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No (Legal) Worries for Disney in ‘Hakuna Matata’ Trademark Row

Jan. 7, 2019, 11:01 AM

Hakuna Matata still means “no worries” for the Walt Disney Co.—even though it’s become a publicity headache.

The entertainment giant has been besieged by a campaign against its trademark of the Swahili phrase from its animated blockbuster movie “The Lion King,” following Disney’s promotion of its upcoming live-action version. More than 180,000 people have signed an online petition accusing the entertainment giant of cultural appropriation for trademarking the phrase.

The petition said companies shouldn’t be able to register trademarks on long-used phrases “they didn’t invent.” But critics aren’t taking into account the nature and limits of trademark rights, attorneys told Bloomberg Law.

Intellectual property lawyers say Disney had the right to apply for the trademark, which it did when it released the original “Lion King” movie in 1994, for use on T-shirts. The U.S. Patent and Trademark Office awarded the trademark registration in 2003. Companies can, and usually do, register words or phrases they didn’t invent as trademarks, and Disney can’t stop anyone from using the phrase except to sell T-shirts, they said.

“Trademark law is pretty clear in terms of how marks can be used, and whether Disney owns a particular phrase. It doesn’t,” IP attorney Joshua S. Reisberg of Axinn Veltrop & Harkrider LLP said. “Whether it’s good and worth the outcry is for Disney to consider.”

But some attorneys said the dispute evokes a larger issue: some corporations aggressively enforce their trademark rights beyond their intended scope, effectively creating ownership of logos and phrases that can kill legitimate competition.

Zimbabwean activist Shelton Mpala launched the anti-Disney petition in December, calling the trademark “an assault on the Swahili people and Africa as a whole.” He said he respected Disney as an entertainment institution but called the mark “predicated purely on greed,” and likened it to a colonial legacy of pillaging African art.

A Disney representative said in a statement that its Hakuna Matata trademark “has never and will not prevent individuals from using the phrase.” Disney has not sued over use of Hakuna Matata, according to Bloomberg Law records. Two other entities—a wedding planner and supplements company—have registered Hakuna Matata marks in other areas without opposition from Disney.

“Indeed, for many years, trademarks have been registered for popular words and phrases such as ‘Yahoo!’, ‘Vaya con Dios (Go with God),’ ‘Merry Christmas’ and ‘Seasons Greetings’ without impeding the use of these phrases and words in any cultural way,” Disney said in its statement.

‘Shutting Down’ Opponents

A trademark indicates the origin of a good or service to consumers. Owners can sue for infringement when someone else sells products using that mark and confuses consumers into perceiving involvement with the rightsholder.

Courts sometimes give trademarks too much power while demonstrating “a pretty low opinion of consumers and how easily confused they are,” Ann Bartow, an intellectual law professor at University of New Hampshire, said.

“When it goes wrong, companies start shutting down people using it other ways. And that’s where I see the point alleging cultural appropriation,” Bartow said. “The background is that the U.S. is a big bully on IP generally. It’s not Disney’s fault, but it benefits from it.”

Bartow said the situation has improved somewhat since a 2006 revision narrowed the scope of the 1995 Federal Trademark Dilution Act, which lets trademark holders sue outside their class of goods if use of their mark could tarnish a “famous” trademark. But courts still sometimes go too far, she said, and litigation alone can chill use.

Bartow noted Ringling Bros. and Barnum & Bailey Combined Shows, Inc. lawsuits protecting its “Greatest Show on Earth” mark as an example of a bid to creating a de-facto ownership of a common term. The circus company unsuccessfully sued Utah in 1996 over its “Greatest Snow on Earth” slogan. Reisberg pointed to boxing ring announcer Michael Buffer’s aggressive defense of the phrase “let’s get ready to rumble.”

“The question is how litigious Disney wants to be,” Reisberg said. He declined to comment on the appropriation issue, saying “I can’t stand in the shoes of these groups and understand how commercial use of their language impacts them.”

‘Part of the Language’

IP attorney Bryan Wheelock of Harness Dickey & Pierce PLC called the uproar “a fundamental misunderstanding of trademark law.” Disney’s use of Hakuna Matata highlighted an aspect of African culture most U.S. moviegoers wouldn’t have encountered, he added.

Countless trademarks stem from foreign languages or sayings, he noted, such as about a dozen for “sans souci”—“without worry” in French—and over 400 registrations including the Swahili word “safari.”

“I think we’re all better when we share things,” Wheelock said. He acknowledged that securing a trademark is by definition not sharing, but added “it’s part of the language, and we all agree we can take words out of the language for limited purposes” in trademark law.

Fordham University IP law professor Hugh Hanson said the petition ultimately may prove counterproductive.

“The irony is that the outcry is going to improve the value of the trademark. Disney’s delighted that there’s this controversy,” Hanson said. “The more people know about a trademark, the more value it has.”

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editor responsible for this story: Keith Perine at kperine@bloomberglaw.com