Mickey Mouse enters the Public Domain – the End of a Cultural Icon?

I. Introduction

Many would be familiar with Walt Disney Studios as one of the greatest pioneers of modern animation. From the creative minds of these famed studios has sprung characters that we have all come to know and love – indeed, from the whimsical Mickey Mouse, his beloved dog companion Pluto, and the iconic Disney Princesses, these characters and more have brought audiences of multiple generations through a fantastical universe of movies, theme parks and the like, with Mickey Mouse as its most endearing and emblematic centrepiece.

It is therefore unsurprising that the recent expiration of the Mickey Mouse copyright (more specifically, the expiration of the copyright in the film “Steamboat Willie”, in which Mickey Mouse first made its debut) on 1 January 2024 has generated considerable public interest.  Whilst Disney is renowned for its vigorous approach in protecting and enforcing the Mickey Mouse intellectual property, ^[1] many are understandably wondering if the floodgates have finally been opened for third parties to use the “Steamboat Willie” version of Mickey Mouse, now that it has finally entered the public domain. Disney insists that it will “continue to protect [its] rights in the more modern versions of Mickey Mouse… that remain subject to copyright, and… will work to safeguard against consumer confusion caused by unauthorised uses of Mickey…”^[2] What, then, does this mean for Disney’s future strategy over the protection of copyright in Mickey Mouse?

This article delves into the history and impact of Mickey Mouse on the development of copyright law, and considers whether the Disney’s strategy of aggressively protecting the artistic depiction of Mickey Mouse would be feasible, given advancements in modern-day technology and innovation.

II. Hurdles Abound in the Copyright Protection of Mickey Mouse

It was in November 1928 when Mickey Mouse first made his debut in the iconic film “Steamboat Willie”, which is lauded as “a landmark in the history of animation” for being one of the first cartoons to feature synchronised sound, ^[3] heralding a new epoch of technology in animation.  Ninety-five years later, on 1 January 2024, the Mickey Mouse from “Steamboat Willie” finally entered the public domain along with the expiry of the film’s copyright.

As many in the copyright community would appreciate, the momentous significance of the expiry of the 95-year long copyright in “Steamboat Willie” is undergirded by the fact that Disney had previously fought an arduous and decades-long battle to keep Mickey Mouse out of the public domain.

At the time of Mickey Mouse’s inception in 1928, the prevailing copyright legislation in the U.S. was the Copyright Act 1909, which allowed for works to be copyrighted for a period of 28 years from the date of publication (or registration, as the case may be), with a renewal option of a further 28 years (i.e. a maximum of 56 years). ^[4]  After the passing of the Copyright Act 1976, the renewal term for works which had been copyrighted before 1978 and which had not yet entered the public domain was extended from 28 to 47 years (extending the maximum copyright duration from 56 years to 75 years). ^[5]  This meant that the “Steamboat Willie” copyright would now expire in 2003.

In the 1990s, Disney would gain a widespread reputation for its lobbying efforts, ^[6] so much so that the passing of the Sonny Bono Copyright Term Extension Act in 1998, which would extend the copyright in “Steamboat Willie” for a further 20 years (i.e. up to 2023), would come to be colloquially dubbed the “Mickey Mouse Protection Act”. As Professor Jennifer Jenkins opines, Disney has certainly played a prominent part in the legislative process, with the recent expiry of the “Steamboat Willie” copyright having drawn the attention of the public to the lifecycle of a copyright. ^[7]

Apart from the well-publicised extensions to the “Steamboat Willie” copyright term, many in the intellectual property community would also be familiar with Disney’s equally robust approach to protecting its copyrighted and/or trademarked characters, with several high-profile cases emerging over the years.

Of particular note is the landmark decision of Walt Disney Prods. v. Air Pirates, 581 F.2d 751 (9^th Cir. 1978) (“Air Pirates”), where the Ninth Circuit Court of Appeals held that Mickey Mouse as a cartoon character enjoyed copyright protection, distinguishing Mickey Mouse from prior decisions suggesting that literary characters were ordinarily not copyrightable, reasoning that “a comic book character, which has physical as well as conceptual qualities, is more likely to contain some unique elements of expression”.

In the subsequent case of DC Comics v Towle, 802 F. 3d 1012 (9^th Cir. 2015) (“DC Comics”), the Ninth Circuit, applying Air Pirates, held that the ‘Batmobile’, a fictional vehicle, qualified as a ‘character’ for the purposes of copyright protection. As the Court explained, “copyright protection extends not only to an original work as a whole, but also to ‘sufficiently distinctive’ elements, like comic book characters, contained within the work”.  Thus, the Court held that DC Comics owned the copyright to the Batmobile character as it appeared in the 1966 television series and 1989 motion picture, and allowed DC’s claim in copyright infringement on the basis that the defendant’s production and sale of unauthorised Batmobile replica cars infringed DC’s exclusive right to produce derivative works of this character.

