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Trademark elements of Toni Basil’s Mickey case dismissed

By | Published on Monday 19 February 2018

Toni Basil

A federal court in California last week dismissed a trademark infringement claim made by choreographer and one-time pop star Toni Basil against Disney and others. Though elements of Basil’s multi-layered litigation in relation to her 1982 hit ‘Mickey’ continue.

Basil sued various parties last September over the use of her record in a number of TV programmes and adverts. It was a complicated lawsuit that contained contractual disputes and allegations of copyright and trademark infringement.

At the heart of the dispute is a legal battle with music firm Razor & Tie, which claims to currently control her record. Basil’s lawyers argued that their client’s original contracts with the UK label that put out the track included a veto over sync deals. They also reckoned that various transfers in ownership of the master rights in the track from the mid-1980s onwards were invalid.

Disney and retailers Forever 21 and Kohl’s were accused of trademark infringement, the argument being that by syncing her record into their ads the three companies had used Basil’s image and voice to advertise their products without permission.

The defendants countered that there wasn’t a case under US trademark law, and that Basil was just resorting to making a claim under trademark rather than copyright over a sync, because she doesn’t control the copyright in her record.

Judge Percy Anderson last week agreed that trademark law couldn’t be used to extend rights governed by copyright. He added that while the defendants had named Basil is some promotional material, that was simply in reference to their use of her track, and did not imply any sort of formal endorsement.

Anderson wrote in his judgement: “Defendants used Basil’s name and the ‘Mickey’ song title to describe her and the song, not to describe their own products. Basil and the song cannot be described except by using her name and the song’s title, and the [complaint] does not allege any well-pleaded facts suggesting that defendants used more of the marks than reasonably necessary or do anything that would suggest sponsorship or endorsement”.

However, the case is not entirely closed. First, in addition to claims made under federal trademark law, additional claims were made in Basil’s lawsuit under Californian law, and those matters will need to be dealt with by a state-level court. Anderson also said that Basil’s legal reps can submit an amended lawsuit if they wish.

A spokesperson for those legal reps told Law 360 last week that “the case is not over”. They added: “Disney, Forever 21 and Kohl’s rely solely on technicalities to attempt to escape culpability for misappropriating Toni Basil’s ‘Mickey’ and tying it to Disney’s fiercely protected Mickey Mouse brand. The disregard for Toni’s personal rights is inexcusable and those involved will be held accountable”.



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