Western New England Law Review Volume 42 Issue 1 Article 2 2020 INTELLECTUAL PROPERTY—MICKEY MOUSE’S INTELLECTUAL PROPERTY ADVENTURE: WHAT DISNEY’S WAR ON COPYRIGHTS HAS TO DO WITH TRADEMARKS AND PATENTS Kaitlyn Hennessey Follow this and additional works at: https://digitalcommons.law.wne.edu/lawreview Recommended Citation Kaitlyn Hennessey, INTELLECTUAL PROPERTY—MICKEY MOUSE’S INTELLECTUAL PROPERTY ADVENTURE: WHAT DISNEY’S WAR ON COPYRIGHTS HAS TO DO WITH TRADEMARKS AND PATENTS, 42 W. New Eng. L. Rev. 25 (2020), https://digitalcommons.law.wne.edu/lawreview/vol42/iss1/2 This Article is brought to you for free and open access by the Law Review & Student Publications at Digital Commons @ Western New England University School of Law. It has been accepted for inclusion in Western New England Law Review by an authorized editor of Digital Commons @ Western New England University School of Law. For more information, please contact [email protected]. WESTERN NEW ENGLAND LAW REVIEW Volume 42 2020 Issue 1 INTELLECTUAL PROPERTY—MICKEY MOUSE’S INTELLECTUAL PROPERTY ADVENTURE: WHAT DISNEY’S WAR ON COPYRIGHTS HAS TO DO WITH TRADEMARKS AND PATENTS KAITLYN HENNESSEY∗ This Article explores the copyright and trademark laws underlying Disney’s characters in light of Mickey Mouse’s looming copyright expiration. The Article maps the history of copyright extension from the Copyright Act of 1909 (the governing law when Mickey Mouse came to be) to the “Mickey Mouse Protection Act” (the current governing law on copyright expiration), finding further extension of copyright protection to be unlikely and, ultimately, unappealing. This Article takes the position that further extension is unlikely given that the political climate for such reform has changed and that the policy tensions underlying extended protection weigh in favor of limiting copyright protection to current terms. The Article analogizes between continued copyright extension and recent patent reform, highlighting the danger of inhibiting creativity and innovation—the very things that Walt Disney built his legacy on. INTRODUCTION When Walt Disney was still getting started in the entertainment industry, his distributor, Charles Mintz, encouraged him to create a new cartoon character that he could pitch to Universal Studios.1 Walt did just that, and in 1927, Oswald the Lucky Rabbit made his debut in the cartoon ∗ Graduate of Quinnipiac University School of Law (2019), magna cum laude. The Author would like to thank Professor Dale Carlson for all of his support and encouragement throughout the writing of this Article and the completion of the intellectual property concentration. 1. BOB THOMAS, WALT DISNEY: AN AMERICAN ORIGINAL 83 (Disney Editions 1994). 25 26 WESTERN NEW ENGLAND LAW REVIEW [Vol. 42:25 short Trolley Troubles.2 America quickly fell in love with Oswald, and the character became Walt’s greatest success to date.3 The celebration was short-lived for Walt, however. In 1928, upon approaching Mintz about negotiating a renewal of their contract, Walt was informed that many of his animators had signed over to work for Universal.4 Further, Mintz told Walt that, per their original contract, Oswald belonged to Universal—not to Disney.5 Refusing to abandon his own studio and work for Universal, Walt left the negotiation without a new contract and without the rights to the rabbit he had created.6 As the story goes, it was on the train ride home from this meeting that Walt came up with the idea for none other than Mickey Mouse.7 From his experience with Oswald, Walt had learned an important lesson: to always make sure that he owned the rights to all of the characters that he and his company created.8 In the decades since, the Walt Disney Company (hereinafter “Disney”) has upheld this practice by pushing for extended copyright protection of its characters, including the big cheese himself— Mickey Mouse.9 Though Disney has been successful in protecting its characters under copyright law so far, expiration of such protection is fast approaching. The last time copyright protection was extended was when the Copyright Term Extension Act was signed into law in 1998.10 It extended the copyright protection of works published in 1923 or later for another 2. Id. at 84. 3. Id. at 84–85. 4. Id. at 85–87. 5. Id. at 86. 6. Id. at 87. But see The Unbelievable History of Oswald the Lucky Rabbit, OH MY DISNEY, https://ohmy.disney.com/insider/2016/09/05/oswald-the-lucky-rabbit/ [https://perma.cc/W44V-KHD3]. In 2006, former Walt Disney Company CEO, Bob Iger, traded ESPN sportscaster Al Michaels to NBC in exchange for the rights to Oswald, bringing the lucky rabbit home after nearly 80 years. Id. 7. See THOMAS, supra note 1, at 88 (“The birth of Mickey Mouse is obscured in legend, much of it created by Walt Disney himself. He enjoyed telling the tale of how he dreamed up the mouse character on the train trip back from the Oswald disaster . .”). 