Applying the Intellectual Property Law

1 Apply the IP Law Issues The main facts of the case is that two companies - Walt Disney World and Disney World Productions - are operating in the market in such a manner as to cause confusion in the market as to who they actually are. While both companies are involved in their individual businesses and operate out of different localities, the similarity in their names is the bone of contention.

From the set of facts provided in the case scenario, there are two main sets of issues that arise. The first is with respect to the trademark infringement. The facts of the case clearly show that Walt Disney World may have a case against Disney World Productions. However, to prove its case against Disney World Productions, there are certain elements that it will have to demonstrate. As was seen in the case of McDonald's Corp v LC Big Mak Burger, Inc, trademark infringement refers to the unauthorized use of a trademark or any other mark in a manner which is likely to confuse the public as to the actual source of the goods or services in question.

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2 The second issue is with respect to the precise location where the matter will be heard. As the set of facts demonstrate, both Disny World Productions and Walt Disney Group are based in different places. This effectively complicates suing and requires careful analysis to determine the appropriate location where a suit should be instituted.

Rules The issues raised in the case facts can be addressed by paying attention to two rules. In general, before an entity can maintain a trademark suit in a court of law, there are certain aspects that will have to be proven. As was implied in McDonald's Corp v MacJoy Fastfood Corp., an entity will only be able to institute and support a trademark infringement claim if it can prove that it owns a valid mark; that it has priority marks over those of the entity it is planning to sue; that the rights that it claims are senior to those of the defendant the entity wants to sue; and that the defendant’s mark is likely to cause confusion in the minds of consumers about the source of the goods or services in which the plaintiff deals.

It is important to note that when a particular entity owns a federal trademark which has been registered on the Principal Register, then there is a presumption that the trademark is not only valid, but that the entity in question owns the mark as well as the exclusive right to use the mark in the country. Even though this presumption can also be rebutted in a court proceeding, it is important to note that it is usually the starting point in trademark cases.

The second rule is with respect to the location in which the plaintiff is supposed to institute the suit. In law, the general rule is that a case should be instituted in the place where a cause of action arose. However, it will be noted that the present scenario introduces three sets of complications in so far as this matter is concerned. First, Walt Disney Group is based in Orlando,

3 Florida. Secondly, Disny World Productions operates out of Louisville, Kentucky. Thirdly, the website which brings rise to the cause of action is based online.

Analysis In the preceding section, the elements which Walt Disney Group would have to prove have been enumerated. It can be argued that all the elements have been met. Furthermore, the fact that there was a seven-year-old child who was confused as to the identity of the website proves that, if the defendant is allowed to operate, more consumers will be confused as to the identity of the website.

With respect to the location of filing a suit, Walt Disney Group has the option of filing a civil action either in Florida (where the company is located) or taking the matter to a federal court. However, in these circumstances, it is worth considering the fact that Walt Disney Group may prefer to file a civil action in Florida. Both options are permissible. It is also worth noting that the defendant may also request for the matter to be removed from a state court and instituted in a federal court.

Conclusion Overall, then, two main points are key in so far as the case scenario is concerned. In order to reclaim its service and prevent it from being watered down, Walt Disney Group has a right to institute a suit against Disny World Productions. Even so, when it comes to the place in which it can institute the suit, the company has greater latitude in so far as choice is concerned.

Finally, when Walt Disney Group can prove its case, there are several remedies that it may be able to claim. These include a court order forcing Disny World Productions to stop using the name; an order requiring the destruction of the website currently used by Disny World

4 Productions; monetary relief in the form of the money made by Disny World Productions; and an order that Disny World Productions pay the legal fees of the Walter Disney Group.

5 References McDonald's Corp v LC Big Mak Burger, Inc, GR 143993, 18 August 2004.

McDonald's Corp v MacJoy Fastfood Corp, GR 166115, 2 February 2007