Earlier this year, Steamboat Willie, the original version of Mickey Mouse from 1928, officially lost its copyright protection held by Disney and moved into the “public domain.” Only one day later, Variety reported that Steven LaMorte is set to direct an untitled horror-comedy about “a sadistic mouse” that “torment[s] a group of unsuspecting ferry passengers.” Likewise, the 1926 Winnie-the-Pooh book, written by A.A. Milne and illustrated by E.H. Shepard, went into the public domain on January 1, 2022. Only five months later, the trailer released for Winnie-the-Pooh: Blood and Honey, a slasher film involving the beloved bear … with a knife.
Copyrighted Works Usually Enter the Public Domain 70 Years after the Death of the Author
Each year, famous artistic works become available for public use by permanently losing legal protections provided by their copyrights and relocating to the public domain. Copyrights provide their holders with the exclusive rights to reproduce, distribute, copy or make derivatives of that work. But, in most cases, 70 years after the death of the author, the art makes a move. Like a teenager moving out for college, artistic works travel to the public domain where new and, perhaps, wild experiences may take place.
Once in the public domain, there are no exclusive rights. Anyone may use, and profit from, a public domain work, no matter how famous that work might be. The business opportunities seem too good to be true. And they might be. The public domain can be a dangerous space, fraught with legal pitfalls for any would-be profiteer. Businesses should consider: Is it worth the risk to incorporate public domain works into our business model? Just because a business can make an R-rated Winnie-the-Pooh horror movie, should it?
Creating a Derivative of a Famous Work Offers Limited Protection
Beyond turning children’s characters into nightmares, there are many ways one might incorporate a famous public domain work into one’s business. Imagine a honey business looking for a marketing boost. There is perhaps no more famous character associated with honey than Winnie-the-Pooh. Maybe the honey business would benefit from a rebrand as Winnie-the-Pooh Honey Company. Or, what if a business owner’s name is William, and he has a boat rental enterprise? Using the name “Steamboat Willie Boat Rentals” might not be a bad idea for marketing purposes, especially if the logo incorporates the famous rodent.
However, relying on the prior work of others can be perilous. There might be numerous versions of a public domain work that remain copyrighted. Disney will certainly continue to enforce its rights to all modern versions of Mickey Mouse for which it owns copyrights. The boat rental company is free to make its own derivative of Steamboat Willie — that is, new imagery based on Steamboat Willie. But what if the resulting new designs end up looking more like the modern Mickey Mouse?
Some works have been regurgitated so many times that it’s hard to keep the versions straight. L. Frank Baum wrote the novel The Wonderful Wizard of Oz in the year 1900; it’s a very old resident of the public domain. However, the more famous 1939 Wizard of Oz movie starring Judy Garland is not. Disney added its own version in 2013 with Oz the Great and Powerful. One must be confident that only the original work is being copied and not the unique elements from various protected derivative versions.
When one creates a new work, copyright protection automatically vests in the author. But if a company creates a derivative version of a work now in the public domain, it will hold the copyright only to the elements of the work that are different and have only minimal ability to enforce its rights against would-be infringers. This is considered “thin” copyright protection. After all, if something is in the public domain for one, it’s in the public domain for everyone. Suddenly, all the Williams of the world could start their own Willie the Steamboat-related companies and options to stop them are significantly limited.
It becomes even more complicated when multiple copyrighted versions of public domain works are copied. The United States Court of Appeals for the Second Circuit has stated the proper analysis to determine infringement in that situation is to factor out the public domain elements from the newest work and see if it is substantially similar to the unique and new choices made by the artist whose work was copied.
Also troubling is the possibility that others using similar imagery based on the same public work might face public relations scandals, diminishing their goodwill with consumers. Such scandals could ruin the reputations of unrelated businesses using similar imagery.
Copyrighted Works Now in the Public Domain May Also Be Trademarked
Copyright is not the only body of law business owners need to consider if they want to incorporate a public domain work into their own marketing. They should also be aware of trademark law. Trademark protections do not expire based on the death of the author.
Trademarks can be perpetual so long as they are being used to identify the source of a good or service. Steamboat Willie may have lost copyright protection but if Disney incorporates the character into any trademark, such as in the logo for Disney Animation Studios, strong protections remain. Trademark infringement generally arises when someone uses a word or image that causes confusion as to the source of goods or services. Any use of Steamboat Willie that is likely to confuse someone as to whether goods or services come from Disney is prohibited under the federal Lanham Act. Would someone think a mason jar of honey produced by the derivative Winnie-the-Pooh Honey Company is sponsored or approved by a famous brand?
Utilizing public domain work in one’s business might seem like a way to attract attention or a way to fast-track design processes, but it comes with numerous risks. When making investment decisions, the safest approach is usually to start from scratch with unique creations and secure full intellectual property rights. Seeking legal advice about your rights from an intellectual property attorney ahead of time allows you to build your business with confidence.
Mario Vasta is an attorney and director in Fennemore’s business and intellectual property practice groups. He represents clients in domestic and international intellectual property litigation matters, including trademark, copyright and counterfeiting issues, cancellation and opposition actions, before the U.S. Patent and Trademark Office and in state and federal courts.
