Cite as: 2 Va. Sports & Ent. L.J. 254

Virginia Sports and Entertainment Law Journal

Spring 2003




Douglas A. Hedenkamp [FNa1]

Copyright © 2003 University of Virginia School of Law; Douglas A. Hedenkamp

Introduction ........................................................ 254

I. A Brief History of Mickey Mouse .................................... 256

II. Forfeiture of the Mickey Mouse Copyrights .......................... 258

A. The Copyright Proprietor's Name ................................ 259

B. Actual Knowledge of Disney's Claim ............................. 262

C. Purpose of the Copyright Formalities ........................... 263

D. Disney's Intent to Copyright ................................... 265

III. Copyrights in the Unpublished Mickey Mouse Films ................... 266

A. Requirement of Notice for Copyrighted Material Published in

Uncopyrighted Derivative Works .................................... 266

B. Section 7 of the 1909 Act ...................................... 267

C. The Legislative History of Section 7 ........................... 269

D. Contrary Authorities ........................................... 271

E. Supreme Court Dicta on Section 7 ............................... 274

Conclusion .......................................................... 278


On January 15, 2003, the United States Supreme Court decided Eldred v. Ashcroft, one of the most important and controversial copyright cases in years. [FN1] The Court upheld the Copyright Term Extension Act ("CTEA"), a 20-year *255 retroactive extension to copyright terms. One of the focal points of the controversy surrounding the case was the status of Mickey Mouse, whose early copyrights were approaching expiration before the passage of the CTEA. The first Mickey Mouse films were published in 1928. Had the Supreme Court decided to strike down the extension, "Mickey Mouse in Plane Crazy," "Steamboat Willie," and "Plane Crazy," would have joined the public domain in 2003, followed by films like "Mickey's Follies," "Gallopin' Gaucho," and more every year thereafter. By upholding the CTEA, the Supreme Court ostensibly preserved those copyrights for 20 more years. But an article posted on the Internet has suggested that the copyrights in these early films are void due to publication without proper notice. [FN2] This would mean that Mickey Mouse already is in the public domain, regardless of any term extensions, because the copyrights were never valid.

As unlikely as it may seem, the article appears to be correct. Although the author did not address two critical issues--which are the focus of this article--and made some minor errors, the end conclusion is sound. [FN3] Walt Disney failed to place his name in the copyright notices of the first few Mickey Mouse films. This forfeited the copyrights in those films, as well as the copyright in the original incarnation of Mickey Mouse. A modern court might be inclined to apply the notice requirement with greater leniency, but such an inclination would be incorrect. The forfeiture occurred at the moment of publication, and the law of that time was clear: publication without proper notice irrevocably forfeited copyright protection.

This paper analyzes the copyright status of three early Mickey Mouse films and evaluates the claim that Mickey is public domain material. The first section of this article will give a brief background of Mickey Mouse and the three films that appear to lack proper notice. The second section will show that the notice on these films failed to meet the notice requirement of the 1909 Act, despite Disney's claim that the notices are valid. The third section of this paper will discuss the effect of this forfeiture on the copyright in an earlier, unpublished Mickey Mouse cartoon, and the interpretation of section 7 of the 1909 Act. *256 Finally, this paper will conclude that there are no grounds in copyright law for protecting any of the material that appeared in the three films, and that Mickey Mouse himself (as he appeared in the early films) is in the public domain.

I. A Brief History of Mickey Mouse

Walt Disney created Mickey Mouse in 1928. [FN4] Mickey's first film was entitled "Mickey Mouse in Plane Crazy." [FN5] This first film was initially silent and was never published as such, though it was registered for statutory copyright protection. [FN6] Another silent film, "Gallopin' Gaucho," was also unpublished, but was never registered. [FN7] Finally, Disney and his employee Ub Iwerks created "Steamboat Willie," the first published Mickey Mouse cartoon, and the first animated film to contain a fully synchronized soundtrack. [FN8]

"Steamboat Willie" was a huge success, and Disney followed it up with sound versions of the first two Mickey Mouse cartoons. [FN9] "Gallopin' Gaucho," kept its original title, while "Mickey Mouse in Plane Crazy" was shortened to "Plane Crazy." [FN10] All of these sound films were published and registered for their own copyrights. [FN11]

It is difficult to locate original prints of these very old cartoons, but the Walt Disney Company has released collections containing the films on both laserdisc and DVD, which are somewhat easier to locate. [FN12] In addition, a few prints are available in various film archives, such as the UCLA Film and Television Archive and at the Library of Congress, and occasionally one is sold on eBay. Examination of available copies indicates that these early films all bore *257 copyright notices that contain the word "copyright" and a date but omit any mention of the copyright owner. As discussed below, the name of the copyright proprietor was crucial for securing copyright protection under the 1909 Copyright Act, and its omission immediately and irrevocably placed the work into the public domain. [FN13]

The three published films all had virtually identical title frames; the only difference was the actual title. The title frames all read:






[Title of Film]





As the title frames show, the copyright notice contained only the words, "Copyright MCMXXIX," and lacked any mention of the copyright proprietor. The name of the copyright holder, Walt Disney, does appear on the same frame as the copyright notice, but there is no link between the notice and the name, and nothing in the frame itself indicates that Walt Disney is the copyright proprietor rather than simply one of several contributors. The name "Ub Iwerks" also appears on the title frame in a context that might suggest that Ub Iwerks is the copyright owner. Ub Iwerks, however, was merely an employee of Disney's *258 animation studio, not the copyright owner. [FN15] Walt Disney held the copyrights in his own name. [FN16] Finally, the name "Powers Cinephone System" appears closest to the copyright notice, but it appears in reference to a process by which the sound was recorded, and not as an indication of the copyright ownership. Adding to the confusion, which the presence of all of these names created, is the fact that Iwerks and Pat Powers--the "creator" of Powers Cinephone System [FN17]--severed all ties with Disney in 1931, when Powers allegedly used Iwerks as a pawn in an attempt to extort control of the Mickey Mouse copyrights from Disney. [FN18]

Keeping in mind the scarcity of original prints of these films, it is conceivable that this form of notice appeared accidentally on a relatively small number of copies published while the notice requirement was in effect, which might cure the omission of the copyright proprietor's name under the 1909 Act. [FN19] This is very unlikely. The Walt Disney Company, while insisting on the validity of the copyrights, has steadfastly refused to comment on whether or not copies with another form of notice do, or ever did, exist. [FN20] If such copies did exist, Disney should know about them, and Disney should have a compelling interest in coming forward in the face of the publication of this paper. In addition, the existence of the copies without proper notice likely shifts the burden to Disney to prove that the omission was accidental, and that it was properly corrected on most copies. [FN21] In the absence of additional evidence from Disney, therefore, the cure provision of the 1909 Act is not applicable here.

II. Forfeiture of the Mickey Mouse Copyrights

The copyrights in the three published Mickey Mouse films are void because the notices fail to meet the requirements of sections 10 and 19 of the 1909 Copyright Act. [FN22] Section 10 of the Act required that proper notice be affixed to *259 every published copy of a work. [FN23] Section 19 stated that the notice required by section 10 consists "either of the word 'Copyright', the abbreviation 'Copr.', or the symbol ©, accompanied by the name of the copyright proprietor" and, in certain cases, the year copyright was secured. [FN24] While Walt Disney's name does appear on the title frame, it does not accompany the word copyright, and the notices are therefore invalid. This results in forfeiture of the copyrights. [FN25]

A. The Copyright Proprietor's Name

While Walt Disney's name is present in the title frame, it is clearly separated in space and context from the notice and is not identified in any way as the name of the copyright proprietor. Nevertheless, in response to this author's inquiries, the Walt Disney Company has claimed that the notice is still "accompanied by" the name, because modern courts have rejected the "notice dispersal theory." [FN26] This claim, however, is misleading at best. Courts have rejected an early, strict formulation of notice dispersal requiring that the elements of notice be directly adjacent to one another. [FN27] Nimmer's treatise on copyright, however, deals with the issue of notice dispersal and states the modern rule: "the mere fact that the name of the person who is in fact the copyright owner is prominently displayed will not validate a copyright notice, if the placement of the name bears no indicated relationship to the other elements of the notice." [FN28] In this case, there simply is no indicated relationship between Walt Disney's name and the other elements of notice; the name is merely displayed. Furthermore, Nimmer points out that if the elements are too widely separated for their relationship to be apparent, or if uncertainty is created by the presence of other names or dates, then the notice is invalid. [FN29] Again, in this case the name is too widely separated from the notice to indicate any relationship, and there are other names that create *260 uncertainty. According to the modern rule cited by Nimmer, the notices are all invalid. This conclusion is consistent with both the original purpose behind the notice requirement and case law interpreting the 1909 Act.

