Same Dog, New Trick: How Brands Can Outsmart the Public Domain Paradox
Introduction
The Jazz Singer was released in 1927 and was the first movie to feature synchronized sound. The movie business boomed during the 1930s Great Depression era, particularly for Disney’s animations. Following the 1928 release of Steamboat Willie, Disney released over 200 short and feature films from 1930-1940, for which it won an Oscar award every year that decade.
As the 2030’s near, the 95-year limit for copyright protections will begin to expire for dozens of Disney’s animated icons from that decade. Over the next 17 years, Disney’s animations of Goofy, Donald Duck, Daisy Duck, Snow White, Pinocchio, and Cinderella will all enter the public domain. Just this year, Disney’s first iteration of the dog Pluto, which debuted in 1930, entered the public domain following the expiration of its 95 year copyright protection. On January 1, 2027, the actual name “Pluto” will also enter the public domain. Although copyright protections expire after 95 years, Disney will not lose all Intellectual Property claims. The company retains trademark rights over its most famous characters, including Pluto, based on their status as brand identifiers.
Often, a brand may have one or two characters that are clear brand identifiers. However, Disney’s brand is unique since so many of its characters are universally perceived as the Disney brand. When a beloved cultural icon enters the public domain, businesses may see it as a commercial goldmine for total creative freedom, but intellectual property law hides a dangerous trap. Businesses looking to capitalize on freshly liberated animations have to understand the boundary between where copyright ends and trademark begins. This understanding is the difference between a successful marketing campaign and a devastating lawsuit. So how can businesses use something in the public domain if it is still protected by trademark laws?
Copyright and Public Domain
U.S. copyright law “protects original works of authorship.” These works must be creative and “fixed in a tangible medium of expression,” which encompasses both visual and audiovisual works. The author of a copyrighted work retains the exclusive rights to its reproduction, distribution, public display, and its use for derivative works. The author is empowered to grant the right to use the work to others in exchange for compensation.
Without these protections, anyone could copy an author's work and make a profit off of it without having to spend time or resources on its creation. This would severely drive down the price for the work and there would be little incentive for creators to continue to produce original works. However, these protections do not extend indefinitely. Copyright protections expire “95 years from the year of first publication of a work, or a period of 120 years from the year of its creation, whichever expires first.” Following expiration, the work enters the public domain where anybody is free to use the work. Therefore, copyright temporarily restricts free use to encourage the production of new innovative and artistic works. Additionally, the time limitation ensures that this creativity will be available for public benefit and social progress.
Trademark
Trademark law is all about branding. The main goals are to prevent unfair competition and promote consumer protection. A trademark can be any symbol, “word, phrase, design, or combination” thereof which identifies the source of goods or services and distinguishes it from competitors. A trademark “must be in use in commerce and it must be distinctive.” Its job is to tell consumers exactly where a product comes from, making it easy to spot the difference between businesses or brands.
A design becomes a brand identifier when its “primary significance, in the minds of the public, is to identify the product's source rather than the product itself.” A character transitions into a brand identifier when its visual appearance or name is commercially used to indicate a specific corporate source. Examples of commercial use include placement on merchandise or clothing. There is no explicit time limit for trademark protections in the same way as copyright. Trademark protection continues indefinitely unless legally terminated. Typically the protection continues so long as a brand continues to use the character commercially and the character continues to be a brand identifier.
Active Trademarks v. Expired Copyrights
Trademark law restricts commercial usage in limited circumstances. First, a brand cannot use the character in a way that would lead the ordinary consumer to mistake its product for that of the trademark owner’s. Second, even if there would not be consumer confusion, a brand cannot diminish the distinctiveness of the character or use it in a way that would tarnish the reputation of the character. Lastly, brands cannot produce identical characters or characters indistinguishable from the trademarked one in order to profit off of selling the counterfeit imitations.
Dastar Corp. v. Twentieth Century Fox Film Corp. addressed the relationship between expired copyrights and active trademarks. Brands cannot use trademarks to create a quasi perpetual copyright since trademark law applies to the producer of commercial products whereas copyright applies to the original author of a work. Brands using trademarked characters in the public domain are free to copy them, sell them, and put their own name on the products. However, a brand cannot advertise or misrepresent the product it used the trademarked character in as its own original work. This constitutes lying about the product’s "nature, characteristics, or qualities" and opens the door for a lawsuit.
Future Implications
Every year, new IP enters the public domain. Last year, an original version of Betty Boop entered the public domain alongside Rover, the original version of Pluto. Other notable characters in the public domain include Popeye, the original versions of Winnie the Pooh and Tigger, and, most notably, Steamboat Willie, which entered in 2024. The Morgan and Morgan dispute previews what businesses could expect starting in 2027. The law firm wanted to run an ad using the public-domain Steamboat Willie-era Mickey Mouse and asked Disney to confirm in writing that it wouldn't sue. Disney refused to rule out legal action, so Morgan and Morgan sought a court ruling that using the character wouldn't infringe Disney's trademarks. The case was withdrawn before any ruling came down, after Disney let the ad run informally, leaving the underlying question unresolved.
