Written by Diana E. Wade and Ian W. Gillies

Edited by Loni Morrow and Catherine Holland

Much like the world of Underland created in Lewis Carroll’s book Alice Through the Looking Glass, the blurring between copyright and trademark rights can create a topsy-turvy universe.

The Walt Disney Company (“Disney”) recently found itself in a peculiar situation when the London retailer “Alice through the Looking Glass” (“ATLG”) brought a suit against Disney in the Central District of California. In its complaint, ATLG claims that Disney is infringing its rights to the mark ALICE THROUGH THE LOOKING GLASS by selling merchandise connected with Disney’s movie adaptation of Lewis Carroll’s book.

Lewis Carroll’s book was published in 1871, which begs the question “shouldn’t any intellectual property related to Alice Through the Looking Glass belong to the public domain?” Tweedledee might answer yes and Tweedledum might answer no, and both would be right, and both would be wrong.

A copyright, which includes the right to reproduce a creative work or make adaptations of the work, generally expires after a statutorily set period of time. In the U.S., the copyright term can depend on the type of work, the publication or creation date of the work, and the author’s lifespan. Under any scenario, the initial U.S. copyright in Lewis Carrol’s book expired long ago, and companies like Disney are allowed to adapt the story for their own purposes.

On the other hand, a trademark and a trademark registration can last forever, if the mark is continuously used in commerce, and the registration is properly maintained and renewed. This means that there is potentially no expiration date to the period of time in which a trademark owner can object to another company’s use of a confusingly similar mark. As an example, Tiffany & Company’s well known TIFFANY & CO mark registered in 1893, and although it is nearly as old as the book “Alice through the Looking Glass,” it is still active and enforceable.

Here, ATLG’s claims are based upon its trademark rights to the mark “ALICE THROUGH THE LOOKING GLASS.” ATLG owns federal U.S. registrations for this mark for retail store services, printed material, games, apparel (including footwear and hats), and jewelry. These trademark rights are distinct and separate from any expired copyright based upon the original Lewis Carroll novel, or any present copyright Disney might own in its recent film adaptation under the same name. Thus, ATLG finds itself in the interesting situation where it can bring a trademark infringement suit against an entity which allegedly uses the term “Alice Through the Looking Glass” in a trademark sense, even though the copyright in the Lewis Carrol novel has expired. Disney may be in the interesting position of having avoided copyright liability for its movie adaption of the novel, but incurring trademark liability by selling goods related to the movie.

Companies looking to create new goods, services, or artistic works based on properties in which the copyright has expired, should understand the difference between copyright and trademark rights. When developing such works, due diligence should include searches for both existing copyright and trademark rights, to reduce the risk of infringement. A title of a literary work for which the copyright is in the public domain, or the name of a fictional character from such a public domain work, may be a registered trademark or subject to common law trademark rights.

Disney’s present scenario may not be as uncommon as one might think. For example, the adventures of the well-known Greek mythological hero Hercules were recorded in the Bibliotheca, an ancient book written in the 1st or 2nd century, and which is clearly in the public domain. However, a search of the U.S. Patent and Trademark Office database for the term “Hercules” reveals 158 U.S. trademark applications or registrations which include the name. Thus, although the name may be an inspiring brand for a sports clothing line, and the copyright for the Greek epic is in the public domain, it would behoove an entity considering branding such goods “Hercules” to do its homework first.