According to media reports, Mickey Mouse's copyright has just expired in the United States at the end of 2023, and in the past two days, the American creators have released trailers and posters for 3 Mickey Mouse-themed horror movies and games[i], which will be released within a few months. The author previously believed that the use of the cute image of Mickey Mouse to make horror films may also be suspected of infringement in China, because the author's right to protect the integrity of the work is not limited by the expiration of copyright, but after careful consideration recently, it was found that it may not constitute infringement, so I will talk to you about this today.
In 1971, a group of creators named Air Pirate began to use Mickey Mouse as a character to create adult works, including making Mickey Mouse take drugs and engage in sexual acts. Disney fought a ten-year lawsuit with them in order to defend their rights, and the U.S. court finally found that their actions did not constitute fair use. Recently, taking advantage of the expiration of Mickey Mouse's copyright, creators in the United States are preparing to produce three more works featuring Mickey Mouse, including:
Mickey's Mousetrap is a low-budget indie horror film set in a murder game where a masked killer dresses up as Mickey. Infestation: Origins is a Mickey Mouse-style horror game developed by Nightmare Forge Games that puts players in the shoes of an exterminator. A horror movie featuring the original Mickey Mouse is being created, with the synopsis turning a late-night boat trip in New York City into a desperate battle for survival. At the moment, Disney has not responded to this.
1. Which of Mickey Mouse's copyright protection periods have expired?
The image of Mickey Mouse was first created by Walt Disney in 1928, when the maximum term of protection under the U.S. Copyright Act was 56 years, which meant that Mickey Mouse should have been in the public domain in 1984. However, Disney lobbied the U.S. Congress to amend the copyright law twice, extending the copyright protection period from 56 years to 95 years, which will not expire until 2024.
According to the provisions of the "Copyright Law" of the mainland, the term of protection of Mickey Mouse as a work of art is 50 years after the death of the author, and Walt Disney died in 1966, so the 14 sub-rights in Mickey Mouse's copyright, such as reproduction, distribution, information network dissemination, and adaptation, exceeded the protection period in 2016. However, according to the law, the term of protection of the author's right of authorship, the right of modification, and the right to protect the integrity of the work is not limited, and the author's heirs or legatees shall protect it after his death. Therefore, the moral rights of Mickey Mouse's art works, such as the right to protect the integrity of the works, are currently enjoyed by the heirs of Walt Disney in China.
2. Does Mickey Mouse's conversion to a horror film infringe on the right to protect the integrity of the work?
The author previously mentioned in the article "Mickey Mouse's copyright expires, what is Disney most afraid of?": "If Mickey Mouse is made into a horror film or even pornography, if it is within the protection period of the work, it can be protected, because the author can sue the adaptor for infringing the author's right to protect the integrity of the work, but if the copyright protection period expires, it is actually quite troublesome to protect the rights." In short, the chances of winning rights protection in the United States are very small, and defending rights in China should be able to win the lawsuit, but Disney can't do it itself, and the heir of Mr. Disney, the author of Mickey Mouse, must come forward. But after thinking about it for the past two days, I feel that it can't be generalized, Mickey Mouse has many forms as a copyrighted work:
1. Audio-visual works. Walt Disney's 1928 film Steamboat Willie first introduced Mickey Mouse to the public. Steamboat Willie is an audiovisual work, and if someone spoofs the film and adds horror or pornographic content to it, such distortion and alteration of the work would undermine the original intent of the author's creation, and it falls within the protection of the right to protect the integrity of the work.
2. Works of art. If you take the characteristic elements of the original Mickey Mouse character in Steamboat Willie, such as big ears, big eyes, pointed round nose, wearing pants, standing with a figure of eight, and walking upright, this image is a work of art. If the copyright expires, others have the right to adapt the art work into books, games, movies, etc. If someone adds Mickey Mouse's art to horror or pornography, it is debatable whether it violates the right to protect the integrity of the work.
First of all, the right to protect the integrity of a work should be to distort the original work without forming a new work. The image of Mickey Mouse extracted here is not an interception of the original work, so it is an adaptation, and the right of adaptation is also an independent right stipulated in the Copyright Law and the right to protect the integrity of the work. If the heirs of the original author can still claim the right to protect the integrity of the work after the adaptation, it is tantamount to setting aside the right of adaptation.
