In a recent lawsuit, Sanrio, the owners of Hello Kitty, teamed up with Disney and its subsidiaries Lucasfilm and Marvel to sue an individual named George Wilson, who, allegedly, has been:
selling, offering for sale, distributing, and/or manufacturing unlicensed and counterfeit edible cake frosting sheets and related items, which incorporate unauthorized likenesses of animated or live action characters or other logos…
Should the unauthorized sale of cake frosting lead to a federal trademark and copyright infringement case?
The Case of the Cake
The case, Sanrio v. Wilson, was filed in the U.S. District Court for the Central District of California. The Plaintiffs’ complaint can be read here.
There’s not much in the complaint itself. Most of the 40-page document is made up of descriptions of the Plaintiffs and their famous characters and properties. The Plaintiffs state, basically, that Wilson has been making these products and selling them, has no authorization to do so, and didn’t comply with a cease & desist letter.
The Plaintiffs claim both copyright and trademark infringement because characters like Mickey Mouse may be protected both by copyright (as works of visual art) and trademark (as logos or brand identifiers.)
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Not All Lawyers Agree
Not all intellectual property attorneys agree that this type of action should give rise to a lawsuit. Rachael Lamkin, a Bay Area-based IP attorney who represents several product brands, commented:
More IP foolishness. http://t.co/5XnSxbQnQ8
— Rachael Lamkin (@Rachael_IP) September 4, 2015
(Note that one should assume that Ms. Lamkin was speaking on behalf of herself, not her employer or the brands she represents.) This prompted a bit of a back-and-forth between Ms. Lamkin and Alexandra J. Roberts, a Trademark, Intellectual Property, and Entertainment Law professor at the University of New Hampshire (again, one assumes, speaking only for herself):
@LizerbramLaw @lexlanham this is not the kind of action that will result in dilution; its an over-reach
— Rachael Lamkin (@Rachael_IP) September 4, 2015
@Rachael_IP @LizerbramLaw one goal of policing is ensuring others who license rights don't all decide to stop paying, tho
— alexandra j. roberts (@lexlanham) September 4, 2015
@lexlanham @LizerbramLaw I understand; I'm in house and i run all IP litigation world wide but sometimes you should just let lil stuff slide
— Rachael Lamkin (@Rachael_IP) September 4, 2015
@lexlanham @LizerbramLaw for instance, did you see Disney's suit against cake frosters? Come on. Rights holders need to set a better example
— Rachael Lamkin (@Rachael_IP) September 4, 2015
Yes, folks, this is what intellectual property attorneys do in our free time…debate intellectual property issues on Twitter.
What Do You Think?
In the end, these issues shouldn’t just be decided by courts and IP lawyers. The public needs to have their say as well.
Now it’s your turn: were Sanrio and Disney in the right to go after Wilson after he failed to comply with their cease and desist letter? Or should they let the little stuff slide? When big companies sue individuals for allegedly infringing on their intellectual property, are they setting a bad example or legitimately enforcing their legal rights?
