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WAS DISNEY A DUMBO?

By: James B. Astrachan

Illustrators and designers need to hear of Walt Disney Company's hard-learned lesson about protecting trade dress: A family of products must have a consistent overall look or their trade dress can be poached with impunity by a competitor. Here's what happened.

In the 1980s, Disney began to market videocassettes of many of its feature-length, fully- animated motion pictures, including Dumbo, The Sword in the Stone, Peter Pan, Sleeping

Beauty and others. In all, there were 17 videocassettes that Disney claimed comprised its family of Classic Animated Features.

In 1993, Good Times Home Videos, a packager and distributor of videocassettes, began to mass distribute feature-length, animated versions of Aladdin and Pinocchio and planned for release of other films.

Good Times hired an illustrator who had recently worked for Disney to design the packages for the videocassettes, who was told that one version of the videocassette would be packaged in a white plastic clamshell, similar to that used by Disney for its Classic Animated

Features.

Good Times' product was released in a white plastic clamshell with the title of the film printed at the top of the package. The cover art was comprised of a large illustration of principal characters below which were small cameos of lessor characters. All characters had a three-dimensional appearance, and Good Times was described as the source of the video on the front and rear of the package. Above the title, written in script, was the phrase “A Good

Times Classic Animated Feature.”

Childrens' videos are big business and Disney sued Good Times claiming that Good

Times' packaging infringed Disney's Classic Animated Features trade dress under Section 43(a) of the Lanham Act and for false advertising and other deceptive trade practices under New York law.

As relates to trade dress, Section 43(a) defines an infringer as any person who in connection with a container for goods, uses markings that are likely to cause confusion or mistake as to the origin of the goods. The Lanham Act protects trade dress, which is the total image of a product, including size, shape, color or color combinations, texture and graphics.

Trade dress generally refers to the packaging or labeling of a product and may include the appearance of the product itself.

Disney's claim boiled down to the allegations that it had protectible trade dress in its

Classic Animated Features products and that Good Times infringed its trade dress because its videocassette packaging looked too much like Disney's. The result, Disney claimed, was that consumers expecting to buy Disney would mistakenly buy Good Times.

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14233\001\#5498 Maybe confusion was likely, reasoned the court. After all, Disney had produced a consumer survey that appeared to indicate a likelihood of consumer confusion, an element that must be proved in order to win a Section 43(a) case. But Disney and its package designers had fouled-up in a way that was foreseeable, and even if Disney could prove a likelihood of confusion, the court was unwilling to rule that Disney had protectible trade dress.

The reasons for Disney's trouble was that its trade dress claim related not to one package but to the overall look of a number of packages -- Disney's family of Animated Classic

Features trade dress. To win, Disney needed to establish that its trade dress was protectible, and to do that it had to prove that the package line, and not merely one package in that line, had a uniform and recognizable trade dress. In other words, Disney needed to have a consistent overall look, and this is where the designers and illustrators failed Disney.

Even Disney's own president testified she was unable to describe Disney's overall look across its family of Classic Animated Features. She described the look generally as a white clamshell box, layout of the artwork, positioning of the title, use of color and artwork and the characters' three-dimensional look.

But the format of each of Disney's videocassette packages was a little different. From package-to-package the size, style and color of title lettering differed and even though titles always appeared in the upper third of the package, the placement within that area was inconsistent. In some films artwork was located above the title, but not in others.

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14233\001\#5498 “Classic” was not used consistently, nor in a consistent manner on the Disney packages.

When it was used, placement varied as did the print style. Disney characters were depicted, but their location on the package also varied. Last, the packages did not consistently identify the films as members of a series, family or collection.

Disney had directed its designers to replicate the look of each film on the videocassette package, thus the film dictated the shape and color of the title lettering. The designers were also directed to alter packaging format to reflect consumer perception of the film –

“masterpiece” was used instead of “classic” where the film -- such as Fantasia-- was viewed as extra special.

The result could have been different if Disney had given its designers more specific directions and supervised the consistent application of these directions. The second package should have looked like the first, the third like the second and so on. Elements appearing on the top and bottom of the packages should have been created that were unique to Disney and applied consistently to all videocassettes in the series. The problem of how to illustrate examples of different types of films might have been solved by use of stills from the films also in a consistent and uniform matter.

If I could make only one recommendation to designers and illustrators tasked with designing a family of packaging, it would be to hang a sign that reads “BE CONSISTENT.” The design might not be cutting edge, but I'd be able to stop the poaching.

______James B. Astrachan is a principal at the Baltimore firm of Astrachan Gunst Thomas, P.C. Mr. Astrachan is a former chair of the Maryland Bar Association's Intellectual Property Law Committee.

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