)
What's in a name? A lot, apparently. The Walt Disney Company is facing a lawsuit filed by Karsten Manufacturing Co, a sporting goods manufacturer, accusing them of violating a trademark on a particular line of golf clubs. Karsten has held a registered trademark on the PING line of golf clubs since 1959. Meanwhile, Disney has assigned the name of "Ping" to a character in the summer 1998 animated feature film "Mulan". Karsten, which produces a related line of PING merchandise, requests that Disney be barred from using the name "Ping", and forced to recall any existing products using the name, as well as pay "unspecified" damages."
(Thanks to Amid for forwarding this news to me.)
UPDATE--7/3/97. Word is that Disney's attorneys are asking the federal judge in Arizona to toss out the case. The claim is that Disney does not conduct business in Arizona and so the district court there has no jurisdiction over Disney. As an alternative, the lawyers want the case transferred to a federal court in California.
Unless the characters play golf in the movie, I doubt Karsten
has much of a case. "Ping" is indeed a real Chinese word (name) and I see no reason for Disney to change it. (Although if Disney
decides to change the name to "Kuo" I have no objections...
)
UPDATE--8/26/97. An article I received. This was written by Howard Fischer of Capitol Media Services:
PHOENIX - Facing an expensive and lengthy court fight, the Walt Disney Co. and a golf club manufacturer have concluded they can share the name "Ping." In an out-of-court settlement Thursday, representatives from Karsten Manufacturing Co. agreed not to try to block Disney from releasing a full-length animated feature next summer called "The Legend of Mulan." In that film, the female lead dresses up as a male and takes the name Ping -- which happens to be a trademark that belongs to Karsten. In exchange, Disney has accepted some restrictions on the use of the name on the variety of associated merchandise for which the company is famous, ranging from dolls and lunch boxes to clothing and tie-ins with fast-food restaurants. The exact details of the pact, however, will be kept confidential.
Thursday's breakthrough came after U.S. District Judge Roger Strand publicly upbraided lawyers for both sides for their inability to craft an accord. At one point, he leveled a not-so-subtle threat, telling the attorneys that their clients would live to financially regret the legal battle: "Just get it done -- or the third quarter earnings of both companies are going to take a substantial dip," the judge said. Troy Froderman, the attorney for Karsten, said only that his client can live with the agreement. Attorneys for Disney were even more closed-mouthed, saying only that anyone with questions should see the movie when it comes out next summer and buy the merchandise.
Karsten began manufacturing its Ping line of clubs in 1959. Company founder Karsten Solheim said he gave the first club -- the model 1-A putter -- that name because of the sound it made when it hit a golf ball. Since that time the privately held company has extended the Ping name to everything from luggage to children's apparel. Sales of Ping products in the last decade alone, according to Karsten attorneys, amount to more than $1 billion. What spurred the suit was Karsten's discovery of Disney's registration of the Ping trademark for consumer items it intended to market next year in connection with the film. The story is based on a 2,000-year-old Chinese folktale of a young, high-spirited girl named Mulan whose aged father is called to war, where he faces near certain death. She then disguises herself as a man and joins the army in his place. When asked for a name by army officials, she chooses "Ping," which is a man's name, unlike Mulan. That name, though, is an invention of Disney and does not exist in the original story.
Disney showed a copy of the partially completed film to Strand -- behind closed doors -- in an effort to convince him it was too late to change it now. The judge spent several days attempting to chide the two sides into reaching common ground. But the attorneys each gave reasons why the other side's position was wrong. Jody Pope, one of Karsten's stable of hired legal guns, wanted specific limits on both on the use of the word "Ping" by Disney as well as the actual image of Mulan as Ping in her alter-ego male garb. Barry Halpern of Disney's legal team countered that his client needs "flexibility" on things like games and puzzles. After several of these sessions, Strand started losing his sense of humor about the battle.
"The problem is lawyers is they're so damned innovative and thoughtful," he told the attorneys, trying to worry about every potential future possibility. "Don't try to chase every rabbit so far down the hole that you end up chasing every rainbow."
(I really envy the judge in this case. Not only did he get to see part of "Mulan" before the rest of us, but he also got to scold attorneys on both sides. -A.K.)
