Sigh. I'm getting tired of having to do your homework for you:

It is the wholesale prohibition of nominative use ... that would be unfair. It would be unfair to merchants seeking to communicate the nature of the service or product offered at their sites. And it would be unfair to consumers, who would be deprived of an increasingly important means of receiving such information. As noted, this would have serious First Amendment implications. The only winners would be companies like Toyota, which would acquire greater control over the markets for goods and services related to their trademarked brands, to the detriment of competition and consumers. The nominative fair use doctrine is designed to prevent this type of abuse of the rights granted by the Lanham Act. ...

Trademarks are part of our common language, and we all have some right to use them to communicate in truthful, non-misleading ways.

That's from Toyota Motor Sales, Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010). Hint: Toyota's LEXUS mark was at issue, and had been used by a competitor, and the court did not come down on the side of Toyota.

Nominative use is a doctrine in US trademark law by which parties other than a trademark holder can use a trademark without permission if:

1) The product is not readily identifiable without using the mark. (LEGO bricks are not readily identifiable without using the LEGO mark to refer to them; otherwise you'd have to say something stupid like 'plastic toy bricks made by a well-known Danish plastic toy brick company')

2) The defendant does not use more of the mark than necessary. (The word LEGO in an ordinary typeface would be fine; the red, yellow, black and white square-shaped LEGO mark, with its distinctive balloonish typeface, on the other hand, would be too much merely to indicate compatibility)

3) The defendant cannot falsely suggest sponsorship or endorsement by the trademark holder. (This is typically done by not using the mark in a way that suggests a relationship, while also disclaiming any relationship. It doesn't require not using the mark at all, however; the public recognizes that not all uses of a mark indicate endorsement)

Note, there is no requirement that the defendant claiming nominative use not compete with Lego. That's perfectly fine. If I make toy bricks and I want to say that based on a survey, children prefer my bricks 10 to 1 over LEGO brand bricks, I'm totally free to do so. (Provided, of course, that I have got such a survey; I can't just make crap up)

The decision of whether advertising should directly refer to competitors (e.g. People who took the Pepsi challenge preferred Pepsi to Coke) or whether it should not (e.g. Our dishwashing liquid works better and faster than brand X) is entirely one of the advertiser's preference. There is no legal requirement compelling one over the other, provided that the ad is truthful and (to some extent) not misleading.

If the MICKEY MOUSE mark describes the character, and the copyright on the Mickey Mouse character lapses such that anyone can create works featuring the Mickey Mouse character (which is a copyright issue), the MICKEY MOUSE mark no longer is capable of indicating that all such marked goods originate from a common source, which is a fundamental requirement for a trademark. Thus, the MICKEY MOUSE trademark is lost with regard to such goods, e.g. DVDs, comic books, and the like.

Yes, they are. "Without permission" means the same thing as "unauthorized," genius. It's no different than if I make an unauthorized copy of a Louis Vuitton purse.

Yes, but different aspects of a single object can be protected by different sorts of rights.

Consider a humble glass bottle of refreshing Coca-Cola. The shape of the bottle is protected by a design patent. The COCA-COLA mark is protected as a trademark. The formula for the liquid inside is protected as a trade secret. If it's a decorative bottle with a picture of Santa or a bear, or Santa Bear, the artwork is likely copyrighted. If the artwork is of a particular real person, it may also be protected by that person's right of publicity. And if they make the bottle out of some new sort of safety glass, the formula for the glass itself may be an invention protected by a patent. All this wrapped up in a single item that you can get out of a vending machine with the change in your pocket.

The Mickey Mouse character is protected, in different capacities, even in the same work, by both copyright and trademark. This is not even slightly unusual.

I have no idea what your country is or what its laws are like, and as I said before, I really don't care. I've been discussing US law this entire time, which is reasonable on a US-based website, like this one, and that's all I'm really interested in.

Wrong, because the instant the copyright expires, a large part of the trademark lapses. Disney no longer has any rights to base a cause of action on. The reason for this is that because copyright law no longer prevents anyone from making copies or derivatives and putting them into commerce, the MICKEY MOUSE mark changes from being descriptive (of the character named Mickey Mouse) with secondary meaning (which can only originate from Disney) to being merely descriptive, without secondary meaning.

It looks to me as though you're putting the cart before the horse, incorrectly believing that the trademark survives the entry of the work into the public domain. But it does not; only a few fragments of the trademark survive.

Sure. But this is one of those exceptional cases.

