Posted: March 19th, 2014
By: John Hodnette *
Imitation may be the sincerest form of flattery, but when it comes to the film business companies like Disney are glad that trademark law exists to protect them from some imitators. The facts of this recent case could not be more indicative of classic trademark infringement. Here is what happened.
“The Legend of Sarila” is Canada’s first 3-D animated film. The story draws inspiration from Inuit culture and legends, and involves blizzards, journeys though frozen tundra, sled dogs, and mystical shamans. This film had little in common with Disney’s blockbuster hit, “Frozen” about a land that magically send into eternal winter. In fact, the trailers of “The Legend of Sarila” and of “Frozen” share nothing in common aside from being animated films involving snow.
However, after a slow start in sales for “The Legend of Sarila” Phase 4 Films, a Toronto based distributor, decided to retitle the film and change the packaging for the U.S. DVD sales. The new name they chose was “Frozen Land” and the packaging bore such a striking resemblance to that of the logo of Disney’s “Frozen” that it is no shock that Disney immediately filed suit.
The claim by Disney is that Phase 4 was attempting to confuse consumers (and potentially parents) into buying “Frozen Land”, thinking that it was Disney’s “Frozen”. This is not an unheard of strategy. In fact, typically films that try to capitalize on the success of a similar film are called “mockbusters.” A recent example includes the Asylum made “Age of the Hobbits” to capitalize on the soon to be released “The Hobbit: An Unexpected Journey.”
“As is apparent from the face of the ‘Frozen Land’ logo, despite the infinite options available to it, Phase 4 intended its logo to replicate the ‘Frozen’ trademark logo,” say representatives of Disney. “For example, the ‘Frozen Land’ logo also includes jagged, uneven edges on the lettering, dramatic flourishes on the letters, and an elongated R and Z that cradle a stylized O that curves into itself and does not close entirely. In addition, the word ‘frozen’ is significantly larger than the word ‘land.’ The two logos are nearly identical.”
In this case, Disney sought damages of injunction of the sale of the imitation trademark, destruction of all copies of the imitation DVDs, lost profits and actual damages. In trademark law, infringement occurs when the plaintiff can prove a likelihood of confusion for the consumers. The court here did not need to go through its normal analysis however. Less than a month after the lawsuit was filed, Phase 4 settled with Disney for $100,000, and agreed to change the name of its film back to “The Legend of Sarila.”
This was most likely a wise move for Phase 4, since the court would have no doubt found this to be a blatant example of trademark infringement.
* John Hodnette is a second year law student at Wake Forest University School of Law. He holds a Bachelor of Arts in English, with a minor in Philosophy, from Auburn University. Upon graduation, he intends to practice in the Chicago area.