The rule supports one of the main purposes of the notice requirement: to publicly identify the name of the copyright proprietor. [FN30] For the notice to serve this purpose, the name must appear in relation to the word "copyright" so that it is reasonably clear that the name is that of the copyright holder and not merely that of a publisher, animator, printer, cameraman, producer, or other contributor who does not hold any actual interest in the copyright. Where, as here, the name is printed in the midst of other names, and there is no apparent connection between the name and the word "copyright," the notice fails to inform the public whether the name is that of a mere contributor with no legal interest in the work or that of the actual copyright holder. Such a notice does not identify the copyright proprietor, leaving the purpose of the notice requirement unfulfilled.

The failure to meet this notice requirement has resulted in forfeiture of copyright in several cases where there was no clear textual link between the proprietor's name and the rest of the copyright notice. [FN31] In Shapiro & Son Bedspread Corp. v. Royal Mills Associates, the copyright notice for a fabric design was held to be invalid for two reasons. [FN32] First, the notice was on a flyer accompanying the fabric instead of being "affixed" to the fabric itself. [FN33] Second, the notice on the flyer simply stated, "Design copyrighted." The name of the copyright proprietor, Everwear, was not adjacent to the notice, and the words "Designed by Mr. Sid" also appeared on the same flyer. [FN34] The court stated that this created confusion as to who was actually the copyright proprietor, and thus invalidated the notice. [FN35] The Second Circuit reached the same conclusion in a later appeal of the case. [FN36] The case is similar to the facts at hand, because Walt Disney's name is not adjacent to the word copyright, and the words "by Ub Iwerks" could cause reasonable confusion as to the identity of the copyright proprietor.

*261 Another case similar to these facts is Moger v. WHDH, Inc. [FN37] In that case, a cartoon was published in several newspapers. [FN38] The titles on all copies read, "About Faces by Art Moger," at the top of the cartoons. [FN39] The copyright notices, included on all but three cartoons, read either "© 1934" or "© 1935" at the bottom of each cartoon. [FN40] In addition, the name "Ned Jones" always appeared somewhere within the cartoon. [FN41] The court held that the prominence of Art Moger's name was not sufficient to identify him as the copyright holder, since it did not "rule out" the possibility that Ned Jones, or even someone else, was the actual copyright proprietor. [FN42] Likewise, in the three Mickey Mouse films, the prominence of Walt Disney's name on the title frame does not rule out the possibility that Ub Iwerks, or anyone else in the world was the actual copyright proprietor--especially when the word "by" was connected to Iwerks' name instead of Disney's.

Courts have held that the holder's name does not necessarily have to be placed directly adjacent to the word copyright, but in each of those cases there is some textual indication that the name is associated with the notice, and there are no other names that may cause confusion. [FN43] The Moger court made this distinction with respect to Glenco Refrigerator Corp. v. Raetone Commercial Refrigerator Corp. [FN44] In Glenco, the initials "G.R.C." appeared directly adjacent to the word "copyright," and the proprietor's full name, "Glenco Refrigerator Corp.," appeared above and slightly to the right, with no intervening text save the proprietor's address. [FN45] Normally the initials themselves would be insufficient to identify the copyright proprietor. The presence of the initials in the notice, *262 however, linked the full name, which appeared nearby, to the word "copyright," clearly identifying the copyright proprietor. [FN46] In addition, there were no other names present to create confusion. [FN47] The court upheld the notices because they gave "reasonable notice of the claim of copyright and of the claimant's identity." [FN48] By contrast, there is nothing in the notices on the Mickey Mouse films that would prevent confusion as to whether Walt Disney, Ub Iwerks, Powers Cinephone System, or any other person or entity was the actual copyright proprietor. The notices do not, therefore, give "reasonable notice of the claimant's identity," as the Glenco court required. This failure invalidates the notices and forfeits the copyrights.

B. Actual Knowledge of Disney's Claim

The Walt Disney Company has also defended the copyrights on the grounds that no court would find any confusion about the identity of the proprietor of Mickey Mouse cartoons or conclude that the viewers of these pictures were not aware that Disney claimed a copyright on them. [FN49] First, such confusion was both possible and likely at the time the films were initially published-- the only time relevant for determining the validity of the notice--when Disney and Mickey were not nearly as famous as they are today. [FN50] Second, such a finding is not required to forfeit the copyright. It is well settled that under the 1909 Act, actual knowledge of a copyright claim did not cure a defective notice. [FN51] Congress chose copyright notice as the required method of disseminating important copyright information. It did not exempt the famous from any notice requirement, and it did not give copyright proprietors a choice between placing proper notice on their works or disseminating that information in other ways. The notice is required whether or not the public knows the identity of the copyright proprietor. [FN52] Since copyright is a purely statutory right, [FN53] the courts have no authority to give proprietors a right that Congress withheld.

*263 The prime example of this rule is Puddu v. Buonamici Statuary, Inc. [FN54] In Puddu, the copyright notice on a statuette failed to identify the copyright proprietor, and was held to be invalid. [FN55] The copyright notice in Puddu contained the initials A.R.P. and the symbol "©." [FN56] The name of the copyright proprietor, Angelo R. Puddu, allegedly appeared on the back of the statuette in accordance with the special notice requirements for sculptures, [FN57] but the district court found that the name was illegible. [FN58] The defendants in the case had been involved in prior litigation with the copyright proprietor and had full knowledge of the copyright proprietor's identity and claim before they copied the statuettes. [FN59] The plaintiffs argued that full compliance with the notice requirement was not necessary when the defendants already knew the identity of the copyright holder. [FN60] The Court of Appeals rejected this argument and pointed out that the rights conferred by copyright are wholly statutory, and the only means of securing those rights are those listed in the statute. [FN61] The plaintiffs in Puddu could only secure their copyrights by using the proper notices on all published copies, not by showing that the defendants already knew the information that the notice was required to contain. [FN62] Likewise, Disney cannot rely on its fame to secure its copyrights. Works published under the 1909 Act were required to have proper notices, and failure to use proper notice was fatal to the copyright even when there was no actual confusion as to the copyright proprietor's identity. Thus, fame is no substitute for a proper copyright notice.

C. Purpose of the Copyright Formalities

Disney also alleged that in the case of the Mickey Mouse films, the purpose of the formalities had been satisfied. But this argument is erroneous. The copyright notice serves several purposes. [FN63] As noted above, the notice informs *264 the public of the copyright proprietor's identity, but it also demonstrates the validity of the copyright claim because publication with proper notice is the very act which gives rise to protection. [FN64] A facially invalid notice--such as one that omits the proprietor's name--tells even those who know the proprietor that the copyright is invalid, since the requirements for protection were simply not met. [FN65] This distinguishes the Mickey Mouse films from cases in which minor technical deficiencies were forgiven because they could not create confusion. [FN66] In those cases, the name of a licensee or subsidiary is substituted for the name of the copyright proprietor. [FN67] The notices themselves are facially valid because they contain a name, the word "copyright" and the date. Thus, the public would not be led to believe that the copyrights were invalid. [FN68] In addition, the notices identify as copyright owner the actual proprietor, a subsidiary of the actual copyright proprietor, or a licensee of the copyright, so that the public could not be harmed by reliance on the named person's statements. [FN69] But with the Mickey Mouse films, no name is clearly listed as the copyright proprietor. Further, Ub Iwerks, who might have reasonably been confused with the copyright holder, was a mere employee who severed ties with Disney in 1931. [FN70] The notice fails to fulfill the first purpose, because it does not clearly identify Walter E. Disney as the copyright proprietor and might even affirmatively mislead the public to believe that Ub Iwerks was the copyright holder. [FN71] Even if Disney's fame *265 sufficed to fulfill that purpose, the second purpose would remain unsatisfied, because the facially invalid notices would tell the public that the copyrights were void even if they knew that Disney claimed them.

