MICKEY MOUSE AND COPYRIGHT,,,WIZARDOFBAUM

  

  Mickey Mouse -- A Truly Public Character
 

  By Lauren Vanpelt, Spring 1999

"Disney's copyrighted character Mickey Mouse is perhaps the most universally known and loved cartoon character in the world. For generations, children and adults alikehave been entertained by Mickey Mouse, who has appeared in hundreds of Disneyanimated motion pictures, television shows, video cassettes, comics, books, and in various other media. Indeed, the Mickey Mouse character identifies and symbolizes Disney itself." Waft Disney Company v. Transatlantic Video Inc., U.S.D.C., Central District of Ca., Case No. CV-91-0429 (1991). This is how Disney described its star, Mickey Mouse, in a copyright infringement case pleading. Can there be any argument on this point?

Who has never heard of Mickey Mouse? His friendly and familiar image has invaded even the remotest regions of our world. And just as familiar is Mickey Mouse's creator and parent company - Disney. Rarely has a twosome like Disney and Mickey Mouse been able to achieve fame and recognition on such a large scale. But does Mickey Mouse really belong to Disney? Wait Disney most certainly created the character, but did Disney forfeit its copyright ownership of Mickey Mouse?
An examination of Mickey Mouse's history clearly demonstrates that the copyright in Mickey Mouse undeniably belongs to the public. Disney created the image, but subsequently failed to properly manage its copyright in Mickey Mouse, thereby forfeiting it. The copyright  in Mickey Mouse belongs to every adult who has ever smiled at a cartoon Mickey Mouse, and to every child who has cried when a six foot Mickey Mouse bent over to give mom and dad that photo opportunity.
1. The Creation of Mickey Mouse (1)
After losing a large portion of his business and employee base in a failed contact negation,  Walt Disney and his wife left New York and traveled back to California. It was on that train ride that Walt Disney first began doodling a mouse he hadadopted as a pet while working as a commercial artist in Kansas City. These doodles became the basis for Mickey Mouse. Walt Disney wanted to name his creation Mortimor, but fortunately his wife talked him down and they settled on Mickey.  Disney Studios began work on the first Mickey Mouse cartoon in March in 1928. "Mickey Mouse in Plane Crazy" was inspired by Charles Lindberg's record breaking trans-Atlantic flight. The silent animated motion picture premiered at a sneak preview on Sunset Boulevard in Los Angeles, California in April of 1928. No one was interested in what was to become one of the most recognized images in the modern world and the film was stored away. Disney gave Mickey Mouse a second chance in another animated silent motion picture "Gallopin' Gaucho" in June of 1928. After its premiere in August, this film joined its predecessor on the storage shelf.
As the proverb goes, the third time is the charm. In an attempt to stir up interest in his character, Walt Disney provided Mickey Mouse with a voice, and he has not stopped talking since. In July, production began on the first "all-talking" animated motion picture, "Steamboat Willie." At it's premiere on November 18, 1928 at the Colony Theater in New York, it was a hit. Based on Mickey Mouse's success when accompanied by a soundtrack and his confidence in his creation, Walt Disney returned to Mickey Mouse's earlier failed films and added sound in November of 1928.
Walt Disney filed for a copyright on "Mickey Mouse in Plane Crazy" on May 26, 1928 as an unpublished work. This copyright was never updated. "Steamboat Willie" was copyrighted on November 21, 1928. On August 9, 1930, Walt Disney copyrighted the sound versions of the first two silent films re-titled "Plane Crazy" and "Gallopin' Gaucho."
2. The Mickey Mouse Club (2)
Beginning in 1929, Disney created the Mickey Mouse Club targeted to movie-going children to promote his new star. Even though Wait Disney did not coin the term "Mouseketeers" until 1950, and the TV show "The Mickey Mouse Club" did not air in the U.S. until October of 1955, by 1932, U.S. membership in the Mickey Mouse Club had reached one million. Disney sold a line of club materials to the theater operators for use in the Mickey Mouse Club meetings held at the theaters. These materials included Mickey Mouse Club applications, membership cards, and birthday cards, as well as the "Official Bulletin of the Mickey Mouse Club" among other merchandise. Each item depicted an image of Mickey Mouse, but none contained a copyright notice.
