Mickey Mouse - Public Domain, Private Property, or Potential Pain Point?

As we usher in 2024, the new year brings an array of fresh starts, resolutions, and new beginnings. Perhaps this year’s biggest fresh start has been the resurgence of Disney’s Mickey Mouse.

 Despite arriving on the screen nearly a century ago, Mickey seems to have found renewed life in the works of graphic artists, animators, and content creators. Facebook, Instagram, X/Twitter, and TikTok are full of new images, drawings, and shorts eagerly reimagining this iconic character in numerous creative forms.

 After 95 years, Mickey Mouse needs no introduction. However, on November 18, 1928 the world met the lovable mouse for the very first time when Walt Disney released the short-animated film, “Steamboat Willie.” That film became an instant hit; as it was the first film to synchronize sound with animation. Since silent films were still prevalent in the late 1920s, it's unsurprising that the initial acclaim for "Steamboat Willie" centered on this groundbreaking use of synchronized sound – a significant technological feat for the time.

 However, the enduring legacy has no doubt been the introduction of the mischievous mouse. Mickey has served in many roles from steamboat pilot to sorcerer’s apprentice and most notably as the mascot of the Walt Disney Company. However, his prominence and longevity do not explain the new surge in public use of the character.

Let’s see what the news has to say:

With headlines like these many businesses may be thinking of capitalizing on a newly available icon. However, before approving that new ad campaign with Mickey Mouse endorsing your product or service – let’s make sure we understand the Public Domain.

What is the Public Domain?

To understand the Public Domain, we have to understand the basis of Copyright law in the United States. The Copyrights Act of 1976 superseded and updated the 1909 copyrights act. The updated Act was intended to make allowances for modern media. It also provided for important modern legal concepts such as the “fair use doctrine” (more on that later). However, if you go looking through the Act[1] hoping to find a definition of public domain you will be disappointed. It’s not there.

Instead, the Act informs us, “Copyright protection subsists, […], in original works of authorship fixed in any tangible medium of expression, now known or later developed…[2]” and “the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:[3]”

1. To reproduce

2. To prepare derivative works

3. To distribute copies – for sale or rental

4. (Where applicable[4]) to perform the work publicly

5. (Where applicable[5]) to display the work publicly

6. In the case of audio recordings, to perform the work by way of digital audio transmission.

Long story short, if you own the copyright, you have the sole and exclusive right to do the types of things that would allow you to profit off of your work. How does that help us understand Public Domain?

There is a legal maxim, “everything which is not forbidden is allowed.” So, it is with copyrights and the public domain. Rather than the law defining what may be done with non-copyrighted works the law limits only that which is copyrighted (or otherwise protected).

Consistent with this, the Legal Information Institute, a function of the Cornell Law School, informs us:

“The public domain includes every creative work that is no longer protected by a copyright, trademark, or patent. Creative works that are no longer protected are owned by the general public rather than the original creator. As such, the work is free to be copied, performed, or otherwise used by anyone [6].”

As legal definitions go, this is fairly straight forward. (1) If it is not copyrighted, it’s public. (2) If it’s public, the public can do what it wants.

So that’s it – case closed. Mickey Mouse is public domain which means “anyone” can “cop[y], perform[], or otherwise” the famous mouse.

I’ll just leave you with this AI image of the famous mouse as a lawyer.

Huh, well this doesn’t look anything like Mickey.

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If Mickey is public domain, then why is our preferred AI tool telling us it can’t make Mickey Mouse without violating “copyright policies?”  

Mickey Mouse is not public domain.

When Copyrights Expire –

To better understand why, we need to understand how Copyrights endure and expire. When “Steamboat Willie” was unveiled in 1928 the prevailing law on copyrights was the Copyrights Act of 1909. That act provided for copyright protection for 28 years from the date of publication. The act also provided that the initial copyright protection was extendable for an additional 28 years. Which allowed for Steamboat Willie to be copyrighted for 56 years from its initial release. However, under that standard Steamboat Willie should have entered the public domain no later than 1984 – which clearly didn’t happened.

