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Steamboat Willie will enter the public domain in the USA in 2024. Does this mean that people in the USA will then be able to reproduce the Mickey Mouse depicted in that film and make derivative works of Mickey Mouse without requiring permission from The Walt Disney Company? Wouldn't Disney be able to use its Mickey Mouse trademarks to stop people from making reproductions or derivative works? If so, what is the significance of the copyright expiry?

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No, but it might be able to stop commercial exploitation

Copyright and trademark protect different things.

Copyright protects the right to copy or make derivatives of art or literature. So, once it enters the public domain, anyone is free to copy or make derivative works and distribute them.

Trademark protects to use of product identification in a commercial setting, that is, the trademark owner has the exclusive right to use a design to identify their goods and services within the designated industry centre in the designated geographic region.

So, while Disney cannot stop you making a film using a derivative of Micky Mouse (as shown in Steamboat Willie), they have exclusive trademark rights to use that image in entertainment, including films, if a reasonable person could be confused that your film was their film. It’s difficult to see how you could use MM without causing that confusion.

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This has already been tried, and the Supreme Court didn't like it.

In Dastar Corp. v. Twentieth Century Fox Film Corp., the Supreme Court was confronted with a "reverse passing off" claim under the Lanham Act. Fox accused Dastar of plagiarizing a public domain film originally created by Fox (advertising it as Dastar's original work), and claimed that this was a violation of the Lanham Act (which is the main trademark statute for the US). "Reverse passing off" is a somewhat unusual cause of action where the defendant is accused of misrepresenting somebody else's product as their own (a reversal of the more usual "passing off" claim, where the goods are created by the defendant but misrepresented as the plaintiff's), so it would seem to be a close fit for this sort of claim.

The problem for Disney is, Fox lost that case, and it wasn't even close. The court unanimously held that the Lanham Act cannot be extended to "create a species of mutant copyright law," and that once a work has passed into the public domain, anyone may copy it, with no attribution required. The Court reasoned that copyright and patent law are designed to balance the interests of the public against the interests of the author or inventor, and a finite term is a very intentional aspect of that balance. Allowing creators to use trademark law as a means of extending their copyright or patent monopolies indefinitely would upset this balance and undermine the interest of the public.

The Court also pointed out that, when Congress wants to extend the scope of copyright, it tends to do so with much greater specificity than a few ambiguous words about the "origin of a product," identifying the Visual Artists Rights Act as an example of how Congress could've written such a law if it had wanted to. The Court felt it would be imprudent to invent a whole new authors' right when Congress had declined to do so.

Having said all of that, the Court went on to conclude that the Lanham Act's reference to the "origin" of a product is only applicable to the manufacturer or other creator of a physical object, and not to the author of a creative work. Since Dastar created the physical tapes it was selling (regardless of what was on them), the tapes were not misbranded under the Lanham Act.

That doesn't mean you can do whatever you want.

Dastar was a very unusual fact pattern, where the former copyright holder was trying to directly prevent the commercial exploitation of a public domain work, which had only undergone minor changes from the original. It does not necessarily mean that you can just go and slap (the 1928 version of) Mickey Mouse on random products and sell them - that would be a very different fact pattern, because now we're talking about the origins of physical goods. Dastar expressly preserves the rule that you can't mislead consumers about the origins of physical goods. If a consumer could plausibly believe that your (physical) product was made by Disney, because it has Mickey Mouse on it, then you may violate Disney's trademarks, and they will probably sue you.

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The Disney corporation still owns the likeness of its characters.

For instance Winnie the pooh entered the public domain in 2022. You cannot use the distinctive likeliness of Winnie in the manner that Disney created but you can now create your own.

Disney winnie

Rhys Waterfield winnie

LINK

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    "Disney ... still owns the likeness of its characters" — All likenesses? Including the specific likeness of Mickey Mouse that appears in Steamboat Willie, even after that film enters the public domain?
    – Flux
    Commented Sep 10, 2022 at 19:40
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    Disney does hold a trademark for "Mickey Mouse" as applied to "Presentation of motion picture films" (Ser. 78163587 , Reg 3308015, among others. So your movie pitch for Mickey Mouse: Murder and Mayhem (tagline: "The gloves come off") may run into trouble. By contrast, Disney's trademarks for Winnie the Pooh only cover "animated entertainment for children" and "motion picture films in the nature of adventure and comedy". How shortsighted of them. Commented Sep 10, 2022 at 20:34
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    Can you explain in what sense Disney "owns the likeness" of the characters, and how you know this? As precisely what form of intellectual property? Copyright, trademark, ??? Commented Sep 10, 2022 at 20:36
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    "Winnie the Pooh entered the public domain in 2022": no he didn't. Characters are not protected by copyright; only a specific depiction of a character may be protected by copyright. Some words describing Winnie the Pooh or an image of him might have entered the public domain -- neither of which was created by Disney, I might add. Mickey Mouse may still be protected by trademark after 2024, and images of him created subsequent to Steamboat Willie will be protected by copyright, but the images in Steamboat Willie will not be, and trademark protection does not prevent copying.
    – phoog
    Commented Sep 10, 2022 at 20:49
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    There are plenty of public domain characters that have been adapted by Disney. You can generally freely make derivative works of the original stories but you have to avoid using Disney-specific content. Some characters that this applies to include Robin Hood, Aladdin, Cinderella, and Peter Pan. The earliest known Robin Hood stories date from the 14th century. Those have been out of copyright for centuries, if they ever were subject to copyright. Commented Sep 12, 2022 at 13:22

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