In Disney Enterprises, Inc. v. Red Earth Group Limited, Satéur was a jewelry company selling Mickey Mouse-themed pieces based on the public-domain Steamboat Willie design, marketed with phrases like "Mickey the Jeweler" and Disney's mouse-ear imagery on the packaging. Disney sued for trademark infringement, arguing that the copyright expiring didn't give Satéur the right to use Mickey as a brand identifier or imply Disney's endorsement. The case ended in a consent judgment and permanent injunction against Satéur.
Disney took the position that when a copyright expires, businesses can't use the character in any way they see fit. Businesses cannot use the artwork in a way that signals to a viewer a sense of sponsorship by Disney, or a brand identity based around that character. Currently, with Pluto, or really Rover, businesses are allowed to use the depictions only from 1930. They cannot call him Pluto or use that image as a brand identifier against Disney. Copyright runs on a clock, but trademark protection continues on so long as Disney keeps using Pluto in commerce. Since that will most likely be the case for years to come, Disney can keep policing Pluto's use as a brand identifier.
The Pluto situation contrasts starkly with the legal issues that stemmed from Steamboat Willie in 2024. Pluto is a “Fab Five” Disney character who sits alongside Mickey, Minnie, Donald, and Goofy. Pluto has deep market recognition, and starting next year, brands have a strong incentive to use Pluto in their marketing. Almost the same way brands tried to use Steamboat Willie after he entered the public domain. In the suit involving Satéur, Disney alleged that a lapsed copyright doesn't give a business license "to infringe Disney's continuing rights over its trademarks that identify Disney as the source of goods and services." The company pointed out that even though the Steamboat Willie film itself is public domain, Mickey Mouse will "continue to play a leading role as a global ambassador for Disney." The only difference is that Mickey’s design changed substantially between 1928 and today. Mickey no longer has the classic early 20th-century animated “pie eyes”, and he started wearing his famous white gloves, red shorts, and yellow shoes. Mickey today looks completely different from how he was drawn in Steamboat Willie, but Pluto doesn't have that problem at all. Pluto's 1931 illustrations in The Moose Hunt remain basically unchanged, except for color, but it is still the same character. The public-domain version and the version Disney actively uses as a brand identifier will be nearly identical. This could honestly make Disney’s trademark claims harder to defend, and a business could argue that Pluto is just…Pluto, having been unchanged for 95 years. This differs from an old, retired version of a character like Mickey and Steamboat Willie. Alternatively, Disney may also try to enforce its trademark more aggressively. Because of the resemblance, there isn't a clear line between what is public and what is still protected. This is uncertain, but the bottom line is whether a business would risk going toe-to-toe with one of the biggest art and entertainment companies in the world, with countless resources and materials to enforce its will.
Possible Solution
The safest approach for businesses starting next year with Pluto, but also generally with public domain characters, really boils down to one core idea. Do not use Pluto in any way that could be seen as a brand identifier, or in a way that could suggest sponsorship or a business tie directly to Disney. A business can use the public domain artwork, but it's easy to cross a line. Putting Pluto on packaging the way Disney does, building a whole product line around him as Sateur did with Steamboat Willie on their jewelry, or using him as a logo are all big potential issues. Morgan and Morgan did it right for many reasons. They first gave Disney advance notice that they would use Steamboat Willie in a commercial, documented Disney's response, and included a clear disclaimer of non-affiliation in their commercial. Their foolproof idea was backed by time, preparation, and foresight regarding potentially expensive consequences.
On the opposite side of the same coin, businesses also pose a reputational risk to Disney. The rule of trademark dilution by tarnishment requires that a famous mark (like Pluto) gets tied to something that damages the goodwill of the holding company. This may surface if a brand uses Pluto in a way that totally clashes with Disney’s wholesome image, and companies have done this with other characters. Remember the Winnie the Pooh horror movie that debuted a few years ago. Sure, the public domain technically lets businesses use marks in their own ways, but there are serious caveats. Independent creators and smaller businesses rarely have the resources to fight these potential legal battles, so a good rule of thumb is to stay away or tread very lightly.
Conclusion
Businesses can use art or a character once it enters the public domain, but only to a limited extent when it shifts from copyright to trademark law. Copying the art is fair game once the copyright expires, but turning the artwork into something a consumer would identify with your brand is a big legal risk. Pluto sits in a grey area between trademark and copyright law because he doesn't let businesses hide behind a potential “old version/new version” argument, as Steamboat Willie could. Pluto hasn’t changed since 1932, and the 2030s will put the rest of Disney’s golden-age characters in the same position. Most businesses will see a potential goldmine in these characters, but the smart ones will hopefully recognize the trap and plan accordingly. The smartest marketing campaigns cleverly avoid potential lawsuits, and to do that, businesses need to engage with the legal questions that arise when a piece of art enters the public domain.
*The views expressed in this article do not represent the views of Santa Clara University.
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