On September 23, 2021, a U.S. District Judge for the District of Nevada granted Walt Disney’s motion to dismiss K&K Productions’ claim of trademark infringement under the Lanham Act “without prejudice.” If a case is dismissed without prejudice, then the case may be brought to court once more.
K&K owns intellectual property and publicity rights for Evel Knievel, the famous daredevil of the ’70s, which includes trademarks, copyrights for audio/visual works, and his “right of publicity.” For those who don’t remember, Evel Knievel was a motorcycle daredevil who rose to fame through the ’60s to ’80s for his death-defying jumps and crashing falls. When Disney released the long-anticipated “Toy Story 4” in June 2019, K&K noticed a striking resemblance to a new character called “Duke Caboom.”
In “Toy Story 4,” Duke Caboom rides a Canadian-flag-colored motorcycle and dresses in a white jumpsuit, helmet, and cape with Canadian insignia. In the film, Duke Caboom is recruited to help rescue a runaway toy who is being held hostage by the film’s antagonist. Not only did Toy Story 4 actors, directors, and producers reference the Evel Knievel inspiration for Duke Caboom in six separate interviews, but the trademarked white jumpsuit and cape were unmistakable.
Since Disney had used Evel Knievel’s “trade dress” in a movie, the Judge ruled the “Rogers test” applied. Under the Rogers test, plaintiffs can only prevail on their trademark claim, if the alleged infringement has “no artistic relevance to the underlying work” or “explicitly misleads as to the source or content of the work.” Meaning the alleged infringed upon work is not connected to any artist or the said work leads someone to assume it is connected to the original work or source.
Also, the Judge found that Disney’s use of Evel Knievel’s likeness contains significant “transformative elements.” Meaning the work adds something new, with a further purpose or different character, altering the first [work] with a new expression, meaning, or message.
The Judge stated that the “action figure has a different name, different clothing, Canadian rather than American insignia, the addition of a mustache, and a different hair color and style.” The Judge further stated that “features shared by both the Duke Caboom action figure and Evel Knievel are shared by many stuntmen, such as a jumpsuit, helmet, and motorcycle. Duke Caboom is not a representation of Evel Knievel simply because he is a stuntman.” Ultimately, the Judge found that the 2019 film does not explicitly attempt to mislead viewers into thinking that deceased stunt performer Robert Craig Knievel sponsored, endorsed, or was associated with the project. Thus, their trademark claim failed.
K and K Promotions is represented by J. Randall Jones and Chad Aronson of Kemp Jones LLP.
Disney and Pixar are represented by Mark G. Tratos of Greenberg Traurig LLP.
The suit is K and K Promotions Inc. v. Disney Enterprises Inc. et al., case number 2:20-cv-01753, in the U.S. District Court for the District of Nevada.
* Lowe & Associates (“The Firm”) is an entertainment and business law firm located in Beverly Hills, California. The firm has extensive experience handling cases involving copyright and intellectual property law, having provided top-quality legal services to its clients since 1991. The Firm is recognized for its many achievements, including successfully litigating many high-profile cases.