3. Constitutional Authority
The United States Constitution gives Congress the authority to grant copyrights:

The Congress shall have Power ... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.(3)

Since the ratification of the Constitution, Congress has enacted several Copyright Acts. This discussion will focus on the two Copyright Acts in effect during Mickey Mouse's lifetime: the Copyright Act of 1909 (1909 Act) and the Copyright Act of 1976 (1976 Act).
Copyright cases are decided in federal courts, and only in federal courts.(4) 28 U.S.C. § 1338 states that "The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trade-marks. Such jurisdiction will be exclusive of the courts of the states in patent, plant variety protection and copyright cases." Seminole Tribe of Florida v. Florida states clearly, "Federal jurisdiction over copyright is exclusive." 517 U.S. 44, 73, 116 S.Ct. 114, 1132 (1996).
4. Purpose of Copyright
The United States is a capitalistic, democratic union, and these core values show themselves plainly in the modern purpose of a U.S. copyright: economic encouragement and protection balanced with public access to the new ideas and expressions. Ideas are never copyright protected. Only the original, creative expressions of these ideas can be copyrighted. Baker v. Seldan, 101 U.S. 99, 25 L.Ed. 841 (1879) (Only the expression of an idea is protected by copyright, not the idea itself.).
A copyright grants the proprietor exclusive rights that are designed to encourage creative people to devote their time and energy to the development of new expressions that will enrich society as a whole. Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 558 (1985). These rights include the right to copy, the right to prepare derivative works, the right to distribute copies, the right to sell the work, and the right to perform and publicly display the work.(5)
That encouragement takes the form of legal protection from others who would take he product of an author's time and labor and use it for their own gain. These rights reflect economic motives rather than moral ones. The U.S. copyright system is based on the notion that the person who expends the time and energy creating something has the sole right to exploit it. The U.S. Copyright Acts protect the economic value of the
creation. Contrast this with the European system which is based on moral rights, the droit moral. There, the author is said to have "birthed" the created expression, and has the rights to it as any parent/creator should.(6)  A European author has the rights to claim authorship of the work and to object to any distortion, mutilation, modification, or other derogatory action in relation to the work. The U.S. copyright system has adopted some of these rights in § 106A of the 1976 Act titled "Rights of Certain Authors to Attribution and Integrity."
While economic encouragement of creativity is practical, in order to benefit from an author's new expression, the public must have access to it. U.S. copyright law has established a balance whereby new works are protected for a limited time. Upon expiration of the copyright, the work goes into the public domain. La Cienga Music Co. v. ZZ Top, 44 F.3d 813, 816 (1995) ("Thus even if [the copyright proprietor] complied with the requirements of the 1909 Act, his [copyrighted protected] compositions entered the public domain-when the statutory copyrights expired without renewal.").
Material in the public domain is available to anyone and may be used, copied, or otherwise utilized to created a copyrightable work as an author sees fit. Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 449 U.S. 340, 347, 111 S. Ct. 1282, 1289 (1991) (Facts may not be copyrighted and are part of the public domain available to every person.). See also Miller v. Universal City Studios, Inc., 650 F.2d 1365, 1369 (1981). Section 7 of the 1909 Act prohibits the copyrighting of any public domain material.(7)The Ninth Circuit held:

In Compco, the court emphasized that the federal policy found in Article 1, Section 8, Clause 8 of the Constitution and in the implementing federal statutes is to allow . . . "free access to copy whatever the federal patent and copyright laws leave in the public domain."

Cable Vision, Inc. v. KUTV, Inc., 335 F.2d 348, 350 (9th Circ 1964) (quoting Compco Corp., 376 US at 237).
5. Governing Act
Only works that were protected under valid existing copyrights on January 1, 1978 are protected under the 1976 Copyright Act. If the work were in the public domain prior to the 1976 Act effective date, it remains there. Academy of Motion Picture Arts & Services v. Creative House, 728 F.Supp. 1442, 1445 (C.D. Cal. 1989). Therefore, any inquiry into the validity of the Mickey Mouse copyrights must
initially look to its status under the 1909 Act. Walt Disney Productions v. Air Pirates, 581 F.2d 751, 754 (9th Circ. 1978), cert. denied, 439 US 1132, 99 S.Ct. 1054, 59 L.Ed.2d 94 (1979). Under the 1909 act, copyright protection attached only to those works that were (1) copyrightable material (2) published (3) with the proper notice affixed.(8)
6. Common Law & Statutory Copyrights
Under the 1909 Act, there were two types of copyrights: statutory and common law.   Common law protection attached as soon as a work was created. Federal statutory copyright did not provide any protection to a work until it was published and registered. This situation led to all sorts of legal difficulties regarding the actual publication and registration dates, etc, and the copyright system was far from consistent in the two vastly different legal forums.
