How to use The Mouse?

January 16, 2008 9:08 AM

Copyright filter, again! There have been lots and lots of threads discussing trademark vs. copyright, etc, but in my searching I did not find the answer to this question: what will happen when Mickey Mouse goes out of copyright?

I've read a couple of items, particularly this on Wikipedia.

It says that Mickey Mouse is protected not only by copyright, but also by trademark. I understand the distinction (I think), but what I don't understand is how material in Steamboat Willie could actually be used.

It feels as if I could not use any material from Steamboat Willie in such a way that would violate Disney's trademark. So, for instance, I couldn't open my own movie studio that used images from Steamboat Willie, because it would cause consumer confusion.

And I couldn't open a theme park based around Steamboat Willie.

But.

Could I put something on a shirt? Could I sell a DVD of Steamboat Willie? Could I sample audio and video from the movie and use it in my own work?

Since Disney produces all manner of consumer products with the mouse featured, it seems almost like there is nothing that could be done with Steamboat Willie at all, because of possible consumer confusion.

(one thing, we all probably hate the copyright extension acts, etc, but saying that this question is moot because nothing that Disney has copyrighted will ever expire due to additional extensions... well, that's not a useful answer)

posted by gregvr to law & government (10 comments total)

Disney will sue (the proverbial) you. Even if Congress finally decides to stop granting copyright extensions and Steamboat Willie falls into the public domain, Disney will sue you. Given the amount of legal and monetary resources they can bring to bear, you'd be in for the long haul.

IANAL, but I'm pretty sure that legally you'd be in the clear, provided you could demonstrate you were not infringing upon the trademark. But it would take a mountain of money, a good lawyer (or lawyers) and a lot of time to court to get to that point. By suing, Disney is gambling that your money/time/patience will run out before a decision in your favour is reached. And unless you're quite wealthy or a similarly-sized corporation, Disney is probably making a safe bet.

Could I sample audio and video from the movie and use it in my own work?

As an aside, of all the possible future uses, this is probably the one that's least likely to incur legal action.
posted by Nelsormensch at 9:36 AM on January 16, 2008

More than that, Disney would be obliged to sue, even if that results in an unfavourable ruling, since trademarks have to be actively defended. It's the kind of case that could go all the way up to the US Supreme Court, given that it could be argued that using trademark law to enforce de facto perpetual copyright is unconstitutional.
posted by holgate at 10:24 AM on January 16, 2008

You could sell the video on DVD.
posted by caddis at 10:32 AM on January 16, 2008

Steamboat Willie is the work and creation under copyright. Mickey Mouse is the trademark mouse under the Disney brand.

Assuming Disney for whatever reason didn't file frivolous or overbearing lawsuits, the following would be true:

-You could use the specific imagery within the cartoon.
-You could use the sound, dialogue, and plot within the cartoon.

-You could not use later (still under copyright) incarnations of the Mickey Mouse character.
-You could not name your mouse creation based upon Steamboat Willie, "Mickey Mouse".

It becomes difficult to distinguish, since Disney has continuously developed the mouse character and image under the name "Mickey Mouse" for so many years. It could well come to a Supreme Court ruling that "Mickey Mouse" would become public domain (though not later works such as Fantasia), and anyone would be allowed to publish stories with that character. That was likely the intent of the original limited copyright.

I am not an IP lawyer.
posted by explosion at 12:01 PM on January 16, 2008

what will happen when Mickey Mouse goes out of copyright?

Disney will lobby Congress again to extend copyright durations.
posted by Mikey-San at 12:14 PM on January 16, 2008

If Steamboat Willie fell into public domain, one way that you could potentially use the images would be in a parody. That's one of the four criteria of a fair use defense (although the courts are increasingly unfavorable to a fair use defense). I believe that there was an underground comic in the 1960s which showed the Disney characters having sex over and over and it was upheld as a fair use due to parody.
posted by underwater at 2:02 PM on January 16, 2008

If Steamboat Willie falls into the public domain you won't need copyright defenses such as fair use. Those defenses are for now, while the copyright still is in force. If you are going to write that comic though it will need to parody the original work or source of the work for the defense to succeed, and of course they will still sue you anyway, just because they can and they have that much money.
posted by caddis at 2:35 PM on January 16, 2008

My understanding is that when Steamboat Willie goes out of copyright, the only thing that you can be sure you'll be safe doing, is making and distributing copies of Steamboat Willie itself. Using the 'Willie' (aka Mickey Mouse) character in other contexts, where someone might confuse it with Disney's trademark, would probably not be defensible.

It's the particular recording of Steamboat Willie that's going out of copyright; the character itself, and the 'ears' trademark, and all the rest of the IP that you associate with the Disney brand, will still be theirs.

It's really not quite as significant (IMO) as I think some people are making it out to be. It wouldn't let you go and make bootleg Mickey Mouse cartoons and call them "Steamboat Willie" just because one particular Willie cartoon is in the public domain. If you produce something that's confusingly close to Disney's existing trademark, you'll probably get sued and lose.

Consider as a parallel: there are lots of existing companies that are older than Disney. Ford, for instance. There are a lot of old Ford ads that are now in the public domain. But the fact that they're in the public domain doesn't mean that you can go and make cars with the "Ford" logo on them, or something confusingly similar (like one of their really old logos that still says "Ford" in it). Just because a work that includes their trademark is in the public domain doesn't give you carte blanche to do whatever the hell you want with the trademark. You can distribute the work, but you can't use the it on products in a way that's confusing and might appear to indicate to a consumer that it's a Ford product.
posted by Kadin2048 at 3:53 PM on January 16, 2008 [1 favorite]

My understanding is that when Steamboat Willie goes out of copyright, the only thing that you can be sure you'll be safe doing, is making and distributing copies of Steamboat Willie itself. Using the 'Willie' (aka Mickey Mouse) character in other contexts, where someone might confuse it with Disney's trademark, would probably not be defensible.

And it's apparently public domain already in countries with saner copyright regimes.

This is where it gets interesting. Say Steamboat Willie enters the public domain, and you make a horror film in which people watching it get brutally murdered (although not by a Disney character). That's a derivative use of non-copyright material, and might be tried now under fair use criteria, but it would doubtless get the trademark attorneys busy. The legal question would be whether attaching a trademark to a copyrighted work served, in practical terms, to restrict indefinitely public domain use. And that won't be clear until a court rules on it.
posted by holgate at 5:04 PM on January 16, 2008

You might take a look around at how The Fleischer Superman cartoons are being marketed. They're in the public domain, and a lot of companies are selling them as a collection.

Another example. And another.

The trend I'm seeing is that they all use the name "Superman," even though that name is trademarked by Warner Communications. However, they don't use an exact replica of the current Superman logo, nor do they use a newer, more familiar version of his costume. In fact, the only one that shows Superman in full uses what appears to be a tracing of a still from the cartoons. In other words, they're generally careful to only use the aspects of Superman that appear in the cartoons, and not much of that.

I could be wrong, but I'm not aware of anyone making new adventures based on the old Superman. The trade seems to only be in selling copies of the actual public domain cartoons.

Assuming Disney wasn't able to, or didn't choose to, suppress it, I'd assume you'd see the same thing with early Disney cartoons. You'd probably see collections of various quality with actual art from the cartoons on the packaging, and a name like "The Early Mickey Mouse Collection" or "Classic Disney Cartoons," whatever they thought they could get away with. I doubt you'd see any new Steamboat Willie cartoons.
posted by L. Fitzgerald Sjoberg at 5:35 PM on January 16, 2008