Mickey Mouse and the Public Domain
This is the story of a man, a mouse, the law, and the internet. The term of copyright protection for Mickey Mouse will expire in five years: on January 1st, 2024. What does that mean for one of the most recognized characters in media?
The Man and the Mouse
The most famous rodent in the world was created in 1928 by Walt Disney and Ub Iwerks. Having lost their original animated star, Oswald the Lucky Rabbit, and most of the animating staff to Winkler Pictures, the then-struggling Walt Disney studios cast about for a new character to focus their animated shorts around.
What followed was a series of failed character designs by Iwerks and Disney, who came up with a number of animal concepts. Some of these characters, such as Clarabelle Cow and Horace Horsecollar, would appear in later Disney cartoons. Taking inspiration from an 1925 drawing of Disney surrounded by mice, Iwerks created the design for a character called Mortimer Mouse. Disney refined the sketch, and was convinced by his wife, the animator Lillian Marie Disney (née Bounds), to change the name to the friendlier Mickey Mouse. Mortimer Mouse would appear as his own character in a 1930s comic strip as a rival to Mickey.
Early 1928 was not a good time for the Young Walt Disney Studios. Having lost most of his staff to Winkler, the studio produced two cartoon shorts with a skeleton crew featuring Mickey: “Plane Crazy,” and “The Gallopin’ Gaucho.” Disney failed to find a distributor for the two films, and they were previewed only in very limited engagements. The small audiences were not thrilled with the shorts. Disney took a gamble with the third cartoon short: “Steamboat Willie” and added synchronized sound through a cinephone process that the businessman Pat Powers and his company Celebrity productions had stolen from a rival company. In the era of silent movies, many companies did not yet trust the new “talkies.” However, the success of the movie “The Jazz Singer” had started a movement towards movies with sound and voices. With this in mind Celebrity Productions took a chance and agreed to distribute the short.
Of course, Steamboat Willie was not of feature length. It did not receive top billing, but played ahead of the independent movie “Gang War”. Audience response to Steamboat Willie, the soundtrack, and the sounds and voices was overwhelmingly positive. Although it was not the first animated short to feature synchronized sound, it soon became the most well known, and started Disney on the path to international stardom. Both “Plane Crazy” and “The Gallopin’ Gaucho” were re-released, with sound, the following year. The use of sound again made a huge difference, and further cemented the character’s popularity. From that point on, Mickey Mouse would be forever linked to Disney; one could not exist without conjuring up the image of the other. The Disney company itself made this claim in the case Walt Disney Company v. Transatlantic Video Inc. (1991).
Eventually, the copyright term limit for Steamboat Willie approached. That’s when things got complicated.
Copyright law has existed in the US in various forms throughout the nation’s history. The earliest works featuring Mickey Mouse were created under the 1909 copyright act, which allowed for an initial period of protection for 28 years, and then allowed the option to renew protection for a further 28 years, for a total protected period of 56 years. Normally, individual characters cannot be copyrighted, however section 3 of the 1909 act does allow specific individual characters to receive their own protection as a “component” part of the original work. However, the term of protection for these individual characters is the same as the work that they originally appeared in. This means that, although the character of Mickey Mouse could receive his own protections under copyright law, his protections would expire in 1956 along with the rest of “Steamboat Willie,” if the copyright was not renewed.
Disney renewed the copyright to the original films in 1956, extending the protections for Mickey until 1984. However, in 1955, the United States became party to what was known as the Universal Copyright Convention. This was an agreement amongst the many United Nations that governed the way copyright was treated between the different countries. In addition, the US anticipated that it would also adopt the Berne Convention, another international treaty that governed copyright. To be in compliance with these agreements, the US slowly began to update its own copyright laws, culminating in the Copyright Act of 1976. The act itself became effective in 1978.
Under the 1976 Act, copyright protection would now last for the life of the author plus 50 years, or 75 years if the author was a corporation. The act also affected works created prior to 1978 by extending the renewed term’s protection from another 28 years to 47. Thus, if a work was created before 1978 and properly renewed after 28 years, it would enjoy a total period of 75 years of protection.
All of these numbers and math mean that in 1978 Disney’s copyright in Mickey mouse had been extended to 2003. This was good news for Disney, but they were already anticipating what would occur 25 years down the line.
