous lawsuit against them.

      • Re: (Score:3)

        by bsolar ( 1176767 )

        I have to admit I'm a bit confused as to why they are even asking anything from Disney since the likeness they wish to use is in the public domain. But I suppose doing this preemptively is slightly cheaper than Disney launching a frivolous lawsuit against them.

        It's also their understanding that they don't need Disney's permission, but it would likely be very bad for them to find out the hard way that for some reason they actually do need permission.

        This lawsuit should be relatively cheap and would mitigate a risk that might have a very low chance but a very high stake.

        • There's one other potential advantage - the plaintiff decides where they file suit. Disney would file in a district that they think would be more likely to favor them, but suing for declaratory judgement lets Morgan & Morgan choose the venue instead.

      • If they lose this lawsuit, that's all they lose.

        If they get sued after the fact and lose, they face penalties and damages.

  • Trade mark vs. copyright (Score:3)

    by jdagius ( 589920 ) on Sunday September 21, 2025 @06:56AM (#65674066)

    Copyright law protects the author for 100 years, but there is no expiration date on a trademark as long as it is continuously in use and renewed every 10 years.

    • Copyright law protects the author for 100 years, but there is no expiration date on a trademark as long as it is continuously in use and renewed every 10 years.

      Judging from what I've seen, if WDC trademarked the original Steamboat Willie character and renewed the mark as required, it has been in use continuously via pins, toys, etc..

      • Re: (Score:3)

        by tlhIngan ( 30335 )

        Judging from what I've seen, if WDC trademarked the original Steamboat Willie character and renewed the mark as required, it has been in use continuously via pins, toys, etc..

        You technically don't have to renew the mark - you just have to use it. Registering the mark is useful in legal proceedings, but even without registration it doesn't mean there's no protection in place. Most small businesses don't register their company name as a trademark, but the law still protects them from other companies trying to

        • Judging from what I've seen, if WDC trademarked the original Steamboat Willie character and renewed the mark as required, it has been in use continuously via pins, toys, etc..

          You technically don't have to renew the mark - you just have to use it. Registering the mark is useful in legal proceedings, but even without registration it doesn't mean there's no protection in place. Most small businesses don't register their company name as a trademark, but the law still protects them from other companies trying to represent them falsely. It's just their damage claims will be limited and you'll have to prove usage.

          Thanks for the clarification. Another interesting issue is the regionality of trademarks in such cases, something colleges ran into when sports all of a sudden made school's trademarks nationally recognized and schools discovered multiple schools using the same ones.

          Steamboat Willie is in the public domain, so you are free to use it for your content. You cannot say it's Mickey Mouse, but you're free to do whatever you want - colorize it, etc. You can remove the ears off the mouse and modify the film that way to avoid trademark issues as well - you are free to create a derivative work of a public domain work. So if you wanted to replace Mickey with a human and use the rest of the imagery, you can.

          I wonder if some of the confusion on /. is the result of confusing the now public domain movie and the trademarked character.

          In fact, wasn't there a pornographic movie that was using Steamboat Willie? Disney didn't sue them, likely because they didn't have anything to sue over.

          I'm guessing that would likely fall under parody exemptions, Steamboat Willy isn't the first to get such treatment.

    • Trademark means that they can't use Mickey Mouse in a way that would confuse people into thinking they are Disney.

      You are legally allowed to use someone's trademark. For example, the word "Boston" is trademarked, but we can use it. We can use the word Pentium, and even say "Pentium sux", but you can't fill a box with AMD chips and use the Pentium logo to convince people it's from Intel.

      • Re: (Score:2)

        by flink ( 18449 )

        You also can't use it in a commercial manner that might imply a relationship or endorsement. Coke can use Pepsi in a commercial to compare the two products. They can't have the Mets mascot dancing around in their commercial for no reason because it could be taken to imply an association or endorsement from the team.

  • Link to filing (Score:4, Informative)

    by ISayWeOnlyToBePolite ( 721679 ) on Sunday September 21, 2025 @07:08AM (#65674072)

    How about linking to the original source (court filing) in the summary?
    Link to filing https://fingfx.thomsonreuters.... [thomsonreuters.com]

  • "They wrote us back a bunch of mumbo-jumbo that made no sense,"
    • Indeed... good lawyers filter out the real message. Mumbo jumbo is the mode of operation amongst lawyers. First they have trouble interpreting what the law says wrt steamboat willy... and they ask what it means from Disney's lawyers. That does not portray much confidence in their own judgement. Then Disney replies, no doubt in professional state of the art lawyer mumbo jumbo and they say out loud that they do not understand it? Mmmm... yup, this office only gets clients by making lots of noise, not by good

  • I am kind of disappointed in the wake of Steamboat Willie going PD ... I had hoped to see a lot of creative use of (granted, limited canon) Mickey.

    Instead we get lame horror stuff, some token game appearances, and now ... an ad for lawyers?

    I'm almost tempted to conspiracy theory about false flags here, lol

    • For most any major company I imagine while legally protected they are reticent of getting on The Mouse's bad side. No law prevents them from being petty jerks.

    • The day after Disney responded to this lawfirm, they filed a suit against a California jewelry company for trademark infringement, for using Steamboat Willie characters.

  • So they sued Disney instead???

    Both routes lead to a lawsuit.

    Seems more like a publicity stunt to me.

    "Look at us! We're suing Disney!"

    • Re: (Score:3)

      by caseih ( 160668 )

      It's much cheaper this way. If they lose there would be no damages awarded to Disney. And they come into this with the upper hand---the law is technically on their side.

      • And they get to choose the court. They've picked Florida. Presumably for a reason, since both parties have presence in all states.

