Attention I/P Holders: TM Protection Still Has Its Mousetrap.

In less than one year, Steamboat Willie – the animated featurette that introduced Mickey Mouse to the masses – will enter the public domain. It can be replayed, repurposed, merchandised, and monetized, without royalties paid to Disney.

Kind of. With conditions. Well, not really.

Public access to Steamboat doesn't warrant a free Mickey

You can’t separate the benefit of public domain from the rightful boundaries of common sense I/P protection.

The Steamboat Willie images cannot reference the name Mickey Mouse, or Mickey, or associate with The Walt Disney Company in any way. No subsequent design iterations of Mickey Mouse (including any color art) is included. So what is it really worth to would-be licensees? How much will a retail buyer value a non-Disney iteration of the mouse that can’t be named Mickey?

Not much. Disney kept ownership of the assets most important.

That’s the way it should be. Enough checks and balances are out there for every active brand to minimize pilferage (in the U.S. and Canada. Global issues deferred for another blog). It’s not just trademark law here. Add on the courts, business decisions and public opinion – and pirates lose out. It’s been proven domestically time and again. Ask these other entertainment luminaries. Cases so different – with outcomes all favoring the brand owner.

Stay out of the bathroom, Johnny

In 1983, a manufacturer of pre-fabricated outhouses decided to rebrand their assortment “Here’s Johnny.” In fact they renamed their LLC Here’s Johnny Portable Toilet, Inc. Pretty good idea to use the most iconic catchphrase in TV history. Millions heard it, watched it, every single night. Alas, Here’s Johnny Portable Toilet Inc. never secured those rights, perhaps assuming no one could claim that line. Wrong. And it turns out, that was NOT the first toilet manufacturer that had attempted usage of “Here’s Johnny” since its 1962 Tonight Show inception.

That’s I/P, registered with USPTO or not, intrinsically attached to a specific celebrity on a long-established TV program. “Here’s Johnny” was a proprietary ad revenue engine. So, Johnny Carson Productions made a stink. It worked. Here’s Johnny Portable Toilet, Inc. was a losing defendant (yes this went to trial) and ended up right where they began – an outhouse without a brand. Carson didn’t even seek monetary damages. Still – the toilet manufacturer would have spent far less on royalties than ensuing legal bills.

Michael Jordan steaks aren't for everyone

Thirty-two years later, in 2015, His Majesty (a reference understood by any 90s Chicagoan) was featured on a Safeway newspaper ad for raw New York strips. Not under license. Michael Jordan allegedly found out about this when he opened up the Chicago Tribune.

Now. If Michael collects nearly nine figures from Nike annually for a license agreement that has lasted over 35 years, why would he allow a supermarket to use his NIL for free? And how would Nike feel about their annual investment if others don’t have to pay for the same perquisite? And by the way - Michael Jordan had his own steakhouses - fully licensed operations working under contract and in good faith.

The effect was acrimonious. Michael Jordan sued Safeway for millions. Journalists abound were critical of the billionaire basketball star while he pursued icing on that cake. That’s unfair. If Safeway didn’t get served, then any other partner of Michael Jordan would question why they should pay. And Safeway would have permission to exploit other celebrity I/P. Michael Jordan testified at trial. Safeway lost. The chain paid Michael Jordan $8.9 million in damages. Which all went charity. It was never about the money. Or at least that money. It was a business model exploited.

Filmmakers don't make hamburgers for free

Three years later a sci-fi, VR adventure film titled “Ready Player One” hit the theaters – a lovely piece of fast-paced entertainment directed by Steven Spielberg. Carl’s Jr. wanted in on the buzz. That’s cool. But they launched Spielburgers, without seeking licensure rights, and with as much apparent due diligence as Safeway had with Mr. 23. That’s wrong, actually. Carl’s Jr. asked Mr. Spielberg by putting a note under the windshield wiper of his car. Yuck.

With deference and grace – and, with clear disinterest in discussing QSR promotions in a courtroom – the legendary filmmaker tweeted a video of himself declining the opportunity. Less than 45 seconds. Non-threatening (and complimentary at that). To the point. Spread digitally by millions, and Carl’s Jr. reacted swiftly.

So. Big picture. In North America, if you promote your equity, and you profit from your equity, you can always protect your equity. Steamboat Willie’s copyright loss is a Disney win. They’ve done too much to protect everything else that really matters. The marketplace will not accept non-Mickey versions of Mickey. Meanwhile, to all entrepreneurs hoping to sell their latest outhouses, steakhouses, or burgers – use a licensed persona. That’s how we all make a living around here.

Just ask first.

Hooray for Hollywood.