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Peter Pan Growing Up Stirs Legal Gray Area; Mickey Up Soon (1)

Jan. 28, 2020, 11:30 AMUpdated: Jan. 28, 2020, 4:24 PM

Peter Pan has grown up, but the adult version portrayed by Robin Williams hasn’t. And Walt Disney Co.’s versions of Peter may never fully grow up.

The copyright for the 1924 silent film Peter Pan expired Jan. 1, putting it in the second batch of works to enter the public domain after a two-decade moratorium imposed by Congress. That means anyone can copy the film’s images, characters, dialogue and story lines, even if they appear in more recent works still protected by copyright.

Owners of valuable franchises going public will look to other intellectual property laws to at least partially protect them, which could create a gray area where rights collide, attorneys say. The importance of that gray area will only expand in 2024 when the original Mickey Mouse joins the parade into the public domain. Many link protection of Mickey, a brand worth billions to Disney, to the law that created the moratorium.

“There’s going to be litigation as more of these works are exploited, and as people test the boundaries of what can and can’t be done,” intellectual property attorney Aaron Moss of Greenberg Glusker Fields Claman & Machtinger LLP said. “We don’t have a ton of guidance yet on how those cases would be decided.”

Owners of expiring copyrights with commercial value have already begun adding new layers of protection, trademark attorney Jennifer M. Lantz of Haynes and Boone LLP said. For example, Disney began using a clip of Mickey Mouse from the 1928 animation Steamboat Willie in pre-movie introductions of its other films—where it can function as a trademark the way the MGM lion roar does.

“They’re going to be relying on trademark law and other kinds of consumer protection laws and theories to keep even content that might have gone into the public domain from being used freely,” said Lantz, who works in her firm’s media and entertainment practice. “I think that’s the gray area.”

Legal precedent is limited in this area but there’s enough to suggest caution to companies. The Supreme Court’s 2003 decision in Dastar Corp. v. Twentieth Century Fox Film Corp. specifically warned against using trademark law to effectively extend an expired copyright.

Old Story, New Twist

Last year, a group of works including Agatha Christie’s novel The Murder on the Links and Cecil B. DeMille’s film The Ten Commandments became the first to enter the U.S. public domain since the 1998 Sonny Bono Copyright Term Extension Act. That law, dubbed the Mickey Mouse Protection Act due to Disney’s lobbying, extended copyright term to 95 years for works between 1923-1978.

This year, George Gershwin’s composition Rhapsody in Blue, and W. E. B. Du Bois’s The Gift of Black Folks entered the public domain along with Paramount Pictures’ Peter Pan film, which had been preceded by J. M. Barrie’s original novel and play.

Peter Pan iterations including the animated 1953 Disney film, 2003 live film and Williams’ 1991 Hook retain copyright protection. Other commercially-viable entities have roots in the public domain, such as Alice in Wonderland, Pinocchio, and Little Mermaid, said intellectual property attorney E. Scott Johnson of Baker Donelson Bearman Caldwell & Berkowitz PC.

“That’s the Disney model. They created Mickey Mouse in house, but most were old works,” said Johnson, a transactional lawyer for entertainment entities. “They’re using public domain works we could also use to create a sequel or prequel—as long as we use the original work.”

The U.S. Court of Appeals for the Seventh Circuit agreed in 2014. Author Arthur Conan Doyle’s estate tried to block an anthology adapting his Sherlock Holmes’ character to a modern setting without paying royalties. The estate argued that much of Holmes’ “complex” character stems from 10 still-protected short stories. But the court said anything could be copied from the four novels and 46 other short stories already in the public domain.

Differing regimes setting copyright terms further complicate matters, as a work may be public domain in one country but not another. Even then exceptions exist: In 1988, the United Kingdom granted the Peter Pan book and play limited copyright protection in perpetuity to keep royalties flowing to a hospital that the Scottish author Barrie had granted rights.

Disney didn’t respond to a request for comment for this story.

‘Rubiks Cube’ of Laws

The Lanham Act can still provide protection for owners of public domain or public domain-inspired works, and for as long as trademarks are used. The Ninth Circuit treated Batman’s 1966 and 1989 Batmobiles as copyright-protected “characters” against a seller of full-size replicas. It also ruled the sales infringed on DC Comics’ trademark on “Batmobile” for custom cars.

Famous trademarks, like Mickey Mouse and Disney itself, gain added protection. Under the law, anything sold invoking a famous mark could tarnish or dilute it, even if the mark owner doesn’t sell a competing product. That’s where a “Rubik’s Cube of overlaying laws” could conflict if someone uses Steamboat Willie Mickey after 2024, Johnson said.

“I think that’s going to be a problem on the theory that Mickey Mouse is a trademark for a variety of things like toys and merchandise, and people that see any version of Mickey Mouse are going to assume there’s a connection with Disney,” Johnson said. He doesn’t think Steamboat Willie going public will much hurt Mickey’s commercial value—much of it tied to newer versions. “But there’s other characters that you may not be able to say that about,” he said.

Getting around Dastar will be difficult but not impossible, Columbia University intellectual property law professor June Besek said. Potential defendants would have to consider the trademark owner’s willingness to litigate into the gray area of the law, she said.

“Characters that have stayed in the public eye, these kinds of cases will come up over and over again. It will be interesting,” Besek said. “The first few cases will be determinative.”

Trademarked Limits

The Supreme Court’s unanimous opinion in Dastar allowed repackaging of a television series about World War II based on a Dwight Eisenhower book without crediting Fox or the book. Justice Antonin Scalia wrote that using the Lanham Act’s “false designation of origin” provision to protect the series, which lost copyright protection under an old system when Fox failed to renew it, would create a “mutant species of copyright law.”

“The Supreme Court has spoken,” Georgetown Law intellectual property law professor Madhavi Sunder said of using trademark law to extend copyrights. “The right to copy without attribution becomes the right of the public. This is an important, sacrosanct right. Courts will look critically and skeptically at parties that try to use trademarks to get around that right.”

Trademark infringement claims are limited because, unlike copyright, they require a showing of consumer confusion over who produced the product. That means any use that’s not functioning as a trademark or falsely suggesting endorsement would be allowed. Additionally, copies or derivatives of a public domain work can freely use the work’s name because “Peter Pan” is too generic for works about Peter Pan to secure trademark rights, attorneys say.

False endorsement claims would require the new user to explicitly and falsely indicate a third party’s endorsement, attorneys say. Even if some segment of the public wrongly thinks a party endorsed a work based off the public domain, avoiding active public misrepresentation should keep creators of the new version safe if they don’t infringe protected elements, said Moss, who often represents owners of creative content.

Sunder said some current and likely efforts to provide an absolute barrier around characters, including ones in the public domain, go too far. Courts should make sure not to “trample” the ability to engage, and participate in the very thing intellectual laws are designed to promote.

“Culture is nothing if not something we all share,” Sunder said.

(Updated with additional reporting in 13th paragraph. Previous version corrected movie studio name in fifth paragraph.)

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editor responsible for this story: Bernard Kohn at bkohn@bloomberglaw.com; Keith Perine at kperine@bloomberglaw.com

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