In the IP world, 2024 started with headlines that Disney’s Mickey Mouse (or at least a version of him) is now in the public domain. Two horror films and a video game about Disney’s famous icon were announced just days into the New Year. But what does it mean to say that a character has entered the public domain? And what can people do with Mickey that they could not do before?
Copyright and terms of protection
At the start of every year, works at the end of their copyright term enter the public domain (copyright protection terms run to the end of the calendar year in most jurisdictions). In fact, each year more and more well-known works lose copyright protection owing to the explosion in the arts during the early to mid-twentieth century. Disney went through a similar experience when copyright in A.A. Milne’s Winnie-the-Pooh books expired in January 2022. This character promptly featured in ad campaigns (including one by Ryan Reynolds for his mobile company) and movies (there was a 2023 horror film titled “Winnie-the-Pooh: Blood and Honey”), none of which were connected with or authorised by Disney.
Copyright is a statutory right that protects original literary, dramatic, musical, artistic and other types of works. It automatically comes into existence upon the creation of the work and it protects the expression of an idea (but not the idea itself). To qualify for copyright, the work must be original and exhibit a degree of labour, skill or judgement.
Copyright then exists in that work for a finite period of time – in the UK, the usual copyright term is 70 years after the end of the calendar year in which the author’s dies for written, dramatic, musical and artistic works, a term also in effect across the EU. Once that copyright period expires, it is said that the work has ‘entered the public domain’ because it is, from a copyright perspective, then free for anyone in the public to use as they wish (although whether or not this is actually true is discussed more below).
In relation to Mickey Mouse, the cartoon short film Steamboat Willie debuted in 1928 and depicted a black-and-white version of Mickey Mouse. In the US there are different copyright durations depending on whether a work is of “individual authorship” or is a “work for hire” (such as works created for a company by its employees). Prior to 1998, the term of copyright protection was 50 years plus the life of the author for works of individual authorship, and 75 years after publication or 100 years after creation for works for hire, whichever ended sooner. In 1998, after some degree of lobbying from copyright owners, the period of copyright protection for works for hire became 95 years from first publication or 120 years after creation, whichever ends sooner (works of individual authorship moved to 70 years plus life of author).This reform was disparagingly referred to by some commentators as the ‘Mickey Mouse Protection Act’, perhaps unfairly as many copyright owners were pushing for the changes, which were intended to bring the US more in line with Europe and other jurisdictions. However, it prompted a Supreme Court case and some degree of popular dissent, with “Free the Mouse” bumper stickers appearing across the US at the time.
Hence, at the start of 2024, the copyright in Steamboat Willie (a work for hire) expired in the US, which included the copyright in the depiction of Mickey Mouse in that film.
Whilst a work is in copyright (i.e. within the copyright term) the owner of copyright holds the exclusive right to copy, distribute, perform publicly, make an adaptation of, or display that work (e.g. on the internet), or licence others to do so, amongst other rights.
Various copyrightable elements can exist in one work. In Steamboat Willie, copyright subsisted in the artistic appearance of Mickey Mouse, other characters and the background etc, as well as the accompanying music (the film being the first animation to feature synchronised sound). If it featured any dialogue, the script too could have been protected as a literary (written) work.
However now that this is out of copyright, this means that Disney no longer has the exclusive right to commercialise the elements of Steamboat Willie in which copyright subsisted.
What can be done with Mickey Mouse now?
It is common to see an increase in usage of characters and stories from popular works once copyright expires, as seen with Winnie the Pooh.
Does this mean that anyone can now sell their own Mickey Mouse merchandise? Well yes, and no. Only the specific rendering of Mickey Mouse, as used in Steamboat Willie, has lost copyright protection. The more modern depictions of him, introduced after 1928, are still within their term of copyright. Similarly, in January 2022, the public could freely use the original line drawings from A.A. Milne’s Winnie-the-Pooh books, illustrated by E.H. Shepard, but not the more modern Disney interpretations of the character (i.e. the one wearing the red shirt) used in the Disney films.
