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

Introduction:

Once a beloved (and profitable) fictional character nears entry – in whole or in part – into the public domain, rights holders can look to other forms of intellectual property law to maintain exclusivity.

As discussed in Part I of this series, copyright law is the natural domain for the protection of fictional characters. However, the Constitution’s “limited time” restriction in the Copyright Clause eventually presents a major impediment to the exclusive use of copyright law to protect fictional characters. Sooner or later, all fictional characters enter the public domain – allowing other artists and third parties to use such material in creating derivative works.

There are, however, certain forms of intellectual property rights which can last in perpetuity if proper steps are taken, namely, trademarks (unlike copyrights which are restricted by the Constitution’s “limited time” restriction). In particular, trademarks – which can be Federally registered under Congresses Commerce Clause powers – which does not carry any durational element – can be particularly effective in protecting fictional characters long beyond the expiration of copyrights.

This article explores how rights holders can effectively use trademarks to maintain control over fictional characters after such characters have entered – in whole or in part – into the public domain.

Using Trademarks to Protect Public Domain Works:

One of the world’s most beloved children’s characters, which has long since entered the public domain, is the PETER RABBIT® character. This character first appeared in Beatrix Potter’s 1902 work The Tale of Peter Rabbit and later appeared in other works published between 1904 and 1912. As such, the U.S. copyrights in these works – and, consequently, in the PETER RABBIT® character itself – have been in the public domain for decades.

In a 1979 case concerning the PETER RABBIT® children’s book characters, the Court noted that the original works were no longer under copyright in the U.S. In that case, however, Frederick Warne & Co., Beatrix Potter’s publisher, tried to assert trademark rights in various elements – including in various illustrations of the PETER RABBIT® character. In that case, the Court explained that:

“The fact that a copyrightable character or design has fallen into the public domain should not preclude protection under the trademark laws so long as it is shown to have acquired independent trademark significance, identifying in some way the source or sponsorship of the goods. Because the nature of the property right conferred by copyright is significantly different from that of trademark, trademark protection should be able to co-exist, and possibly to overlap, with copyright protection without posing preemption difficulties.”

Frederick Warne & Co. v. Book Sales Inc., 481 F. Supp. 1191, 1196 (S.D.N.Y. 1979) (internal citation omitted).

This explanation makes intuitive legal sense. In copyright law, the government incentivizes artists to produce creative works by granting a temporary property right in such works. After a certain period of time, the works then enter into the public domain so that they may be freely used by others. For example, the Frederick Warne case makes it clear that third parties have a right to reprint those works written by Beatrix Potter.

Conversely, trademark law starts with elements already in the public domain (e.g., words, symbols, etc.). By virtue of use, such elements are, to some degree, “removed” from the public domain and become a property right as a policy tool used to protect the consuming public. For example, notwithstanding that certain works by Beatrix Potter were in the public domain, the Frederick Warne case held that it was possible for Ms. Potter’s characters – including certain character illustrations – to be protectable under trademark law.

In the Frederick Warne case, Beatrix Potter’s publisher prevailed – using trademark rights to stop a third party. As discussed more fully below, such cases have given guidance to many rights holders including Disney and Frederick Warne who have adopted aggressive trademark protection policies which make good use of Federally registered trademark rights.

Disney’s Trademark Registration Efforts

As discussed in Part I and Part II of this series, the copyrights in Disney’s MICKEY MOUSE® character as it appeared in the 1928 cartoon Steamboat Willie are scheduled to enter into the public domain on January 1, 2024. Taking a page from the Frederick Warne case, Disney has already engaged in considerable efforts to protect various aspects of its MICKEY MOUSE® character. Such efforts include:

protecting the words “MICKEY MOUSE” as a wordmark in numerous Federal trademark registrations;

protecting the “contemporary” MICKEY MOUSE® design as shown below:

such as securing Reg. No. 2704887 in Classes 016, 18, 20, 21, 24, 25, 28; and

protecting the “classic” MICKEY MOUSE® design as shown below:

such as securing Reg. No. 4436787 in Class 3; Reg. No. 3598848 in Class 9; Reg. No. 3580906 in Class 14; Reg. No. 3580905 in Class 16; Reg. No. 5027809 in Class 16; Reg. No. 3580904 in Class 18; Reg. No. 3587509 in Class 20; Reg. No. 3587508 in Class 21; Reg. No. 3587507 in Class 24; Reg. No. 3580903 in Class 25; Reg. No. 3619662 in Class 28; Reg. No. 4392451 in Class 28; Reg. No. 5027914 in Class 28; and Reg. No. 4475448 in Class 41; and

perhaps most creatively of all, Disney even registered a composite mark (Reg. No. 5464657 in Class 41) showing the “evolution” of the MICKEY MOUSE® character as shown below:

This approach is not new. For example, other well-known fictional characters which have – in whole or in part – entered into the public domain have similarly been protected through the use of various trademark rights.

As alluded to above, Beatrix Potter’s The Tale of Peter Rabbit – one of the most beloved children’s books of all time – was first published in 1902 and is currently in the public domain in the United States (as are many of her subsequent children’s books). Frederick Warne & Co., the original publisher of these books, has used trademark law to protect the various characters (and even, to some degree, the illustrations from the original books). For example, in addition to registering wordmarks such as PETER RABBIT (1097567), SQUIRREL NUTKIN (Reg. No. 5086871) and even BEATRIX POTTER (Reg. No. 1096096), Frederick Warne & Co. has successfully registered design marks including:

the Peter Rabbit character’s silhouette (Reg. No. 5794751) as shown below:

an illustration of the Benjamin Bunny character (Reg. No. 1136137) as shown below:

an illustration of the Jemima Puddle-Duck character (Reg. No. 5715685) as shown below:

an illustration of the Jeremy Fisher character (Reg. No. 1435531) as shown below:

an illustration of the Tom Kitten character (Reg. No. 1136142) as shown below:

and

an illustration of the Pigling Bland character (Reg. No. 1434736) as shown below:

As another example, the famous “ZORRO” character debuted in the 1919 novel The Curse of Capistrano written by Johnston McCulley. As such, this original novel has entered the public domain in the United States. Notwithstanding this, the ZORRO® character has been wisely protected by numerous trademark registration – covering both the word ZORRO® as well as:

an image of the masked ZORRO® character (Reg. No. 2697574) as shown below:

a silhouette of the ZORRO® character mounted on his trusted horse, Tornado (Reg. No. 2571279), as shown below:

and even

the stylized “Z” shape which the ZORRO® character famously carves into objects with his sword (Reg No. 2738098) as shown below:

Conclusion:

This series has explored how the marketing power of fictional characters such as MICKEY MOUSE®, PETER RABBIT®, SHERLOCK HOLMES® and ZORRO® has helped shape American copyright and case law. This series has also explored how rights holders can protect such fictional characters as – in whole or in part – such characters enter into the public domain using tools such as Federal trademark registrations.

If you or your company own rights in a fictional character which you would like to protect, license or defend, call us today for a free consultation.