This is because the Copyrights Act of 1976 superseded the older law. The 1976 Act was a fundamental reimagining of American Copyright law and it completely replaced the old 1909 law. Among the many changes, the new Act provided for different Copyright durations based on a variety of factors including the source of the work. While Mickey Mouse may be unequivocally associated with Walt Disney. The reality is Steamboat Willie was actually drawn by a man named Ub Iwerks.

“That’s a great fact for trivia night, but why does it matter here?”

The 1976 Act defines works made for hire as, “(1) a work prepared by an employee within the scope of his or her employment; or […][7]” Specifically, section 302 of the 1976 Act provides that, “Copyright in a work created on or after January 1, 1978, subsists from its creation […] (c) In the case of […] a work made for hire, the copyright endures for a term of seventy-five years from the year of its first publication…[8]”

 Mr. Iwerks was the chief animator of the fledgling Walt Disney Company. Therefore the act of drawing Steamboat Willie was “within the scope of his […] employment” and the ‘new’ 75 year copyright duration attaches. Most importantly, as the name implies, the new Act was enacted in 1976. This means the new 75 year standard was able to attach, 8 years before the Steamboat Willie copyright was initially expected to expire.

 Many lawyers will tell you – if they are being honest – that a contributing cause of their choice to pursue law was their poor skills in math. However, after consulting with our accountant we find that the ‘new’ 75-year standard means that instead of Steamboat Willie going public in 1984 (1928 + 28 +28), the short film would not reach the Public Domain until 2003 (1928 +75).

“But it’s 2024 not 2004.”

You are correct. However, as the late Billy Mays was known for saying, “But wait, there’s more!”

The Copyright Act of 1976 is still considered the prevailing law on Copyrights in the United States. However, pertinent parts of that law were amended by the “Copyright Term Extension Act of 1998.” The amendment left most of the law intact but – as applies to our subject today – it replaced the words “seventy-five” with “ninety-five.”

Even uneducated lawyers can do this math – 2003 plus 20 additional years gets us to 2023. As that year has recently expired so to – at long last – has the copyright on Steamboat Willie.

“Editor’s Note – The proximity of the passage of the 1998 amendment to the then rapidly approaching expiration of Disney’s subject copyright has led to this amendment being nicknamed, ‘The Mickey Mouse protection act.’”

It’s Mickey, just not the one you have at home –

“Isn’t Steamboat Willie about Mickey?”

Yes, but not the Mickey you know – at least not legally. The Mickey of Steamboat Willie has important – albeit sometimes nuanced – differences from the more modern iteration we see today. Far more artistic minds can discuss the variation in art style and animation methodology. However, an easy visual difference is the gloves – or lack thereof.

Whether Mickey Mouse is directing music or greeting you at Walt Disney World his bright white gloves are prominent. However, the steamboat Mickey is a working mouse and as such does not avail himself of the dress whites.

Only the steamboat Mickey is public domain.

What about:

Many readers have likely seen references like this one. The headline clearly states, “Mickey Mouse.” This creates understandable confusion. Is it Mickey? Is it fake news? A horror film isn’t even an animated film [9].

 To start sorting this out, let’s take a look at the upcoming horror film’s character:

When we compare this mouse-masked murderer to steamboat Mickey, the likeness is striking. The proportions of the head, the pupil-less eyes, long protruding nose, and flat black and white coloring. The horror film’s version is undoubtedly based on the Steamboat Willie version of Mickey. However, this attention to artistic detail is perfectly acceptable. Remember the Legal Information Institute informed us, “the work [once in the Public Domain] is free to be copied, performed, or otherwise used by anyone.” Subsequently, once the character has entered the public domain its likeness may be copied freely.

However, as “Mickey Mouse” is not Public Domain, it creates a trap for the unaware.