In 1990, Disney began lobbying for further copyright extension. Disney was not the only company to do so, although it was most visible. The other companies included Time Warner, Universal, Viacom, the NFL, NBA, NHL, MLB, and several other entities and performers.
In 1998, congress passed the Copyright Term Extension Act (CTEA). The CTEA was also known as the Sonny Bono Copyright Term Extension Act, Sonny Bono Act, or by its detractors as the Mickey Mouse Protection Act. The supporters of the act argued that a person’s life expectancy had risen dramatically since the first copyright laws were created by congress, and it would be unfair if an artist lost control of his or her work during their lifetime. Perhaps more persuasively, the supporters argued that entertainment media had become a huge export to the rest of the world, and that a longer term of copyright protection would be very beneficial for the interests of the United States.
Under the CTEA, any works that were made after 1923, but were still protected by copyright at the time the act passed in 1998 would not lose their protection until January 1, 2019 at the earliest. In the case of Mickey, it added another 20 years on to his existing protection. Mickey would now not enter the public domain until January 1, 2024.
A small hiccup occurred during this time. In the 1990s, a Disney researcher named Gregory S. Brown discovered a problem with the original copyright notice on the title card of Steamboat Willie. The title card read: “"Disney Cartoons Present A Mickey Mouse Sound Cartoon Steamboat Willie A Walt Disney Comic by Ub Iwerks Recorded by Cinephone Powers System Copyright MCMXXIX." The problem with the notice, argued Brown, was that there were a total of three names before the word “copyright”: Walt Disney, Ub Iwerks, and Cinephone. Therefore, all three of the people or companies listed could lay claim to the copyright of the work. Under the very strict laws of the 1909 copyright act this could not be considered an effective copyright notice. Furthermore, under the 1909 act, when a copyright notice was improper the work would immediately lose any copyright protection and fall into the public domain.
After this discovery, several law students, most notably Lauren Vanpelt (whose research paper can be found at this link), performed research that supported Brown’s discovery. These research projects came to a halt when Disney threatened to bring suit for slander of title. Not wanting to risk litigation with the powerhouse entertainment company, the calls for Disney to relinquish title to their character ceased. Mickey Mouse was once again safely in Disney’s hands.
And then, the internet happened…
This author started his law school education in the summer of 2009. During my entertainment law classes, my fellow students and I repeatedly brought up the subject of Mickey, and postulated about when Disney would next attempt to extend the copyright term limits. After the CTEA in 1998, it seemed inevitable.
The next big push came in October 2011 when Bill 3261 was introduced in the US House of Representatives. This bipartisan bill came to be known as the Stop Online Piracy Act (SOPA). As originally proposed, the bill would allow copyright holders and the US Department of Justice to seek court orders against websites that were accused of facilitating copyright infringement. The act would even reach websites outside of US jurisdiction. The court orders could stop search engines from linking to any such sites, bar internet service providers to block access to such sites, and could prevent online advertisers from conducting business with them.
The bill increased penalties and expanded copyright offenses to include unauthorized streaming of copyrighted content. Unauthorized streaming would be criminalized under the bill and infringing sites would be shut down. Perhaps non-coincidentally, the popular file sharing Hong Kong-based website Megaupload was shut down by the Federal Bureau of Investigations in January of 2012, soon after the bill was proposed.
The bill was supported on both sides of the aisle in the House. Outside of congress, the bill was initially supported by a huge conglomerations of companies, which included: Disney, the MPAA, Microsoft, L’Oréal, Time Warner, Capitol Records Nashville, ESPN, Warner Music Group, and over 400 other organizations.
The battle lines for the bill were already forming five years earlier in 2007. At that time Disney and Microsoft were in the process of negotiating an agreement to not pursue Internet companies for infringement claims if their sites adhered to certain principles (see this link). Other parties to the agreement included NBC Universal, Viacom Inc., CBS Corp., News Corp.'s Fox and MySpace, Veoh Networks Inc. and Dailymotion SA. Although Google was in early talks to join this group, it ultimately declined
After SOPA was proposed, the internet sent a strong response. Google, the Wikimedia foundation, Yahoo!, Facebook, Twitter, AOL, LinkedIn, eBay, Mozilla Corporation, Mojang, Riot Games, Epic Games, Reddit, Reporters Without Borders, the Electronic Frontier Foundation (EFF), the American Civil Liberties Union (ACLU), the Human Rights Watch, and many other organizations voiced their opposition to the bill.