To simplify matters, the 1976 Act did away with the common law copyright and replaced it with a quasi-statutory copyright that applied to unpublished works. Section 303(a) of the 1976 Act reads:

Copyright in a work created before January 1, 1978, but not theretofore in the public domain or copyrighted, subsists from January 1, 1978, and endures for the term provided by section 302. In no case, however, shall the term of the copyright in such a work expire before December 31, 2002; and, if the work is published on or before December 31, 2002, the term of the copyright shall not expire before December 31, [2047].(9)

Prior to this section's existence, the copyright term for a published work under the 1909 Act was twenty eight years with an optional twenty eight year renewal term for a possible fifty six year term.(10) An unpublished work was protected forever or until it was published, which ever came first. And under the 1976 Act, the current term of a copyright is the life of the author plus seventy years.(11)
7. Fictional Characters
The 1909 Act does not explicitly deal with the copyrightability of fictional
characters. However, both the 1909 and 1976 Acts provide copyright protection to
component parts of copyrightable works. Fictional characters historically have
been granted copyright protection as a component part.
Section 3 of the 1909 Act extends copyright protection to copyrightable component
parts of an author's work. Walt Disney Productions v. Air Pirates, 581 F.2d 751,
754 (9th Cir.1978). Each component is covered under the copyright of the whole
work as though each were separately copyrighted.(12) The characters need not be
protected by a separate copyright. Air Pirates, at 754. Component copyrights
cannot extend the duration or scope of the copyright of the work as a whole.(13)
The Ninth Circuit held that "Originality is the indispensable prerequisite for
copyrightability." North Coast Industries. v. Jason Maxwell, Inc., 972 F.2d 1031
(9th Cir. 1992). The Supreme Court agreed that originality is a constitutional
requirement for copyrightability. Feist Publications, Inc. v. Rural Telephone
Service Co., 111 S.Ct. 1282, 1288, 113 L.Ed.2d 358 (1991). Therefor, in order to
be copyrightable, the fictional character must itself be original, and must be
included in a larger copyrighted work.
However, not all fictional characters are protected. Only those characters that
are highly delineated with constant traits qualify for protection separate from
the works in which they appear. Nichols v. Universal Pictures Corp., 45 F.2d 119,
121 (2nd. Cir.1930) and MGM, Inc. v. American Honda Motor Co., Inc., 900 F.Supp. 1287 (1995). Walt Disney Productions v. Air Pirates explains that where a
character is visually depicted, and contains the requisite attributes of
originality, a character is sufficiently delineated to receive copyright
protection. 581 F.2d 751, 755 (9th Cir.1978).
Copyright law will not protect characters where "it is virtually impossible to
write about a particular fictional theme without employing certain stock or
standard literary devices." CK Co. v. Burger King Corp., 1994 WL 533253 (S.D.N.Y. Sept. 30, 1994). In short, copyright protection is not available to stock
characters. Robinson v. Viacom International, Inc., 1995 WL 417076 (S.D.N.Y.). A
generic Southern plantation belle character will not be protected, but Scarlett
O'Hare will not appear in any other work without the approval of the copyright
owner so long as "Gone With the Wind" is protected under a valid copyright.
In summary, under the 1909 Act, fictional characters are copyrightable if they are
original components of larger copyrighted works with sufficiently delineated
traits and characteristics. This is true so long as the larger work is covered
under a valid copyright. Silverman v. CBS, Inc., 870 F.2d 40, 50 (1988). But what
happens when that is no longer the case? Federal copyright protection extends to a
fictional character only so long as the preexisting work containing the
character's origin is in fact copyrighted.(14) When a work containing the original
appearance of a character enters the public domain, that character is inextricably
pulled along. Silverman v. CBS, Inc., at 50. So while new copyrightable works
including the character are still being created, the character in those works is
no longer protected by a copyright once the original work enters the public
domain. Id. at 50.
Disney has claimed in court proceedings that Mickey Mouse's source works are
"Steamboat Willie" and "Plane Crazy." The Walt Disney Company v. Transatlantic
Video, Inc., U.S.D.C., Central District of Ca., Case No. CV-91-0429 (1991). Under
this assertion, Mickey Mouse is protected as a component part of those two
copyrighted works. Any inquiry into Mickey Mouse's copyright status therefore must
focus on the validity of the copyrights in those two films.
