STACY J GROSSMAN

Frozen - An IP Fairy Tale


by Stacy J Grossman,

 

Disney’s Frozen – An Intellectual Property Fairy Tale

On this especially cold day in the Northeast, my thoughts are on the coming winter.  And winter reminds me of the cold, and of feeling frozen.  And the word frozen reminds me of Disney’s Frozen, the highest-grossing animated film of all-time — both in theaters and in home entertainment. 

It’s been one year since we first heard “Let It Go!” – the movie’s United States theatrical release was November 19, 2013.  Disney’s Frozen is still everywhere.  It is not just a movie.  It is an entertainment mega-brand. 

Though the movie is no longer in the theaters, we can buy a digital copy of the film or soundtrack (or a DVD or CD!), read Frozen books, visit the characters at a Disney theme park, watch Frozen on Ice at local arenas, or buy any one of hundreds of Frozen-branded products (dolls, clothes, towels, and more).  According to Disney, more than 3 million princess costumes have been sold this year.

I thought it would be interesting to look at Disney’s United States portfolio of Frozen trademarks and copyrights.  How many applications did Disney file to protect its valuable brand?  When were the applications filed?  Have there been any publicly-reported proceedings relating to the Frozen brand?  What might all of this teach us about brand building?

Disney Frozen Trademark Portfolio 

Disney has, so far, filed 20 U.S. trademark applications for its brand.  The brand is not FROZEN, it is DISNEY FROZEN.  And Disney did not apply for plain word marks, but for a stylized version of the mark.

Almost all of the 20 applications were filed as intent-to-use applications, and none of the applications have yet matured to registration (though Disney has recently filed some statements of use, so a few of the marks will be registered shortly).

19 of the 20 applications were filed in May, 2013, six months before the film was released.  Well before the film launched, Disney had plans for the brand!  

Disney didn’t file multi-class applications, but rather a separate application for each class of goods.  The 19 original applications were in 41 (entertainment services) and 9 (musical recordings), customary classes for entertainment properties.  Disney also applied to register the mark in Class 3 (cosmetics), Class 14 (jewelry), Class 16 (paper goods), Class 18 (bags and backpacks), Class 20 (novelty items), Class 21 (housewares), Class 24 (textiles), Class 25 (clothing), Class 28 (games and toys), Class 29 (food), Class 30 (baked goods), and Class 32 (drinks).

Each application covered a wide array of goods within each class.  Since the applications were filed as ITUs, and since notices of allowance were issued for most of the applications in April 2014, Disney has three years to use its mark in connection with the goods and services specified in its applications, or it can narrow the descriptions of goods and services. 

In September 2014, Disney filed a new, use-based application for the mark in class 41, covering the presentation, distribution and rental of motion picture films and related services. 

Trademark Litigation 

It doesn’t appear that Disney is involved in any opposition proceedings regarding the DISNEY FROZEN brand before the USPTO.  Disney has, however, been involved in at least one trademark litigation over the brand.  In December of last year, Disney filed suit against a film distribution company that changed the name of its unsuccessful animated movie to “Frozen Land” to improperly ride on Disney’s coattails.  The case settled less than one month after it was filed, and the defendant was required to immediately cease and desist from using the name, and to pay Disney $100,000.

Copyright Matters

In addition to owning trademarks, Disney also owns a valuable portfolio of copyrights in its work – in the story, the characters, the music, and all of the books, software, games and other products that have stemmed from the work.  A search of the United States Copyright Office database revealed 37 registered works with Disney Frozen in the title.

Disney is the defendant in at least two copyright infringement lawsuits.  In one, the creator of a computer-animated film entitled “The Snowman” alleged that the trailer for Frozen infringed the copyright of her short film.  In the other, a Peruvian author claimed that Disney plagiarized the story from her autobiography, “Yearnings of the Heart.”

In addition to defending these claims, Disney is navigating the tricky copyright waters of mass-fandom.  Countless numbers of fans have created derivative works based on the Frozen properties – videos of children (and adults) singing Frozen songs abound.  My favorite is “Good Looking Parents Sing Disney’s Frozen” – a You Tube video gone viral.  It’s received more than 18 million views  since March of 2014, and created careers for its stars.  Disney, like many content owners, must be concerned with nurturing and not cracking down on its fans, and with realizing that permitting some unauthorized use of a brand can be a good thing.

Lessons Learned

Disney clearly had a well-developed plan for the Frozen brand.  Prior to the film’s launch, Disney filed a significant number of applications to register the DISNEY FROZEN trademark both for entertainment-related goods and services, and for a wide range of goods to support its merchandising program.  Disney’s work was thorough on the front end, and now it can perfect its registrations as more and more goods are offered under the brand.  The registered brand is always the same, DISNEY FROZEN, and its use is consistent and widespread.  The brand gained so much notoriety that even without an issued registration, Disney was able to prevail in a trademark litigation, based on a third parties blatant infringement.  I suspect Disney will selectively enforce its copyrights in the work, allowing fans to express their love for the brand, but preventing infringers from improperly copying the work.    

Frozen has become so famous, so quickly – it’s hard to believe that the movie was released just one year ago.  It is a perfect illustration of the power of intellectual property to build, maintain and create value in a brand.