In another case, Walt Disney Co. v. Powell, 698 F. Supp. 10 (D.D.C. 1988) (“Powell”), Disney commenced an action in both copyright and trade mark infringement against a vendor who had printed and distributed infringing Mickey Mouse t-shirts and sweatshirts. The district court awarded damages in respect of copyright infringement and ordered an injunction against further copyright or trademark infringement. The case aptly demonstrates the capability of Mickey Mouse to function as not only a copyrightable character, but a trademark with a source identifying function. Due to the ubiquity and popularity of Mickey Mouse, the public came to associate Mickey Mouse as a badge of origin of Disney itself, making Mickey Mouse eligible for trademark protection despite being initially protected only by copyright. This trademark-copyright overlap has some profound implications, which we elaborate below.

III.  The Implications of Innovation in the future depictions of Mickey Mouse

Whilst the copyright in “Steamboat Willie” has finally expired, a caveat still holds – the iteration of Mickey Mouse which has entered the public domain is the Mickey from “Steamboat Willie”: a primitive, black and white, adorable mouse shaped character, and not the distinctive red shorts, large yellow shoes, and white gloves Mickey which modern audiences are likely to associate with Mickey Mouse. These are potentially different and original adaptations of Mickey Mouse to which a fresh term of copyright would accrue upon authorship. Disney therefore continues to arguably hold copyright over these newer iterations of Mickey Mouse.

Nevertheless, according to the three-part test propounded by the Court in DC Comics, to be copyrightable, a character must (i) have both physical and conceptual qualities, (ii) be sufficiently delineated to be recognisable as the same character whenever it appears, and (iii) be especially distinctive and contain some unique elements of expression. At the same time, a character need not always have a consistent appearance in every context, so long as it has distinctive character traits and attributes. In other words, if a new version of Mickey Mouse is created containing minor and non-distinctive alterations, this may not be sufficient in itself to ‘refresh’ the copyright.  Conversely, a putative infringer who tweaks minor details of a character but nevertheless copies its most distinctive attributes may still attract liability for copyright infringement. Under Singapore law, copying in relation to a (qualitatively) substantial part of a work is potentially sufficient for copyright infringement liability.  Putative users should bear this in mind to avoid potential liability in respect of modern iterations of Mickey Mouse which are still copyright protected.

Another facet to the discussion is that unlike copyright, trademarks can potentially last indefinitely so long as the proprietor continues to renew the registrations, subject to continued genuine ‘trade mark’ use.  Since Disney continues to own trademark rights in the “Steamboat Willie” Mickey Mouse (including several registered trademarks in Singapore), Disney can still control its use as a trademark, which may deter third parties from exploiting the “Steamboat Willie” Mickey Mouse notwithstanding its entry into the public domain. A putative infringer may continue to be liable under trademark laws for using the “Steamboat Willie” Mickey Mouse in such a way as to cause consumer confusion (e.g. printing Mickey Mouse t-shirts). In the Singapore context, it is also noteworthy that well-known trademarks to the public at large are afforded additional protection, potentially allowing Disney to enforce its rights without requiring proof of confusion (i.e. the anti-dilution right under sections 27(3) and 55 of the Trade Marks Act). As explained by Parliament, “there can be situations where the reputation and value of the well-known mark is diluted by blurring or tarnishment, even though there may not be consumer confusion, for example, if someone uses a well-known mark on inferior quality goods or on goods, say of an obscene nature…”^[8] This may well prove to be a strong weapon in Disney’s arsenal against putative infringers in Singapore.

IV.  The Impact of Technology on Character IP Protection

Given modern advances in technology, companies now have more tools at their disposal to infuse their created fictitious characters with complex and distinctive qualities. Unlike “Steamboat Willie”, which featured a black-and-white Mickey Mouse, modern characters are fleshed out in impressive and lifelike detail. For example, Riot Games, developer of the popular multiplayer online battle arena game League of Legends, has released fully fledged spinoff novels, music videos, albums, and even television series such as the Netflix hit ‘Arcane’, featuring its iconic characters. From a legal perspective, these details may be the subject of several discrete forms of creative expression and companies will thus be required to adopt an increasingly complex and nuanced approach to IP protection.

Further, it is now not uncommon for franchises to focus on developing a suite of iconic characters (as compared to Disney’s efforts in the early days, where a small number of characters have developed global renown).  Where a business is dealing with several potentially protectable characters, it may have to consider which are its most significant or important and consider applying for trademark protection for those characters, in more than one depiction or costume. Take, for example, the universe of Pokémon, which now number in the thousands and continues to expand with each new release. Nevertheless, Nintendo has done well to focus its resources on a select few iconic Pokémon, such as Pikachu and Eevee, by heavily skewing its marketing efforts in respect of these characters and obtaining registered trademark protection in respect of the same.

