Free Willie?

Thanks to comments on my earlier post, Copyright Duration and the Mickey Mouse Curve, I've been encouraged to reflect on what would happen if, in fact, Steamboat Willie had fallen into the public domain. Could we then reuse Mickey Mouse, the star of that show, without facing any liability to the Walt Disney Company? I drafted this answer for my book, Intellectual Privilege (here edited for blogging):

Scholars have made surprisingly strong arguments that Steamboat Willie, a cartoon that the Walt Disney Company cites as establishing its copyright rights in Mickey Mouse, has fallen into the public domain. As a thought experiment, let us assume the truth of that claim. What would happen if Walt Disney Company—if, indeed, nobody—held a copyright in Steamboat Willie? Certainly, each of use would by default enjoy complete freedom to copy, distribute, display, or perform the cartoon, because the expiration of the work's copyright would also end the exclusive rights of the Walt Disney Company and its assigns the exercise those statutory privileges. So, too, would we escape copyright's limitations on making derivative versions of Steamboat Willie—versions that might show Mickey standing at a lectern rather than at a pilot's wheel, for instance, or have him expounding on copyright law.

The Walt Disney Company would retain its copyrights in later, plumper versions of the Mickey Mouse, of course. Contemporary artists wanting to reinterpret the character free from the company's veto would thus have to draw inspiration primarily from the earlier, skinnier, version. Given that the characters would share a common ancestor, however, even mice derived solely from Steamboat Willie would often strongly resemble the modern-day Mickey Mouse.

Would Walt Disney Company object to those unauthorized reuses of Steamboat Willie? It might, indeed. Some such uses might substitute for sales of the company's wares, after all, or cast its most prominent spokes-mouse in an unsavory light. But copyright law would, per the assumption behind our thought experiment, offer the company no solace. The Walt Disney Company could not plausibly claim that patent or trade secret law gives it the power to limit free use of Steamboat Willie, either. Nor could it invoke the right of publicity, which though sometimes shockingly effective in limiting speech about celebrities, has thus far not stretched to cover cartoon characters.

Trademark and unfair competition law would probably offer the Walt Disney Company its most potent weapon against any movement to emancipate Steamboat Willie. Generally speaking, that area of law allows the holder of a name, symbol, or other mark to prevent latecomers from using in commerce marks likely to confuse consumers about the source or affiliation of a particular good or service. Thus, for instance, can Nike bar someone from putting its famous "swoop" on non-Nike clothes. The Walt Disney Company uses Mickey Mouse as a mark designating its goods and services. If a consumer did not know (ex hypothesis) that the image and voice of Mickey Mouse, qua the character Willie, had fallen into the public domain, and that consumer saw a cartoon of a substantially similar Mickey Mouse in a new context, the consumer might naturally, yet wrongly, assume that the newer Mickey Mouse had issued from the same source as so many other cartoons featuring the character: The Walt Disney Company. On that argument, consumer ignorance would give the company cause to censor derivative versions of the copyright-free Mickey Mouse.

Perhaps the addition of disclaimers, such as noting, "Not a Walt Disney Company production!" in a cartoon's margin, would suffice to dispel consumer confusion. That would ward off only a "passing off" claim—one where a mark's holder accuses another of selling bogus wares under that mark—however. The same disclaimer would set the defendant up for a "reverse passing off" claim—one where Disney would charge that cartoonist wrongly sold Disney's product (intellectual creations about Mickey Mouse) under another's name. Disney could thereby damn those who use Steamboat Willie both if they do use disclaimers and if they do not. Happily for anyone who wants to free Willie, however, the Supreme Court has cut through that Gordian knot of liability.

The Supreme Court held in Dastar Corp. v. Twentieth Century Fox Film Corporation that, once a work has fallen into the public domain, its former copyright holder cannot use federal unfair competition law to demand credit from those who reuse the work. Still more broadly, the Court flatly excluded copyrighted works from the scope of section § 43(a)(1)(A) of the Lanham Act, the federal law barring passing off, whether direct or reverse. The Court explained the policy reasons for thus limiting unfair competition law:

Assuming for the sake of argument that [defendant] 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.

Dastar voiced broad concerns, and lower courts have read it accordingly. They have extended it to bar state law claims of unfair competition, a result the U.S. Constitution's Supremacy Clause would apparently mandate. Lower courts have also extended Dastar to bar unfair competition claims arising out of the use of uncopyrighted and uncopyrightable works. Plainly, the case has done a great deal to ensure that copyright's privileges go no farther than copyright itself.

The exact scope of Dastar's preemptive effect remains as yet uncertain, granted. Even if it suffered the uncopyrighting of Steamboat Willie we've hypothecated here, for instance, the Walt Disney Company would perhaps still have the right to bring suit under § 43(a)(1)(B) of the Lanham Act against those using liberated versions of Mickey Mouse to deceptively market their wares, such as by falsely advertising a new Spaceship Willie as a Disney original. The Dastar Court left that question open. Lower courts have, however, read the case to bar § 43(a)(1)(B) claims alleging no more than false marketing about whether permission was granted for an uncopyrighted work. Under that reasoning, the Walt Disney Company could not even stop the authors of Spaceship Willie from selling it as, "A wholly original take on Mickey Mouse," or, conversely, as "Mickey Mouse in the finest tradition of Walt Disney." Thus might Dastar and its progeny help Mickey Mouse, when and if he escapes copyright, from achieving the status of a great cultural icon, akin to Santa Claus or Uncle Sam.

[Crossposted at Agoraphilia, TechLiberation Front.]