Some may be playing the short film as you read this. If you are, you no doubt noticed the initial introduction states: “Disney Cartoons presents, a Mickey Mouse sound Cartoon: Steamboat Willie.” We understand the confusion. Mickey Mouse is, after all, clearly identified, right at the beginning of the 7 minute 23 second short.

More Than One Means of Protection –

 The Walt Disney Company owns Trademarks on both the name Mickey Mouse and the appearance of modern iterations of the character. Trademarks differ in both form and function from Copyrights. The Legal Information Institute provides:

“A trademark is any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods [10].”

In contrast a, “Copyright is the exclusive legal right to reproduce, publish, sell, or distribute the matter and form of something.[11]”

Mickey Mouse has become the undeniable symbol of the Walt Disney Company. People flock to Disney resorts, theme parks, and cruises to have their picture taken with Mickey. His association with the enterprise is so prominent Disney became known as “the house of mouse.” As such it is no surprise Disney trademarked Mickey Mouse and his modern likeness just as most companies trademark their corporate logo or catch phrase.

Okay, Mickey is Trademarked. How long does that last?

 Unlike Copyrights, Trademarks in the United States are products of both Federal and State laws. As such companies may choose to register a Trademark under state law, Federally, or both. The predominant Trademarks at issue are Federal. These trademarks are governed by the Lanham Act.

 Originally enacted in 1946, section 1059 informs us, “each [Trademark] registration may be renewed for periods of 10 years[12].” As the Lanham Act does not limit the number of renewals, the Walt Disney Company will likely renew the trademarks on Mickey Mouse indefinitely.

Trademarks and Steamboat Mickey –

As we discussed above, the version of Mickey Mouse depicted in Steamboat Willie is distinct from the Mickey Mouse seen in common usage today. This is important because, the Lanham Act only allows an unlimited number of renewals if all the requirements are met.

 Unlike the general definition from the Legal Information Institute, the definition within the Lanham Act stipulates, “the term trademark includes any word, name, symbol, or device, or any combination there – (1) used by a person, or (2) which a person has a bonafide intention to use in commerce…[13]”

 That simple phrase, “use in commerce” makes all the difference. Section 1127 of the Lanham Act explains, “A [Trademark] shall be deemed to be ‘abandoned’ if […] its use [in commerce] has been discontinued with intent not to resume. […] Nonuse for 3 consecutive years shall be prima facie evidence of abandonment.[14]”

 “Woah woah. 2 solid paragraphs of legalese time to speak English.”

 Fair enough – To ensure the continuation of a trademark (or be eligible for renewal) the marks at issue, in this case the Steamboat Willie short film and its visual depiction of the Mickey Mouse character must remain in continuous “use in commerce.”  Breaking this down:

1. The name “Mickey Mouse” is “used in commerce.” It is eligible for trademark protection separate from copyright.

2. The modern depictions are “used in commerce.” They are eligible for trademark separate from copyright.

3. The name “Steamboat Willie” is not in commercial use. It is not eligible.

4. The steamboat depiction of Mickey is not in commercial use. It is not eligible to be protected by trademark in lieu of copyright.  

Acceptable Uses in the Public Domain –

 Do the recently announced productions fit with this legal landscape? It depends.

 The meme can speak for itself:

The producers of one upcoming horror adaptation assured reporters they are calling their film and main character “steamboat willie.” The use of that name is clearly within the allowances of the Public Domain. Assuming their visual depiction is in-line with the “steamboat Mickey” it should be fine.

 Another horror adaptation – and the source of the mouse-masked murderer shown earlier – is taking a hazier path. Their visual depiction of the character is in-line with “steamboat Mickey,” but they have elected to title their project, “Mickey’s Mouse Trap.” A quick Trademark search shows that “Mickey’s Mouse Trap” is not currently held by the Walt Disney Company. However, we’ll leave this at saying – Mickey’s Mouse Trap did not consult Moore Legal Counsel.