On January 18, Google, the english webpage of Wikipedia, and over 7,000 other websites participated in a service blackout in protest of the bill. Others protested with petition drives and boycotts of companies that supported the bill. The websites of companies that supported the bill were hit with directed denial of service attacks. The online group Anonymous claimed responsibility, stating that the attacks were in protest against SOPA, and for the closure of Megaupload.
Following the protest, many companies began to withdraw their support. Microsoft and Apple were some of the first to withdraw, spurring others in a hasty exodus. Complaints towards the bill centered around overreach, and a lack of transparency. Despite several attempts at revisions by its drafters, the bill died due to a sudden lack of support. The internet had triumphed. The effects of this victory would reverberate throughout the IP landscape for years to come.
Why did the SOPA bill fail where the CTEA succeeded? The internet made it possible to quickly organize and educate a huge number of people about the effects of SOPA. Google and Wikipedia alone reported views and signatures of over a hundred million during the coordinated blackout. This internet culture did not exist in 1998, when the internet was just beginning to find its feet. According to some copyright scholars (as seen in this article), the organized response to to SOPA had indicated that any future attempts to extend copyright protections would not succeed. It would be a waste of time to try. So, on January 1st, 2019, with nothing in the way, the works of 1923 fell into the public domain.
What does this mean for Mickey?
If no other attempt to extend copyright protection materializes, and the evidence indicates that it may not, then Steamboat Willie will become available for the public to use on January 1st, 2024. Sort of.
The Mickey that will enter the public domain on that future date is different from how he exists today. Today’s mickey has two round ears, red shorts with white buttons, large yellow shoes, white gloves on each hand, a flat oblong nose, and eyes with large whites and black pupils. The Steamboat Willie Mickey is in black and white, with two dots for eyes, no gloves, white shorts with white buttons, white shoes (still large), and a slightly longer and more angular nose. It is the Steamboat Willie Mickey, and only that version of the character, that the public may be able to use in 2024.
The name “Mickey Mouse” was registered as a Trademark by the Walt Disney Company in 1933. Unlike copyright protection, there is no term limit to trademark protection. It will last until Disney abandons the marks, which will likely never happen.
If you have read the “What is a Trademark?” Blog entry, also featured on this website, you will have learned that Trademark is designed to present consumers from being confused as to the source of a good or service. A trademark is supposed to tell a customer where the product is coming from. Because the phrase “Mickey Mouse” is registered by Disney, and has been used continuously by the company for almost 100 years, it has become strongly associated with that company, providing a very strong trademark for Disney.
Trademark may prevent users in the public domain from using the name Mickey Mouse. However, it is a question of law that is not yet settled. The 2003 case Dastar Corp. v. Twentieth Century Fox Film Corp. adds an extra wrinkle. In Dastar, The Supreme Court of the United States found that Trademark cannot prevent the republishing of works that had entered the public domain. However the facts of Dastar do not include using a character with a trademarked name. Ultimately, it is an unsettled question of law. This author predicts that the question will be settled by the courts soon after 2024.
At its most basic, Steamboat Willie’s transition to the public domain on January 1st, 2024 will mean the following:
Mickey Mouse, as he appears in Steamboat Willie, and only as he appears in that cartoon short, can be used by anyone.
It is unknown if everyone can make use of the name “Mickey Mouse.” Due to trademark protection. There will likely be one, if not several, cases regarding this soon after the 2024 date.
No one can claim that they are using Disney’s Mickey Mouse. Trademark protection of the word “Disney” will never stop.
Mickey will be the first character from popular fiction to enter the public domain in a long time. There, he will join the likes of Sherlock Holmes, Zorro, Robin Hood, King Kong, Hercules, Cthulhu, Dracula, and many others. Art is built upon the inspiration generated by past works. It will be fascinating to see what the world will make of Mickey Mouse.
If you have any further questions about copyright, trademark, the public domain, or any artistic or entertainment legal matter, feel free to contact the team at Start Art Legal. Jake and Matt can be reached at firstname.lastname@example.org or email@example.com, respectively. We will always respond to your questions.
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