8. See Zachary Crockett, How Mickey Mouse Evades the Public Domain, PRICEONOMICS (Jan. 7, 2016) [hereinafter 15 Years Ago], https://priceonomics.com/how-mickey-mouse- evades-the-public-domain/ [https://perma.cc/22F4-45RU]. 9. Id. 10. See Timothy B. Lee, 15 Years Ago, Congress Kept Mickey Mouse out of the Public Domain. Will They Do It Again?, WASH. POST (Oct. 25, 2013, 9:00 AM), https://www.washingtonpost.com/news/the-switch/wp/2013/10/25/15-years-ago-congress- kept-mickey-mouse-out-of-the-public-domain-will-they-do-it-again/ [https://perma.cc/SN25- AJPM]. 2020] DISNEY’S WAR ON COPYRIGHT 27 twenty years.11 Congress has not extended copyright protection again since, and as a result, “[a]s the ball dropped over Times Square,” kicking off 2019, “copyrighted works published in 1923 fell into the public domain. [It was] the first time this [had] happened in 21 years.”12 Having been created in 1928, Mickey Mouse’s copyright protection is set to expire January 1, 2024—less than four years from now. Though this may be alarming to some die-hard Disney fans, the copyright expiration Mickey Mouse faces in 2024 is not a total expiration of all the rights vested in the mouse. It is, however, the beginning of a steep expiration slope not just for Mickey, but for the company’s entire cast of characters. Further, while Mickey may be able to seek some refuge from the public domain through trademark law, this protection will likely be unavailable for the majority of Disney’s characters. This Article explores the relevant copyright and trademark laws underlying Disney’s characters in light of Mickey Mouse’s looming copyright expiration, as well as the policy tensions underlying the potential for any future copyright extension. The analysis looks to analogies between continued copyright extension and recent patent reform, highlighting the danger of inhibiting creativity and innovation— the very things that Walt Disney built his legacy on. I. COPYRIGHT LAW Copyright is a form of legal protection that gives the creator of a work13 the exclusive right to use and distribute the work for a period of time (dictated by statute) until it falls14 into the public domain.15 A work of authorship gains copyright protection the moment it is created.16 11. Timothy B. Lee, Mickey Mouse Will Be Public Domain Soon—Here’s What That Means, ARS TECHNICA (Jan. 1, 2019, 12:10 PM) [hereinafter What That Means], https://arstechnica.com/tech-policy/2019/01/a-whole-years-worth-of-works-just-fell-into-the- public-domain [https://perma.cc/H649-47TY]. 12. Id. 13. Copyright Act of 1976, 17 U.S.C § 102 (2018). A “work” for purposes of copyright protection includes literary works, musical works, choreographic works, graphic works, motion pictures, and sound recordings. Id. 14. The term “fall” (as opposed to “enter”) is used throughout this Article to reflect a lack of willingness or desire on the part of authors for their works to join the public domain, rather than to imply that the authors’ works entered the public domain because the authors were careless in any way or unaware of the works doing so. 15. Copyright: Everything You Need to Know, UPCOUNSEL, https://www.upcounsel.com/ copyright [https://perma.cc/6H8H-Y5J6]. 16. Copyright in General (FAQ), COPYRIGHT.GOV, https://www.copyright.gov/ help/faq/faq-general.html#what [https://perma.cc/TRR6-WBM8]. 28 WESTERN NEW ENGLAND LAW REVIEW [Vol. 42:25 A. The Road to the Mickey Mouse Protection Act At the time that Mickey Mouse was created in 1928, the Copyright Act of 1909 was the governing law on copyrights in the United States.17 The Act granted federal copyright protection to original works that were (1) published and (2) had a notice of copyright affixed to them, for a period of twenty-eight years from the date of publication, with the option for renewal for another twenty-eight years of protection.18 Upon either the close of twenty-eight years (if there was no renewal of the copyright) or of fifty-six years (representing the initial twenty-eight year protection term and an additional twenty-eight year protection term upon renewal), the work would fall into the public domain. As a result, Mickey Mouse could only be protected until as late as 1984. Aware of this deadline and committed to protecting a character that had not only become the mascot of the company, but also a huge source of revenue, Disney began lobbying Congress.19 Disney’s lobbying efforts paid off. Congress passed the Copyright Act of 1976, which displaced the 1909 Act, codified the fair use doctrine, adopted a protection term for new copyrights based on the date of the author’s death, and extended protection for certain existing copyrights.20 The 1976 Act extended copyright protection for already-published corporate copyrights, such as Mickey Mouse, from fifty-six years to seventy-five years.21 Works published prior to 1922 immediately entered the public domain, and works published after 1922 were entitled to the full seventy-five years of protection.22 As a result, Mickey Mouse’s copyright protection was extended until 2003.