D. Disney's Intent to Copyright

Disney might also argue that the failed attempt to place a copyright notice on the films indicates that forfeiture was not intended. However, the consequence of publication without a proper notice was immediate and irrevocable forfeiture of all copyright protection, regardless of the proprietor's intent. This forfeiture took place by operation of law and was effective as of the date that publication without notice occurred. Courts have occasionally held that the author's intent is relevant to the question of forfeiture, but these holdings are the result of a misapplication of the rules of abandonment to cases of forfeiture. [FN72] Judge Learned Hand clarified the distinction in National Comics Publications, Inc. v. Fawcett Publications, Inc. [FN73] He made it clear that while it is certainly possible for a copyright proprietor to abandon his copyright, this requires an act that manifests a clear intent to relinquish all rights provided by copyright law. [FN74] A forfeiture, on the other hand, requires no such manifestation of intent, and occurs by operation of law, often when the proprietor has manifested a clear intention to not abandon the copyright--for example by placing some sort of copyright notice, albeit an invalid one, on the work. [FN75] The forfeiture is imposed on the proprietor because of his failure to comply with the formal terms of copyright protection, and not because he is somehow deemed to have voluntarily relinquished his claim. [FN76] The few cases that hold that the proprietor's intent is relevant when a work is published without notice do so in opposition to the prevailing rule. [FN77]

*266 III. Copyrights in the Unpublished Mickey Mouse Films

A. Requirement of Notice for Copyrighted Material Published in Uncopyrighted Derivative Works

Although Disney has not specifically raised this issue, it might also claim that the copyright in the silent film "Mickey Mouse in Plane Crazy" was not lost, since it was never published (as a silent film), and that the other films are derivative works which cannot be copied without infringing on this original work. [FN78] Under this theory, the lack of notice on the derivative films would only affect the copyrights in the new material that originated in those films, not the underlying material that was borrowed from the original silent film (i.e., the character Mickey Mouse). Because there is mixed authority on this issue, this would be Disney's strongest argument, but it would run counter to an established rule of copyright law that publication of a derivative work constitutes publication of the incorporated portions of underlying works. [FN79] Under that rule, the publication of the three sound films was accompanied by a simultaneous publication of copies of the incorporated portions of the original silent film. Because no valid copyright notice was present on the sound films, copies of the incorporated portions of the silent film were published without notice. This means that those incorporated portions have lost copyright protection because section 10 of the Copyright Act required all published copies to have proper notice. [FN80] This rule is sound, and it is clearly the result dictated by legislative intent. Nevertheless, a few later cases have indicated some disagreement.

The rule that notice is required for copyrighted material published in uncopyrighted derivative works has been upheld in numerous cases starting with Bentley v. Tibbals. [FN81] In Bentley, a case decided shortly after the passage of the *267 1909 Act, the Second Circuit held that it was permissible under the prior act to include copyrighted works in an uncopyrighted collection, but that a suitable copyright notice was required to protect the copyrighted portions. [FN82] In Bentley, portions of a previously copyrighted work were included in an uncopyrighted derivative work. [FN83] The derivative work had a notice indicating that some portions were copyrighted, but it failed to indicate which portions were protected. [FN84] The court held that the notice was therefore invalid and that the entire work, including the previously copyrighted portions, could be freely copied. [FN85]

B. Section 7 of the 1909 Act

Subsequent plaintiffs argued that section 7 of the 1909 Act protected underlying works in situations similar to Bentley. [FN86] The work at issue in Bentley was published prior to the passage of the 1909 Act, so section 7 was not applicable. [FN87] Courts rejected this argument--with good reason, since this section was intended to extend the rule under the previous act, which Bentley interpreted. [FN88] The relevant provision of section 7 states that, "the publication of any such new [derivative] works shall not affect the force or validity of any subsisting copyright upon the matter employed or any part thereof." [FN89] This "force and validity" clause ensures that as long as the requirements for copyright protection are satisfied with respect to underlying works, those copyrights will *268 not be affected by virtue of their inclusion in a derivative work. The "force and validity" clause does not specifically address whether the lack of notice on--as opposed to the mere publication of--a derivative work shall affect subsisting copyrights. This would suggest that such an omission would affect the subsisting copyright, since section 10 requires notice on every published copy--whether or not it is published as part of a compilation or other derivative work. In addition, in such a case it is not the publication of the new derivative work that affects the underlying copyright, but the concurrent publication of the underlying material without proper notice. The publication of the derivative work is merely incidental.

Several courts interpreted the effect of the publication of a derivative work without a copyright notice during the time when the 1909 Act was in effect. [FN90] Most held that the incorporated portions of previously copyrighted materials become public domain if there is no notice of any copyright. [FN91] In Sieff v. Continental Auto Supply, Inc., a copyrighted catalog was republished with new additions in a later catalog that lacked any copyright notice. [FN92] The court noted that section 7 [FN93] was not concerned with notice at all. [FN94] The court held that under section 7, a copyrighted work retained protection when it was included in an uncopyrighted derivative work, but that under section 10, notice of the original copyright was still required to maintain that protection. [FN95] The court reasoned that anyone seeing the derivative work would reasonably feel free to copy the entire work if the copyrighted portions did not bear notice. [FN96] Under this interpretation, Walt Disney would have been able to include all or a portion of the silent film "Mickey Mouse in Plane Crazy" in the later uncopyrighted films, but he would still be required to place a valid notice on those uncopyrighted *269 works to indicate the inclusion of the previously copyrighted material. This he did not do.

In L & L White Metal Casting Corp. v. Joseph, there was a situation similar to the one in Sieff. [FN97] Previously copyrighted catalog supplements were published as parts of a larger uncopyrighted catalog in a loose-leaf binder format. [FN98] There was no general copyright notice for the entire catalog, but there were notices on the individually copyrighted supplemental pages. [FN99] The court held that section 20 required works to bear notice on the first page, but that this rule only applied to the copyright in the compilation as a whole, not the separate copyrights in the component parts. [FN100] The court then held that under section 7, the copyrights in the individual supplements would not be affected by this lapse so long as they each contained their own valid copyright notices. [FN101] This way, section 20 was satisfied because all published copies of the supplements bore valid notice, and section 7 was satisfied because the publication of the uncopyrighted derivative work would not, in itself, affect the underlying copyrights. [FN102] Thus under L & L White, the 1909 Act was in line with Bentley's interpretation of the prior act, which allowed copyrighted works to appear in uncopyrighted compilations as long as a valid copyright notice appeared on the copyrighted portions. [FN103] But in the case of Mickey Mouse, there was no proper notice on any of the derivative works or on any of the underlying materials.

C. The Legislative History of Section 7

The case of L & L White is especially helpful in understanding the legislative history on section 7 that has recently caused some confusion. The original draft of section 7 stated that, "no such copyright [in a derivative work] shall affect the force or validity of any subsisting copyright upon the matter employed or any part thereof," but was changed in the final bill to read, "the publication of any such new works shall not affect the force or validity of any subsisting copyright upon the matter employed or any part thereof." [FN104] The change was suggested in *270 a joint committee hearing by lobbyist W.B. Hale, who justified the change by stating:

That is to meet this situation. It is the publication of a book without copyright protection that forfeits the copyright, or the publication of a book without proper notice, or anything of that kind. Under the act, as it stands now, it says the copyright shall not affect it. I would like to meet the case of a new compiled work, within the meaning of this clause, that is not copyrighted, or where, by reason of some accident the copyright fails. That should not affect the original copyrights in the works that have entered into and formed a part of this new compiled work. It does not change the intent of the section in any way. [FN105]

Hale was concerned that the "no such copyright shall affect" language would imply that the publication of uncopyrighted derivative works, or of derivative works with failed copyrights, shall affect subsisting copyrights.