V.  Concluding Remarks

Locking up copyright forever chafes against the spirit of intellectual property law. As stated by the Singapore Ministry of Law and the Intellectual Property Office of Singapore, placing works into the public domain “add[s] to the store of public knowledge, scholarship, and allows users to build upon those works”. ^[9] Indeed, many Disney creations have utilised public domain works and ideas over the years.  Disney’s first full-length cartoon, “Snow White and the Seven Dwarfs”, was based on a Brothers Grimm fairy-tale that was already in the public domain. ^[10] The hit-movie “Frozen”, was based on the fairytale “The Snow Queen”, a work by Hans Christian Anderson from the public domain. ^[11] Reportedly, even “Steamboat Willie” itself had incorporated the folk song “Turkey in the Straw”, which was in the public domain at the time of Mickey Mouse’s inception. ^[12]

 Given the above, does Mickey Mouse now truly belong to the “public domain”, or is this merely a misnomer, conferring a false sense of security to would-be infringers? Within just 24 hours from the expiration of the “Steamboat Willie” copyright, various creations have already emerged, such as a Mickey Mouse horror film, ^[13] and it is likely that more adaptations and reimaginations are to come. Perhaps the fate of other star-studded characters who also entered the public domain, such as Winnie-the-Pooh in 2022, ^[14] may provide a sense of the potential implications, as “Winnie-the-Screwed”, a 2022 advertisement by Ryan Reynolds co-opting the public domain Winnie-the-Pooh, has thus far managed to avoid a legal challenge.

AUTHOR INFORMATION:

Dr Stanley Lai, SC is a Partner at Allen & Gledhill, where he is also the Head of the Intellectual Property Practice and Co-Head of the Cybersecurity & Data Protection Practice.
Email: stanley.lai@agasia.law

David Lim is a Senior Associate in the Intellectual Property Practice of Allen & Gledhill.
Email: david.lim@agasia.law

Linda Shi is an Associate in the Intellectual Property Practice of Allen & Gledhill
Email: linda.shi@agasia.law

Justin Tay is an Associate in the Intellectual Property Practice of Allen & Gledhill.
Email: justin.tay@agasia.law

* The authors would like to thank Marcus Ho, a practice trainee at Allen & Gledhill, for his assistance in the production of this article.

REFERENCES

[1] https://www.nytimes.com/2024/01/01/arts/public-domain-mickey-mouse.html (accessed 10 January 2024)

[2] https://www.businesstimes.com.sg/lifestyle/mickey-mouse-horror-films-announced-disney-copyright-expires (accessed 10 January 2024).

[3] Museum of Modern Art, https://www.moma.org/collection/works/302797 (accessed 5 January 2024).

[4] https://www.copyright.gov/circs/circ15a.pdf (accessed 10 January 2024).

[5] United States Copyright Office, General Guide to the Copyright Act of 1976, https://www.copyright.gov/reports/guide-to-copyright.pdf (accessed 5 January 2024).

[6] Alan K. Ota, Disney in Washington: The Mouse That Roars, https://edition.cnn.com/ALLPOLITICS/1998/08/10/cq/disney.html (accessed 5 January 2024).

[7] Jennifer Jenkins, Mickey, Disney, and the Public Domain: a 95-year Love Triangle, https://web.law.duke.edu/cspd/mickey/ (accessed 5 January 2024).

[8] The Second Reading of the Trade Marks (Amendment) Bill (No 18/2004) on 15 June 2005: Singapore Parliamentary Debates (vol 78, Sitting No 1) at column 112.

[9] Singapore Ministry of Law and the Intellectual Property Office of Singapore, Singapore Copyright Review Report, [2.3.5], https://www.mlaw.gov.sg/files/news/public-consultations/2021/copyrightbill/Annex_A-Copyright_Report2019.pdf (accessed 5 January 2024).

[10] J.B. Kaufman, Snow White and the Seven Dwarfs, https://www.loc.gov/static/programs/national-film-preservation-board/documents/snow_white_dwarfs.rev.pdf (accessed 5 January 2024).

[11] Ibid.

[12] https://hub.jhu.edu/2024/01/02/mickey-public-domain-copyright-holders/ (accessed 10 January 2024).

[13] The Straits Times, Mickey Mouse Horror Films Announced as Disney Copyright Expires, https://www.straitstimes.com/life/entertainment/mickey-mouse-horror-films-announced-as-disney-copyright-expires (accessed 5 January 2024).

[14] Donald P. Harris, Winnie-the-Pooh and hundreds of other works are now in the public domain, https://news.temple.edu/news/2022-01-24/winnie-pooh-and-hundreds-other-works-are-now-public-domain (accessed 5 January 2024).