In recent days, news has emerged that, as of January 1, 2024, the smiling Mickey Mouse has entered the public domain. This character is known for being the first Mickey to appear on the small screen in the 1928 short film Steamboat Willie:
This is significant news considering the economic value that this character represents for Disney. However, for lawyers passionate about this subject, this news did not come as a surprise, as the protection period for this character was extended for much more than 50 years. Now, we can only wait to see the implications that this could bring for both its owner and the rest of the world that may think of benefiting from the “free” use of this iconic character.
Indeed, the character has lost copyright protection, so what does it mean for Disney to lose this magical character under that right? Is it a catastrophe? Do they have other alternatives, and if so, can this Mickey Mouse be used freely?
For any company, losing a right is difficult, but for Disney, losing this Mickey is heartbreaking considering that it is a character that symbolizes, among other things, the beginning of the magical world of this great company. However, it not only means a lot to them but also to all of us who want a piece of that magic and want to receive it from Disney. Personally, I have a black and white plush of this Mickey, and I have not dared to pass it on to my children. So, it undoubtedly represents the relinquishment of a right over such a character, but perhaps it is not as catastrophic as we think.
Intellectual property grants the right to protect literary, cinematographic, and musical works, as well as trademarks, slogans, inventions, designs, drawings, software, and many others. This protection is granted in various forms, either through industrial property (trademarks, trade names, advertising expressions, invention patents, industrial designs, etc.) or through Copyright (in the U.S.).
Precisely, what Disney has “lost” is the copyright to the character, but it still has the right to exclusive use as a trademark. Many years ago, when trademarks were published in the Diario de Centro América (Official Gazette), I had the opportunity to see and read hundreds of edicts with the trademarks, logos, and designs of Disney characters. Since then, several of us thought that they were probably doing it as a preparatory act for the eventual loss of copyright (in the U.S.) or copyright, and therefore, they began protection in the other branch of IP law, industrial property.
In this branch, the holder of a distinctive sign is granted several rights, but the primary ones are undoubtedly the right to the exclusive use of the mark and the right to oppose third parties that use identical or similar marks or signs in the same class or in similar classes.
Also, it is essential to consider that this Mickey Mouse could already be considered a distinctive and notoriously known sign, which our industrial property law defines as: “any sign that is known by the relevant sector of the public, or in business circles, as identifying certain products, services, or establishments and that has acquired that knowledge through its use in the country or as a result of the promotion of the sign, regardless of the way it has been known.” In addition, our law also infers protection to notorious signs even if they are not registered in Guatemala.
If we search the United States Patent and Trademark Office (USPTO), we can see that in 2023, Disney applied for protection for a logo very similar to Steamboat Willie’s Mickey. This protection was likely carried out in all territories of interest:
In Guatemala, we find the following design, which I consider also has similarity to the design under consideration:
So, based on this registration and property rights, can Disney prevent third parties from using an identical or similar design? I believe so, therefore, I do not recommend taking it lightly that we can freely use the world’s most famous mouse.
This story leaves us with a great lesson, and that is to protect ourselves (when applicable) in the various ways that IP allows to prevent others from copying us and that our work, creation, or invention loses value.