Oklahoma firm sues Disney over ‘Cars’ By Paul Monies The Oklahoman
OKLAHOMA CITY – An Oklahoma toymaker has put up a roadblock against media giant The Walt Disney Co. and its hit movie “Cars,” alleging trademark infringement.
In a federal lawsuit filed last month in Oklahoma City, Collectible Promotional Products Inc. of Woodward, Okla., claims Disney and toy company Mattel Inc. incorrectly used a similar trademark to its “Real Cars” line of collectible toy cars.
CPP said it has been using a chevron design with the words “Real Cars” above it since 1994. The company applied for a federal trademark, which was granted in 1998. CPP contracted with Mattel to make and package limited numbers of Hot Wheels toy cars such as the Carroll Shelby Limited Edition 1965 Shelby Cobra 427 S/C.
“Cars,” which Disney’s Buena Vista studio released in June, so far has made $244 million at the U.S. box office. That makes it the No. 2 movie of the year behind “Pirates of the Caribbean: Dead Man’s Chest.”
Disney applied for federal trademark protection for its design – a chevron with the word “Cars” inside an oblong shape – in late 2004. The company said it would apply the trademark to scores of products, including fruit drinks, jewelry and toy cars.
In conjunction with the movie’s release this summer, Mattel began selling toys licensed from “Cars” characters such as Tow Mater and Lightning McQueen.
A Mattel spokeswoman said the company does not comment on litigation. A spokesman for Disney said the company is reviewing the lawsuit but has no comment.
Lea Knight, owner of CPP, said the company sold six lines of Real Cars collectibles made by Mattel in limited batches of 10,000 each.
“We’ve been using that design on our invoices and Web site for the last few years,” Knight said.
A portion of the sales went to children’s charities, he said. That stemmed from a need to give back after the Shriners paid for the treatment of his son, Logan, for childhood arthritis.
With its deep pockets, Disney is a frequent target of lawsuits related to its movies. But the company also aggressively polices its own trademarks, recently cracking down on stores in Los Angeles that sold counterfeit pinatas based on Disney characters.
Rachel Blue, an intellectual property expert at law firm Doerner, Saunders, Daniel & Anderson LLP in Tulsa, Okla., said trademark infringement lawsuits have increased in the past few decades as companies ascribe more value to their brands.
“That’s your identity as a company, so people are a little more concerned about that,” said Blue, who is not involved in the Oklahoma case. “Trademarks are assets, just like anything else, and you want to protect those.”
Blue said the law places trademarks along a continuum, with coined terms such as Exxon less susceptible to infringement actions. Companies such as Apple are protected, too, because it sells computers, not fruit, and no reasonable person would confuse the two. At the other end of the scale are generic words in everyday use, such as “tree,” which cannot be trademarked.
Blue said CPP’s case against Disney and Mattel is a close call, but trademark law tends to favor the company who used the mark first.
“Disney appears to have adopted the same elements the prior user had,” she said. “There’s a similarity of marks and goods involved with the toy cars, so this makes it a much more difficult question.”