'Don't mess with the mouse': Steamboat Willie, US copyright, and the public domain
There was a saying among US intellectual property practitioners: “As long as Mickey Mouse has value, copyright protections will be extended.” That saying was disproven when the US copyright registration for Steamboat Willie expired on January 1, 2024.
Mickey Mouse entered the public domain, marking the first time a major piece of IP owned by The Walt Disney Company has become open to the public. To understand the ramifications of this event, we need to examine how this happened, what this means, and how Disney can protect its valuable IP in the future.
The Walt Disney Company built its brand on IP and its value grew from that IP. So how did one of the most powerful media conglomerates in the world lose valuable IP protections? The short answer: the Constitution of the United States of America. US copyright is a specific constitutional protection. Furthermore, copyrights are only protectible for “limited times,” after which they pass into public ownership to ostensibly ensure the free flow of ideas and the development of additional artistic expression.
The US Congress codified copyright protections in law, and while those laws have been amended numerous times over the intervening years, the time limitation has remained sacrosanct. The last significant expansion of copyright terms occurred in 1998, and it was subject to such significant lobbying by Disney that it is often referred to as the ‘Mickey Mouse Protection Act’. This law extended copyright terms to the life of the author plus 70 years or, for works created on behalf of corporate entities, to 95 years after publication or 120 years after creation, whichever occurs first.
While legal experts widely expected a push for further copyright extensions, that never came to pass. From a purely practical perspective, Congress is a deeply dysfunctional body that can barely pass basic legislation to fund the continued operation of the federal government.
For the foreseeable future, copyrights will continue to expire. Notable examples range from Universal Picture’s Dracula to Superman will enter the public domain (in 2027 and 2034, respectively).
Is Steamboat Wille fair game? Not quite
In Disney’s case, it is important to note that the modern version of Mickey Mouse (the round, friendly mouse with red pants, yellow shoes, and white gloves) has not entered the public domain.
The copyright only expired for the version of Mickey Mouse that appears in Steamboat Willie (a more rat-like Mickey Mouse in black and white). Therefore, parties who want to use Mickey Mouse in their own works need to restrict their use to that version of Mickey Mouse. Any use of the modern design of Mickey Mouse will swiftly draw the ire of its famously protective owner. If we only examine copyright law in the US, it would appear that most uses of the Steamboat Willie version of Mickey Mouse are fair game to use in other expressive works (art, comic books, graphic novels, and even films).
However, IP in the US is protected by a complex web of rights. Copyright, trademarks, and patents all have their own specific scope of rights, but these rights bleed together at the edges. Copyright overlaps with trademark rights when the subject is a design or logo, and trademark overlaps with patents when the subject is distinctive product design and appearance.
One expiring protection does not terminate the others, particularly in the case of trademarks, which are perpetual as long as the trademark owner continues to use the trademark and file the necessary renewals. And that is where Disney is focusing its efforts to protect Steamboat Willie.
In the last few years, The Walt Disney Company adopted a new ‘title card’ for animated films. Pencil strokes on a page become Steamboat Willie, who dances and whistles merrily while the Walt Disney Animation Studios name appears beneath the snippet of animation. In perhaps the least surprising IP decision in the history of US IP law, The Walt Disney Company obtained a trademark registration for this sequence. This means that prospective use of Steamboat Willie runs the risk of violating Disney trademarks.
Mickey Mouse slasher movies?
Even if Disney fails to establish trademark infringement, owners of ‘famous’ trademarks can rely on other remedies, including trademark dilution. Trademark dilution takes place when the distinctive character of a famous trademark is impaired by unauthorised but non-infringing use. One potential example of dilution is Disney arguing that proposed Steamboat Willie horror movies tarnish the Disney brand by associating Mickey Mouse, a beloved icon of children’s entertainment, with bloody slasher movies.
There are potentially strong “fair use” defences, which act as a free speech ‘safety valve’ in copyright and trademark cases. However, the practical question is whether those who copy Steamboat Willie have the financial resources to stay the course and effectively assert those defences.
Knowing where we stand and how we got here is important, since the coming months and years will bring many more questions. What happens when trademark laws potentially interfere with the constitutional concept of the public domain? How strongly can IP owners continue to protect their creations? Where precisely is the line between artistic expression and branding? Is the public domain truly a boon for creators, or should the focus be on fostering original works rather than derivatives?
Perhaps the only certainty is that these questions will be answered in courtrooms in the near future. Will old IP aphorisms continue to be proven false, or will the cardinal rule of IP law in the US remain “don’t mess with the Mouse?”
Gavin Strube is an attorney-at-law at Greenspoon Marder.
