Morgan & Morgan Claims Fair Use of Steamboat Willie Cartoon Adaptation in its Advertisement
In its recent OSWALD THE RABBIT decision [TTABlogged here], the Board side-stepped the issue of "fair use" arising out of the public domain status of Disney's "Oswald the Lucky Rabbit' cartoon. Now, the Morgan & Morgan law firm has commenced a declaratory judgment action in Florida, seeking a ruling that it may use "certain visual elements" from Disney's "Steamboat Willie" cartoon (now in the public domain), in a proposed advertisement. Morgan Global, PLLC v. Disney Enterprises, Inc., Case 6:25-cv-01795 (M.D. Florida September 17, 2025). [Complaint here]. [Morgan voluntarily withdrew the complaint on November 12, 2025 under FRCP 41(a)(1)(A)(i).]
Morgan seeks a declaration that its advertisement, which incorporates an adaptation of the 1928 cartoon "Steamboat Willie," does not infringe any trademark rights or other intellectual property rights of Disney and does not violate 15 U.S.C. § 1125(a) or any other provisions of the Lanham Act.
A version of the proposed advertisement may be viewed here.
Morgan had informed Disney of its intention to broadcast the advertisement, noting that "the Advertisement includes prominent disclaimers (visual and verbal) that make clear to the public that there is no affiliation or connection between Morgan & Morgan, or the Advertisement, and Disney." Disney's response was noncommittal.
Morgan pointed out in its complaint the Disney recently sued a jewelry manufacturer whose designs depicted characters from the "Steamboat Willie" cartoon. According to Morgan:
Disney’s history of aggressive enforcement of intellectual property rights, including recent trademark litigation against third parties using the same public-domain work, combined with Disney’s refusal to disclaim an intent to engage in enforcement against Morgan & Morgan’s proposed use, has created a real, immediate, and substantial controversy.
More particularly, Morgan seeks a declaration of (I) non-infringement of trademark (15 USC §1114), (II) non-violation 15 USC § 1125(a) false designation of origin/unfair competition, (III) no trademark dilution under 15 USC § 1125(c), and (IV) non-violation of common law or statutory unfair competition laws.
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TTABlogger comment: Is a minimal royalty license a possibility?
Text Copyright John L. Welch 2025.
posted by John L. Welch @ 9/19/2025
3 comments
3 Comments:
As a trademark and copyright sicko, I think this is super fun.
In my opinion, there’s at least two separate issues created by the law firm’s proposed ad:
The first part of the video appears to be direct, unaltered footage from the original, out-of-copyright Steamboat Willie. Issue: Is the use of an out-of-copyright image or video in an advertisement within the scope of the rights that are supposed to be free for all to use after Copyright expiration? Is such an ad likely to make viewers think that there is affiliation, connection or association with Disney? What’s a rule for an appropriate balancing of copyright and trademark policies? Note that this is not an issue of a Steamboat Willie image appearing on a T-shirt – it’s clearly an advertisement for legal services.
Do all the disclaimers have any impact, when the focus is on an animated Mickey Mouse?
The second part of the video appears to be Mickey and Minnie in a collision, lawsuit and settlement that is created totally apart from the original film that is out of copyright. That part of the ad must have been created by the ad creators (maybe using AI?) and seems to have little or nothing to do with the original film. The confusion and deception trademark issue is the same as in the first part of the video. But a probable resolution seems much clearer.
Then there’s the procedural issue: The Supreme Court in Medimmune said that for DJ jurisdiction, the dispute must be definite and concrete and “of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. “ Does the law firm have a reasonable fear of being sued even before it airs the advertisement ? Disney has carefully avoided sending a cease and desist demand. Is the law firm going to have to take the risk of damages and air the ad before there’s a real live controversy fit for an Article III court?
If this law suit goes forward, I hope the law firm has budgeted a lot of money to keep it going. Mickey Mouse constitutes the crown jewels of the Disney empire.
Worth noting the Mouse Empire's sub Walt Disney Animation Studios has a production logo that features a scene from the first synchronized sound cartoon and features Steamboat Willie and included 'animator's drawings of a red outline of a mouse character visually flipping one after another and transitioning to a gray and dark gray background with an animated square clip of a black and white mouse character tapping his foot and whistling while holding a gray ship's wheel outlined in black with a gray and dark gray mountain landscape in the background...' for its U.S. Reg No 6846660 for the WALT DISNEY ANIMATION STUDIOS.
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