Trial attorney John Morgan has claimed victory in a dispute with Disney Enterprises Inc. over the use of images from the 1928 Disney cartoon “Steamboat Willie” in a Morgan & Morgan legal ad.
Morgan, founder of the Orlando-based law firm, said last month on the PBD Podcast that the dispute over whether Disney’s trademark rights for the 1928 cartoon had expired has been resolved.
“After a few months, Disney agreed that I can run this commercial,” Morgan said on the podcast, adding that the legal ad featuring Mickey Mouse is currently being aired.
In September, Morgan Global PLLC filed a federal lawsuit against Disney contending the law firm faced a credible threat to its business because Disney suggested it would maintain its right to litigate to protect its intellectual properties should the law firm air the ad. But the following month, Morgan & Morgan withdrew the lawsuit, which was filed in the Middle District of Florida.
Morgan stressed that Disney no longer had exclusive rights to the “Steamboat Willie” images because the intellectual property rights had expired.
“Here’s my goal with ads,” he said during the podcast. “Every ad I do I want it to be so great that the viewer rewinds the TV to watch it again. … I want to have a commercial that’s a purple cow. I don’t want a brown cow. I want to have a commercial that makes you stop.”
The “Steamboat Willie” ad was such a purple cow, Morgan said.
The 30-second ad shows a distracted Mickey Mouse piloting a steamboat and then colliding with a vehicle driven by Minnie Mouse, who uses her cellphone to call Morgan & Morgan for legal help. Mickey is later depicted handing over a bag of money to plaintiff Minnie.
According to the Cullen and Dykman LLP law firm, the images from the 1928 film entered the public domain on Jan. 1, 2024. While original versions of the film can now be used by anyone in creative endeavors, there are some limits on making derivatives of the images.
“… Later developments and copyrighted aspects of the characters remain protected, meaning new works based on the public-domain material must avoid infringing on subsequent copyrighted versions,” the law firm said in a post on its website.
In a letter a Disney attorney sent to Morgan & Morgan in July of last year, the company declined to say it would not sue the law firm if it ran the ad, spurring Morgan & Morgan to file its lawsuit. Disney filed a lawsuit in California at about the same time alleging trademark infringement against a jewelry company, Red Earth Group Limited, whose products depicted characters from the “Steamboat Willie” cartoon.
Asked for a response to Morgan & Morgan’s decision to run the ad, Disney did not comment on the specifics of the “Steamboat Willie” dispute.
“Disney remains committed to guarding against unlawful copyright and trademark infringement to avoid consumer confusion caused by unauthorized uses of Mickey Mouse and our other iconic characters,” a Disney spokesperson said in an email to the Florida Record.
Morgan indicated that the law firm’s dispute with Disney was driven by retribution. Morgan’s brother, Tim, was left a paraplegic as a teenager decades ago after an accident at Walt Disney World, where he was then employed.
