WE KNOW DISNEY, WHO IS WACOINDA?
Without a doubt, when it comes to fame, it does not get bigger than the legacy of Mr. Walter Elias Disney and his brainchild corporation, The Walt Disney Company. I'm wondering however, how many Black Panther fans know that the mythical city of Wakanda[2], the pious T'Challa, and even the vengeful Killmonger are all the tightly held intellectual property of Disney. Well you may have known that, but you definitely didn't know that the trademark for "Wakanda" was published several weeks after an organization called "Wacoinda" published their name and there may be a brewing David versus Goliath battle over the rights.
According to Black Enterprise, Wacoinda is "THE FASTEST-GROWING BLACK ECONOMIC GROUP ON FACEBOOK" and was founded by Lafe Taylor and Lamar Wilson in the first quarter of 2018. The group currently has over 30,000 members, and is completely decentralized. Mr. Wilson, one of the more vocal founders of the decentralized network, has given details about the mindset of the original group. He's explained that the purpose of Wacoinda is to "teach people about economics, try to help and eradicate economic injustice, and to bring people together through love and collaboration." According to their founders:
The only way to fight against any injustice in this world is with unity. Wacoinda not only brings like-minded people from all over the world together but does it in love, the strongest force against the evils of injustice. We all know that Black Panther is a fictional character, but in Wacoinda there are real-life Black Panthers, of all colors, who believe in freedom and ownership, and that it's more powerful to love than to be loved.
One wonders if Mr. Disney believed in a similar concept when he stepped out on his own and decided he wanted to focus on expressing his love by enchanting people with his animation.
It was 1928 when Disney, a young entrepreneur at the time, created a sensation through his animated figure Mickey Mouse. That business has grown radically, until now it is the stuff of American folklore, the epitome of the American dream with an American size bank account to boot. The brand has become so well known and so powerful that in August of 2009 it had the muscle to acquire Marvel Entertainment for $4 billion. With that acquisition Disney gained volumes of rights to the most powerful and interesting characters in modern history. It also acquired Marvel Studios' Black Panther.
The box office success of Black Panther in the United States was certainly a ground breaking cultural phenomenon. But what's more, seeing the African Kingdom of Wakanda left a lasting impression on Black Americans. The Kingdom of Wakanda (wə-Kɑ(H)N-də), which perfectly matches the location and phonetics of Uganda (yoo-Ga(H)N-də) in East Africa, spoke to the hearts and minds of a majority of Black people who watched the flick. Black Panther's concepts were so vivid that some paid to see the film two or three times to support the movement.
In the words of Time magazine, "Hollywood has never produced a blockbuster this splendidly black." And even going to the theaters the Black community wouldn't be left out. As Time explained, at Black Panther's primer the Actors adorned themselves in African royal attire, and presented a booming cultural display. This trend was a pattern replicated throughout the United States, bringing the African diaspora front and center to the film. Dressing up became an act of solidarity, and on display were "ascending head wraps made of various African fabrics . . . natural hair tightly wrapped above a resplendent bejeweled gowns. Men . . . wore Afrocentric patterns and clothing, dashikis and boubous, [even] a kanzu the formal tunic of [] Ugandan ancestry." The image of Wakanda represented to them the type of "Black Wall Street" that they were denied in 1921. Wakanda is like the combined philosophical wet dream of Malcolm X, Langston Hughes and James Baldwin intertwined and made real.
Enter Wacoinda. Wacoinda is a real decentralized community that was birthed in January 17th, 2018. It was the result of a live conversation about economic empowerment and cryptocurrency. Facebook served as the principal location until organizers launched a website for their digital currency called the Wacoinda Fa'Eva Wallet. The group has also released its own currency which it trades internally and has even launched a Wacoinda-Marketplace where the currency is accepted.
Organizers originally called themselves the "Black Coin Group" however after a funny interlude from one of their members, the organization agreed on the name Wacoinda. When they attempted later on to change it back to the Black Coin Group, people disliked it, so the name stuck. A few days later, organizers noticed that other facebook groups using the exact name began to pop up and a trademark was subsequently filed by Wilsondom LLC merely for expeditious processing. The name was published on July 17th, 2018 almost two weeks before Wakanda's publication.
WHAT HAPPENED?
On August 7th 2018, Marvel Characters, Inc. a subsidiary of Disney filed a "First 90 Day Request for Extension of Time to Oppose for Good Cause" to oppose Wacoinda's trademark. Formally, it does not mean that Disney will file an opposition to Wacoinda's name, but rather that it "needs additional time to investigate the claim [and] confer with counsel." We too can investigate the potential claim based on what we know about the Wacoinda name and current case law. For a full legal analysis check out my article here: https://medium.com/@israelaceburns/why-wacoinda-matters-21860b2afdcb
While it is possible that Disney's reputation is offended by the concept of a group "centered around cryptocurrency and financial education that encompasses black wealth, power, and influence," even the cryptocurrency media suggests that if approved Wacoinda "would be applied to financial education and economic empowerment initiatives aimed at the African-American community." As such, it is hard to argue both sides of Trademark dilution.
