Will Disney Finally Allow Steamboat Willie to Set Sail into the Public Domain?
Walter Elias Disney (“Walt”), the co-founder and pioneer of The Walt Disney Company (“Disney”),[1] once stated that “[l]aughter is timeless, imagination has no age, [and] dreams are forever.”[2] Unfortunately for his company, creative works under copyright law are neither timeless, nor ageless, nor everlasting.[3] On January 1, 2024, Disney’s original depiction of Mickey Mouse will enter the public domain and will no longer be subject to copyright protection.[4] For decades, Disney has avoided the famous mouse’s copyright expiration.[5] Currently, Mickey has a brand awareness of 97% and generates $6 billion of annual revenue for the entertainment juggernaut.[6] However, the character’s prominence and importance to the company is invaluable—Mickey is Disney, and vice versa.[7] If the company proceeds to lobby Congress for new copyright duration legislation, they will face an uphill battle against political forces that did not exist when they succeeded in past attempts. Therefore, Disney’s actions in the coming months will likely predict the future of governing copyright law and, in effect, challenge the business side of society’s most profitable creative works.
In 1923, brothers Roy and Walt Disney formed Disney,[8] a studio tasked with creating short, animated films for its distributor, M.J. Winkler Productions.[9] Several years later, the production company’s head producer, Charles Mintz, approached Walt, asking the rather unknown 26-year-old to design a cartoon character for Universal Studios (“Universal”).[10] Walt agreed and, with the help of his chief animator Ub Iwerks, the pair designed Oswald the Lucky Rabbit.[11] Within a year, Oswald became a sensation,[12] and Walt immediately established himself as a successful animator in the film industry.[13] However, Walt was unaware that Disney’s contract with Universal stated that legal ownership of Oswald had been assigned to Mintz.[14] Subsequently, Mintz signed most of Walt’s animation team away from Disney, and Universal began creating additional Oswald films without Walt’s consent.[15] Stripped of his animators and lone creation, Walt vowed to “always make sure that [he] owned all rights to the characters produced by [his] company.”[16]
On November 18, 1928, Walt followed through with his pledge, as Disney debuted the high-spirited and mischievous Mickey Mouse[17] in the animated-short film Steamboat Willie. This rendition of Mickey was quite different from the character we are accustomed to today.[18] In 1928, Mickey Mouse was featured in black and white, was not wearing his hallmark white gloves, and was illustrated with simple black dots for eyes, as opposed to expressive pupils.[19] Within five years, Mickey was generating over $1 million per-year[20] in annual revenue for Disney[21] and quickly became the face of the growing company.[22]
U.S. copyright law provides exclusive rights to owners of creative works.[23] Some of the rights that are associated with such works include the right to reproduce, the right to make derivative works, and the right to distribute.[24] Yet, once that copyright expires, the work falls into the public domain, where others may practice those rights that were previously held exclusively by its owner. The Copyright Act of 1909 (“1909 Act”)[25] stipulated that creative works were entitled to up to 56 years of protection before they entered the public domain.[26] Mickey Mouse debuted in 1928,[27] under the 1909 Act, thereby entitling him to 56 years of protection. In accordance with this law, Disney’s copyright was set to expire 1984.
In 1976, just eight years before Mickey Mouse’s copyright expiration, Disney lobbied Congress to extend the current regime’s copyright duration.[28] These efforts resulted in Congress expanding the protection afforded to copyrights from 56 years to 75 years.[29] The extension also guaranteed that Disney would own the exclusive rights to Mickey Mouse’s copyright through 2003. However, in 1998, as Mickey’s expiration approached, Disney not only worried of losing the rights to its famed mouse, but to many of its other celebrated fictional characters as well. In addition to Mickey’s copyright expiration in 2003, Pluto’s expiration was set to occur in 2005, Goofy’s in 2007, and Donald Duck’s in 2009.[30] Unsurprisingly, Disney once again lobbied Congress for an extension.[31] This time, however, the Disney Political Action Committee (“DPAC”) contributed an exorbitant amount of money to those considering the bill,[32] so much so that many refer to the Copyright Term Extension Act of 1998 as the “Mickey Mouse Protection Act.”[33] On October 27, 1998, Congress finally passed the bill, thereby extending copyright protection for an additional 20 years.[34] Once again, Disney prevailed, and the corporation was guaranteed to hold Mickey Mouse’s rights through 2023, with its copyright expiring in 2024.
