Steve DiMatteo is a Cleveland-based entrepreneur who’s been thinking about Jan. 1, 2024, for a while. That’s when the 1928 Steamboat Willie version of Mickey Mouse falls into the public domain.
DiMatteo runs the e-commerce site Cleveland Vintage Shirts where he sells clothing with historical city references, like the Aquarama, a 520-foot-long passenger cruise ship that worked the waters between Cleveland and Detroit from 1956 to 1962.
“What if you did a shirt where it was Steamboat Willie steering the ship?” says DiMatteo. “I think that’s a cool idea. Or you could have him doing anything Cleveland sports related. Or eating a pierogi,” the Polish dumplings being particularly popular in the city.
But he’s also cautious. “I’d have to look into what you can and can’t say,” DiMatteo says. Like mentioning the words Mickey Mouse, maybe.
Or even if he can use it at all.
When it comes to their creative creations, Disney is an utter legal shark.
“They’re super mindful, and they don’t play when it comes to their intellectual property,” says Kim Tignor, an intellectual property lawyer and executive director of the Institute for Intellectual Property & Social Justice.
Understandable, given the billions of dollars of value it has delivered. Heavy lobbying helped gain passage of the Copyright Act of 1976 and Copyright Term Extension Act of 1998, eventually giving corporate copyright owners have 95 years of protection of comic books, movies, television shows, and characters. None bigger than the Big Mouse, Mickey.
“People mockingly refer to it as the Mickey Mouse protection act,” says Hank Boyd, a lawyer and clinical professor of marketing at the University of Maryland’s Smith School of Business. “But even Disney I think realizes you can only go to the well so many times.”
The Mouse King also didn’t trust only in wooing Congress. Part of a statement Disney sent to the Observer reads, “Ever since Mickey Mouse’s first appearance in the 1928 short film Steamboat Willie, people have associated the character with Disney’s stories, experiences, and authentic products. That will not change when the copyright in the Steamboat Willie film expires.” Versions subsequent to that first appearance also have copyrights, adding protection of the most recent and currently valuable items into the future.
Disney used trademark protections as well. Specific to claimed categories of use and based on preventing other parties from pretending their items are connected with the original company, trademarks are a powerful legal tool that could put DiMatteo’s plans into Davy Jones’s locker.
“They do have trademark protection in connection with the early version of Mickey in connection of at least certain items of clothing and maybe other goods and services as well,” said Alesha Dominique, partner and head of the trademark practice of law firm Stroock & Stroock & Lavan, who did a quick check on the U.S. Patent and Trademark Office during a phone interview. Disclaimers, like saying your t-shirt has no connection to Disney, aren’t necessarily a solution, if a strong enough case can be made for confusion. There are also dilution claims “where the owner argues that this is a famous mark and any use of this mark is likely to dilute the fame and value,” Dominique adds.
Then there is also old-fashioned market power.
“You have an image of Steamboat Willie, and you decide to do something really far afield,” says Boyd. “Let’s say there’s a small market out there that says it’s pretty cool.” If it gets big enough, Disney can come in and compete. Who’s more likely to win?
The company also is expanding quickly into everything it can. In December 2021, three years ahead of losing that first copyright, Disney released a Mickey Mouse NFT collection.
However, even with the power disparity, this is far from an open-and-shut situation with Disney the only possible winner.
“We’ve all kind of watching to see what would happen,” Tignor adds. “To be honest, I’m excited to see what the creative community will do. I’m exciting to see what will be unleashed as a result of this and what people will be able to layer and remix and have their own take on this piece of intellectual property.”
