The BIG NEWS in copyright land is that Mickey Mouse is free! He (and Minnie) are in the public domain as of January 1, 2024. So this means you can do anything you want with Mickey Mouse’s image right?
Ah, but with all things IP, especially the tricky landmine that is copyright, not quite. First, as you have probably already read, only the very first iteration of Mickey, in the Steamboat Willie short from 1928, is actually in the public domain. There are, of course, many other versions of Mickey Mouse . . . each one having its own copyright protection.
So yes, if you want to use the Steamboat Willie version – have at it, right? Yes, but (there’s always a but) . . . you should proceed with caution. This article from Duke Law Professor Jennifer Jenkins does an excellent job of discussing many of the issues you’ll encounter if you want to use Steamboat Willie Mickey, and so I won’t go through them all here – but here’s the punch line: not only can’t you use other versions of Mickey Mouse because they are still under copyright, you also have to be sure to make clear when using Steamboat Willie Mickey that you have no association with Disney – and that you do not tread on Disney’s trademark rights in the words MICKEY or MICKEY MOUSE, or the image itself! One might wonder then, how do you do that? As Professor Jenkins explains, very carefully – but the good news is that there is law that says that an IP owner cannot use trademarks to perpetuate an expired copyright. Thus, so long as you are not using the Mickey Mouse image as a source identifier (aka trademark) or in any way that causes a consumer to see your product/service as being associated with Disney, trademark law should not block the use of the image. Does your head hurt yet?
Why do I share all of this with you? Because it struck me that this is a perfect illustration of how IP rights are way more complex than ordinary people (and even lawyers who do not regularly practice IP) could imagine. There are many traps for the unwary in what might, on its face, seem like a simple thing to do. Yet, these traps come up all the time. For example, akin to the Mickey Mouse situation, when someone comes to me with a simple IP request to register a logo – I’ll want to make sure the client owns all the creative rights to it if they did not personally draw or design it themselves (clip art does not count). If not, we will need to do a copyright assignment for the design.
I also frequently see rights confusion with photographs. For example, we sometimes see clients grab images from Google and use them, say on Instagram – isn’t it ok to use images as long as you attribute them to the photographer? WRONG. Not ok. Realizing that’s a problem, clients may pay to use stock images but from a site that does not guarantee that the use of the photos is free from IP infringement or has significant constraints on the permitted uses of the photos. Trying to avoid this issue, clients may hire someone to take photos for them (a great idea) but then they don’t make sure to obtain all the rights they need to use the photos as they see fit. Any of these options can work, of course, but you need to make sure that (1) the images from Google or the photo site are truly public domain photos; or (2) the images on the stock photo site are free of undue use restrictions; or (3) if you hire a photographer, you have all the rights you need to use the photographs now and in the future (think ahead!).
Steamboat Willie Mikey Mouse also illustrates how the most effective IP rights portfolio forms a web of protection that works together. As an IP owner, the best solution is often to rely on more than one form of IP to protect your invention, creation or brand – so, as in the case of Mickey Mouse, Disney relies upon both copyright and trademark to protect the IP. You can often see this with packaging. For example, take the Clorox bottle – the bottle itself can involve many forms of IP. Historically, there were certainly design patents on it (patents on the non-functional and ornamental aspects of the bottle) – and might have been (and still could be!) utility patents on it (e.g., perhaps in the composition of the materials or in the manufacturing processes used to form the bottle). The Clorox bottle also functions as a form of trademark called a trade dress – if you see a Clorox bottle, you’ll instantly know that it is a bottle of bleach, likely from Clorox. You do not need to see the word mark to know that. Of course, Clorox bleach DOES have a traditional word trademark associated with it as well. And while there might not be a particularly creative logo or labeling on a Clorox bottle, other brands (think of some craft beers for example) have very elaborate labels that can be subject to copyright protection.
And let’s not forget my favorite type of IP, trade secrets! Undoubtedly there may be trade secrets associated with a Clorox bottle – as I like to say, every utility patent started its life as a trade secret, and every patent usually comes with a trade secret side car. When there are inventions, there are trade secrets – it’s that simple.
Why bother with this? Well, as you can see with Steamboat Willie Mickey Mouse – having other kinds of IP protection can help protect your brand and your IP investment. Not only does Disney have its trademarks to fall back on, by continuously refining the image of Mickey, Disney is also perpetuating its copyright protection in the image generally, and thus its overall “IP” in the mouse. Disney is not alone in this – think of the pharmaceutical companies, which are constantly tweaking popular medicines (making slight modifications to them or introducing an extended release formula) and thus perpetuating their patent monopolies in those products.
I am not going to debate the propriety of any of this conduct, but it does illustrate the power of using IP protection strategically and thinking ahead. Studies abound that demonstrate that in today’s economy, more than 80% of a company’s value is in its “intangible assets” – which is predominantly IP. That being the reality, it would be foolhardy for a business not to take IP protection seriously. Companies like Disney, of course, are built on IP and take it very seriously – and that’s why Mickey Mouse, although in the public domain, is not truly free.