Hale's statement regarding publication of a derivative work without proper notice is best viewed within the context of L & L White, where there is notice sufficient to protect the underlying works, but not the derivative work as a whole. Invalidating a subsisting copyright in such a situation would clearly conflict with the rule under the prior act, which was explained in Bentley. [FN106] Viewing Hale's statement as compatible with L & L White's interpretation of section 7, therefore, brings the 1909 Act in line with the previous rule. Because the section was meant to reenact prior law, [FN107] the change would then be consistent with that intent, as Hale claimed. [FN108] In addition, Hale represented a legal publisher who was probably concerned about cases similar to L & L White, where previously copyrighted legal supplements--with their own copyright notices--might be inserted into uncopyrighted compilations. [FN109]

On the other hand, if Hale's statement is interpreted to extend to derivative works published with no notice whatsoever, section 7 changes from a reenactment of prior law into a complete exemption from the notice requirement for subsisting copyrights used in derivative works. This would be inconsistent with the intent of the section and, therefore, Hale's own statement. Indeed, it would bring section 7 into direct conflict with the section 10 notice requirement, which required notice on every published copy of a work, whether or not that copy is included in a compilation or other derivative work. Section 7 might *271 possibly be read as an exception to the notice requirement, but exceptions are not typically inferred when there is no irreconcilable conflict between two sections. Where the two sections can reasonably be construed in harmony, the conflict should be avoided. [FN110] Even if Hale intended such a conflict, his intention should not be imputed to Congress as a whole since it was most likely not aware of any such intention. The joint committee report on section 7 stated only that the section allowed for copyrights in derivative works and extended the law of the previous act. [FN111]

A singular, ambiguous, and obscure statement by an interested lobbyist could not possibly prove a legislative intent in opposition to the intent that was stated in the committee report, supported by contemporaneous judicial interpretation, and implied by the language of the statute, the standard rule of statutory harmonization, and the broader intent of the Act, which centered around the notice requirement. The distinction made in L & L White is the only way to reconcile section 7 with the notice requirement of section 10, as well as with the legislative history and text of the 1909 Act. Clearly, it is an accurate reflection of Congressional intent.

D. Contrary Authorities

Unfortunately some courts have overlooked the distinction in the L & L White case. Without exception, these courts have failed to distinguish or discuss any of the contrary case law. Most of these cases address the issue only in dicta, but some cases have directly held that section 7 protects underlying works when a derivative work is published with no notice whatsoever.

In Cordon Art B.V. v. Walker, the defendant copied a set of drawings by M.C. Escher. [FN112] The defendant argued that the drawings were published without notice while the 1909 Act was in effect. [FN113] The court held that the drawings that the defendant copied were derivative works of the original drawings and master blocks, because they were "prepared from and based on the original drawings *272 and master blocks." [FN114] The court further held that section 7 prevented the production of derivative works from affecting the copyright in the underlying works. [FN115] The court made two errors. First, the original drawings were unpublished and unregistered for statutory protection; [FN116] section 7 does not apply to such works. [FN117] Second, even if section 7 did apply, it cannot protect a work when copies of that work have been published without notice. The court failed to recognize that because the derivative works were "prepared from and based on" the underlying works, they necessarily include copies of the underlying works. [FN118] When the derivative works were published without notice, copies of the underlying works were likewise published without notice, in a clear violation of section 10.

To support its holding, the Cordon Art court cited Russell v. Price for the proposition that "a preexisting work cannot be abrogated by a derivative work." [FN119] In Russell, the copyright in a movie was not renewed, while the original copyright in the play that the movie was based on was renewed. [FN120] Because the original copyright was itself renewed, that copyright was still valid, and the passing of the derivative work into the public domain did not affect the underlying material. [FN121] But because the preexisting copyright was renewed, Russell is more like L & L White, where the preexisting material did have proper copyright notices, and only the uncopyrighted portions did not. [FN122] In Cordon Art, copies of the original works, embodied in the derivative works, were published without notices for the new material or the underlying material. [FN123] A more proper analogy for the Cordon Art case would be if neither the derivative nor the underlying work's copyright were renewed. In such a case, it is obvious that both copyrights would expire regardless of section 7.

The court did not cite or distinguish any of the prior case law that addressed this issue. [FN124] The court was probably not made aware of the previous cases, because the defendant was a pro se litigant who, despite receiving ample time to find an attorney, was not prepared to defend against the plaintiff's motion for *273 summary judgment. [FN125] While the court did not treat the defendant unfairly given his lengthy delay in finding a new attorney, [FN126] it seems highly unlikely that the court was properly briefed or spent a significant amount of time conducting its own research on this issue. Any court fully briefed on the matter would be far more likely to agree with the original interpretation put forth in the Bentley line of cases.

Two circuit court cases do lend support to the theory that a failure to affix copyright notice to a derivative work will not affect underlying material even when there is no notice of the underlying copyright. In Applied Innovations v. Regents of the University of Minnesota, the Eighth Circuit states that proposition as a bare conclusion, and does not support it with even a word of argument, precedent, statute, or authority, save a non-sequiter citation to Nimmer's Treatise on Copyright. [FN127] In Schiller & Schmidt, Inc. v. Nordisco Corp., the Seventh Circuit repeats the claim, also failing to support its conclusion in any way save a citation to Applied Innovations. [FN128] Schiller & Schmidt might be distinguished from the facts at hand since it was decided under the 1976 Copyright Act, but that Act contains a provision similar to Section 7--although the court did not mention it. [FN129] Neither case even considered the fact that copies of the underlying works themselves were published without notice when they were embodied in the derivative works, a clear violation of the unambiguous terms of the notice requirement. [FN130] Applied Innovations, which was decided under the terms of the 1909 Act, did not consider or discuss any of the legislative history, contemporaneous judicial interpretation, context, or even the text of the 1909 Act. [FN131]

The value of these two cases is further questionable in light of Donald Frederick Evans v. Continental Homes, Inc. [FN132] In that case, the Eleventh Circuit held that registered copyrights in architectural drawings, which were initially published with notice, were forfeited when they appeared in a compilation that did not have any copyright notice. [FN133] The Seventh Circuit--the same court that *274 decided Schiller & Schmidt--later indicated support for the reasoning in this case. [FN134] It would seem likely then that the court would be willing to reconsider Schiller & Schmidt if a similar case arose today. At most, these three cases show that the federal courts disagree on this issue and that they could benefit from a more thorough exposition of the rationales underlying their decisions. [FN135]

E. Supreme Court Dicta on Section 7

One final case might be interpreted to support the proposition that section 7 protects subsisting copyrights when derivative works are published with no notice, but it does so in unpersuasive dicta. [FN136] In Stewart v. Abend, [FN137] the Supreme Court stated:

*275 The language change [to 7] was suggested only to ensure that the publication of a 'new compiled work' without proper notice, including smaller portions that had not been previously published and separately copyrighted, would not result in those sections moving into the public domain. [FN138]

It based this conclusion on an article that cited Hale's testimony on section 7. [FN139] This dicta might arguably support applying section 7 to cases in which a derivative work carries no notice whatsoever, since the Court did not specify that the "smaller portions" must have their own notices. While dicta of the Supreme Court is usually entitled to great deference, there are several reasons why this particular rationale is not compelling: it was unnecessary to the outcome of the case, it could be deleted without affecting the outcome, it was not grounded in the facts, and the issue it addressed was not present as an issue in the case. [FN140] For these same reasons, the Ninth Circuit declined to follow the portion of the dicta that seemed to apply section 7 to unpublished, uncopyrighted works. [FN141]