Risks of Use –

Both the Copyrights Act of 1976 and the Lanham Act provide for remedies in the case of violators. This is getting a bit long winded even for a law-blog so suffice to say the Copyrights act allows for:

1. Injunctive Relief – where a court orders the ‘violating party’ to cease what they are doing or face additional consequences; such as

2. Impound and Destruction – of whatever materials exist that violate the copyright (copies, etc.); and

3. Damages and Profits – this is legal speak for money. The courts can order a violator to turn over all profits acquired through copyright violation as well as charge the violator for monetary losses (damages) incurred by the copyright holder; which may include

4. Attorney’s Fees and Costs – that’s right the copyright holder can force the violator to pay for their cost of hiring attorneys to protect their copyright from that violator.

 Additionally, in some cases there may be “Statutory damages” which are monetary penalties defined by law and/or criminal penalties.

 How aggressive can a company be who’s mascot is a mouse?

We apologize, that was unprofessional. Let’s explain why the idea of the house of mouse being friendly to copyright violators is laughable.

A History of Avid Defense –

The Walt Disney Company – like many organizations with widely recognized intellectual property – takes protection of those intellectual properties very seriously.

Disney, and other studios, sued the content filtering service “VidAngel” and won a judgement of $62 million for copyright infringement[15]. What was the violation? VidAngel removed curse words, nudity, and other ‘objectionable content’ from dvd copies of the original films[16].

What about something less direct? Back in 1989 three daycares around Florida were sent cease and desist letters threatening legal action unless they disposed of murals which featured a few Disney characters[17].

More recently, Disney – through one of its agents – threatened legal action and charged an elementary school for showing “the Lion King” at a fundraiser. We suppose this is logical given the startling sum of $800.00 that was raised. No doubt displaying the live action remake helped inflate that sum greatly.

In that case, public outcry resulted in Disney’s then CEO Bob Iger apologizing. However, Disney has not changed policy and the lesson stands[18].

Intrude on Disney’s intellectual property and instead of a mouse-masked murder – you will face the wrath of the house of mouse legal team.  

What about Fair Use –

 "Fair use" is an important concept in both trademark and copyright law, but it operates differently in each context, and neither is a guarantee of protection.

Fair Use in Copyright Law –

In copyright law, fair use is a legal doctrine that permits limited use of copyrighted material without requiring permission from the rights holders. This is particularly important for purposes such as commentary, criticism, news reporting, teaching, scholarship, and research. [Such as writing an article in the Review to educate our readers, subscribers, and clients.]

The determination of fair use is based on a four-factor “balancing test:”

1. The Purpose and Character of the Use: This includes considering whether the use is of a commercial nature or nonprofit purposes. It also assesses whether the use is “transformative.” Uses which transform the original are more likely to be considered fair use.

2.  The Nature of the Copyrighted Work: This factor considers the work itself; for example, the use of factual or non-fiction material is more likely to be seen as fair use compared to creative works like fiction.

3.  The Amount and Substantiality of the Portion Used: Using a small portion of a work may favor fair use, especially if the portion used is not the "heart" of the work. However, this is no guarantee as even a small portion is sometimes considered critical.

4. The Effect of the Use on the Potential Market: If the new use could compete with the original or harm its market (actual or potential), this weighs against a finding of fair use.

Fair Use in Trademark Law –

 In trademark law, fair use refers to the use of a protected trademark in ways unlikely to cause confusion, mistake, or deception about the source of goods or services. Fair use as applies to Trademark Law is primarily one of two types:

1. Descriptive Fair Use: This allows a user to use a descriptive term, potentially protected as a trademark, to accurately describe the user's products or services, as well as the trademark owner's products or services. The key is the usage be descriptive rather in the normal form of the trademark.

2. Nominative Fair Use: This permits use of another’s trademark to refer to the trademark owner's goods or services, particularly for purposes of comparison, criticism, or reference. The use must be necessary to identify the goods or services, and the user must not imply sponsorship or endorsement by the trademark holder.