IS THE WAKANDA BRAND FAMOUS ENOUGH FOR TRADEMARK DILUTION?
The threshold question in our trademark dilution analysis is whether the name Wakanda meets the level of fame required for dilution. Dilution is only for those marks which can summon the general knowledge of a majority of the plaintiffs market. In other words, a famous mark is one that has become a "household name." Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1012 (9th Cir. 2004) (quoting Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 911 (9th Cir. 2002); Beebe - Trademark Law: An Open-Source Casebook 134 V3.0/2018–08–27. According to the Lanham Act § 43(c), in deciding the fame aspect of dilution by blurring or tarnishment the mark must be "widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner." Lanham Act § 43(c)(2)(A). Additionally, the mark must have become famous before the defendant began its allegedly diluting use. See Lanham Act § 43(c)(1).
Among the marks that have failed to meet the fame requirement are the "longhorn" logo of the University of Texas, Board of Regents v. KST Elec., Ltd., 550 F. Supp. 2d 657, 678 (W.D. Tex. 2008), and the red dripping wax seal of the Maker's Mark whiskey bottle, Maker's Mark Distillery, Inc. v. Diageo North America, Inc., 703 F. Supp. 2d 671, 698 (W.D. Ky. 2010) ("Congress intended for dilution to apply only to a small category of extremely strong marks."). Among the marks that have met the fame requirement are JUST DO IT, CHANEL, AUDI, and AMERICA'S TEAM. See respectively Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 100 U.S.P.Q.2d 1018, 1027 (T.T.A.B. 2011); Chanel, Inc. v. Makarczyk, 110 U.S.P.Q.2d 2013 (T.T.A.B. 2014); Audi AG v. Shokan Coachworks, Inc., 592 F. Supp. 2d 246, 280 (N.D. N.Y. 2008); Dallas Cowboys Football Club, Ltd. v. America's Team Properties, Inc., 616 F. Supp. 2d 622 (N.D. Tex. 2009).
Wakanda is an interesting and exciting name, but it is not a household name. Further without empirical data, it is impossible to establish Wakanda, as reaching the level of recognition owed the protection of dilution. Based on the established case law, Wakanda has not met the standard to be considered famous under the Lanham act. As such Dilution would not apply.
WHAT IS TRADEMARK PARODY?
Admittedly, the name Wacoinda seems to parody the name Wakanda in an almost satirical manner, much like in Louis Vuitton Malletier, S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 ("Louis Vuitton"). A parody of a trademark must convey two simultaneous - and contradictory - messages: that it is the original, but also that it is not the original and is instead a parody. Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ'g Grp., Inc., 886 F.2d 490, 494 (2d Cir. 1989).
Louis Vuitton, elaborated on the concept of Trademark parody. 507 F.3d 252 at 264. Trademark parody involves the appropriation of another's mark as a well known elements of popular culture, and then building on it to contribute something new for humorous effect or social commentary. The Fourth Circuit's decision in Louis Vuitton provides a detailed analysis of the parody defense to trademark infringement claims. In sum, the Court explained that defendants products and names were clearly similar in monogram, design and coloring, which indicated they were imitation. Normally, a strong mark favors the senior trademark owner, but, in the case of a parody, the fame of the mark allows consumers to readily perceive the target of the parody. Similarity of the marks themselves also favor the new trademark owner so long as the parody is sufficiently blatant so as to easily invoke the famous trademark in the mind of consumers, yet still distinguish the products.
CONCLUSION
For the reasons stated above Wacoinda has not infringed or diluted Wakanda's brand. Because Wacoinda's products and services are totally different, to date there is no evidence of actual confusion, the Wakanda brand is not strong enough to initiate a dilution claim and, even if it were, the theory of Trademark Parody does properly shield Wacoinda from liability. For these reasons it is axiomatic that Disney would fail in its attempt to prevent Wacoinda from Trademarking its name.
[1] For sake of full disclosure, admittedly, I am a proud member of the Wacoinda family, and I've had direct communication with its founding organizers and members.
[2] U.S. APPLICATION SERIAL NO. 87675039
MARK: WAKANDA87675039
CORRESPONDENT ADDRESS: STEVE ACKERMAN
THE WALT DISNEY COMPANY 500 SOUTH BUENA VISTA STREET
IP DEPARTMENT - TRADEMARK GROUP BURBANK, CA 91521
[3] "To prevail on a claim of trademark infringement under the Lanham Act, 15 U.S.C. § 1114, a party must prove: (1) that it has a protectible ownership interest in the mark; and (2) that the defendant's use of the mark is likely to cause consumer confusion." Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137, 1144 (9th Cir. 2011) (citations omitted). However, where the products and services are so dissimilar such that it is not possible for consumer to be confused as to its source, there is no likelihood of confusion. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976).