Disney, Mickey Mouse and Trade Marks

I’m friends with a couple who are OBSESSED with Disney. They’ve seen all the movies. They know all the songs. They’ve been on multiple trips to multiple Disneylands in multiple countries. They recently got engaged at Disneyland, such is the extent of their love for all things Disney.

It got me thinking about the nostalgic power of Disney for people of my generation (I was born in the 80s). We didn’t grow up with the internet or smartphones or streaming services. We grew up with a few TV channels and a VHS player. Getting Aladdin on video was a REALLY big deal. Going to the cinema to see the Lion King was REALLY, REALLY big deal. My little 10-year-old mind would be blown by the access future me has to an enormous library of Disney movies, watchable and rewatchable on demand, for comparatively little money, on a device that I carry around in my pocket, which has a screen not much bigger than a cassette tape.

But enough about me. Walt and Roy Disney started a company in 1923 and in October 2023 that company celebrated its 100th birthday. As one of the biggest and most successful businesses and brands in the world, competitive in various markets including film, TV, streaming and theme parks, it was a birthday worth celebrating.

Disney’s enviable market share and overall success is undoubtedly attributable (at least in part) to its ability to monopolise the attention of children of my generation (as above, we were comparatively less distracted by comparatively fewer choices when it came to cartoon watching). But Disney’s success is also attributable to another kind of monopoly, namely its ability to monopolise its unique and distinctive stories, characters, animations and brand through its intellectual property rights.

Intellectual property rights are all about birthdays and anniversaries, which brings me to another Disney birthday. January 2024 marks 95 years since Disney’s first animated short film featuring the iconic character Mickey Mouse. The short film, Steamboat Willie, was released in 1928 and it was a ‘first’ in a couple ways. It was the first film to feature Mickey Mouse and it was the first Disney film with sound.

The significance of this Disney birthday is that it marks the expiration of the copyright protection for Steamboat Willie under US law, which means that from January 2024 the animated short film will be in the public domain. What it doesn’t mean, however, is that copyright protection for any other later film featuring Mickey Mouse will be lost. Neither does it mean that any other intellectual property rights relating to Mickey Mouse will be lost e.g. trade mark rights.

Trade mark rights are particularly important in this context because, whereas almost every other intellectual property right expires eventually (copyright, database rights, design rights, patents etc.), trade marks can in theory last forever (provided that they remain in use and provided that all the formalities that go with trade mark ownership are complied with e.g. the requirement to periodically pay trade mark renewal fees to maintain the registration).

The importance of maintaining trade mark protection, particularly after copyright protection has expired, is demonstrated by the ‘Winnie-the-Pooh: Blood and Honey’ saga. Winnie-the-Pooh was written in 1926, which meant that copyright protection under US law expired in 2022 and the work passed into the public domain. The following year, the aforementioned parody horror movie was released in theatres in the US portraying WTP as a savage killer bear! Grim.

It’s worth mentioning that Disney has attracted a fair amount of criticism over its first century in business, much of it valid in my view. But if Disney wants to preserve as much as possible the integrity of its iconic characters, if it wants to protect the powerful sense of nostalgic that many

Disney characters have for people of my generation, and if Disney wants to prevent a parody horror version of Steamboat Willie where a murderous Mickey Mouse goes on some sort of nautical rampage, it would be well advised to maintain and enforce any trade mark rights it has protecting its iconic characters.

As ever, understanding intellectual property law requires us to untangle a complex web of birthdays, anniversaries, territories and overlapping rights. If you are struggling to understand how your intellectual property rights and how best to secure, manage or enforce them, please get in touch with us.