Secondly, the original author of Mickey Mouse, Walt Disney, and the Disney Company's image of Mickey Mouse - fresh, cute, sunny, and suitable for teenagers are set up, which belongs to thoughts, not expressions. However, the Copyright Law only protects expression, but not ideas and creativity, so the character setting of cartoon characters cannot be protected by copyright, including the right to protect the integrity of the work. In this regard, the Supreme People's Court also has precedents, according to the Supreme People's Court's ruling in the case of copyright infringement dispute between the Suzhou Historical and Cultural City Research Association and Suzhou Television Station and Suzhou Radio and Television Art Training Center: the characteristics of the characters portrayed in the work belong to the category of ideology and are not protected by the Copyright Law.
3. Disney may consider protecting the image of Mickey Mouse through well-known trademarks
When the team was discussing this case internally, my colleague lawyer Luo thought of a trick for Disney, if Mickey Mouse's horror film was released in China, Disney could consider using a well-known trademark to protect its rights. The principle is not complicated, let's take an example of protecting the rights of Yili milk powder.
A physical and industrial enterprise filed an application for registration of the trademark "Yili" with the State Trademark Office, specifying it to be used on faucets, sanitary appliances and other goods, including toilets. During the announcement period, Yili Group filed an objection application. The lawsuit went all the way to the Beijing High Court, and the court held that although the above-mentioned categories of goods had nothing to do with Yili in terms of production and sales, although the above-mentioned categories of goods had nothing to do with Yili, and that it had actually improperly exploited the reputation of Yili's well-known trademark, which would lead to the harmful consequences of weakening the distinctiveness of the well-known trademark "Yili". Accordingly, the Beijing Higher People's Court supported Yili.
Applying for Yili's trademark on toilet sanitary ware will cause damage to the brand of Yili milk powder, but because sanitary ware and food categories are different, Yili has applied for cross-class protection of well-known trademarks, and the legal basis is Article 13, Paragraph 3 of the Trademark Law: if the trademark applied for registration for non-identical or dissimilar goods is a copying, imitation or translation of a well-known trademark that has been registered in China by another person, misleading the public, causing the interests of the registrant of the well-known trademark to be harmed, it shall not be registered and its use shall be prohibited.
At the same time, according to the judicial interpretation of the Supreme People's Court in adjudicating well-known trademarks, if it is sufficient to make the relevant public believe that the accused trademark has a considerable degree of connection with the well-known trademark, but weakens the distinctiveness of the well-known trademark, derogates the market reputation of the well-known trademark, or improperly exploits the market reputation of the well-known trademark, it is "misleading the public, causing the interests of the registrant of the well-known trademark to be harmed" as stipulated in paragraph 3 of Article 13 of the Trademark Law.
Therefore, if a movie shot with Mickey Mouse as the character is released in China, Disney can also use the Mickey Mouse trademark in Class 28 toys as the basis of rights to claim that the filmmakers and distributors infringe the rights of well-known trademarks. Just as Erie can prevent others from registering food trademarks on toilet products, Disney can also prohibit the use of toy trademarks on horror movies and their poster prints. That would also damage the market reputation of its Mickey Mouse toy trademark and mislead Disney users.
Of course, the above point of view is only a method to be explored, and according to the author's experience, if a lawsuit is really filed, the essence of the case is that there is a conflict between copyright and trademark rights in the public domain, and the court's discretion will be very large. One possibility is to support Disney's protection of well-known trademarks, but it cannot be ruled out that the court has comprehensively ruled after the trial that the identity of the producer of a horror movie made with the image of Mickey Mouse is known to the public, and it will not constitute misleading to the public, so it does not support the possibility of Disney's claim.
At the same time, this method also has limitations, the author of the article "After the copyright expires, is it feasible for Disney to protect the image of Mickey Mouse with trademark rights or merchandising rights?" As mentioned in the article, the limitations of this scheme are: first, under normal circumstances, the cross-class protection of well-known trademarks can only be used against trademarks that have been applied for registration within five years; second, Disney needs to apply for well-known trademark protection in each case and then be recognized by the Trademark Office as needed; third, the recognition of well-known trademarks needs to be supported by a large amount of evidence, and if the categories of goods do not match or the evidence is insufficient, it is difficult to identify as a well-known trademark, and the requirements are relatively strict.
Finally, the author believes that, after all, intellectual property rights are a piece of the public domain that is set aside for the right holder, and the corresponding public is restricted when exercising their freedom. Therefore, when the intellectual property protection period expires, the right holder should return the freedom to the public, and after the expiration of the Mickey Mouse copyright, everyone can use it freely, even if it is used to make horror movies. This is in line with the original intent of the system.
The author of this article is You Yunting, senior partner of Shanghai Dabang Law Firm, and intellectual property lawyer. The views expressed in this article are solely those of the author.
[i] https://mp.weixin.qq.com/s/mi-2rAySdWQJmuYA5LwjcQ
[ii] https://en.wikipedia.org/wiki/Air_Pirates