Introduction
From books to movies or even sound recordings, copyright protection exists over creations that are original works of authorship that are fixed in a tangible medium of expression. Valid copyright gives five exclusive rights: the right of reproduction/imitation, preparation of derivative works, distribution of copies, public performance, and public display. The duration, or term, of a copyright depends on a variety of factors, such as whether the work had been published and when it was first published. Once this term expires, the work enters the public domain, meaning it is free to be used by anyone without restriction. A good rule of thumb is:
works first published before 1923 are in the public domain;
works created and published before 1978 have between twenty-eight to ninety-five years of protection, depending on renewal allowance; and
works created or first published after 1978 typically last for the duration of the life of the author plus an additional seventy years, with no opportunities for renewal.
Every year on the first of January, a new batch of works complete their full copyright term on what is known in niche copyright circles as Public Domain Day. As of January 1, 2023, all works created in 1927 formally entered the public domain. Some notable works are: Now We Are Six by A. A. Milne with illustrations by E. H. Shepard, which features the character Winnie-the-Pooh; The Case-Book of Sherlock Holmes by Arthur Conan Doyle, the last copyrighted work of the original author featuring Mr. Holmes; and The Jazz Singer, the first full-length movie with synchronized dialogue.
Disney’s Impact on US Copyright
The Walt Disney Company’s first iteration of Mickey Mouse—Steamboat Willie, a mouse with a long nose, long tail, and conspicuous lack of gloves—was released way back in 1928 and should have entered the public domain in 1984, after a long fifty-six years of protection. However, thanks to the Walt Disney Company’s tenacious and persistent efforts, the earliest version of the mouse himself will not enter the public domain until January 1, 2024, nearly 100 years after its creation.
The Walt Disney Company has been credited with lobbying for increasing copyright extensions by leaps and bounds in the Copyright Act of 1976 and again in the Sonny Bono Copyright Term Extension Act of 1998. Collectively, its efforts managed to protect the earliest iterations of the mouse from entering into the public domain sooner and shaped the face of U.S. copyright law as we know it.
However, Public Domain Day of 2024 marks the beginning of the end of Disney’s long-fought battle to protect the centerpiece of its entire brand. So now, what comes next for Disney as Mickey and his friends enter the public domain in the coming years? Will it resume its previously successful lobbying attempts or approach protecting its vast intellectual property portfolio with new, creative strategies, as attempted by others in its position?
The Conan Doyle Estate
Beloved British author Arthur Conan Doyle wrote four novels and fifty-eight short stories over the span of forty years about the fictional detective Sherlock Holmes and his associate, Doctor John Watson. His vast literary portfolio is controlled by the Conan Doyle Estate, Ltd, which has fought persistently to prevent Holmes and Watson from falling into the public domain. Despite the Estate’s valiant, and at times brazen, efforts, Sherlock Holmes and John Watson fully entered the public domain at the start of 2023. Despite the failure of the Conan Doyle Estate’s attempts to keep control over the valuable characters, its unique attempts serve as a case study for how companies will attempt to protect their intellectual property portfolios as their Copyright Term Extension Act-bought time runs out and more and more lucrative copyrighted works enter into the public domain.
The Conan Doyle Estate has an extensive history of emphatically enforcing its right to demand licensing fees for the use of Sherlock Holmes-related copyrights—even after those rights diminished. Many paid the licensing fees until Leslie Klinger came along and asserted his right to Doyle’s public domain works. Klinger is a Sherlock Holmes scholar and attorney who refused to pay the licensing fee for his upcoming book, In Company of Sherlock Holmes. In response, the Estate threatened to prohibit the distribution of Klinger’s book. A series of court cases culminating in the 2014 appellate court case Klinger v. Conan Doyle Estate, Ltd. decided once and for all the fate of the iconic detective-doctor duo. 988 F.Supp.2d 879 (N.D. Ill. 2013), aff'd, 755 F.3d 496 (7th Cir. 2014), cert. denied, 574 U.S. 976, 135 S. Ct. 458 (2014).
The Conan Doyle Estate tried and failed to argue that Sherlock Holmes and other characters were protected by copyright, despite the fact several Sherlock Holmes stories had already entered the public domain. The Estate attempted to argue that Sherlock Holmes and other characters were not fully developed, and vital pieces of their characters were not revealed until later (and conveniently still protected) Sherlock Holmes stories. The appellate court flatly rejected this novel line of argument, finding no legal grounds for the Estate’s argument. This rejection and the Supreme Court’s refusal to grant certiorari effectively marked the end of the Conan Doyle Estate’s fight to preserve its full control over the Sherlock Holmes stories. This is not to say the Conan Doyle Estate is without any recourse. They own various trademarks for significant characters, including “Arthur Conan Doyle,” “Sherlock Holmes” and “Professor Moriarty,” which can be used to continue the Estate’s directive of preserving the legacy of Arthur Conan Doyle.
Disney’s Transition to Trademark
The grace period of the Copyright Term Extension Act is running out of time and we are entering the unchartered water of the public domain. More and more celebrated and well-known copyrights are coming to an end and their owners will have to devise new strategies to maintain their intellectual property portfolios.
Looking ahead to the end of the golden era of copyright protection over their most iconic characters, companies such as Disney were forced to seek alternative solutions. More recently, Disney has directed considerable efforts to ensure that the best-known mouse in the world remains tied to Disney through a tangled net of trademark protections. Where copyrights offer broad protection over any creation (such as a cartoon character), trademarks operate more narrowly and are designed to protect consumers from perceiving a certain product or imagery as an original product.
Based on the 1979 precedent from the District Court of New York, a copyrighted character entering the public domain does not preclude protection under the trademark law as long as it is shown to have acquired independent trademark significance identifying a source of the product. Simply put, if the character’s appearance in a certain product is so well recognized that an average consumer would immediately think this product was affiliated with the company holding the trademark, then such appearance likely falls under trademark protection.
When Mickey eventually enters the public domain, Walt Disney will retain its rights over nearly two dozen trademarked versions of its iconic character. Unlike copyrights whose lifetime is strictly limited, registered trademarks remain indefinitely if properly maintained. Disney has been especially relentless in making its most iconic character part of the company’s imagery, with the mouse’s likeness being featured as part of the company’s logo. With Disney consistently featuring Mickey in so many of its newer products, there is little doubt that there is a long-winding road before Mickey would enter a truly free realm of creative commons, if ever.
Nevertheless, there is hope for those who seek to use Mickey Mouse’s likeness in their creative work independent from Disney. Once the character’s best-known version finally enters the public domain in 2030, the character will become available for use without Disney’s explicit authorization, despite the multitude of trademark protections that the company would retain over the persevering mouse. The essential element of any such use, however, would turn on whether the non-Disney related product would suggest any relationship with the Disney company.
Another Disney character, Winnie the Pooh, has recently passed through the public domain v. trademarks trials. Entering the public domain in 2022, the book version of the famous honey-loving bear became available for adaptation. While Disney had retained trademarks over some more prominent features and imagery of Winnie (such as the signature red shirt look), the original bear became available for independent use. Earlier this year, the United States saw a limited release of a bloody parody horror Winnie the Pooh: Blood and Honey, an indie production independent from Disney which portrayed the bear in more sinister tones. While the film received all of 5% on Rotten Tomatoes, Winnie’s extravagant re-imagining signifies the future yet to come for other well known and beloved characters.