In Abend, the producers of a movie lost the right to use the underlying story when the author died and his executors refused to transfer the rights in the renewal period, which vested in the original copyright holder regardless of any prior assignments. [FN142] The Abend dicta was a response to an argument by the dissent that Hale's language change meant that the copyright in the derivative work gave the derivative copyright holders an independent right, and that the "publication" of the derivative work would not affect--or infringe-- the original work. [FN143] The majority responded that the change was only meant to close a loophole that would have allowed "publication alone" to affect a subsisting copyright when the derivative work was not itself copyrighted [FN144]--i.e., the situation in L & L White. The part that (arguably) applies section 7 to derivative works with no notice whatsoever is simply an overstatement and does not affect the Court's argument in the slightest. The majority was not concerned with a precise exposition of the scope of section 7, but only with rebutting the dissent's rationale for the language change. [FN145]

In Batjac Productions Inc. v. Goodtimes Home Video, the Ninth Circuit addressed a case in which the copyright owner of a movie failed to renew his *276 copyright. [FN146] The copyright owner argued that the "common law copyright" in the unpublished screenplay was still protected, notwithstanding the expiration of his statutory copyright in the motion picture. [FN147] He relied on the Abend dicta's application of section 7 to "smaller portions that had not been previously published and separately copyrighted." [FN148] The court noted that unless section 7 applied, the mere publication of the derivative work would divest the "common law copyright" in the original work. [FN149] The court examined the Abend opinion, and found that the dicta's application of section 7 to unpublished works was not necessary to the Court's argument, and that the Court was not addressing an unpublished work. [FN150] In addition, the Batjac court found that there were important policy considerations against applying section 7 to unpublished works that the Supreme Court had not considered. [FN151] Unpublished works were subject to perpetual protection, and, if the court allowed section 7 to preserve such protection even when a derivative work was published, the owner could have perpetual protection over the published derivative work by invoking the common law copyright in the unpublished underlying work. [FN152] In addition, anyone seeking to use a public domain work would have no way of knowing that an unpublished underlying work was still protected, since unpublished works are not generally registered with the Copyright Office. [FN153] For these reasons, the court held that the Abend dicta should not be followed with respect to unpublished, uncopyrighted works. [FN154]

Likewise, the dicta should not be followed with respect to derivative works that are published with no notice whatsoever. That part of the dicta has no bearing on the Court's argument and could be deleted without reducing its force in any way. In addition, Hale's statement does not support the conclusion that the Court reached. [FN155] Because the Court was not directly concerned with this issue, it was unlikely to thoroughly investigate the context of Hale's statement or the prior case law. Finally, the Court was not considering a case that involved notice, and there are important policy issues that it simply did not address.

*277 The main function of the notice provision of the 1909 Act was to inform the public whether or not a work was protected by copyright. [FN156] Notice was the primary requirement for copyright protection and "the essence of compliance with the statute." [FN157] If the underlying works in a derivative work were protected even when there was no notice whatsoever, the requirement would be completely incapable of fulfilling its primary purpose. An author could have published a few copies of a work with notice and then published ten thousand copies in a derivative work with no notice. In fact, if the publisher registered an unpublished underlying work, as Disney did, he would not need to publish even a single copy of the underlying work with proper notice. Anyone who purchased the derivative work would have felt free to copy it, and would have no notice that part of the work was protected by copyright. In addition, because the copyright holder's name might not be present on the work at all, the public might have no way of conducting a copyright search to determine if there were any underlying copyrights. Because section 21 does not apply in a situation in which notice was intentionally omitted, the innocent infringement defense would not be available, even where the defendant had no actual knowledge of the underlying copyrights. [FN158] These policy considerations are closely analogous to those present in Batjac, and they clearly support the conclusion that section 7 does not apply when the derivative work does not bear notice of the underlying copyrights. Therefore, the Abend dicta should be rejected here for the same reasons it was rejected in the Batjac case.

Disney should not be allowed to sustain a copyright in material that was published in films without notice based on a copyright registration for an unpublished work. [FN159] Even if the original silent film had been previously published with a proper notice, the Walt Disney Company should not be able to claim a copyright in material that Walt Disney published without proper notice in clear violation of the notice requirement. There is no principled reason for concluding that a copy of "Mickey Mouse in Plane Crazy" does not require copyright notice simply because sound is added to the work. If actual notice fails to fulfill the purpose and substance of the notice requirement, [FN160] then on what basis could the addition of sound serve as a substitute for proper notice? *278 To give effect to both sections 7 and 10, the incorporated portions of an underlying work must be deemed forfeited when they are published without proper notice as part of a derivative work. Therefore, "Mickey Mouse in Plane Crazy" is in the public domain to the extent that it was incorporated into the three sound films.


Ultimately, if all the material incorporated into the films published without notice is in the public domain, this means that the character Mickey Mouse is himself public domain material. Mickey would still be protected by the copyrights in his other films and products, but those copyrights would only extend to the new matter that is original to them. [FN161] The aspects of Mickey's image and character that were derived from the original public domain films cannot be protected by virtue of their inclusion in new works; this is true under both the 1909 Act and the Current Act. [FN162] This means that the public is free to exercise all of the rights that the Copyright Act would otherwise reserve to the holder of a valid copyright. [FN163] This includes the rights to copy, display and distribute the films, and to make, display and distribute derivative works based on those films and the Mickey Mouse character. [FN164]

If the conclusions drawn in this paper are tested and validated in court, it would be reasonable to expect a flood of new Mickey Mouse based products, including new cartoons, comics, movies, figures, toys etc., along with a corresponding flood of litigation and lobbying efforts from the Walt Disney Company in an effort to regain control over its flagship character. The lobbying efforts would likely focus around passing a retroactive revocation of the notice requirement for domestic works similar to the one passed for foreign works. [FN165] The litigation efforts would most likely focus around the state and federal trademark and unfair competition laws, including the dilution provisions of the Lanham Act. [FN166] While such litigation efforts would necessarily meet with limited success, [FN167] it is quite possible that Disney's deep-pocketed lobbyists *279 could succeed in an appeal to Congress, and regain full copyright protection for the Mickey Mouse character and his early films. [FN168] Until then, it appears that Mickey is up for grabs.

[FNa1]. Author received a bachelor's degree from the University of California, Berkeley, and J.D. degree from the Georgetown University Law Center. Author currently practices civil litigation with Connor, Blake & Griffin, in Irvine, California.

[FN1]. 2003 U.S. LEXIS 751, 123 S. Ct. 769 (2003).

[FN2]. See Lauren Vanpelt, Mickey Mouse - A Truly Public Character, available at (last visited Feb. 26, 2003).

[FN3]. The article did not address The Walt Disney Company's claim that the appearance of Disney's name on the title frame constitutes proper notice, or the relevant interpretations of 7 of the 1909 Act that might save the copyright in Mickey Mouse (these two issues account for the bulk of this Article). See discussion infra Parts II.A and III. The article also makes some minor legal errors, such as incorrectly stating that a mistake of less than one year in the year-date of the notice will invalidate the copyright, but these errors do not alter the article's conclusion. Cf. 2-7 Nimmer on Copyright 7.08[C][1] (2002) [hereinafter Nimmer].

[FN4]. Richard Holliss & Brian Sibley, The Disney Studio Story, 16 (1988); Tom Tombusch, Tomart's Illustrated DISNEYANA Catalog and Price Guide, 28 (1989).

[FN5]. Copyright Registration # MU5036 (1928), renewed Copyright Registration # R166729 (1957); see Holliss & Sibley, supra note 4; see also Tombusch, supra note 4.

[FN6]. Copyright Registration # MU5036 (1928), renewed Copyright Registration # R166729 (1957); see Holliss & Sibley, supra note 4; see also Tombusch, supra note 4. Under the 1909 Act, statutory copyright protection normally required that a work be published with notice. But 12 made an exception for certain unpublished works that were registered and deposited with the copyright office. 17 U.S.C. 12 (repealed 1976).

[FN7]. See Holliss & Sibley, supra note 4, at 16; Tombusch, supra note 4, at 28.

[FN8]. See Holliss & Sibley, supra note 4; Tombusch, supra note 4.

[FN9]. See Holliss & Sibley, supra note 4; Tombusch, supra note 4.

[FN10]. See Holliss & Sibley, supra note 4; Tombusch, supra note 4.

