Intellectual Property Attorney

Steamboat Willie: Mickey Mouse, Copyrights and Trademark Protection (Part I of III)


2019 has been an important year in copyright law; marking the first time in more than twenty years that copyrighted works have entered the public domain in the United States – in this case, works published in the United States in 1923. The history of this twenty year “gap” in the entry of works into the public domain is largely attributable to one fictional character: MICKEY MOUSE®.

Part I of this series explores how one anthropomorphic mouse singlehandedly changed American copyright law and delayed the expiration of certain copyrights for twenty years.

Part II of this series explores the nuances involved in copyright law when a fictional character appears in several works – some of which are in the public domain and some of which are not.

Finally, Part III of this series explores how the Walt Disney Company has been taking deliberate steps to protect its MICKEY MOUSE® character indefinitely – and how other rights holders can use similar methods to do so as well for their characters.

When Do Copyrighted Works Enter the Public Domain?

As any intellectual property attorney can attest, determining the copyright term for a particular work or whether a particular work is in the public domain are some of the most nuanced areas of intellectual property law.

These issues also carry high liability to reward ratios for entrepreneurs. Reprinting or otherwise copying a work believed to be in the public domain (but later found to be under copyright protection) can be devastating – creating a longtime liability (copyright infringement has a 3 year statute of limitations under 17 USC § 507). Entrepreneurs wishing to copy a work believed to be in the public domain would be well served by engaging counsel to research and render an opinion on the copyright status of such work.

Similarly, it is also worth noting that rendering such opinions can carry a high liability to reward ratio for intellectual property attorneys. For example, it may only take an hour or two of time to research and opine upon whether a work is in the public domain – resulting in relatively little billings. However, if there is any mistake in the opinion, the attorney could be exposed to a high degree of liability. This, in part, explains why non-intellectual property attorneys so often refer copyright evaluations to more experienced intellectual property attorneys.

The Cornell University Library’s Copyright Information Center has compiled a helpful chart showing how the copyright terms of a work vary depending on when, where and by whom such works were created / published. As can be readily seen from the chart, copyright term calculation is not for the faint of heart. In large part, determining the term of copyrighted works is challenging because U.S. Copyright laws are a decades-old “patchwork” of legislation which was largely created to benefit certain special interests. Perhaps nowhere is such a lobbying-driven “patchwork” as clear as in the legislative successes of the Walt Disney Company.

Disney’s Lobbying Efforts:

Under the original Copyright Act of 1976, many works first published in the United States in 1923 were scheduled to enter the public domain in 1999 – after enjoying a term of 75 years. However, the Sonny Bono Copyright Term Extension Act, 112 Stat. 2827 – pejoratively known as the Mickey Mouse Protection Act – extended this 75 year term for an additional twenty years. The Walt Disney Company reportedly lobbied hard for this extension – with Walt Disney’s then-chairman, Michael Eisner, even personally meeting with then Senate Majority Leader Trent Lott to advocate in support of this legislation.

Why did Disney take such an interest in copyright law? While Disney owns many valuable copyrights (all of which benefited from this extension), one property in particular was seen as especially important: Disney’s MICKEY MOUSE® character.

Debuting in the 1928 cartoon Steamboat Willie, the MICKEY MOUSE® character has become a cultural icon and the mascot of the Walt Disney Company. Prior to the Sonny Bono Act, the copyrights covering Steamboat Willie were scheduled to enter into the public domain in 2004. By successfully lobbying for an extension, Disney was able to protect its copyrights in Steamboat Willie until January 1, 2024.

Future Copyright Extensions?

With the public domain clock “ticking” once again – and the Steamboat Willie copyright expiring in only a few short years – the question naturally arises whether Disney and/or other rights holders may again try to lobby for an extension of the copyright term.

Spokespersons for the Recording Industry Association of America (“RIAA”) and the Motion Picture Association of America (“MPAA”) recently confirmed to Ars Technica that no such efforts are underway. In the case of the RIAA, the spokesperson went even further and reportedly said that “it’s not something we are pursuing”. This appears to be a reflection of a perceived increase in both public awareness regarding copyright laws and public discontent with further industry protections.

Additionally, our firm suspects that there may be deeper Constitutional concerns surrounding a further extension of copyright terms. Article 1, Section 8 of the U.S. Constitution provides that: “Congress shall have Power … [t]o promote the Progress of Science … by securing [to Authors] for limited Times … the exclusive Right to their … Writings.” In 2003, the U.S. Supreme Court upheld the Constitutionality of the Sonny Bono Act – finding that the twenty year extension did not cross “a constitutionally significant threshold with respect to ‘limited Times’”. Eldred v. Ashcroft, 537 U.S. 186, 189, 123 S. Ct. 769, 772–73, 154 L. Ed. 2d 683 (2003). That being said, we suspect that, at some point, further copyright term extensions would cross such a “threshold.” Perhaps rights holders are hesitant to “push their luck” – preferring instead to rely on other, potentially perpetual techniques as discussed in Part III of this Series.

Next: Part II of this series explores what happens when a fictional character appears in several works – some of which have entered the public domain.

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