As 2024’s Public Domain Day[35] approaches, the DPAC may look to lobby Congress for yet another extension to the copyright duration laws.[36] Although relinquishing control of Mickey won’t likely cripple the $200 billion corporate behemoth,[37] Disney has a significant incentive for persuading Congress to implement a new extension, as the character is at the core of Disney’s business and represents everything that Walt wanted to portray—happiness, fun, dreams, and the ability to bring families together by evoking positive emotions.[38]
Yet, a debate exists as to whether Disney’s cajoling of copyright law serves any benefits to the public at large, or if it merely furthers the interests of the corporate sector at the expense of society’s creativity.[39] Those in favor of copyright extension argue that (1) lengthy copyrights are necessary to incentivize the type of creativity that the U.S. Constitution aims to promote,[40] (2) copyrighted works are an essential source of income to copyright owners and the public at large,[41] and (3) the copyright term should be elongated to reflect the increase in human lifespan since the original copyright bill was enacted in 1790, as its intention was to provide income for two generations of descendants.[42] Those against extensions argue instead that (1) they have limited—if not entirely squashed—the public’s freedom to make derivative works, (2) they allow companies like Disney to take advantage of expired copyrights without “paying into the system” with its own original characters, and (3) copyright owners tend to be large companies that may not even be descendants of the creative work’s original authors.[43]
Ultimately, Disney may not even attempt to convince Congress to amend the copyright laws. Whereas copyrights protect creative works from being used and copied by the public, trademarks protect “words, phrases and symbols used to identify the source of the products or services.”[44] Disney has registered nineteen trademarks on the words “Mickey Mouse” in a wide array of categories, ranging from cartoon strips, comic books and television shows to computer games and theme parks.[45] By owning the rights to these trademarks, Disney may be able to shield Mickey Mouse from public use even if its copyright enters the public domain.[46]
In Frederick Warne & Co. v. Book Sales Inc., the court held that a trademark can only protect a character in the public domain if the character obtained a “secondary meaning” in the market.[47] In other words, “one who encounters the character must immediately associate it with the source.”[48] Therefore, Disney’s trademarks would effectively prohibit anyone from using “Mickey Mouse” in such a way that suggests it came from Disney.[49] However, it seems that Mickey Mouse would easily meet this qualification, should he need to, as Mickey Mouse is engrained “so deeply in [Disney’s] corporate identity”[50] that there can be little doubt that anyone seeing the image of Mickey Mouse—or even his silhouette—immediately thinks of Disney.[51] An example of a character lacking a secondary meaning is “The Terminator.” Although the character is largely known by the public, most cannot immediately identify the company who made the movie.[52] Few characters will ever be famous enough to create a sufficient level of secondary meaning.[53] Therefore, Disney may be afforded legal protection of Mickey Mouse for eternity, so long as the company owns and renews its trademarks.[54]
It is important to note that in a 2003 decision, the Supreme Court cautioned against “misuse or over-extension of trademark and related protections into areas traditionally occupied by patent or copyright.”[55] The court further explained that if trademark law were to be used to restrict the republication of creative works, it would create “a species of mutant copyright law” that limits the public’s right to use and copy expired copyrights.[56] Therefore, while Disney may be afforded a heightened level of protection for Mickey Mouse because of the character’s secondary meaning, there is no guarantee that Disney would prevail if challenged in court.
Although many anticipate that Disney will lobby Congress for an extension, three of the country’s most powerful rights holder groups—the Motion Picture Association of America, the Recording Industry Association of America, and the Authors Guild—have already declared that they will not attempt to persuade Congress to pass legislation extending copyrights.[57] One explanation for their lack of interest is that times have changed. As opposed to two decades ago, there is now a “well-organized, grassroots lobby against copyright expansion,” there are “large business interests now on the anti-expansion side,” and there is a “wide popular movement that they can tie it into.”[58] Additionally, Disney has been recently criticized for its response to Florida’s “Don’t Say Gay” bill, which if signed into law, “seeks to prohibit teachers from discussing sexual orientation and gender identity with young students.”[59] When coupled together, these circumstances seem to place the media giant in a difficult position in attempting to convince Congress to once again pass copyright-extending legislation.
Assuming copyright law remains unchanged in 2024, the public will be able to create new stories based on the original Mickey Mouse.[60] However, the public will still be prohibited from creating derivative works that infringe upon the contemporary version of the character.[61] The modern rendition of the character that society has come to associate as “Mickey” first debuted in the 1940 film, Fantasia,[62] and will not be in the public domain until 2036.[63] Additionally, there are more than just two versions of Mickey Mouse, as the character has undergone many permutations over the decades.[64] Therefore, those who wish to capitalize on Mickey’s release into the public domain would be wise to proceed with caution.[65]
In the coming years, several iconic characters that helped shape the lives of so many will enter the public domain. In addition to Mickey, the public will soon enjoy the rights to reproduce, make derivative works, and distribute the likes of Winnie the Pooh, Pluto, Goofy, Donald Duck, and Mickey’s longtime sweetheart, Minnie Mouse, to name a few.[66] It will be legal to construct new creative works based on these characters and sell merchandise without the copyright owner’s authorization, provided those who do so carefully use only those elements that existed in the characters’ original incarnation.[67] Although it appears that Disney may finally surrender its rights to Mickey Mouse, the company’s political history, financial position, and influence on the U.S. Copyright Office all suggest that Walt Disney’s vow to “always make sure that [he] owned all rights to the characters produced by [his] company”[68] may come to fruition after all.
Footnotes
