California Trademark Attorney® Blog

Warner Bros. Sues Disney Over Wizard Of Oz Trademark Infringement

February 21, 2012

disney.jpgCalifornia - It seems as though the Great and Powerful Oz has spoken once again. This time however, he is not making demands of Dorothy and her friends, but of major companies looking to cash in on its valuable trademarks protecting the 1939 classic, "The Wizard of Oz." Currently, Warner Brothers is embroiled in a trademark infringement lawsuit with Disney over the studio's upcoming film, "Oz: The Great and Powerful."

Over the past year, Warner Brothers has gone after a number of entities attempting to cash in on the timeless Oz characters. In October, Warner Brothers filed a trademark application for "The Great and Powerful Oz," one week after Disney filed a registration of its own. The United States Patent and Trademark Office (USPTO) suspended Warner Brothers' application on the grounds that Disney filed first. The studio has also been filing oppositions with the USPTO's Trademark Trial and Appeal Board over merchandising rights and other uses of the "Oz" trademarks.

Complicating things even more is the fact that the 1899 book written by L. Frank Baum, which the famous film is based on, is currently in the public domain. As one of the opposing party's trademark attorneys pointed out, the intellectual property at issue is taken directly from the book which is in the public domain and no longer protected by copyright laws.

Warner Brothers is standing its ground, maintaining that statements over its recent litigious activities are "akin to saying that anyone should be entitled to use the famous, widely licensed trademarks such as 'Harry Potter' or 'Roadrunner' merely because they were able to find those trademarks in a book."

The current list of companies that Warner Brothers is suing for trademark infringement include Disney, over "Oz: The Great and Powerful," Wicked 'Wiches Wickedly Delicious Sandwiches, operated as a California restaurant, various Halloween costume-makers using the "Wizard of Oz" brand, wine brands including, "Dorothy of Kansas and Toto Wine," "Ruby Slippers Wine," "Broomstick Wine," "The Lion's Courage," and "Flying Monkey Wine," and a publisher of a neuroscience book titled, "If I Only Had a Brain."

Just like Dorothy and Toto in the Wicked Witch's evil castle, Warner Brothers is running out of time to protect its Oz-related intellectual property. Disney's "Oz: The Great and Powerful" is scheduled to hit theaters March 8, 2013.