    • This is a standard lawsuit seeking declaratory judgement. They just want a ruling saying that they can do this legally. Most likely they'll settle with Disney quickly.

  • ... than for permission.

    Why are they asking for permission to use something in the public domain?

    • Something in the ad that defames Steampunk Mickey?

      You're enjoying a calm Sunday afternoon with your date on a rowboat and a maniacal mouse hurtles down the river causing you to panic and break a fingernail. Lawyer up, rodent! call Captain Morgan on 1-800-...

    • Why are they asking for permission to use something in the public domain?

      Because there is a reasonable suspicion that Disney will sue them for some reason, public domain or not, and they want to prevent that.

    • Re: (Score:1)

      by Tablizer ( 95088 )

      That kind of thinking got us stuck with COBOL ;-)

    • ... than for permission.

      Why are they asking for permission to use something in the public domain?

      From the complaint:

      25. For example, on July 16, 2025, the day after Morgan & Morgan sent the
      Morgan Letter to Disney, Disney filed a trademark infringement and false
      designation of origin lawsuit in the United States District Court for the Central
      District of California against a third party for selling goods that incorporated
      elements from “Steamboat Willie,” even though the underlying copyright had
      expired and even though the defendant had disclaimed any connection to Disney.
      In paragraph 42 of that complaint, Disney alleged:

      The expiration of the U.S. copyright in Steamboat Willie does not give
      [Defendant] license to infringe Disney’s continuing rights over its
      trademarks that identify Disney as the source of goods and services
      and to profit off the goodwill that Disney has built with the public
      over decades. As Disney has stated publicly, while copyright expired
      in the Steamboat Willie motion picture, Mickey Mouse will continue
      to play a leading role as a global ambassador for Disney

      So no.

      • I getting that public domain doesn't mean very much.
        So it's public domain, but Disney is claiming to have continuing rights.
        is it PD or is it not PD?
        What is it that I'm not understanding here?
        • Speaking as a layman, I think you're a bit confused by the differences in copyright and trademark and how they apply. Steamboat Willie is now in the Public Domain, meaning that you can show it, or even sell copies of it and Disney can't do anything to stop you. However, the characters are still trademarked by Disney meaning that you can't use them to make new cartoons without Disney's permission. The question here seems to be can you use parts of Steamboat Willie in an advertisement for your law firm, or
          • I apparently am the layest of the laymen here.. This may help a bit though. Thank you.
            So you can use the image but you can't re-animate it to perform depraved sex acts or even make it blow rainbows out of a unicorn's, umm, orifice... both of which seem likely to happen knowing the internet.
            I'll rephrase that. You could use a still image of public domain character X, but you couldn't start selling "Steamboat Willie's Pre-Cooked Wieners" ...oops, it's happening again.
            So still images used in your advertisement

          • One of their key arguments is that Disney doesn't provide lawyer services. Trademarks are restricted to specific trades.

    • It might be easier to ask for forgiveness, but in this case it would also be a lot more expensive.

    • They're also seeking a judgement that this doesn't violate or dilute any of Disney's trademarks.

  • Run it (Score:3)

    by John.Banister ( 1291556 ) * on Sunday September 21, 2025 @10:36AM (#65674372) Homepage
    Run some Steamboat Willie, not as an add, but as a PSA without mentioning the name of the firm (but, instruct the people airing the PSA to pass along who paid for it to be aired if Disney asks). If Disney thinks they have something to defend, they should send a cease-and-desist, and it should give the legal argument they'd use in a lawsuit. If they don't respond, run a second Steamboat PSA that invites AIs to use it for training. If they don't respond to either PSA, the failure to respond is a good argument against Disney winning significant damages for a suit in response to an advertisement.

    • Disney still have trademarks they can use to sue.

      • So, they might mention them in a cease and desist letter. The courts frown at people who want to fill up the judge's schedule without having made any effort to get the offending behavior to stop.

        • And sue them for damages. Statutory damages for trademark infringement can get up to $2,000,000 each. Plus costs, which could be even higher, considering the deep pockets of Disney's legal team.

          They can go after damages for loss of good will, dilution of trademark, costs for corrective advertising, and also any profits gained from infringement.

          If they lose, they can keep going up the courts to appeal the judgments and drag it out for years.

          Or, they could get a declaratory judgement first and avoid all risk.

          • Yeah, since it's attorneys versus attorneys, the declaratory judgement plan sounds better.
          • I think it's unlikely that statutory damages would be available at all- they don't have the requisite registration of anything the PI firm is likely to use to make it a counterfeit mark. Simple infringement, if anything, for which statutory damages are not available.

  • They are asking the court to ensure that they have permissions to do it. This is way cheaper than broadcasting the ad and getting sued later.
    Now if they lose the suit, they are just out lawyers expenses.
    If they push the ad, they could get sued for a billion dollars. So the liability is a lot lower now.

    I am not sure why you would want to make that particular ad SO MUCH that paying lawyers to sue disney for permission makes sense. But maybe the ad is just THAT good!

    • They're a law firm, they get lawyers cheap.

      The ad is a Steamboat Willie clip where Mickey crashes his boat into Minnie's car. Minnie then calls this law firm, who specializes in personal injury lawsuits.

  • Law firm should make its own fucking movie instead of trying to sponge off Disney.

    • Re: (Score:2)

      by caseih ( 160668 )

      And what of Disney sponging off of hundreds of years of public domain fairy tales? Can't they make up their own original tales?

      • Disney isn't the subject of the story, so irrelevant here.

        But in general, everyone should stop sponging off everyone else.

        None of you people are sponge worthy!

  • one of America's largest personal injury firms is suing them...lolol

  • They should just have their Legal AI talk to Disney's Legal AI. I'm sure they'll sort it all out, albeit in Sanskrit.

  • the gloves are off !

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