8. Publication Requirement
The 1909 Act generally required that a work be published before copyright
protection could be granted.(15) In order to be "published" under 17 U.S.C. § 12,
the work must have been "reproduced in copies for sale." Hub Floral Corporation v.
Royal Brass Corporation, 454 F.2d 1226, 1229, 16 A.L.R. Fed. 588, 172 U.S.P.Q. 418 (1972). The "date of publication" for works offered for sale is the earliest date
when copies of the first authorized edition were sold, put up for sale, or
publicly distributed by the copyright proprietor.(16) However, motion pictures were
part of a limited class of works that could be registered for copyright protection
prior to "publication."(17) The U.S. Copyright Office did not consider the
distribution of motion pictures to theaters as performances that constituted
publication since the copies were not offered for sale or themselves distributed
to the public. 17 U.S.C. § 12 (1909 Act). Motion pictures could be copyrighted as
unpublished works.
"Mickey Mouse in Plane Crazy" was first registered as an unpublished work for
copyright on May 26, 1928. Copies of that silent film were later made available
for sale in the 1940's. The mere act of publicly displaying the film as an
advertisement for sale in a catalog does not constitute a "publication" under
section 10 of the 1909 Act. Steinberg v. Columbia Pictures Industries, Inc., 663
F.Supp 706, 714 (1987) quoting Warner Bros., 720 F.2d at 242-44 ("Promotional
broadcasts for television series legally parodying the Superman comic strip
character did not infringe the copyright on Superman character."). But if any
copies of the film were actually sold, then the film was "published," and
published prior to the 1976 Act's effective date. See Hub Floral Corporation v.
Royal Brass Corporation, 454 F.2d 1226, 1229, 16 A.L.R. Fed. 588, 172 U.S.P.Q. 418 (1972).
There is no question that the Mickey Mouse Club materials were published. Disney
printed the Mickey Mouse image on the membership applications, cards, bulletins,
birthday cards, etc, and sold them to theaters.
9. Notice Requirement
The 1909 Act granted copyright protection to works published with the proper
notice affixed. Proper notice was made up of three separate requisite parts: (1)
the word "copyright", the abbreviation "Copy.", or the symbol "©"; (2) the name of
the copyright holder; and (3) the year-date (the year the work was published).(18)
This copyright notice only needed to appear once per copy of the work.(19)
Failure to meet the notice requirement resulted in forfeiture of the copyright,
and the work entered the public domain. Caliga v. Inter Ocean Newspaper Co., 215
U.S. 182, 188 (1909). See also Data Cash Systems, Inc., 628 F.2d at 1042; Burke v.
National Broadcasting Co., 598 F.2d 688, 961 (1st Cir.1979), cert. denied,
National Comics Publications, Inc. v. Fawcett Publication, Inc., 191 F.2d 594,
598-99 (2nd. Cir.1951). This was a strict rule in that it did not take into
account whether the copyright proprietor intended to give up the protection on his
work through the omission of the copyright notice. Harris Custom Builders Inc. v.
Hoffmeyer, 92 F.3d 517, 520 (1996). ("A copyright can be forfeited whether or not
the proprietor of the copyright intends that result.") To avoid this, the author
had to insure that all three steps were carried out. For example, the appearance
of the year-date and the word or symbol for copyright were not enough without the
name of the copyright proprietor. Moger v. WHDH, Inc., 194 F.Supp 605, 606
(D.Mass.1961).
The 1909 Act recognized the possibility of human error and provided that "the
omission by accident or mistake of the prescribed notice from a particular copy or
copies shall not invalidate the copyright..."(20) This section went on to limit
recovery. The copyright proprietor could only recover damages from a party who
began to infringe after that party had actual notice. Innocent infringers were
free from any permanent injunctions unless the copyright proprietor reimbursed the
innocent infringer for his reasonable outlay costs.
The notice requirement extended beyond the first publication.(21) The copyright
notice must appear on all copies of the work, and failure to include that notice
on even some copies would result in the forfeiture of the copyright claim as
demonstrated by the court's discussion of that requirement in Lydiard-Peterson Co.
v. Woodman, 204 F.2d 921, 925 (1913). ("The notice required by the act of Congress to be placed upon each copy of the thing copyrighted...")