[FN11]. Copyright Registration # MP2124 (1928) (Steamboat Willie), renewed Copyright Registration # R162021; Copyright Registration # MP2161 (1929) (Mickey's Follies), renewed Copyright Registration # R179793; Copyright Registration # MP1794 (1930) (Gallopin' Gaucho), renewed Copyright Registration # R204521; Copyright Registration # MP1795 (1928) (Plane Crazy), renewed Copyright Registration # 204522.

[FN12]. The Walt Disney Company, Inc., Mickey Mouse: the Black and White Years (1993).

[FN13]. See infra section 2(A).

[FN14]. Note that the relative font size and spacing are approximate, the font faces do not match the title frame, and illustrations of Mickey and Minnie Mouse are omitted. For the actual title frames, see Douglas Hedenkamp, Free Mickey Mouse Website, available at (last visited April 14, 2003).

[FN15]. See Holliss & Sibley, supra note 4, at 13.

[FN16]. Copyright Registrations, supra notes 5 and 11.

[FN17]. Powers Cinephone System was actually an illegal copy of a recording system patented by RCA.

[FN18]. See Holliss & Sibley, supra note 4, at 19.

[FN19]. See 17 U.S.C. 21 (repealed 1976).

[FN20]. Letter from Barbara J. Quinn, Counsel, The Walt Disney Company, to Author (January 30, 2002) (on file with author); Letter from Louis M. Meisinger, General Counsel, The Walt Disney Company, to Author (March 15, 2002) (on file with author); Letter from Louis M. Meisinger, General Counsel, The Walt Disney Company, to Author (April 5, 2002) (on file with author).

[FN21]. See Cooling Systems and Flexibles, Inc. v. Stuart Radiator, Inc., 777 F.2d 485, 489-490 (9th Cir. 1985) (holding that evidence of a single copy without notice shifted burden to plaintiff to prove that improper notice was excused under the 1976 Copyright Act); Princess Fabrics, Inc. v. CHF, Inc., 922 F.2d 99, 102 (2d Cir. 1990).

[FN22]. See 17 U.S.C. 10, 19 (repealed 1976). See also National Comics Publications, Inc. v. Fawcett Publications, Inc., 191 F.2d 594, 600 (2d Cir. 1951) (holding that "Section 10 provides that the first publication of a 'work' with the 'required' notice secures the copyright; but it implies that a failure to affix notice upon each copy later published 'by authority of the copyright proprietor' will 'forfeit' it; and such is the law.").

[FN23]. 17 U.S.C. 10 (repealed 1976).

[FN24]. 17 U.S.C. 19 (repealed 1976).

[FN25]. See, e.g., Moger v. WHDH, Inc., 194 F. Supp. 605 (D. Mass. 1961) (holding that lack of copyright proprietor's name in copyright notice forfeits copyright protection).

[FN26]. Letter from Louis M. Meisinger, General Counsel, The Walt Disney Company, to Author (March 15, 2002) (on file with author).

[FN27]. Compare Record & Guide Co. v. Bromley, 175 F. 156, 166-67 (C.C.E.D. Pa. 1910), with Glenco Refrigeration Corp. v. Raetone Commercial Refrigerator Corp., 149 F. Supp. 691, 692 (E.D. Pa. 1957).

[FN28]. Nimmer, supra note 3, 7.11[C].

[FN29]. Id. at 7.11 n19.

[FN30]. H.R. Rep. No. 94-1476 (1976).

[FN31]. See Shapiro & Son Bedspread Corp. v. Royal Mills Associates, 568 F. Supp. 972, 976 n.2 (S.D.N.Y. 1983); W.S. Besset, Inc. v. Albert J. Germain., 18 F. Supp. 249, 250 (D. Mass. 1937); Osgood v. A.S. Aloe Instrument Co., 83 F. 470, 472 (C.C.E.D. Mo. 1897).

[FN32]. 568 F. Supp. at 979.

[FN33]. Id. at 976 n.2.

[FN34]. Id.

[FN35]. Id.

[FN36]. Shapiro & Son Bedspread Corp. v. Royal Mills Associates, 764 F.2d 69, 75 (2d Cir. 1985).

[FN37]. 194 F. Supp. 605 (D. Mass. 1961).

[FN38]. Id. at 606.

[FN39]. Id.

[FN40]. Id.

[FN41]. Id.

[FN42]. Id.

[FN43]. See Glenco Refrigeration Corp. v. Raetone Commercial Refrigerator Corp., 149 F. Supp. 691 (E.D. Pa. 1957) (upholding initials in notice referring to proprietor's name printed one inch above and three inches to the right of the notice); Ziegelheim v. Flohr, 119 F. Supp. 324 (E.D.N.Y. 1954) (ruling that copyright proprietor's name appeared on the line directly above the word copyright and was clearly part of the notice); Harry Alter Co. v. Graves Refrigeration, Inc., 101 F. Supp. 703 (N.D. Ga. 1951) (upholding notice in which initials referred to proprietor's name printed directly below the notice in large bold letters); Hale Nass Corp. v. Dan Brechner, 22 Cop. Off. Bull. 137 (S.D.N.Y. 1935) (holding that when the proprietor's name appeared at top of card, and the copyright notice appeared at bottom, apparently without intervening text, the notice made the identity of the proprietor clear.). Cf. Nimmer, supra note 3, 7.11[B].

[FN44]. See Moger, 194 F. Supp. at 606.

[FN45]. 149 F. Supp. at 692.

[FN46]. Id.

[FN47]. Id.

[FN48]. Id.

[FN49]. Letter from Louis M. Meisinger, General Counsel, The Walt Disney Company, to Author (March 15, 2002) (on file with author).

[FN50]. Since these were the first three published Mickey Mouse films, the original viewers of these films could not possibly be charged with prior knowledge that Walt Disney was the copyright proprietor of Mickey Mouse.

[FN51]. See Puddu v. Buonamici Statuary, Inc., 450 F.2d 401 (1971); Thompson v. Hubbard, 131 U.S. 123 (1889); Data Cash Sys., Inc. v. JS&A Group, Inc., 628 F.2d 1038 (7th Cir. 1980); Booth v. Haggard, 184 F.2d 470 (8th Cir. 1950); Nimmer, supra note 3, 7.14[A][2].

[FN52]. Mifflin v. R.H. White Co., 190 U.S. 260, 264 (1903) (holding that "the great reputation of the work and the fame of its author" did not save the copyright when the incorrect name was placed in the notice, even where no reasonably intelligent publisher could actually be misled).

[FN53]. "(T)he right being purely statutory, the public may justly demand that the person claiming a monopoly of publication shall pursue, in substance at least, the statutory method of securing it." Mifflin 190 U.S. at 264.

[FN54]. 450 F.2d at 401.

[FN55]. See id. at 403.

[FN56]. Id.

[FN57]. 17 U.S.C. 5(g), 19 (repealed 1976).

[FN58]. See Puddu, 450 F.2d at 403.

[FN59]. Id. at 404.

[FN60]. Id.

[FN61]. Id. at 405.

[FN62]. See Id.

[FN63]. "(1) It has the effect of placing in the public domain a substantial body of published material that no one is interested in copyrighting; (2) It informs the public as to whether a particular work is copyrighted; (3) It identifies the copyright owner; and (4) It shows the date of publication." H.R. Rep. No. 94-1476, at 143 (1976).

[FN64]. Thus, it "informs the public as to whether a particular work is copyrighted." Id.; see also 17 U.S.C. 10 (1947) (repealed 1976).

[FN65]. See, e.g., Puddu, 450 F.2d 401.

[FN66]. See Abend v. MCA, Inc., 863 F.2d 1465, 1469-1470 (9th Cir. 1988) (holding that a copyright notice in a periodical's name is sufficient to obtain a valid copyright on behalf of the proprietor of the work); Fantastic Fakes, Inc. v. Pickwick Intl., Inc., 661 F.2d 479, 487, 212 U.S.P.Q. 727 (5th Cir. 1981) (ruling that a copyright notice may be sufficient when it names a licensee as the copyright proprietor); Dan Kasoff, Inc. v. Novelty Jewelry Co., 309 F.2d 745 (2d Cir. 1962) (holding that a copyright notice is sufficient when it identifies the copyright proprietor by his trademark instead of his actual name); Nat'l Comics Publications, Inc. v. Fawcett Publications, Inc., 191 F.2d 594, 602 (2d Cir. 1951) (ruling that a copyright notice is sufficient when it names the proprietor's wholly owned subsidiary as the copyright proprietor and the wholly owned subsidiary has no independent will).

