Characters for Hire Seeks Summary Judgment Against Disney’s Copyright and Trademark Claims, Citing Naked Cowboy Precedent

On October 13, 2017, Characters for Hire, LLC, a New York City-based live entertainment company specializing in renting performers who portray characters from Disney, Marvel, and Lucasfilm properties, filed a motion for summary judgment in the Southern District of New York. The motion seeks a ruling in favor of Characters for Hire against copyright and trademark infringement claims brought by subsidiaries of The Walt Disney Company, headquartered in Burbank, California.

Disney initially filed suit in March 2016, with a second amended complaint submitted in July 2017 providing detailed allegations. The complaint identifies Nick Sarelli, also known as Avi Lieberman, as the owner and principal of Characters for Hire and the primary actor behind the alleged infringing activities. Disney alleges that Characters for Hire promoted, sold, and produced themed character entertainment services, including paid appearances at children’s parties and corporate events, through its official website and social media platforms such as Facebook and Yelp.

According to Disney, cease and desist letters were sent to Characters for Hire in November and December 2015, followed by a January 2016 letter, demanding cessation of infringing conduct. Although some infringing content was removed from the company’s website after an email from Lieberman promising compliance, Disney contends that the defendants continued infringing activities via their website, social media advertisements, and YouTube videos of live performances.

Disney’s copyright infringement claim covers unauthorized commercial use of numerous characters, including Mickey Mouse, Elsa from Frozen, Snow White, Ariel, Aladdin, Princess Aurora, Iron Man, Captain America, Hulk, Green Goblin, Luke Skywalker, Yoda, Obi-Wan Kenobi, and Darth Maul. Disney asserts ownership of all rights, titles, and interests in these characters. The trademark infringement claim targets unauthorized use of reproductions or colorable imitations of Disney’s trademarks in advertising and selling the live entertainment services. Additional counts include unfair competition, false designation of origin, common law trademark infringement, and trademark dilution.

In its motion and supporting memorandum filed concurrently, Characters for Hire argues that none of its advertisements copy or display the two-dimensional artwork protected by Disney’s copyrights. The defendants rely on the 2004 Eastern District of Louisiana case Galiano v. Harrah’s Operating Co., which held that costumes, as useful articles, are not subject to copyright claims on two-dimensional artwork. Furthermore, Characters for Hire contends that Disney’s claims regarding characters such as Cinderella, Rapunzel, Sleeping Beauty, Beauty and the Beast, Thor, and Loki derive from adaptations of works that have long entered the public domain.

Regarding trademark infringement, Characters for Hire asserts the absence of consumer confusion, a critical element of such claims. The company cites the 2012 Southern District of New York case Naked Cowboy v. CBS, where trademark infringement claims by a Times Square street performer over use of his likeness in a soap opera were rejected. Characters for Hire maintains that the use of fictional character names merely describes the entertainment services offered. They also reference Caterpillar Inc. v. Walt Disney Co. (2003), where Disney successfully defended against a trademark claim over the use of Caterpillar logos on construction vehicles in a film, underscoring limits on trademark enforceability.

On the same day, Disney filed a memorandum supporting partial summary judgment in its favor. Disney highlights the defendants’ willful infringement, including attempts to conceal misconduct by using “transparent and silly fake names” such as “Big Hairy Guy” for Chewbacca and “Big Green Guy” for Hulk. Disney further alleges that Characters for Hire secretly altered customer reviews to remove references to Disney characters.

Disney also emphasizes Characters for Hire’s poor reputation, citing an F rating from the Better Business Bureau and numerous negative Yelp reviews describing the company as unprofessional, with workers who fail to appear or perform adequately. An actor resource website called the owner a “hot mess” who hires last minute and sometimes fails to pay performers. Disney argues that such poor quality services tarnish its well-established reputation for excellence.

To assess likelihood of confusion, Disney applies the Polaroid factors from the 1961 Second Circuit decision Polaroid Corp. v. Polarad Electronics Corp., including mark strength, similarity, business proximity, and service quality. Disney also alleges trademark dilution by blurring and tarnishment, contending that Characters for Hire’s use diminishes the distinctiveness and harms the reputation of Disney’s marks.

On copyright claims, Disney cites multiple precedents affirming that comic strip, cartoon, television, and film characters are protectable beyond their two-dimensional depictions. Disney asserts ownership not only of copyrights covering the characters’ appearances but also their personas and physical attributes as featured in films and comic books.

The dispute between Disney and Characters for Hire underscores the challenges faced by smaller companies operating in the live character entertainment sector when confronted with enforcement actions by major intellectual property holders. The case remains pending before the Southern District of New York, with both parties seeking summary judgment on key issues of copyright and trademark infringement.