Has Mickey’s ship sailed?
One of the big news stories at the beginning of the year was that the character Mickey Mouse had now entered the “public domain” in the US. It was a headline for the TV channels and other media outlets but few said what it meant in practice for those wishing to make commercial use of Mickey Mouse.
The simple answer is that the world at large is not now free to use the Mickey Mouse character or the name Mickey Mouse without any fear of a claim for infringement.
The character Mickey Mouse dates back to 1928 when he first appeared in the cartoon “Steamboat Willie”. He was not called Mickey Mouse back then and the depictions we see of him today in Disney cartoons and Disney merchandise are different to the Steamboat Willie iteration of Mickey.
The reference to “public domain” is to the expiry of the copyright that existed in the “Steamboat Willie” iteration of Mickey Mouse. Copyright is a statutory protection for original literary, artistic, musical, dramatic and other works. It is an automatic right and springs into being when a qualifying work is created. Copyright is a national right and its duration is not the same in all countries. In the US, Disney were a key player in successfully lobbying for the copyright in works such as the Steamboat Willie iteration of Mickey Mouse to be extended to 95 years from the year of first publication. The extension has often been called the “Mickey Mouse Protection Act” by commentators not in favour of copyright owners having such long periods of protection for their copyright works. The copyright in the Steamboat Willie iteration of Mickey Mouse ended on 1 January 2024. In the rest of the world, the Steamboat Willie iteration of Mickey Mouse is now also public domain or remains protected by copyright in certain countries.
Perhaps not surprisingly, Disney have taken steps to ensure Mickey has evolved with the times and later iterations of Mickey Mouse contain notable differences and are subject to separate copyrights in the US and rest of the world.
Disney own other intellectual property rights in Mickey. The name “Mickey Mouse” and various graphical iterations of him are registered trademarks. Trademark protection is indefinite, subject to use and payment of renewal fees. Several years ago we helped a client negotiate a licence agreement with Disney to allow our client to develop and launch a range of children’s bathroom products that utilised the Mickey Mouse character and trademarks. Nothing has changed in that regard and our client would still require a licence today for such use.
There are other risks associated with using the Mickey Mouse character, including under the tort of passing off. This includes using the now public domain Steamboat Willie iteration of Mickey. If the use creates association with Disney or suggests endorsement by them, Disney will have actionable rights to restrain such use. It might be possible to overcome this risk in some circumstances by a carefully worded disclaimer but anyone wishing to take advantage of the Steamboat Willie iteration of Mickey being public domain will have to tread a careful path to ensure they do not infringe Disney’s trademark registrations and other copyrights in the newer iterations of Mickey Mouse. Disney have publicly stated that they will continue to protect their rights in the more modern versions of Mickey Mouse and other works that remain subject to copyright.
The news of the original Steamboat Willie version of Mickey Mouse entering the public domain is nevertheless a useful reminder for rights holders to update their copyright works wherever possible and to consider other ways of protecting their valuable IP assets, including trademark protection.