10. Source Works
Beginning in the 1980's, Disney distributed animated film compilations. These
compilations invariably include at least one Mickey Mouse film and perpetuate his
appeal and image in the minds of a new generation. Near Christmas of 1993, Disney
began to market Mickey Mouse: The Black and White Years, a laser disc collection
of the early Mickey Mouse films as part of a special on-going series entitled
"Disney's Exclusive Archive Collection." Disney describes this particular
compilation as:
This historic retrospective spans seven years, from the very first black and white
Mickey Mouse cartoon (1928) to the last (1935). Each cartoon has been
painstakingly restored and is presented in its original black and white form as it
was first seen in theaters.(22)
This collection contains the original versions of "Plane Crazy," "Steamboat
Willie" and "Gallopin' Gaucho" (the talking version). Included in the films are
the title cards - the equivalent of jacket covers and copyright pages in literary
publications.
The "Steamboat Willie" title card contains a copyright notice that reads
"COPYRIGHT MCMXXIX." The "Plane Crazy" (not to be confused with "Mickey Mouse in Plane Crazy") title card has a copyright notice that reads "COPYRIGHT MCMXXIX." The "Gallopin' Gaucho" title card also reads "COPYRIGHT MCMXXIX."(23)
Two elements must be offered to demonstrate copyright forfeiture: the copyright
notice was (1) omitted on (2) published copies of the work. See Bell v. Combined
Registry Co., 397 F.Supp. 1241 (N.D. 111.1975) ("To prove a forfeiture of the
copyright, the evidence must show: [1] the [work] was published, and [2] that no
correct notice appeared thereon.").
The two films Disney alleges are the Mickey Mouse source films are not copyright
protected because the title cards in the films contain improper copyright notice
which constitutes grounds for the forfeiture of the copyrights in those films. The
two title cards contained copyright notices reading "COPYRIGHT MCMXXIX." The 1909 Act requires that a copyright notice contain the year-date, a symbol or word indicating copyright, and the copyright owner's name. That last piece of
information is missing from the two title cards and renders the copyrights invalid.
A further problem for Disney is that the year-date is 1928, not 1929, for
"Steamboat Willie." It is not clear what the publication date for "Plane Crazy"
is. "Mickey Mouse in Plane Crazy" was first published in 1928. Sound was added
later that same year, but "Plane Crazy" was not copyrighted until 1930. An
incorrect year-date also renders a copyright notice invalid, thereby forfeiting
the copyright protection.
Disney is unable to take advantage of 17 U.S.C. § 20 (1909 Act). That section
provides protection to a person who mistakenly or accidentally omits a copyright
notice on a copy or copies. Disney did not omit the copyright notice; it failed to
affix the proper notice. Further, Disney is not some small, mom and pop operation.
One could reasonably expect its legal department to have noticed and corrected
this "oversight" long ago. Disney history demonstrates that Disney was involved in
copyright and trademark infringement suits as early as 1934.(24) Disney has had
plenty of opportunity to go back and correct any "mistakes" it made, but Disney
has not done so.
As a final bar to any action, there is a statute of limitations included in the
current Copyright Act. Disney would need to file a civil action for infringement
within three years of its commencement.(25) Since the notice requirements were
abolished more than three years ago, Disney has lost its opportunity to maintain a
civil action against any infringer under section 20 of the 1909 Act.
However, that is not the only problem Disney faces with the issue of copyright and
Mickey Mouse. "Steamboat Willie" and "Plane Crazy" are not the source works for
Mickey Mouse. Mickey Mouse first appeared in "Mickey Mouse in Plane Crazy" in
1928, and again in the silent version of "Gallopin' Gaucho" later that same year.
These are the source works for Mickey Mouse.
Unlike "Steamboat Willie" and "Plane Crazy," Disney has not included the title
cards from "Mickey Mouse in Plane Crazy" or the original, silent version of
"Gallopin Gaucho" in its collection, Mickey Mouse: The Black and White Years. So
while a persuasive argument can be made that the copyright notice on those two
title cards used the same incorrect format as the notice on the "Steamboat Willie"
title card created within the same six month period, and as the notice affixed to
the "Plane Crazy" title card created two years later, for the purposes of this
discussion, this author will grant Disney the full benefit of the doubt. For
purposes of this discussion, it is assumed that the copyright notice on the title
cards for "Mickey Mouse in Plane Crazy" and the original silent version of
"Gallopin' Gaucho" were correct. As a result, the character, Mickey Mouse, would
be protected as a component part of the larger copyrighted films for the sake of
discussion.
