Can Peter Rabbit Save Mickey Mouse?

Mickey Mouse first appeared in Disney’s Steamboat Willie cartoon in 1928.  Under the Copyright Act of 1976, Disney’s copyright on Steamboat Willie was set to expire at the end of 2003, 75 years from the publication date.  In 1998, Congress passed the Sonny Bono Copyright Term Extension Act to extend copyright terms another 20 years.  The Sonny Bono Copyright Term Extension Act has also been called the Mickey Mouse Act.  Under current law, the Steamboat Willie copyright is set expire and the work to go into the public domain at the end of 2023.

In Dastar Corp. v. Twentieth Century Fox Film Corp., the U.S. Supreme Court refused to let Fox Film use trademark law to reclaim its expired copyright from the public domain. 

Once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution. Thus, in construing the Lanham Act, we have been careful to caution against misuse or over-extension of trademark and related protections into areas traditionally occupied by patent or copyright.  The Lanham Act, we have said, does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity.  Federal trademark law has no necessary relation to invention or discovery, but rather, by preventing competitors from copying a source-identifying mark, reduces the customer’s costs of shopping and making purchasing decisions, and helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product.  Assuming for the sake of argument that Dastar’s representation of itself as the ‘Producer’ of its videos amounted to a representation that it originated the creative work conveyed by the videos, allowing a cause of action under § 43(a) for that representation would create a species of mutant copyright law that limits the public’s federal right to ‘copy and to use, expired copyrights.

Will the Dastar ruling prevent Disney from using trademark law to protect Mickey Mouse?  In her recent CSUSA presentation in Seattle, Washington, Columbia Law School Professor Jane C. Ginsburg argued that Dastar did not answer the question of whether a cartoon character whose copyright has expired can be protected by a trademark.

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