Bartow Copyright Collection : How Could Mickey Start so Much Trouble?

This is the first in a series of posts on the items in the newly curated Bartlow Copyright Collection. Professor Bartow has donated many of the physical props from famous copyright cases she uses in class to the IP Library. The collection compliments the Blair Patent Model Collection and the Baer : Father of Video Games Permanent Display. The first featured item arose a few years after the Law School was founded.

Walt Disney Prods. v. Air Pirates, 581 F.2d 751 (1988)

This case involves the admitted copying of plaintiff Walt Disney Productions' ("Disney") cartoon characters in defendants' adult "counter-culture" comic books. The present defendants are three individuals and two business entities operated by them. The complaint alleges that they infringed Disney copyrights, a Disney trademark and engaged in unfair competition, trade disparagement and interference with Disney's business. Disney sought injunctive relief, destruction of infringing materials, damages, costs and attorney's fees.

The district court awarded Disney a temporary restraining order and subsequently granted its motion for a preliminary injunction, simultaneously issuing an opinion reported in 345 F. Supp. 108 (N.D.Cal.1972). As Judge  [771]  Wollenberg noted in his opinion, the basic facts are undisputed. He found as follows (at 109-110):

Plaintiff holds valid copyrights on the various works noted in the first seven causes of action. The works protected by the copyrights comprise a series of cartoon drawings ranging from a single page to "book length." The cartoons depict the antics of characters created by plaintiff, with "balloons" over each of the characters' heads containing dialog. Cartoons are drawn to form a narrative.

According to plaintiff, defendants infringed Disney copyrights by copying the graphic depiction of over 17 characters. Two of the characters are represented as insects, and the others as animals endowed with human qualities. Each character has a recognizable image.

 The individual defendants have participated in preparing and publishing two magazines of cartoons entitled "Air Pirates Funnies." The characters in defendants' magazines bear a marked similarity to those of plaintiff. The names given to defendants' characters are the same names used in plaintiff's copyrighted work. However, the themes of defendants' publications differ markedly from those of Disney. While Disney sought only to foster "an image of innocent delightfulness," defendants supposedly sought to convey an allegorical message of significance. Put politely by one commentator, the "Air Pirates" was "an "underground' comic book which had placed several well-known Disney cartoon characters in incongruous settings where they engaged in activities clearly antithetical to the accepted Mickey Mouse world of scrubbed faces, bright smiles and happy endings." It centered around "a rather bawdy depiction of the Disney characters as active members of a free thinking, promiscuous, drug ingesting counterculture." Note, Parody, Copyrights and the First Amendment, 10 U.S.F.L.Rev. 564, 571, 582 (1976).

 In awarding Disney a preliminary injunction, the district court held that Disney's graphic depictions were protectable under Section 3 of the then Copyright Act as component parts of Disney's copyrighted work. Next, the defense of fair use was rejected because defendants had copied the substance of the Disney products. Finally, after balancing the competing interests of free speech and press versus "encouraging creation by protecting expression" of ideas as reflected in the Copyright Clause of the Constitution, the district court held that the First Amendment did not bar the issuance of a preliminary injunction (at 115-116).

Three years after granting the preliminary injunction, the district court granted summary judgment for plaintiff because the issues were "purely legal and ripe for decision" (R. 512). In its unreported summary judgment order, the court followed the rationale of its preliminary injunction opinion, adding that defendants' parody of Disney's copyrighted work without the consent of Disney "may not be achieved through outright copying of the original work" (R. 514). The court considered it immaterial that in some instances defendants used the challenged cartoon figures in different plots than Disney's or portrayed them with altered personalities, stating that "The test is whether the figures drawn by Defendants are substantial copies of the  [772]  work of Plaintiff" (R. 515). The court concluded that defendants' challenged publications constituted trade(mark) infringements [7]  (concerning the Disney "Silly Symphony" trademark) and violated Disney's valid copyrights and that defendants were guilty of "unfair competition in the form of trade disparagement" (R. 515). In addition to granting Disney a permanent injunction, the court ordered defendants to deliver all infringing materials to Disney's counsel. Costs were awarded to Disney, and the amount of damages and reasonable attorney's fees to be paid to Disney was submitted to a magistrate for preliminary assessment. Only the question of defendants' liability is before us. We affirm as to copyright violation and reverse and remand as to the remainder.