11. Derivative Works
Among the bundle of rights held by a copyright proprietor, one right is the
ability to authorize derivative works. Under the 1909 Act, "derivative work" was
defined by case law. The 1976 Act codified that definition in section 101 where it
defines a derivative work as "A work based on one or more preexisting works."(26)
United States v. Taxe explains
that a derivative work is one that "would be considered an infringing work of the
material which it has derived from a prior work." 540 F.2d 961, 965 (9th
Cir.1976). A copyright proprietor may allow another to create a second work that
is substantially copied from the copyrighted material. Litchfield v. Spielberg,
736 F.2d 1352, 1357 (9th Cir.1984), cert. denied. A copyright proprietor may also
use material from one copyrighted work in another, derivative work which could
then be copyrighted separately. In that situation, the copyright proprietor would
hold two separate copyrights.
Highly successful characters often appear in a variety of separate works. Some of
these works are sequels, such as the Nightmare on Elm Street films with the Freddy
Krueger character; other characters are part of a series, such as those in the
Star Wars trilogies. Still others, such as Mickey Mouse, are part of a collection
of mostly unrelated and nonsequential films. Since fictional characters are
protected by copyright as component parts of a larger copyrighted work, they are
protected from infringing copying. Subsequent works containing characters first
appearing in other copyrighted works are necessarily derivative works since they
are using preexisting, copyright protected materials.
Under this legal practice, Disney has created countless derivative works. In
particular, "Steamboat Willie" and "Plane--Crazy" were derivative works based on
"Mickey Mouse in Plane Crazy." They both employed a copyright protected component part, namely the character Mickey Mouse. "Plane Crazy" used even more than a character or two; it used the entire film and just added sound. The Mickey Mouse Club materials were also derivative works. They contained a printed image of Mickey Mouse on the applications, membership cards, birthday cards, bulletins, and so forth. Derivative works are themselves copyrightable, but only to a limited
extent. Section 103 of the 1976 Act clearly limits the scope of a derivative work
copyright:
The copyright in a derivative work extends only to the material contributed by the
author of such work, and does not imply any exclusive right in the preexisting
material. The copyright in such work is independent of, and does not affect or
enlarge the scope, duration, ownership, or substance of, any copyright protection
in the preexisting material.(27)
The copyright in the derivative work protects only what the author adds, and in no
way affects the preexisting material. Russell v. Price, 612 F.2d 1123, 1128 (9th
Cir.1979), cert. denied. The author of a derivative work has no special
relationship with the original material, nor does the copyright in the derivative
work in any way affect the copyright in the underlying work. See Silverman v. CBS,
Inc., 870 F.2d 40 (2nd Cir.1989). But as with everything else, there is always the
exception that proves the rule. In the case of derivative works, the exception
arises where the author of the derivative work and the underlying work are the
same. The theory is that the publication of a work containing preexisting material
constitutes the publication of both the new material protected as a derivative
work, and the preexisting material. See Grove Press v. Greenleaf Publishing Co.,
247 F.Supp. 518 (E.D.N.Y.1965). Professor Nimmer explains:
[A]ny authorized publication of a derivative work must necessarily also constitute
a publication of the preexisting work upon which it is based. Since a derivative
work by definition to some extent incorporates a copy of the preexisting work,
publication of the former necessarily constitutes publication of the copied
portion of the later.(28)
See also American Greetings Corp. v. Kleintab Corp., 400 F.Supp 228
(S.D.N.Y.1975). The Second Circuit Court of Appeals agrees. Shoptalk, Ltd. v.
Concorde-New Horizons Corp., 168 F.3d 586, 590 (1999) ("Once a work is published with the author's consent in any medium, it loses its common-law protections."). See also Harris Custom Builders v. Hoffemeyer, 92 F.3d 517, 520 (7th Cir. 1996).
The key to understanding this argument is to note that the derivative and
underlying work authors are one and the same, and that the publication is
authorized by the underlying work's copyright proprietor. If the derivative work
is published without copyright notice, then the underlying work is also published
without notice by the copyright proprietor, and both works will therefor suffer
the consequences of that omission under the 1909 Act: namely forfeiture of the
copyrights. Shoptalk, Ltd. v. Concorde-New Horizons Corp., 168 F.3d 586, 590
(1999). See also Caliga v. Inter Ocean Newspaper Co., 215 U.S. 182, 188 (1909).