Moreover, Disney also holds a number of rights in relation to Mickey Mouse and its associated brand. For example, Disney owns registered UK trade marks over the name MICKEY MOUSE in various classes of goods and services including movies and printed publications. In 2007, Walt Disney Animation Studios redesigned its corporate logo to incorporate the “Steamboat Willie” mouse; this logo is also subject to trade mark protection. Trade marks, unlike copyright, can exist indefinitely provided that renewal fees are paid. Similarly, other causes of action like passing off and the consumer protection laws would prevent third parties from selling goods that try to make an association with or endorsement by Disney.
For example, the aforementioned “Winnie-the-Pooh: Blood and Honey” horror movie intentionally used hyphens in the name. Disney owns registered trade marks in the UK for WINNIE THE POOH (without hyphens) – Disney had actually removed the hyphens when it acquired the rights from the author A.A. Milne. Whether or not this strategy to remove the hyphens by the producers of the 2023 horror adaptation would be effective to avoid trade mark infringement is not so clear, as trade mark law protects identical or confusingly similar uses of the trade mark. The movie was also however of a kind that the public would be less likely to believe was authorised by Disney.
Exceptions to copyright infringement
It is important to remember that copyright only protects the expression of an idea. It does not cover the idea of an anthropomorphic animal, or the plotline of movies or books. Even before the expiration of the copyrights discussed above, anyone could create a story based on a talking bear or humanoid mouse, within the limits discussed earlier.
Furthermore, before copyright expiration, third parties can use copyrighted material provided that such use is covered by certain exceptions governed by law. For example, in the UK, this would include using the work for research or educational purposes, criticism and news reporting, or for caricature, parody or pastiche, and others. Similarly, Article 5(3)(k) of Directive 2001/29/EC in the EU provides for similar exceptions to copyright infringement.
US law provides a ‘fair use’ defence for copyright infringement, where fairness is to be considered in light of the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the work used, and the effect of the use on the market value of the original. The US Supreme Court recently opined on this defence in the case of Warhol v Goldsmith, which looked at the use of a photograph of the musician Prince, taken by Lynn Goldsmith, in an artwork produced by the pop artist Andy Warhol. In brief, the Supreme Court found against Warhol on the first factor of the fair use test (which was the only factor under appeal).
Mickey Mouse himself had been used in contemporary art even before the expiration of copyright this year, for example by Warhol himself (who produced a number of ‘Quadrant Mickey Mouse’ paintings depicting, as the name suggests, four repetitions of Mickey’s image in a grid), by Damien Hirst (in disembodied form), and in the haunting portrayals by Joyce Pensato. While the Hirst interpretations were commissioned by Disney in 2016, it is unknown whether Warhol sought Disney’s approval for the Mickey Mouse paintings and, applying the findings of the Supreme Court in Warhol v Goldsmith, it seems that at least the first element of the ‘fair use’ defence would be found in Disney’s favour.
Conclusions
The fascination in famous works entering the public domain presents opportunities as well as risks. It is important to identify in what works copyright has actually expired, and in what works (such as derivatives or modern reinterpretations) copyright still subsists.
When using images of well-known characters, care must be taken not to create an association with the former rights holder, and disclaimers could be considered to dispel any notion that the use is sponsored or endorsed by or otherwise connected to them. Although truly outlandish extensions of the brand, like in the aforementioned horror films and their adoption of otherwise family-friendly content, probably need no disclaimer.
Finally, attention must also be paid to trade marks and other rights that may still exist over the work or image.
As a rights holder, the focus on the public domain should act as a reminder that, one day, copyright in works will end and strategies should be developed to manage this – including, for example, filing trade mark applications to protect valuable works (if possible), and possibly introducing new character elements / characters over time which could reset the period of expiration.
Vigilance in monitoring for IP infringement does not end simply because copyright does.
For further information, please contact:
George McCubbin, Partner, Herbert Smith Freehills
george.mccubbin@hsf.com