Suffice it to say, that while Fair Use is a defense to infringement in both copyright and trademark cases it is far from a guarantee of protection.

 As a defense, the burden is on the defendant – that is the alleged violator – to prove their use is Fair Use. As wordy as our description was, it’s important to recognize that is a summary of a very complicated and fact dependent analysis to determine application of the Fair Use doctrine.

Conclusion –

The expiration of the "Steamboat Willie" and steamboat Mickey copyrights allow for a version of a beloved character to have greater access in the marketplace. However, the character of Mickey Mouse, as a whole, remains under the tight control of The Walt Disney Company, safeguarded by both copyright and trademark laws.

The public domain status of "Steamboat Willie" allows certain uses of this specific version of Mickey, but any usage close to Disney's trademarked and modern iterations of Mickey Mouse could potentially lead to legal complications.

Disney's vigilant protection of its intellectual property rights, demonstrated through various legal actions over the years, should serve as cautionary tales. This highlights the need for creators and businesses to tread carefully when drawing inspiration from characters that, while somewhat public, may still be closely guarded by powerful corporate entities.

Just as the coders of our choice AI Image creator carefully instructed the algorithm “not to make Mickey Mouse” creators are advised to consult competent counsel before branching out to use Mickey Mouse or other protected or formerly protected intellectual properties in their marketing and business.

If you or your business have questions about protecting your intellectual property or making legal use of another’s property contact us today at: Info@MooreLegalCounsel.com.

Footnotes:

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[1] U.S. Code: Title 17 | U.S. Code | US Law | LII / Legal Information Institute (cornell.edu)

[2] 17 U.S. Code § 102 - Subject matter of copyright: In general | U.S. Code | US Law | LII / Legal Information Institute (cornell.edu)

[3] 17 U.S. Code § 106 - Exclusive rights in copyrighted works | U.S. Code | US Law | LII / Legal Information Institute (cornell.edu)

[4] Applies to: Literary, musical, dramatic, choreographic works, pantominmes, and motion pictures or other audiovisual works.

[5] Applies to all listed in footnote 7 plus: Pictorial, Graphic, Sculptural, and the individual images or frames of motion picture works.

[6] Public Domain | Wex | US Law | LII / Legal Information Institute (cornell.edu)

[7] Work Made For Hire - 17 U.S. Code § 101 - Definitions | U.S. Code | US Law | LII / Legal Information Institute (cornell.edu)

[8] Text - S.22 - 94th Congress (1975-1976): An Act for the general revision of the Copyright Law, title 17 of the United States Code, and for other purposes. | Congress.gov | Library of Congress (Emphasis Added).

[9] Mickey Mouse horror film unveiled as copyright ends (bbc.com)

[10] trademark | Wex | US Law | LII / Legal Information Institute (cornell.edu)

[11] copyright | Wex | US Law | LII / Legal Information Institute (cornell.edu)

[12] 15 U.S. Code § 1059 - Renewal of registration | U.S. Code | US Law | LII / Legal Information Institute (cornell.edu)

[13] 15 U.S. Code § 1127 - Construction and definitions; intent of chapter | U.S. Code | US Law | LII / Legal Information Institute (cornell.edu)

[14] 15 U.S. Code § 1127 - Construction and definitions; intent of chapter | U.S. Code | US Law | LII / Legal Information Institute (cornell.edu)

[15] VidAngel is Back: Disney Drops $62 Million Ruling - TechBuzz News - Utah Tech News

[16] EDITOR’S NOTE – This is an over simplification of the facts to save copy-space. Ultimately VidAngel and Disney settled in a way that essentially created a licensing scheme.

[17] Harvard Law IP expert explains how Disney has influenced US copyright law to protect Mickey Mouse and Winnie the Pooh - Harvard Law School | Harvard Law School

[18] Disney apologizes to school that was charged for showing 'The Lion King' | CNN Business

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