Disney published Mickey Mouse's image on Mickey Mouse Club membership
applications, membership cards, bulletins, etc without affixing a copyright notice
to the works. These materials were "published" as defined under the 1909 Act as
they were "reproduced in copies for sale." Hub Floral Corporation v. Royal Brass
Corporation, 454 F.2d 1226, 1229, 16 A.L.R. Fed. 588, 172 U.S.P.Q. 418 (1972).
They were derivative works as they contained copyright protected materials -
Mickey Mouse. In short, Disney published its copyright protected image without
copyright notice, and thereby forfeited its copyright protection and claim to that
image.
"Mickey Mouse in Plane Crazy" is based on the sketches and doodles Wait Disney
made on a train ride. That makes "Mickey Mouse in PlaneCrazy" a derivative work.
Assuming these sketches have never been published, one could try to argue that
they are still copyright protected as unpublished works under common law. Under
section 303(a) of the 1976 Act it would appear that so long as Disney never
published the original sketches or doodles, Mickey Mouse is still copyright
protected under a quasi-copyright until December 31, 2002.
However, under the legal reasoning applied in the cases above, these sketches were
in effect published when "Mickey Mouse in Plane Crazy," the Mickey Mouse Club
materials, and subsequent derivative works were published. A defendant in a Mickey Mouse infringement case could successfully argue that the Mickey Mouse films and the Mickey Mouse Club materials were derivative works that did not vary
significantly from the original sketches and that the publication of the films and
the club materials also represented the publication of the underlying works in
another medium. Therefore, the film and club materials publications constituted
the publication of that material allegedly protected under either a common law or
quasi-copyright in the early sketches and doodles. See Shoptalk, Ltd. v.
Concorde-New Horizons Corp., 168 F.3d 586, 590 (1999) and Harris Custom Builders Inc. v. Hoffmeyer, 92 F.3d 517, 520 (1996).
This argument makes sense because otherwise, whenever a work fell out of copyright and into the public domain, the expired copyright proprietor could simply say there were earlier, unpublished drafts that constituted the original works, so
that the copyrighted materials were really only derivative works. This would
extend the copyright on the "derivative work" long past the statutory limits, and
thwart the legislative intent of the Copyright Acts.
12. Conclusion
Disney first created Mickey Mouse on a sketch pad while traveling from New York to LA in 1928. Those sketches, which were protected under a common law copyright, were the basis for the Mickey Mouse motion pictures. They also provided the basis for the images printed on the Mickey Mouse Club materials sold to theaters. Disney published its common law protected expression without the proper copyright notice attached to the films and on the club materials. The statute of limitations to rectify that omission has long since elapsed, as has the statute of limitations for Disney to file any infringement claims based on that omission. As a result of its omissions and inaction, Disney forfeited its copyright claims to Mickey Mouse. Mickey has fallen into the public domain where all are free to copy and enjoy him.
1. The following facts are drawn from "Chronology of Events in the History of
Disney", Ken Polsson, URL: http://www.islandnet.com/-kpolsson/disnehis.htm.
2. Mickey Mouse Club historic facts are drawn from Tomart's Illustrated Disneyana Catalog and Price Guide.
3. U.S. CONST. art. 1, § 8, cl. 8.
4. That all actions, suits, or proceedings arising under the copyright laws of the
United States shall be originally cognizable by the circuit courts of the United
States... 17 U.S.C. § 34 (1909 Act).
5. That any person entitled thereto, upon complying with the provisions of this
Act, shall have the exclusive right: to print, reprint, publish, copy, and vend
the copyrighted work; to translate the copyrighted work, to dramatize it, to
convert it, to arrange or adapt it, to deliver or authorize the delivery of the
copyrighted work, and to perform or represent the copyrighted work publicly. 17
U.S.C. § 1 (1909 Act).
These rights are (1) the right to reproduce the copyrighted work in copies or
phono records; (2) the right to prepare derivative works based upon the
copyrighted work; (3) the right to distribute copies or phono records of the
copyrighted work to the public by sale or other transfer of ownership, or by
rental, lease, or lending; (4) in the case of literary, musical, dramatic, and
choreographic works, and motion pictures and other audiovisual works, the right to
perform the copyrighted work publicly; and (5) in the case of literary, musical,
dramatic, and choreographic works, pantomimes, and pictorial, graphic, or
sculptural works, including the individual images of a motion picture or other
audiovisual work, the right to display the copyrighted work publicly. 17 U.S.C. §
106. (1976 Act).
