Turns out Mickey can say goodnight after all, despite what the massive 1982 Toni Basil hit declares. Or at least the federal trademark lawsuit over the song that ex-So You Think You Can Dance guest judge brought against Disney, Viacom, Forever 21 and others has said goodbye. Basil’s complaint, initially filed in state court filed in of August last year and removed to federal court in late 2017, has been dismissed for now.
“At least as alleged in the FAC (First Amended Complaint), Basil’s Lanham Act claim alleges no well-pleaded facts that would support a claim that is not preempted by the Copyright Act or constitute nominative fair use,” U.S. District Judge Percy Anderson wrote on Valentine’s Day of Basil’s contention that use of the “Mickey” song under false licensing assumptions by Disney, Kohl’s and Forever 21 served up a ball of confusion to consumers. “The Court therefore dismisses the FAC’s Lanham Act claim,” the California-based judge adds in his ruling (read it here).
While giving Basil a chance to try again and keeping the state claims alive jurisdictionally, Anderson isn’t exactly expecting to have his mind blown, to shamelessly paraphrase “Mickey” again. “Although the Court has serious doubts that Plaintiff can allege sufficient well-pleaded facts to state a viable Lanham Act claim, the Court will provide Plaintiff with an opportunity to attempt to cure the deficiencies identified in this Order,” he notes. “The Court therefore dismisses the Lanham Act claim with leave to amend.”
An October 30 trial date is still penciled in on the calendar and Basil has until the end of this month to filed an amended complaint if she wants another kick at the legal can. This could also all end up going back to state court too if Basil files her own dismissal by February 28, Anderson made clear. In that instance, “the Court would elect not to exercise its supplemental jurisdiction over Plaintiff’s remaining state law claims and would instead remand the remaining claims to Los Angeles Superior Court,” he said in the February 14 ruling.
Claiming that the defendants’ “unauthorized commercial use of Plaintiff’s song ‘Mickey’ along with the implied endorsement” caused her “to become withdrawn, despondent and physically ill,” Basil’s first filing in LASD last summer added that the much respected choreographer “has experienced sleep deprivation, nightmares, and anxiety as a result of Defendants’ actions.”
In that initial action, Basil went after Disney, Kohl’s and Forever 21 over a clothing line plus Viacom, South Park and others for what she alleged was non-consensual use of her persona, image and voice. In a convoluted trail of rights, it seemed to all come out of Basil arguing that defendants Razor & Tie Direct and its various subsidiaries did not have the rights they said they did and licensed out to the likes of the House of Mouse.
“Basil’s exclusive right to publicity has been damaged by the coupling with Mickey Mouse and the Disney brand,” the August 31 eight-claim complaint threw out there too.
On December 4 last year the matter was moved to federal court. That same day, Viacom and Comedy Central’s Central Productions were “terminated” as defendants.
A fate that Disney surely hopes is in its near federal future too, that other “Mickey” and all.