Enos v. The Walt Disney Company

District court grants Disney’s motion for summary judgment, holding it did not infringe plaintiffs’ copyright in blue-eyed ukulele-playing turtle character, but rather independently created its own musical turtle character, and that plaintiffs’ unfair competition claim was barred by laches. 

Plaintiffs John William Kaipo Enos and Johnson Entertainment LLC sued The Walt Disney Company and Disney Enterprises Inc., alleging copyright infringement and unfair competition under the Lanham Act. The dispute centered on Enos’ character “Honu,” a green sea turtle with blue eyes that was created for Enos’ musical stage show for children titled Honu by the Sea. The show premiered in 2012 at the Royal Hawaiian Hotel and told the story of “Kainoa, a Hawaiian surfer and beachboy, who finds a magical sea star that grants his wish to spend a day underwater.” The character of Honu, which means “turtle” in Hawaiian, did not appear in the show but was later included as a drawing in the show’s program in 2014 and later, in March 2015, as the show’s mascot who greeted audience members. Neither of those uses depicted the character with a musical instrument. It was not until April 18, 2016, that Honu was first depicted holding a ukulele. 

Separately, around 2015, Disney decided to create a new character in its Duffy and Friends merchandise line associated with Disney’s Aulani Resort in Oahu, Hawaii. This character, which later came to be called ‘Olu Mel, was depicted in early concept drawings from fall 2015 as a turtle holding a ukulele. By August 2016, Disney had created a final version of the character as a blue-eyed turtle that surfed and played the ukulele. Disney publicly announced and officially released ‘Olu Mel in July 2018. 

Plaintiffs claimed that Disney unlawfully copied Honu’s protectable expression in creating ‘Olu Mel. In a prior ruling on Disney’s motion to dismiss, the court had found that plaintiffs’ Honu character possessed two original elements that together, made him distinct from stock turtles: his blue eyes and his musical character trait. On summary judgment, the court found that Disney had established that ‘Olu Mel was first depicted with a ukulele—the primary manner in which the character’s musical character trait was expressed—in concept drawings in 2015, before plaintiffs’ Honu character was first depicted with a ukulele in April 2016. Although plaintiffs attempted to attack the credibility of Disney’s timeline, the court found that plaintiffs identified no specific facts that put credibility at issue so as to preclude summary judgment. 

The court further held that plaintiffs could not prevail by asserting that Honu had a “musical” character trait independent of the character’s depiction with a ukulele. Although the show Honu by the Sea was musical in nature, the character Honu did not appear in the show’s storyline and had no role that conveyed a musical personality until he was depicted with a ukulele. The court rejected plaintiffs’ argument that the use of the name “Honu” in the title of Honu by the Sea implied a musical character trait, noting that it simply means “turtle” in Hawaiian. And even if Honu’s blue eyes were an original element, that feature alone was insufficient to establish infringement, the court held. Thus, because the combination of Honu’s protectable elements had not been fixed in a tangible medium before Disney created ‘Olu Mel, the court held that plaintiffs’ copyright claim failed. 

As to plaintiffs’ unfair competition claim under Section 43(a) of the Lanham Act, the court held it was barred by the doctrine of laches. Enos first became aware of Disney’s turtle character in July 2018, when he was informed by two representatives of a Japanese entertainment company that Disney had released a blue-eyed turtle named ‘Olu (later, ‘Olu Mel) that resembled Honu. Despite this knowledge, plaintiffs waited five years to file suit, well beyond the three-year statute of limitations for fraud claims in California that courts look to by analogy in determining whether Lanham Act claims are timely brought in California. The court rejected plaintiffs’ argument that the clock did not start running until 2020, when Disney changed the character’s name from ‘Olu to ‘Olu Mel, noting that the name change had no bearing on the character’s design or creation. The court therefore held that plaintiffs’ delay was unreasonable.

In addition to the delay, the court found that Disney had suffered prejudice due to its substantial investment in expanding the ‘Olu Mel brand over the intervening period, including through the creation of new artwork, merchandise and character development. Applying the six-factor E-Systems test used to assess equitable considerations for laches defenses, the court concluded that at least four factors weighed in Disney’s favor: (1) plaintiffs’ asserted trademark was conceptually and commercially weak, as “Honu” simply means “turtle” in Hawaiian; (2) plaintiffs failed to diligently enforce their rights; (3) Disney acted in good faith in developing its own character; and (4) Disney incurred economic harm due to its reliance on plaintiffs’ inaction. Accordingly, the court held that the equitable balance favored Disney, and laches barred plaintiffs’ Lanham Act claim. Accordingly, the court entered judgment for Disney on all claims.

Summary prepared by Frank D’Angelo and Erin Shields