6. European copyright protection is explained in Article 6bis of the Berne
Convention: Independently of the author's economic rights, and even after the
transfer of said rights, the author shall have the right to claim authorship of
the work and to object to any distortion, mutilation or other modification of, or
other derogatory action in relation to, the said work, which would be prejudicial
to his honor or reputation. (Italics added.)
7. That no copyright shall subsist in the original text of any work which is in
the public domain... 17 U.S.C. § 7 (1909 Act).
8. That such person may obtain registration of his claim to copyright by complying
with the provisions of this Act ... 17 U.S.C. § 10 (1909 Act).
9. 17 U.S.C. § 304(a) (1996).
10. That the copyright secured by this Act shall endure for twenty-eight years
from the date of first publication... 17 U.S.C. § 23 (1909 Act) and may be renewed
for another twenty eight years. 17 U.S.C. § 24 (1909 Act).
11. In General - Copyright in a work created on or after January 1, 1978, subsists
from its creation, and except as prescribed by the following subsections, endures
for a term consisting of the life of the author and 70 years after the author's
death. 17 U.S.C. § 302 (1976 Act).
12. That the copyright provided by this title shall protect all the copyrightable
component parts of the work copyrighted, and all matter therein in which copyright
is already subsisting, but without extending the duration or scope of such
copyright. 17 U.S.C. § 3 (1909 Act).
13. 17 U.S.C. § 3 (1909 Act).
14. See Nimmer on Copyright § 2.12.
15. That any person entitled thereto by this Act may secure copyright for his work
by publication... 17 U.S.C. § 9 (1909 Act).
16. That in the interpretation and construction of this Act, "the date of
publication" shall in the case of a work of which copies are reproduced for sale
or distribution be held to be the earliest date when copies of the first
authorized edition placed on sale, sold, or publicly distributed by the proprietor
of the copyright or under his authority... 17 U.S.C. § 62 (1909 Act).
17. That copyright may also be had of the works of an author of which copies not
reproduced for sale, by deposit, with claim of copyright, of one complete copy of
such work... 17 U.S.C. § 11 (1909 Act).
18. That the notice of copyright required by section 10 of this title shall
consist of either the word "copyright", the abbreviation "Copy.", or the symbol ©,
accompanied by the name of the copyright proprietor, and if the work be a printed
literary, musical or dramatic work, the notice shall also include the year in
which the copyright was secured by publication. 17 U.S.C. § 19 (1909 Act).
19. That the notice of copyright shall be applied ... upon its title page ...
Provided, That one notice of copyright in each volume or in each number of a
newspaper or periodical published shall suffice. 17 U.S.C. § 19. (1909 Act).
20. That where the copyright proprietor has sought to comply with the provisions
of this Act with respect to notice, the omission by mistake or accident of the
prescribed notice from a particular copy or copies shall not invalidate the
copyright or prevent recovery for infringement against any person who, after
actual notice of the copyright, begins an undertaking to infringe it, but shall
prevent recovery of damages against an innocent infringer who has been misled by
the omission of the notice; and in a suit for infringement no permanent injunction
shall be had unless the copyright proprietor shall reimburse to the innocent
infringer his reasonable outlay innocently incurred if the court, in its
discretion, shall so direct. 17 U.S.C. § 20 (1909 Act).
21. That any person entitled by this Act may secure a copyright for his work by
publication thereof with the notice of copyright required by this Act; and such
notice shall be affixed to each copy thereof published or offered for sale in the
United States by authority of the copyright proprietor. 17 U.S.C. § 9 (1909 Act).
22. Mickey Mouse: The Black and White Years, disc label.
23. Mickey Mouse: The Black and White Years, disc label.
24. "Chronology of Events in the History of Disney", Ken Polsson, URL: http://www.
islandnet. com/~kpolsson/disnehis.htm.
25. (b) Civil Actions -- No civil action shall be maintained under the provisions
of this title unless it is commenced within three years after the claim accrued.
17 U.S.C. § 507 (1976 Act).
26. A work based on one or more preexisting works, such as a translation, musical
arrangement, dramatization, fictionalization, motion picture version, sound
recording, art reproduction, abridgement, condensation, or any other form in which
a work may be recast, transformed, or adapted. 17 U.S.C. § 101 (1976 Act).
27. 17 U.S.C. § 103 (1976 Act).
28. Nimmer on Copyright, § 4.12[A] at 4-57.