Actually that is exactly what happens; when everyone and his dog can legally create new, derivative, Mickey Mouse cartoons, because the underlying copyright has expired, the public is assumed to no longer associate the MICKEY MOUSE mark, to the extent it pertains to goods including creative works, only with such goods made by Disney. This is SHREDDED WHEAT, which I'll get to in a moment.

Also, note that trademark doesn't care about whether a work is a reproduction of something or not. It cares about the origin of a specific, tangible copy, not of the underlying work. If you start Mark-T Press, and print up copies of Romeo and Juliet, I am not allowed to start Kangarooski Press and print up copies that bear your mark. OTOH, I am perfectly entitled to print up copies of Romeo and Juliet under my own mark. In fact, so long as you're just reprinting the play (and not making such substantial changes as to amount to a new work, which is a bit more difficult than you'd think), I'm even entitled to make copies of your version, so long as I take care to not use your mark and to only use my own, thanks to Dastar, which eliminated reverse passing-off for works (and hopefully is the beginning of a trend of eliminating reverse passing-off altogether).

I'm only familiar with US law, and that's all I've been discussing the entire time. I have no knowledge or interest in how other countries handle this, except as how it might provide us with good ideas or cautionary examples in our own legal reform efforts.

It is Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938).

The relevant language:

The plaintiff [Nabisco] has no exclusive right to the use of the term 'Shredded Wheat' as a trade name. For that is the generic term of the article, which describes it with a fair degree of accuracy; and is the term by which the biscuit in pillow-shaped form is generally known by the public. Since the term is generic, the original maker of the product acquired no exclusive right to use it. As [defendant] Kellogg Company had the right to make the article, it had, also, the right to use the term by which the public knows it. ...

Moreover, the name 'Shredded Wheat', as well as the product, the process and the machinery employed in making it, has been dedicated to the public. ... Since during the life of the patents 'Shredded Wheat' was the general designation of the patented product, there passed to the public upon the expiration of the patent, not only the right to make the article as it was made during the patent period, but also the right to apply thereto the name by which it had become known. ...

It is contended that the plaintiff has the exclusive right to the name 'Shredded Wheat', because those words acquired the 'secondary meaning' of shredded wheat made at Niagara Falls by the plaintiff's predecessor. There is no basis here for applying the doctrine of secondary meaning. The evidence shows only that due to the long period in which the plaintiff or its predecessor was the only manufacturer of the product, many people have come to associate the product, and as a consequence the name by which the product is generally known, with the plaintiff's factory at Niagara Falls. But to establish a trade name in the term 'shredded wheat' the plaintiff must show more than a subordinate meaning which applies to it. It must show that the primary significance of the term in the minds of the consuming public is not the product but the producer. This it has not done. The showing which it has made does not entitle it to the exclusive use of the term shredded wheat but merely entitles it to require that the defendant use reasonable care to inform the public of the source of its product.

Are you suggesting that MICKEY MOUSE does not 'accurately describe' a product including the Mickey Mouse character?

As the last part of the quote from SHREDDED WHEAT discusses, there is a difference between a mark that is associated with a product, and a mark that is associated with the source of a product. If you sell ELEVATOR-brand vertical conveyance devices, you're doing okay. But if the public associates the ELEVATOR mark with the actual device itself, then you lose your trademark because it has become a generic term for any such device. This is genericide. It's happened with ELEVATOR, TRAMPOLINE, ESCALATOR, THERMOS, and YO-YO. It came very close to happening with SANKA but then people started using decaf as a generic term instead. XEROX, BAND-AID, VELCRO, KLEENEX, Q-TIP, and in fact, LEGO have been teetering on the precipice for years. But this is why you see their advertising very clearly refer to things like VELCRO-brand hook and loop fasteners, KLEENEX-brand tissues, and in the case of legos, LEGO bricks. Xerox has been running public awareness ads for decades in order to keep their mark alive. My favorite had the tagline 'You can't xerox a xerox on the xerox,' pointing out that they would greatly prefer it if people did not use the XEROX mark as a generic term for photocopying, photocopies, and photocopiers, respectively.

If the applicable patents are expired, then anyone can make LEGO compatible bricks. And thanks to the nominative use doctrine of trademark law, anyone who does make LEGO compatible bricks is allowed to say that they are compatible with LEGO bricks, so long as they don't misrepresent their bricks as originating from the Lego company itself.

But Lego NEVER refers to their product as LEGOs. That would be to invite the loss of the LEGO mark. They refer to their product as bricks. Go ahead and tell me that MICKEY MOUSE doesn't mean the Mickey Mouse character, in the minds of the relevant portion of the public.

