Can Peter Rabbit Save Mickey Mouse?

Tonya J. Gisselberg 

Mickey Mouse first appeared in Disney’s Steamboat Willie cartoon in 1928.  Under the Copyright Act of 1976, Disney’s copyright on Steamboat Willie was set to expire at the end of 2003, 75 years from the publication date.  In 1998, Congress passed the Sonny Bono Copyright Term Extension Act to extend copyright terms another 20 years.  The Sonny Bono Copyright Term Extension Act has also been called the Mickey Mouse Act.  Under current law, the Steamboat Willie copyright is set expire and the work to go into the public domain at the end of 2023.

In Dastar Corp. v. Twentieth Century Fox Film Corp., the U.S. Supreme Court refused to let Fox Film use trademark law to reclaim its expired copyright from the public domain. 

Once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution. Thus, in construing the Lanham Act, we have been careful to caution against misuse or over-extension of trademark and related protections into areas traditionally occupied by patent or copyright.  The Lanham Act, we have said, does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity.  Federal trademark law has no necessary relation to invention or discovery, but rather, by preventing competitors from copying a source-identifying mark, reduces the customer's costs of shopping and making purchasing decisions, and helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product.  Assuming for the sake of argument that Dastar's representation of itself as the ‘Producer’ of its videos amounted to a representation that it originated the creative work conveyed by the videos, allowing a cause of action under § 43(a) for that representation would create a species of mutant copyright law that limits the public's federal right to 'copy and to use, expired copyrights.

Will the Dastar ruling prevent Disney from using trademark law to protect Mickey Mouse?  In her recent CSUSA presentation in Seattle, Washington, Columbia Law School Professor Jane C. Ginsburg argued that Dastar did not answer the question of whether a cartoon character whose copyright has expired can be protected by a trademark.

Enter Peter Rabbit. 

English publisher Frederick Warne & Co., Inc. published the Beatrix Potter books.  Peter Rabbit, a naughty rabbit, but not a wascally one, is probably Miss Potter’s most well-known character.  As the books entered the public domain, other publishers began to publish the Peter Rabbit books.  Warne sued Book Sales, Inc. for trademark infringement.  Warne admitted that some of the Peter Rabbit books were no longer protected by copyright in the U.S.

Nevertheless, Warne claims exclusive rights in the cover illustrations, and character marks derived from those illustrations, which were originally created by Miss Potter for Warne's editions of the seven books, and which do not appear within the text of the books themselves.  In addition, it claims exclusive trademark rights in an illustration appearing within The Tale of Peter Rabbit, referred to as the "sitting rabbit." Three of the covers have been registered under the Lanham Act as book trademarks the ‘running rabbit,’ the ‘dancing squirrel,’ and the ‘reading mouse.’ Protection for the unregistered marks is claimed on the basis of Section 43(a) of the Act, which permits claimants to prove validity without the benefit of the presumption of validity that registration confers.

Warne has creatively exploited public affection for Miss Potter's characters by using, and licensing the use of, the eight illustrations on a variety of commercial products.  Thanks to its marketing efforts, Warne claims, the characters portrayed in the eight illustrations, particularly the ‘running rabbit' have attained a place in the public esteem comparable to Mickey Mouse, Peter Pan, and Raggedy Ann and Andy. 
The notion that a British cony, however endearing, could gain as important a place in American hearts as Mickey Mouse seems dubious.  Both are rodents, it is true, and thus equally entitled to our affections.  But Mickey has had the benefit of competing for the American heart and dollar through moving pictures, an insurmountable advantage.  Luckily for plaintiff, though, its burden is far less than its papers suggest.

The district court ruled that book covers should be protected according to the same standards as trade dress or packaging cases.

Thus, the proper factual inquiry in this case is not whether the cover illustrations were once copyrightable and have fallen into the public domain, but whether they have acquired secondary meaning, identifying Warne as the publisher or sponsor of goods bearing those illustrations, and if so, whether defendant's use of these illustrations in 'packaging' or 'dressing' its editions is likely to cause confusion.

The district court denied Book Sales’ motion for summary judgment.  Frederick Warne & Co. v. Book Sales, Inc.

Professor Ginsburg contends that Warne is distinguishable from Dastar and that Warne is still good law.

The Steamboat Willie situation is one of many topics Professor Ginsburg discussed during her presentation.  I do not claim to have captured the nuances Professor Ginsburg advanced.  The point is that Dastar may not be the end of the discussion of whether trademark law can protect copyrighted works when the copyrights expire.

Original