Deadmau5 v Mickey Mouse – not a mice dispute

A dispute has broken out between Joel Zimmerman aka DeadMau5 and Disney after the producer and performer submitted a US trademark application to register his Deadmau5 mouse logo.

Disney opposed the trademark application citing that Zimmerman’s mouse logo is nearly identical to the Disney Mickey Mouse trademark. Zimmerman has been using the logo, which is based on his on-stage mouse helmet, for over ten years and it has been registered in 30 other countries.  He has recently tweeted “Lawyer up, Mickey” to his 3 million followers.

Conversely, it has now been alleged that Disney has been taking the mickey, as they have recently infringed the copyright to several of Deadmau5’s songs. Five years ago, the Disney Channel featured several Deadmau5 songs in music videos created out of rehashed old Mickey Mouse cartoons in its TV show re-Micks.  Disney obtained the necessary licences to feature the songs on its TV show but it then uploaded the videos onto its website for which it had not secured the proper rights.  This cheesed off Zimmerman whose lawyer then sent a cease and desist letter to Disney.  Subsequently, Disney removed the offending video and every other re-Micks’ music video from the Disney website.

Unfortunately for Zimmerman, Disney’s infringement will not prevent Disney’s opposition to the registration of the Deadmau5 mark in the US. When Zimmerman’s application is considered, it is likely that the confusion between the two marks will be tested using the ten point test.  This test will include taking into account the similarity of the mark’s appearance, sound, connotation and commercial weight and the visual similarity between the two marks will be given the most weight.   Zimmerman will have to try and prove that the marks will not confuse the public as to the origin of goods and services i.e. that the marks’ goods do not originate from the same origin.  Instead Disney may try and establish that registering Zimmerman’s mark would result in trademark dilution.