Disney’s Copyright on the 1928 Mickey Mouse has expired: what will happen now?

How can we forget the first version of Mickey Mouse, portrayed in black and white, with a pointed nose, small all-black eyes and a long tail, without gloves, whistling while driving a steamboat?

The famous Mickey Mouse character, in this guise, was born in the United States in 1928, the year in which he also made his first official appearance with the debut – on 18 November, at Universal’s Colony Theatre in New York – of the Disney cartoon “Steamboat Willie”, which featured him in the lead role together with his beloved Minnie.[1]

Steamboat Willie and the birth of a myth

The success of Steamboat Willie was such that it brought international fame not only to its creator, Walt Disney, but also, and above all, to the friendly and ingenious anthropomorphic mouse, then only at the start of what was to become a brilliant career.

Well, as of 1 January 2024 – 95 years after the official debut of Mickey (and Minnie) in the aforementioned short film – the relevant copyright has ceased to have effect.

The cartoon thus entered the public domain in the United States, hence the risk that the character designs dating back to 1928, which first appeared there and with which the work was made, would also become freely usable overseas after almost a century of protection.

Copyright in the US: regulatory overview

From a regulatory point of view, it is worth highlighting how copyright – a term that identifies the rights of the author in common law countries – protects the fruits of intellectual activity of a creative nature, allowing the author of works that are distinguished by the originality of their creation to forbid others from reproducing, adapting, distributing, representing or exhibiting them.

After the expiry of the term of legal protection, the copyrighted work falls into the public domain, with the consequence that it may be freely used, without the need to obtain authorisations or pay any remuneration to the rights holder.

As for the duration of that protection, under current US law, copyright protection begins with the creation of the work and lasts for the author’s lifetime plus 70 years, while for works made to order for third parties, protection lasts 95 years from the date of first publication, or 120 years from the date of creation, whichever expires first.

Disney’s battle for Mickey Mouse

However, copyright law in the USA was different at the time of Mickey’s debut with the famous animated short film Steamboat Willie, which, as we will see, has come close to entering the public domain several times.

With regard to the duration of the protection, the legislation in force at the time[2] envisaged a term of 28 years from the date of publication of the work, renewable for another 28 years up to a maximum of 56 (before that it was 14 years renewable for another 14). Steamboat Willie therefore risked remaining without copyright protection as early as 1984.

Subsequently, due to a further regulatory update[3] which entailed a new extension of the copyright term, the copyright protection on Steamboat Willie was extended until 2003, i.e. up to 75 years after publication.

Remarkable at that point was the leading role played by Disney in trying to protect its famous character for as long as possible.

In fact, it was the controversial Copyright Term Extension Act of 1998 (also known as the Mickey Mouse Protection Act, given Disney’s strong influence on the issue) that extended the terms of protection by a further 20 years.

This act thus made it possible to further “extend” the duration of the copyright on Steamboat Willie until 2023, i.e. up to 95 years (75+20) from its first publication.

And so, today, the news that this protection over the short film that gave birth to Mickey Mouse, introducing him to the world, has come to an end has been made official.

It is well known how copyright is characterised, among other things, precisely by the limited duration of the protection deriving from it and, in particular, of the “rights of economic use” of the work being protected.

Will Mickey Mouse’s image really be freely usable?

This being the case, then, can anyone and everyone really exploit and rework Disney’s iconic Steamboat Willie from now on, without encountering any obstacles?

As for the Mickey Mouse-related material, it should first of all be made clear that the “expired” copyright only relates to the aforementioned older version of the famous mouse and not to the numerous subsequent reinterpretations, which are still far from being in the public domain.

The constant restyling process implemented by the Disney cartoonists over the years has allowed them to change the proportions of the physiognomy of the well-known animated mouse and add accessories to the character (e.g. yellow gloves or red shorts), modernising his features.

These newer versions remain, to this day, undoubtedly protected by copyright and, therefore, cannot be freely used by third parties without the prior consent of the rights holder.

The role of Trademarks in the protection of a Character

As far as fictional characters are concerned, it should also be noted that the relevant protection strategy very often includes the filing of the relevant representations as trademarks.

In fact, the Mickey Mouse design is protected in the USA, even in its earliest versions, as a registered trademark.

In this regard, it should be noted that the main function of the trademark – that is, to distinguish the goods or services of one undertaking from those of competing undertakings – differs greatly from the scope of copyright protection described above.

Unlike copyright, a trademark is also characterised by the tendentially unlimited duration of the protection conferred by it (10 years, renewable, from decade to decade, ad infinitum).

This does not detract from the fact that those rights may also overlap, so as to protect the same object (in this case, the depiction of a character), but in different respects and for different purposes.

Therefore, in view of the gradual expiry of the copyright terms on its assets and film characters, it does not seem to be possible to exclude the possibility that Disney may at least attempt to limit the use by others in the US of its Mickey Mouse in the original 1928 version, by means of the trademarks protecting the Mickey Mouse design, which it owns overseas.

Obviously, in the event of litigation, it will be up to the competent local authorities to have the final say: will, after assessing the concrete case, the claims made in compliance with the IP laws in question be reasonable? Or is it acceptable an attempt to “eternalise” a character (i.e. the famous mouse, 1928 version) that is no longer protected by copyright, through trademark registration?

Lastly, it cannot be ruled out that any use of the original version of the world’s best-known mouse may also “clash” with copyright on other intellectual property other than Steamboat Willie in which Mickey Mouse may have appeared in similar guises.

We expect, therefore, that Disney’s battle in defence of its historic character will not stop here; rather we can foresee multiple counter-moves by the famous producer aimed at preserving the protection of its iconic mascot.

In any case, this story has the merit of demonstrating to all companies how important it is, on the one hand, to identify with certainty and make the best use of their IP assets and, on the other hand, to implement an effective IP protection strategy in order to obtain a real and lasting competitive advantage in the relevant market.

[1] Taken from: https://it.wikipedia.org/wiki/Steamboat_Willie