A Not-Quite-Forever Copyright

Jesse Kirkland is a J.D. candidate, 2021 at NYU School of Law.

Mickey Mouse will enter the public domain in 2024. For more context regarding what that means (and what it doesn’t), JIPEL Blog published a post in December 2019 that addresses the topic.^[1] As mentioned in the December post, the last major lobbying effort to extend copyright terms statutorily occurred with the passing of the Sonny Bono Copyright Term Extension Act of 1998. While there has been no significant effort to extend copyright protection via statute since, that does not mean that copyright holders are doomed to lose control of their most iconic works. It might be possible that copyright owners can pull from the patent playbook and develop strategies to “evergreen” their most valuable assets.

In patent law, “evergreening” is an umbrella term referring to various strategies patent holders use in order to extend their exclusive control over a particular product beyond its patent term. These techniques often do not involve an actual extension of an existing patent, but instead use other means to effectively maintain exclusive control over that product, even after the patent has expired. One method of patent evergreening involves filing new patents that are closely related to the patent nearing expiration such that the patent owner can use the new patent claim to effectively protect their financial interest in the expiring product. Drug companies will, at times, use this technique. As the patent on the active ingredient of a blockbuster medication is nearing its expiration, some companies have been known to claim a large number of complex—often speculative—patents. When other companies prepare to market and sell generic versions of the drugs, the original patent holders can threaten the would-be generic competitors with a patent infringement suit in relation to their newly filed patents.^[2] In copyright, there is no generally recognized equivalent to patent’s “evergreening.” One major reason for this may be that statutory extensions have been so effective in protecting copyrighted works for longer and longer periods of time that, for many decades, there was simply no need. Only in the past few years have we finally seen copyrights expire at a steady pace without further legislation on the horizon. Mickey Mouse will be one of the first major characters to enter the public domain in this new regime that both is still actively used by its copyright owner and that maintains significant relevance in popular culture. There is real value in Mickey, not just to Disney, but also to creators who would want to make use of their rights to works in the public domain come 2024.

Before hypothesizing exactly what copyright evergreening might look like, it is important to understand some of the differences between copyright and patent protection. While both patent and copyright protection are rooted in the Constitution, the length and nature of the rights bestowed upon the intellectual property owner are distinct. A complete list of differences between the two could fill multiple textbooks, however, broadly, copyright allows for a length of protection that is either 95 years or the life of the author plus 70 years, depending if the author is a corporation or an individual, while patent protection only lasts for 20 years. The tradeoff is that patent protection allows for a complete monopoly on the patented invention regardless of if there’s been actual copying while copyright protection only protects against actual copying of the protected work (and acts related to copying, such as creating derivative works, distributing the copyrighted work, etc.). To illustrate, if an inventor, by coincidence, creates an invention that is exactly the same as a pre-existing, patented product, it does not matter whether he or she actually copied the product, there is still the potential for patent infringement liability.  If, however, a person, having lived under a rock his or her entire life—cut off from society—were to sit down at a type writer one day and, by pure, cosmic serendipity, type out, verbatim, the exact text of the Harry Potter series, that person would not have committed copyright infringement due to the defense of “independent creation.” While in practice, such a substantial similarity would almost certainly be strong evidence that actual copying had occurred, it is important to note that the exactitude in this unlikely scenario would be used as evidence of copying and would not be a basis on which to hold a defendant liable if it were somehow demonstrated, without a doubt, that no copying actually happened. The independent creation defense to copyright infringement means that any attempt at evergreening an existing copyrighted work would need to operate less as a doctrinal preclusion and more as a dissuasion tactic. 

One method that might achieve this aim would be for a copyright holder to continue to create derivative works of the expiring copyright in an attempt to narrow the breadth of novel ideas available to creators who would like to author their own derivatives of the soon-to-be public domain work. Although the defense of independent creation means that a work only needs to be original (not copied) and not necessarily novel, the objective fact of independent creation is a very different matter than demonstrating independent creation successfully in court. By creating derivative works that are both evocative of the expiring copyrighted work while differing enough to contain its own copyrightable elements, a copyright owner could create a legal landscape that, while technically navigable, would be unappealing for most to endeavor to traverse.

As an example of what this might look like we can examine Disney’s cartoon series Mickey Mouse.^[3] Premiering in 2013, this series is the first in Mickey’s nearly a century of features to simply use the character’s name as the title of the program without any other context. The animation style is a significant departure from what was most commonly seen in more contemporary portrayals of Mickey up until the show’s release—harkening back to an art style much more reminiscent of Mickey from Steamboat Willie (for a comparison between Steamboat Mickey and his contemporary counterpart, see the December post^[4]).

Mickey, as presented in Mickey Mouse, seems to almost split the difference between Steamboat Mickey and contemporary Mickey. His clothing is colorized in the contemporary palate, but his face remains the classic white color instead of the contemporary beige that is most commonly featured in the present day. In addition, his eyes are almost entirely black, with only small reflection lines—much more similar to Steamboat Mickey and a notable departure from most contemporary renditions of the character which feature white eyes with expressive black pupils. Without seeing Mickey Mouse, if one were to dream up a derivative interpretation of Steamboat Mickey that would still appeal to modern sensibilities, it would likely come very close to Mickey Mouse’s portrayal of the character—close enough to the original to make full use of the (soon-to-be) public domain work, yet with sufficient modernization to ensure enough originality to be copyrightable as a derivative work.

What the existence of Mickey Mouse means for those interested in creating their own derivatives of the classic cartoon icon come 2024 depends on the context. Legally, once Steamboat Willie is in the public domain (and assuming compliance with trademark law) that rendition of Mickey is fair game, and any original derivatives are copyright protected as such by the author of those derivatives. Practically, however, no one lives under a rock and almost any author interested in building a creative work that is derivative of Steamboat Mickey will certainly be aware of Mickey Mouse, and demonstrating awareness is a major step toward proving copyright infringement in court. Ultimately, if you are one of the brave souls dreaming of creating your own Mickey Mouse cartoon series in the next few years, I would recommend you chat with a qualified legal professional. As someone whose been trying to wrap his head around this stuff for the past three and a half semesters, believe me when I tell you, it’s complicated.

^[1] (https://blog.jipel.law.nyu.edu/2019/12/in-2024-mickey-mouse-will-finally-enter-the-public-domain-sort-of/)

^[2] (https://www.theage.com.au/national/the-awful-truth-about-evergreening-20040807-gdyero.html)

^[3] Note: this example is meant to be a theoretical illustration only and does not reflect an attempt to impute or speculate as to the intentions of the Disney Corporation or its affiliates.

^[4] (https://blog.jipel.law.nyu.edu/2019/12/in-2024-mickey-mouse-will-finally-enter-the-public-domain-sort-of/)