You can't trademark the title of a creative work for the same reason; it's a descriptive term for the work itself, without secondary meaning. When you see a trademark in a title, it's because it's part of a series of similarly named works. Like for Harry Potter books, the HARRY POTTER mark can only arise because all the books are named Harry Potter and the something something. If the titles were all totally distinct (e.g. "The Sorcerer's Stone," "The Chamber of Secrets," etc.) without an overarching series name, the titles would not be trademarkable.

Wrong. You only have a natural right to control whether or not you create it at all.

A third party certainly doesn't have a right to compel you to reveal your work to them. But if you do deliberately or inadvertently reveal it, they do have a natural free speech right to copy it and to distribute those copies as they see fit.

I agree. What's your point?

All you've identified there is a gap between what copyright policy requires and what we actually have implemented. I'd be the last person to say that our copyright laws, as enacted, have lived up to our proper policy goals. But that doesn't change what the correct policy is.

Copyright doesn't exist absent affirmative action by the government, and it is wholly utilitarian in nature. This means that there is no policy of balancing interests. Rather, it is a question of how it can best serve the public interest; if giving something to authors may accomplish that, then we should do it to an appropriate extent, and if not, we shouldn't do it.

It's little different than the farmer who wants to haul his carrot harvest to market in a wagon pulled by a mule. He might have to feed the mule some of the carrots to get it to pull the wagon, but there's no balancing act between the farmer and the mule. (Indeed, as soon as it's more cost-effective for the farmer to just get a gas-powered truck, the mule gets sent to the glue factory)

That's not true. You're arguing in favor of monopolies controlling commodity goods, which is an odd stance to take. Society benefits tremendously from works being in the public domain, and available for the economic exploitation of any and every party that cares to give it a go. So long as anyone is free to make copies of Shakespeare, it doesn't hurt society if some publishers charge for copies of it. Given that competition is possible for copies of the same public domain work, all that will happen if one publisher tries to charge too much is that someone else will step in and sell it for less. This all works to bring the price of copies down, which in turn increases the public's access to the work, which is necessary for the work to be of use.

The widows and orphans argument has always been unmitigated bullshit. Works usually have zero copyright-related economic value; of the few that do have such value, they usually burn through the vast majority of it within a short time after the first publication in a given medium. Only the tiniest fraction of works have long-lasting copyright related economic value.

Suggesting that the survivors of a deceased author need longer terms in order to live off the value of a copyright requires that it be a copyright of this sort. Given the rarity of such works, it's as stupid a suggestion as saying that you might as well leave them a shoebox full of lottery tickets.

If you actually care about providing for your family, you need to take out a life insurance policy, and you need to save and invest your money wisely in a diverse portfolio. And just to be safe, you'd better vote for politicians who will enact government programs to provide actual, useful assistance to poor people.

The reality behind the widows and orphans argument is that a handful of authors and publishers who already won the lottery, as it were, by holding the copyrights on works with long-lasting copyright related economic value, wanted to preserve their gravy train. It's as if the winner of a $100 million dollar jackpot used some of that money to successfully lobby for a retroactive increase to a $200 million dollar jackpot.

I'm not arguing in favor of extremism in any direction. I don't think that copyrights should be short, I think that they should be no longer than absolutely necessary. An overly-long copyright is harmful to the public because it is waste. An overly-short copyright is harmful to the public because it doesn't incentivize authors as much as is appropriate. What we need are copyright terms (and scope) that hit the sweet spot where we get the most efficiency: the most works created and published yet for the least restrictions on the public.

But this also means that your disrespect for 'moochers' is totally inappropriate. Ideally we could grant copyright terms (we'll set aside scope for now) on a case-by-case basis. If the minimum copyright incentive that author Smith needs to write and publish his book is 3 years, then we grant him 3 years. If the minimum copyright incentive that filmmaker Jones needs to film and distribute his movie is 10 years, then we grant him 10 years. If the minimum copyright incentive that painter Brown needs to paint and sell copies of his painting is 0 years, we don't grant him a copyright at all. Does this allow for third parties to compete against Smith in 3 years, Jones in 10 years, and Brown from day one? Sure. But who cares? Granting one day's worth of a longer term to any of them is pointless, because they've already got the minimum amount they needed to do what we want them to do: create and publish works. It's as wasteful to grant them more as it would be to offer a construction project to the lowest bidder, yet to then double the payment to the winner just for the hell of it.

In practice, we can't fine tune copyright grants that well; we'd need to staff the Copyright Office with a legion of psychics. But we can still try to make it work efficiently. For example, requiring registration helps us weed out authors like Brown who have so little reason to care about copyright that they wouldn't bother to register. Offering short terms and renewals helps us weed out authors like Smith, who only care about copyright for a little while, and then stop because it's no longer valuable enough to them to merit filing the renewal. (We know that few works were ever renewed historically, so that's a real thing) And for authors like Jones, longer maximum term lengths -- up to a point -- could still be available. They just wouldn't be automatic, so that we don't inadvertently grant such long terms to Smith and Brown, who don't need them.