[FN67]. Abend, 863 F.2d at 1468-1470; Fantastic Fakes, 661 F.2d at 487; Nat'l Comics, 191 F.2d at 602.

[FN68]. Abend, 863 F.2d at 1469-1470; Fantastic Fakes, 661 F.2d at 487; Nat'l Comics, 191 F.2d at 602-03.

[FN69]. Abend, 863 F.2d at 1468-1470 (licensee); Fantastic Fakes, 661 F.2d at 487 (licensee); Dan Kasoff, 309 F.2d at 745 (actual proprietor); Nat'l Comics, 191 F.2d at 602 (subsidiary).

[FN70]. Even if Iwerks's employment were enough to qualify him to be listed as the copyright proprietor, any copies distributed after 1930, when Iwerks left Disney, would still have forfeited the copyrights. See Holliss & Sibley, supra note 4, at 19.

[FN71]. Since Iwerks was not a subsidiary "with no independent will" (as in Nat'l Comics, 191 F.2d at 602), or a licensee with an interest in preserving the copyright, he might have flippantly, or even fraudulently, granted others permission to use the films. If the notices were valid, an innocent infringement defense would be unavailable to those who relied on his permission.

[FN72]. "Despite imprecise usage in some of the cases, abandonment must be distinguished from forfeiture of copyright. The latter may occur as a consequence of publication without proper notice and is effectuated by operation of law regardless of the intent of the copyright owner." Nimmer, supra note 3, 13.06.

[FN73]. 191 F.2d 594 (2d Cir. 1951).

[FN74]. Id. at 597-598.

[FN75]. Id. at 598.

[FN76]. Id.

[FN77]. Nimmer, supra note 3, 4.13[D].

[FN78]. Disney would not likely make this argument with respect to the silent version of "Gallopin' Gaucho," because that work was never registered for statutory copyright, and the case law is very clear that publication of a derivative work divests the common law copyright in incorporated works that are unpublished and unregistered. See, e.g., Batjac Productions Inc. v. Goodtimes Home Video Corp., 160 F.3d 1223 (9th Cir. 1998).

[FN79]. See Nimmer, supra note 3, 4.12.

[FN80]. 17 U.S.C. 10 (repealed 1976). See, e.g., Fawcett, 191 F.2d at 600.

[FN81]. See Bentley v. Tibbals, 223 F. 247 (2d Cir. 1915); Deward & Rich, Inc. v. Bristol Sav. & Loan Corp., 120 F.2d 537 (4th Cir. 1941) (ruling that copyright in entire volume of illustrations forfeited when illustrations were published in various periodicals without notice); L & L White Metal Casting Corp. v. Joseph, 387 F. Supp. 1349 (E.D.N.Y. 1975) (holding that catalog supplements inserted in public domain catalog retain copyright protection as long as they have their own copyright notices); First Am. Artificial Flowers, Inc. v. Joseph Markovits, Inc., 342 F. Supp 178 (S.D.N.Y. 1972) (ruling that the portions of a copyrighted sculpture of a rose that were included in a later sculpture without copyright notice were public domain); Grove Press, Inc. v. Greenleaf Publ'g Co., 247 F. Supp. 518 (E.D.N.Y. 1965) (holding that the copyright in a translation of a portion of a story was forfeit when it was later included, without notice, in an uncopyrighted translation of the entire story, but the copyright in the original story was not lost, because the translator did not have the authority to allow reproduction by others); Sieff v. Continental Auto Supply, Inc., 39 F. Supp. 683 (D. Minn. 1941) (concluding that previously copyrighted material included in uncopyrighted catalog lost its protection because of failure to include proper notice for the copyrighted portions). Cf. Siewek Tool Co. v. Morton, 128 F. Supp. 71 (E.D. Mich. 1954) (holding that copyrighted illustrations retain protection when carried forward into uncopyrighted catalog where the page that included the illustrations had a proper copyright notice).

[FN82]. Bentley, 223 F. at 256. See also Black v. Henry G. Allen Co., 42 F. 618 (1890) (concluding that copyrights in articles were valid when they were published in an uncopyrighted collection that contained proper notices for all copyrighted portions).

[FN83]. Bentley, 223 F. at 250.

[FN84]. Id.

[FN85]. Id. at 256.

[FN86]. See, e.g., Sieff, 39 F. Supp. at 685 (ruling that 7 does not protect underlying works where there is no notice of the underlying copyright); L & L White, 387 F. Supp. at 1355 (holding that 7 only protects underlying works where there is notice of the underlying copyrights).

[FN87]. See Bentley, 223 F. at 250.

[FN88]. H.R. Rep No. 2222 (1909), S. Rep. No. 1108 (1909).

[FN89]. 17 U.S.C. 7 (repealed 1976).

[FN90]. See Deward & Rich, 120 F.2d at 538-540; L & L White Metal, 387 F. Supp. at 1355; First Am. Artificial Flowers, 342 F. Supp at 185; Grove Press, 247 F. Supp. at 523; Sieff, 39 F. Supp. at 686; Siewek Tool Co., 128 F. Supp. at 74; Nat'l Council of Young Israel v. Feit Co., Inc., 347 F. Supp. 1293, 1297-1298 (S.D.N.Y. 1972).

[FN91]. Compare Deward & Rich, 120 F.2d at 538-540, L & L White Metal, 387 F. Supp. at 1355, First Am. Artificial Flowers, 342 F. Supp at 185, Grove Press, 247 F. Supp. at 523, and Sieff, 39 F. Supp. at 686, with Young Israel, 347 F. Supp. at 1297-1298. C.f. Siewek Tool Co., 128 F. Supp. at 74 (concluding that copyright in the previously copyrighted portions is preserved where those portions bear notice but there is no general notice for the derivative work as a whole).

[FN92]. Sieff, 39 F. Supp. at 685.

[FN93]. In Sieff, 7 and 10 are referred to as 6 and 9 respectively, as the sections were later renumbered. Id.

[FN94]. Id. at 686.

[FN95]. Id.

[FN96]. Id.

[FN97]. 387 F. Supp. 1349.

[FN98]. Id. at 1352.

[FN99]. Id.

[FN100]. Id. at 1355.

[FN101]. Id.

[FN102]. If the copyrighted supplements had not contained their own notices, they would also be forfeited, not because they were included in an uncopyrighted compilation, but only because they themselves were published without notice. See id.; Sieff, 39 F. Supp. at 686.

[FN103]. See Bentley, 223 F. at 256-57.

[FN104]. See Hearing Before the Committees on Patents at 78 (March 26, 1908) (testimony of Mr. W.B. Hale, American Law Book Company) [hereinafter Hearing] [emphasis added].

[FN105]. Id.

[FN106]. See Bentley, 223 F. at 256-57.

[FN107]. See H.R. Rep No. 2222 (1909), S. Rep. No. 1108 (1909). Remember that section 7 was originally numbered section 6.

[FN108]. Id. Cf. Hearing, supra note 104, at 78.

[FN109]. See id. (Hale represented the American Law Book Company).

[FN110]. See, e.g., U.S. v. Gordon, 961 F.2d 426, 431 (3rd Cir. 1992) (ruling that courts should reconcile seemingly conflicting provisions instead of allowing one to effectively nullify the other); Smith v. Babcock, 19 F.3d 257, 263 (6th Cir. 1994) (proclaiming that interpretations which yield internal inconsistencies are to be avoided); In re Colonial Realty Co., 980 F.2d 125, 132 (2d Cir. 1992) (holding that when addressing arguably inconsistent statutory requirements courts must give effect to both where possible); United Steelworkers of America, AFL-CIO-CLC v. Northstar Steel Co., Inc., 5 F.3d 39, 43, cert. denied, 510 U.S. 114, reh'g denied, 511 U.S. 1048 (3rd Cir. 1993) (holding that statutory provisions should be read to be consistent with one another).

