A bit of a study break to write about some interesting news I came across this week – the iconic short film from Walt Disney, Steamboat Willie, is set to have its copyright expire and become part of the public domain next year.
It got me thinking of how while copyright can’t be renewed through use, I’m very sure that Disney has an army of IP lawyers who’ve gotten every trademark possible for this character and his little whistle-tune. They’ve surely gotten their use of Willie as much as possible, through streams on Disney+, merchandise and even using a clip from the film as an intro to many Disney animated films. As such, the two forms of IP law being held hand in hand here effectively still prevents Willie being… actually used as a part of the public domain in practice. I can’t think of a way Willie can be produced without being a trademark violation of Mickey Mouse or else being a reproduction that would’ve already fallen under fair dealing…
What does the class think? What are the benefits, from a user’s perspective, of a work with such heavy trademark protections becoming part of the public domain?
You can find a bit more about the topic here: https://www.ign.com/articles/mickey-mouse-is-set-to-become-public-domain-in-2024-but-its-a-bit-complicated
(This post is for discussion purposes – assignment post still to come).
Communications Law
Good post! This does ask an interesting questions. This is how I would approach it.
According to s.4 of the Trademark act, a mark is used if:
“it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.”
Cases such as Clairol and Syntex v. Apotex hold that unless the mark is on the packaging, then there is no “use.” For example, the court in Clairol held that Revlon was not using Clairol’s mark in the brochure because the brochure was not the product that Revlon was selling. Without a use from s.4, there is no s.19 infringement.
So, let’s say I make a comic book called Captain Mouse (assuming that name is not trademarked in some way). The comic is a shot for shot replication of the Steamboat Willie cartoon, using the exact same artistic style and everything. However, on the cover of the comic book there is no reproduction of anything still trademarked. It’s black cover with the words Captain Mouse and nothing else. It’s sold in a plastic wrap, so nobody can look in the magazine until they buy it. In a such a case, I think this would not be use of a trademark. Although Mickey Mouse is a trademarked term and would appear in the comic book, that name is not present on the packaging. The trademark is not being “used.” If there is no use, s.19 does not apply.
This is also likely not a confusing mark as per s.20. I dare say that the reasonable person would not associate the works “Captain Mouse,” with Mickey Mouse. If they do, then I could pick a less confusing title, something like “A day on the Riverboat.” The latter title is so far separated from the trademark of Mickey Mouse, I can’t imagine that this would confuse anyone.
I don’t think s.22 would apply here either, because there is still a lack of use. If the cover is completely absent of anything Disney related, I don’t see how Disney could argue that the comic used their mark to draw away customers. The customers have to buy the comic before they are exposed to the trademark. Fundamentally, this makes sense. Trademark is a commercial protection. The law is meant to prevent people from leeching on the commercial success of another’s mark. If comic is sold absent of trademark, then it can’t said that I am using the trademark to draw away sales. Also, the more strict requirements of Veuve Clicquot. Disney would have to prove the my comic is indeed diluting their business. I don’t know if Disney makes a Steamboat Willie comic book, so there might be nothing to dilute. I don’t think they could prove that my comic book would reduce the amount views they get on YouTube.
As for the copyright element, I don’t think this comic would fall under fair dealing. Let’s say I mass produce and sell the comic book. Commercial activity is not an accepted purpose. Even if I am able to sneak it in as a parody or something like that, it would likely fail the fairness analysis. Elements of fairness analysis working against me would be:
* What ever the accepted purpose is, it may only be a shield for the true purpose of commercial activity
* I am dealing multiple copies of the entire work
* There is no greater benefit of the nature of this work
* It has the negative effect of drawing customers away from Disney
Also, if you look at the end user as well, as York v. Access Copyright requires, they don’t really have an accepted purpose either. Their purpose is entertain, which is not on the exhaustive list. If there is an argument that the end user wants to study or research the video, then a clear alternative is watching it for free on YouTube on a Disney affiliated channel. In short, I don’t think that me trying to sell a comic book where the scenes are copied shot for shot would be a fair dealing.
The one counter argument for trademark is perhaps s.22.
In short, I think that if you create a work which does not display any trademark to the consumer
Steamboat Willie is not the first instance of a cartoon entering the public domain, although it will certainly be the most famous cartoon to enter the public domain for the foreseeable future. A Looney Tunes cartoon titled Porky’s Railroad is in the public domain and features Porky Pig as the titular character. Porky Pig is also trademarked by Warner Bros, so this serves as an example of a character existing both in the public domain and as a trademark.
Despite this, I can not recall ever seeing any Porky Pig products that were not released by Warner Bros, or at the very least, without the consent of Warner Bros. While a copy of Porky’s Railroad could be sold to the public, like J says, the trademark cannot be displayed to the consumer. This requires the cartoon to be sold without displaying Porky Pig. From a creator’s standpoint, one could conceivably create something based on Porky’s Railroad, such as a sequel, but it would require the Porky Pig in the cartoon to be based solely off of the depiction of Porky Pig in Porky’s Railroad, and not off of any future iteration character that is not in the public domain. However, the issue again is that it would not be possible to display the character of Porky Pig in the marketing of the product, such as on the DVD cover. As such, while there are avenues for creators to use characters who have works in the public domain, such as Porky’s Railroad and soon Steamboat Willie, the issue stems from using the character in any marketing material.