And as for authors like Black, who create a work but insist on a copyright that lasts forever, or at least for an immensely long time, even if that really is the necessary term in order to incentivize the creation and publication of the work, we can say fuck it; Black wants more than the work is worth to the public. It might be nice to have that work created and published, but a sane copyright system is more valuable than that particular work, so we'll just all have to live without, and Black can get a job doing something else.

At no point however, is the idea that we should discourage third parties from being able to compete freely ever considered, because it's dumb, basically. The copyright monopoly should not last any longer than it needs to to get works created and published. If this allows for third parties to step in while a work is commercially viable (and given that people still reprint works from antiquity, that can be a very long length of time indeed!) then so be it. There's nothing at all wrong with it. In fact, it's great, because it drives down prices and increases access to works.

I don't understand your comment. I'm saying that whatever Disney's trademark rights in the Mickey Mouse character are, once the first work in which the character appears enters the public domain, that opens the door for third parties -- that is, parties other than Disney -- to use the character, at least in some ways, and it limits the scope of Disney's trademark.

How the hell did you get from that to shilling in favor of Disney? I think perhaps you should read posts more carefully before replying.

No, when the Steamboat Willy copyright expires, there is no longer a copyright which prohibits people from making or distributing additional copies of the work, from publicly performing or displaying the work, or from preparing new derivative works based on it (such as a new Mickey Mouse short in which he commands a homemade submarine powered by barnyard animals or something). Of course, attributes of the Mickey Mouse character which originated in later, still copyrighted material would not be available; thus you're using the original 1928 black and white Mickey, or forking a new version of the character off from there. Can't give him a dog named Pluto, nor even the distinctive Mickey Mouse voice, as those both appeared in later films.

I don't know why that would matter from a trademark perspective. Trademark is concerned with goods bearing a mark all originating from the same source, so as to protect consumer expectations regarding consistent levels of quality. Even the goods of two different sellers are indistinguishable, that alone doesn't mean that one is free to use the trademark of the other.

The trademark issue here is whether the MICKEY MOUSE trademark even survives, at least with regard to goods such as motion pictures. This is because the MICKEY MOUSE trademark is inescapably connected to the Mickey Mouse character, and now the character is free for all to use, meaning that his presence in a work no longer indicates that it comes from a single source. That -- the freedom to use the character, and the loss of the single source expectation of consumers -- is what kills the trademark. And we know that the copyright lapsing will control what happens to the trademark based on precedents like Dastar (where the Supreme Court said that trademark is not allowed to operate like a perpetual form of copyright), and SHREDDED WHEAT (where the Supreme Court said that where a patent expires, anyone is free to use the invention and to use the previously trademarked, descriptive name of the invention).

First, there would largely no longer be a trademark. Second, that would be clear naked licensing, which would likely invalidate the mark anyway.

Sorry, but no. If anyone can make a copy of a work featuring a trademarked character, then the trademark on that character, with regard to goods that are copies of creative works, has to lapse, as the mark has become generic in that context. Once the door is opened for multiple sources of identically marked goods, it kills the trademark. This is just the copyright version of the SHREDDED WHEAT case from the 1930s, plus a bit of the more recent Dastar case.

And the trademark can't prevent people from copying works or creating new derivative works that feature the same trademarked characters.

You're thinking of something more like nominative use, in which a third party can use a mark without permission under certain circumstances. I'm saying that there would no longer be an applicable mark at all.

There is no stripping of assets.

The natural state of a creative work is to be in the public domain. Authors do not create copyrights; the public creates them (through our servant, the government), with the public benefit in mind. Some works aren't even eligible for copyright at all, because it wouldn't be for the public benefit. When a copyright is granted, it is for a limited period of time, because a perpetual copyright can never be for the public benefit.

Thus, a better way to imagine the situation is this: if the government owns a parcel of public land, such as a small building suitable for a restaurant at a visitor's center in a national park, it can rent the restaurant space to a private business for a period of time. So long as the restaurateur makes his rent and follows other previously agreed upon terms (e.g. compliance with applicable law, signage that complies with the standards set by the park administrators, etc) he is free to profit as much as he can.

But when the lease expires, the restaurateur cannot argue that his business venue has been taken from him, even though it might be a profitable location forever. It was never his to begin with; he just got to use it for a while.

