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17 Intell. Prop. L. Bull. 1 (2012-2013)

handle is hein.journals/iprop17 and id is 1 raw text is: The End of Arbitrary Findings of
Secondary Meaning: A Call for the
Expansion of Trademark Status of Literary
The clock is running out for Mickey Mouse's copyright protection,'
meaning The Walt Disney Company must look to other areas of the law to
protect one of the company's most treasured assets (barring another move
by Disney to expand the term of copyright2). While the castle of copyright
has been strong enough to repel most assaults,3 Disney is looking to other
parts of the law in search of a new theory to buttress against the coming
Over the past decade, much has been written about rights holders
looking beyond copyright for other ways to protect their characters. Some
commentators began questioning if too much protection was being offered
under the law as companies looked to expand the scope of rights normally
associated with the protection of characters.' Using trademark law to
perpetually protect characters after they leave the realm of copyright may
create a form of infinite protection without allowing for the doctrine of fair
use (in the copyright sense) to protect currently allowed uses.'
The expanding use of trademark law also brings into question what
parts of these works can be protected via trademark law. While it is easier
to determine the boundaries of protection for well-known characters,' it is
more difficult to pin down when those protections should begin.
Over the past decade there has been a rising trend of courts combining
trademark, copyright, and unfair competition analyses when presented with
*   Mr. Sander obtained his J.D. and MBA degrees in 2011 from the University of
San Francisco. and his B.A. in Political Science from the University of California - Davis.
1.  Mickey's earliest movies, such as Steamboat Willie, will fall into the public
domain on January 1, 2023, under current copyright law.
2.  The last two times Congress granted extensions were in 1976 and 1998, right
around the time that Mickey would fall into the public domain. The timing of these
extensions has been called the Mickey Mouse Curve. Tom W. Bell. Copyright Duration
and the Mickey Mouse Curve, THE TECHNOLOGY LIBERATION FRONT (Aug. 6, 2009),
3.  See, e.g., Walt Disney Prods. v. Air Pirates, 581 F.2d 751 (9th Cir. 1978).
4.  Michael Todd Helfand, When Mickey Mouse Is as Strong as Superman: The
Convergence of Intellectual Property Laws to Protect Fictional Literary and Pictorial
Characters. 44 STAN. L. REv. 623, 673 (1992).
5.  Michael S. Mireles, Jr., Towards Recognizing and Reconciling the Multiplicity of
Values and Interests in Trademark Law. 44 IND. L. REv. 427, 467 (2011).
6.  Well-known characters include those that are used as shorthand to denote their
source, such as Harry Potter.

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