Steamboat Willie: Mickey Mouse, Copyrights and Trademark Protection (Part II of III)
Introduction
With few exceptions, the most beloved fictional characters generally appear in multiple creative works. For example, the HARRY POTTER® character first appeared in the 1997 book Harry Potter and the Philosopher’s Stone, while the seventh and final novel of the series, Harry Potter and the Deathly Hallows, was published ten years later in 2007 (not to mention the HARRY POTTER® character’s subsequent appearances in various films, plays, video games, theme park attractions, etc.). As another example, the STAR WARS® franchise began with the launch of the first motion picture, A New Hope, in 1977, and is still continuing today with the creation of new film, television, literary and other media projects.
This common pattern of having fictional characters appear in multiple works spanning years – sometimes decades – raises interesting and important legal questions concerning the copyright status of many fictional characters. Most notably, issues arise when some – but not all – of the works in which a fictional character appears have entered the public domain while other works remain protected by copyright. This happens as, year by year, works enter the public domain – beginning with a character’s first appearance and sometimes taking many years for all of the related works (i.e., all subsequent character appearances) to enter into the public domain.
This article 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.
The (Copyright) Adventures of Sherlock Holmes:
One of the best examples of public domain / non-public domain copyright bifurcation of a fictional character comes in the form of Sir Arthur Conan Doyle’s famous detective Sherlock Holmes.
Traditionally, the “Canon of Sherlock Holmes” consists of 56 short stories and four novels written by Sir Arthur Conan Doyle which feature Holmes and his trusty sidekick, Dr. John Watson. The first of these works was published in 1887 while the last ten stories were published between 1923 and 1927. Thus, for the last 20 years, the American copyrights in the Sherlock Holmes character have been partially in the public domain and partially under the copyright ownership of Sir Arthur Conan Doyle’s estate, i.e., the “Conan Doyle Estate, Ltd.” (although, as of January 1, 2019, the 1923 work is believed to be in the public domain in the United States).
In the 2014 case, Klinger v. Conan Doyle Estate, Ltd., 755 F.3d 496, 500 (7th Cir. 2014), the Seventh Circuit Court of Appeals dealt with precisely this issue. In Klinger, the Plaintiff attempted to publish an anthology of stories written by modern authors inspired by, and in most instances depicting, the Holmes and Watson characters. In Klinger, the Court recognized that:
- the copyrights in 50 of the Sherlock Holmes works were in the public domain;
- the copyrights in 10 of the Sherlock Holmes works were then-owned by the Conan Doyle Estate;
- the Holmes and Watson characters – as they appeared in Conan Doyle’s first work published in 1887 – were distinctive and capable of copyright protection at one time;
- the Holmes and Watson characters – as they appeared in Conan Doyle’s works up to 1923 – were in the public domain; and
- only the additional features added to the Holmes and Watson characters post-1923 (i.e., in the 10 works which were protected by copyright as of the date of the Court’s opinion) were protected by the copyrights on those stories.
To help illustrate this point, the Court explained that “[o]nly in the late stories for example do we learn that Holmes’s attitude toward dogs has changed—he has grown to like them—and that Watson has been married twice.” Such character “developments” – while arguably thin – would presumably be subject to some form of copyright protection (while the overwhelming bulk of personality traits from the Holmes and Watson characters contained in the first 50 works would be in the public domain).
Critically, however, the Court took great pains to explain how any such “alterations” to the Holmes and Watson characters could not “revive the expired copyrights on the original characters.” In other words, a work enters the public domain based on when it was created / published and is not impacted by subsequent character development in later, derivative works.
The Final (Derivative Work) Problem:
Another important issue worth considering is that, merely because one or more works by an author have entered the public domain, does not necessarily mean that subsequent derivative works – including those by third parties – may not be subject to copyright protection.
Continuing with our example of Sherlock Holmes, we note that Sherlock Holmes appears to be the most portrayed literary character – having been depicted in film / television more than 250 times. Some of the film / television adaptations have likewise passed in the public domain – either by virtue of their age or by failure to comply with various statutory formalities. Other adaptations, however, such as the 2012-2019 Elementary series starring Jonny Lee Miller and Lucy Liu, will remain protected by copyrights for many decades.
This means that while certain elements of the Sir Arthur Conan Doyle’s original Sherlock Holmes character are part of the public domain – and may be freely adapted to film, television and other projects – other new elements, i.e., those introduced in subsequent, protected works, remain proprietary (such as, arguably, Lucy Liu’s portrayal of a female Dr. Watson).
As another example, Disney’s MICKEY MOUSE® character debuted in the 1928 cartoon Steamboat Willie (N.B. the MICKEY MOUSE® character first appeared in the screened but undistributed 1928 Cartoon Plane Crazy). As discussed more fully in Part I of this series, Steamboat Willie is scheduled to enter into the public domain on January 1, 2024. This means that others will be able to use the MICKEY MOUSE® character – although not the MICKEY MOUSE® brand (as more fully discussed in Part III of this series) – in creating new, derivative works.
That being said, while Sherlock Holmes was well developed after the first 50 works, the MICKEY MOUSE® character as it appeared in Steamboat Willie is a far cry from the now famous and more developed MICKEY MOUSE® character – many traits of which evolved in later appearances. As but one of many examples, it appears that it was not until 1929’s The Opry House that the MICKEY MOUSE® character first wore gloves or until 1935’s The Band Concert that the character first appeared in color.
While the MICKEY MOUSE® character as it appeared in Steamboat Willie may be scheduled to enter the public domain in the next few years, the fully formed elements of the character as they appear in, say, the 1940 film Fantasia, will remain protected for many years to come.
His Last Bow: A World Without A Public Domain?
One final, troubling thought is considering how the public domain will look in the distant future when copyright protection expires for today’s popular works. Unlike in the past, many of today’s most popular works are only exhibited to the public under license, e.g., on video-on-demand streaming platforms. Theoretically, such works could be protected by contract law indefinitely.
For example, as of this article’s writing, The Walt Disney Company is scheduled to release a new STAR WARS® television program called The Mandalorian on its Disney+ streaming platform. Suppose, hypothetically, that Disney only releases this program on steaming platforms (which license content without selling physical storage mediums such as DVDs or Blue-ray disks). The terms and conditions agreed to by subscribers of streaming services provides that subscribers have a license to view – but not to otherwise use – streamed content. Assuming such works are only ever made available under such terms and conditions, in some ways, while such works may become part of the public domain vis-à-vis copyright law, that will be irrelevant inasmuch as future artists will be unable to recycle film stills / clips without violating the contractual terms of the streaming platform. This is an issue with which future legislators will undoubtedly grapple.
In Part III of this series, we explore how rights holders can use other tools to protect their exclusive use of such fictional characters even after the characters have fully entered into the public domain.