Regarding Mickey Mouse, copyright policy has to ignore subjective assessments of artistic value. What's important is getting as many works as possible created, published, and into the public domain (and as close to the public domain as possible until fully in the public domain). That's how you best serve the public interest.

And if an author argues that his private interest is more important than the public interest, that's all well and good, and I don't have a problem with his self interest (indeed, we're relying on it to motivate him), but why should the public ignore its own collective self interest? As there's no possibility of a copyright without it being granted by the public, authors are not in a strong bargaining position.

Actually, the Copyright Act was replaced entirely in 1976 (becoming effective in 1978), and has been amended some, yet in substantial ways, since then. Noises are being made about a new Copyright Act coming along in the near future.

The person who wrote the summary is a bit confused. What happened is that the Warner claim was based on a copy published in 1935. Evidence was discovered of a copy that was published in 1927. That's not terribly interesting, but a copy published in 1922 has also come to light. That is interesting, because the cutoff for copyright on published works is 1923. (Due to the duration of copyright prior to the effective date of the 1976 Act, which retroactively lengthened the term of copyrights that were still in force)

No, that part of the trademark will lapse when the copyright terminates. A trademark can't function as a substitute for a copyright. The remainder of the trademark might prevent people from selling MICKEY MOUSE brand breakfast cereal, but it would not stop them from using the character in their own works.

This is really the main reason that Disney is concerned about copyright terms; they know what would happen to the trademark.

Piffle.

Copyright is utilitarian from top to bottom.

Copyright is only tolerable if it is better for society than not having it. One specific implementation of copyright is better than another if it provides a greater benefit for the public than the alternative.

It's no more based on fairness than a zoning regulation requiring a certain setback from the street.

A small nit here:

An exclusive right isn't a right that is held only by one party (and in fact, copyrights can be held by many parties), but is literally a right to exclude others.

So copyright isn't a right to make copies (that's free speech, and it applies even to works that aren't eligible for copyright). It is instead a right to exclude other people from making copies, and from doing certain other things with regard to the protected work.

Letter shapes are not copyrightable in the US. They may be eligible for a design patent, but that's relatively short-lived. Usually the only protectable thing, especially over a decent timeframe, is the name, as a trademark. That's why Apple's version of Helvetica from way back was called Geneva, and Microsoft's was called Arial.

We do.

We impose taxes on inheritances, because inheritance of substantial wealth is harmful to society. We impose taxes on property, because ownership of large, unproductive estates is harmful to society. We abolish property rights like the fee tail because inalienable property rights are harmful to society.

All property rights, beyond what an individual person can defend from others by force, relies entirely on the willing cooperation of others. The only reason I don't own the Brooklyn Bridge is because I can't convince enough people that I do. But if I were more convincing (or could overcome the force that would be mustered against me if I just tried to block others' access to it), my right of ownership would be perfectly legitimate.

Copyright operates similarly; no author has a right to tell others that they can't make copies, etc. of a work, merely because the author created it. All the author can do is keep the work a secret, if he's worried about that. Or he can convince others to respect his wishes. Just as you might not like to recognize my right of ownership of the Brooklyn Bridge merely because I really, really want you to, so too are third parties unlikely to honor a claim of copyright unless it provides some benefit to them that would not be enjoyed otherwise.

And so the deal with copyright is that we're willing to recognize an author's claim of copyright for a little while, because it seems to be useful to society, but eventually we're going to stop, and instead treat the work as being in the public domain, for the same reason. Authors can't stop that from happening, and there's too little benefit for the public in a perpetual copyright to bother recognizing them. It's a one-sided deal in favor of the public, but thems the breaks.

No, the whole point of copyright was to promote the progress of science (which is an archaic term for knowledge) and to thus serve the public interest.

Half of that involves encouraging authors to create and publish works which they would not have created and published but for copyright. But the other half is to grant the least amount of protection, for the least amount of time, that is necessary to accomplish that.

And the success of any copyright law is measured in how much of a benefit it provides for the public (in terms of the number of works created and published), less how much harm it causes the public (by restricting the free use of the works).

No. First, copyright doesn't guarantee any reward for the author or publisher; that's left to the market. All copyright does is funnel some of the profits available for the work toward the copyright holder. If a work is a flop, the copyright holder doesn't make any money.

Second, copyright doesn't care about quality. A brilliant work gets as much protection as a crappy one, (and again, the market may reward crappy works over 'quality works). This is necessary because artistic value is a matter of subjective judgment that the government should not be involved in. Quantity is the only permissible metric, and since a larger number of works will tend to result in a larger number of 'quality' works (see Sturgeon's Law) it's all okay in the end.