[FN111]. See H.R. Rep No. 2222 (1909), S. Rep. No. 1108 (1909).

[FN112]. 40 U.S.P.Q.2d 1506 (S.D. Cal. 1996).

[FN113]. Id. at 1509.

[FN114]. Id. at 1509.

[FN115]. Id.

[FN116]. Id.

[FN117]. See Batjac, 160 F.3d at 1223; Nimmer, supra note 3, 4.12[B] [3].

[FN118]. See, e.g., Grove Press, 247 F. Supp. at 525; Nimmer, supra note 3, 4.12[A].

[FN119]. Cordon Art, 40 U.S.P.Q.2d (BNA) at 1510; Russell v. Price, 612 F.2d 1123, 1129 (9th Cir. 1979).

[FN120]. 612 F.2d at 1124-1125.

[FN121]. Id. at 1128-1129.

[FN122]. L & L White, 387 F. Supp. at 1352.

[FN123]. 40 U.S.P.Q. at 1509-1510.

[FN124]. Id.

[FN125]. Id. at 1511-1512.

[FN126]. Id.

[FN127]. 876 F.2d 626, 631 (8th Cir. 1989).

[FN128]. 969 F.2d 410, 415 (7th Cir. 1992).

[FN129]. ". . .(T)he copyright in such [derivative] work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material." 17 U.S.C. 103(b).

[FN130]. Applied Innovations, 876 F.2d at 631; Schiller & Schmidt, 969 F.2d at 415.

[FN131]. Applied Innovations, 876 F.2d at 631.

[FN132]. 785 F.2d 897 (11th Cir. 1986).

[FN133]. Id. at 900-903, 905-906.

[FN134]. Harris Custom Builders, Inc. v. Hoffmeyer, 92 F.3d 517, 521 (7th Cir. 1996). See also infra note 135.

[FN135]. One other case held that previously copyrighted works published in later derivative works are not affected by a lack of notice on the derivative works. See Young Israel, 347 F. Supp. at 1298. But like the two Circuit Court cases, the Young Israel court does not offer any rationale for its decision. Id. at 1297-98. The court simply cites to Siewick, but in that case there was a notice on the pages that contained the previously copied material, and the Siewick court distinguished Sieff, where there was no notice whatsoever. Id.; Siewek Tool Co., 128 F. Supp. at 74. In addition, the Young Israel decision is defensible on the grounds that the publication of the derivative work without notice was not under the authority of the copyright holder, so that it could not affect the copyrights regardless of the effect of 7. Young Israel, 347 F. Supp. at 1297. Nimmer also cites one other case for the proposition that there is no forfeiture of the underlying material when a derivative work is published without proper notice, but the case does not actually support this proposition. Nimmer, supra note 3, 7.12[C][2] n.58. In Baldwin Cooke Co. v. Keith Clarke, Inc., the court stated that no abandonment took place when a copyrighted executive planner was depicted in an advertisement with no notice of copyright, because there was no manifest intent to abandon the copyright. 383 F. Supp. 650, 658-659 (N.D. Ill. 1974). The court never considered whether forfeiture took place, which would not have required any showing of intent. Id. In addition, the court stated that the plaintiff only claimed a copyright in the selection and arrangement of the planner as a whole, so that the copyright status of the individual parts portrayed in the advertisement were not even at issue to begin with. Id. The statements regarding abandonment were merely district court dicta, and have no bearing on the issue of forfeiture under 7 and 10. See 17 U.S.C. 7, 10 (repealed 1976).

[FN136]. See Stewart v. Abend, 495 U.S. 207 (1990). Harris Custom Builders, also in dicta, indicated that under the 1976 Act a separately registered work might not be affected by inclusion in a derivative work without notice. 92 F.3d 517, 520 (7th Cir. 1996). But this statement was based on a misinterpretation of Imperial Homes Corp. v. Lamont, 458 F.2d 895, 898 (5th Cir. 1972), which held that where there was notice for the underlying material, the copyright in that material is not abandoned. See also Evans, 785 F.2d at 905. Harris Custom Builders also indicated approval of the reasoning and holding of Evans, where separately copyrighted and registered works were forfeited when they were included in derivative works without notice. Id. at 900-903, 905-906; Harris Custom Builders 92 F.3d at 521 ("We think that the Court of Appeals for the Eleventh Circuit got it right.").

[FN137]. 495 U.S. 207.

[FN138]. Id. at 233.

[FN139]. Id.

[FN140]. See United States v. Crawley, 837 F.2d 291, 292-93 (7th Cir. 1988) (listing acceptable reasons for rejecting dicta).

[FN141]. See Batjac, 160 F.3d 1232-1233.

[FN142]. See Abend, 495 U.S. at 211.

[FN143]. Id. at 233-236.

[FN144]. Id. at 233.

[FN145]. See id.

[FN146]. 160 F.3d 1223 (9th Cir. 1998).

[FN147]. Id. at 1226-27.

[FN148]. Id. at 1231.

[FN149]. Id. at 1226-28.

[FN150]. Id. at 1231-33.

[FN151]. Id. at 1233.

[FN152]. Id.

[FN153]. Id.

[FN154]. Id.

[FN155]. See discussion supra Section 2.

[FN156]. See, e.g., Goodis v. United Artists Television, Inc., 425 F.2d 397, 403 (2d Cir. 1970).

[FN157]. Metro Associated Services, Inc. v. Webster City Graphic, Inc., 117 F. Supp. 224, 233 (N.D. Iowa 1953) (quoting Smith v. Bartlett, 18 F. Supp. 35, 37 (D. Me. 1937)); accord Lopez v. Electrical Rebuilders, Inc., 416 F. Supp. 1133, 1134 (C.D. Cal. 1976).

[FN158]. 17 U.S.C. 21 (repealed 1976). See, e.g., Toksvig v. Bruce Publishing Co., 181 F.2d 664, 666 (7th Cir. 1950); De Acosta v. Brown, 146 F.2d 408, 411, (2d Cir. 1944), cert. denied, 325 U.S. 862 (1945).

[FN159]. See Harris Custom Builders, 92 F.3d at 520.

[FN160]. See supra Sections 2(B) and (C).

[FN161]. See, e.g., Nat'l Comics, 191 F.2d at 600.

[FN162]. 17 U.S.C. 3 (repealed 1976); 17 U.S.C. 103(b).

[FN163]. 17 U.S.C. 106.

[FN164]. 17 U.S.C. 106(1)-(3), (5).

[FN165]. 17 U.S.C. 104A.

[FN166]. 15 U.S.C. 1125(c).

[FN167]. While the trademark and unfair competition aspects of this problem are outside the scope of this paper, it will suffice to say that those causes of action will not, in any event, afford Disney with protection equivalent to that given under copyright law. Any state laws that do so would necessarily be preempted by 17 U.S.C. 301. The federal causes of action available to Disney all require consumer confusion or the use of a name, slogan or image as a trademark or trade name. 15 U.S.C. 1051 et seq. These federal causes of action, along with any non-preempted state causes of action, could likely be avoided by using prominent disclaimers, and using the Mickey Mouse name and image in advertising only to describe the actual product being sold, and not to indicate the source of the product. See 15 U.S.C. 1115(b)(4). At the very least, these causes of action will not cover non-commercial copying and distribution of these works, which would be restricted if they were protected by valid copyrights. For a more detailed discussion of the intersection of copyright and trademark/unfair competition law, see Nimmer, supra note 3, 1.01[B] and [D].

[FN168]. See Bill McAllister, Mouse Droppings, Wash. Post, Oct. 15 1998, at A21 (discussing Disney's lobbying efforts for the Copyright Term Extension Act, which extended copyright terms 20 years, and ostensibly saved Mickey's copyright from expiration in 2003); Brigid McMenamin, Mickey's Mine!, Forbes Mag. Aug. 23, 1999, at 43 (discussing Disney's lobbying efforts for the Copyright Term Extension Act).