This Bear’s For You! (Or, Is It?)

Can Companies Use Copyright and Trademark To Claim Rights to Public Domain Works?

By Jennifer Jenkins, Director of Duke’s Center for the Study of the Public Domain

In 2022, the first Winnie-the-Pooh book from 1926 1  is entering the US public domain. Anyone will be able to copy, share, and build upon it without permission or fee.

How did that book come into being? Author A.A. Milne based Winnie-the-Pooh and some of his friends on stuffed animals owned by his son, Christopher Robin Milne. The book’s illustrator, E.H. Shepard, in turn based the drawings of Winnie-the-Pooh on his own son’s stuffed bear named Growler.

Milne and Shepard worked at Punch, the British humor magazine. Both had served in World War I, and Winnie-the-Pooh has been described as Milne’s “escape in nostalgia and a return to a simpler age” after the trauma of the war.

Since the book’s publication in 1926, what began as a gentle and whimsical children’s tale has grown into a licensing juggernaut currently owned by Disney Enterprises. In 2021 Statista estimated that Winnie the Pooh ranked #3 in the top-grossing media franchises of all time, behind only Pokemon and Hello Kitty and tied with Mickey Mouse. So far, it has brought in a total of 80.3 billion dollars worldwide. This evolution into a lucrative franchise began when Milne sold certain rights to the literary agent and “father of the licensing industry” Stephen Slesinger in 1930. Slesinger was the first to draw Winnie the Pooh in color with the familiar red shirt, and he marketed Pooh board games, toys, records, radio broadcasts, animations, and more. After Slesinger’s death some of the Pooh rights were transferred by his heirs to Disney, who removed the hyphens from “Winnie-the-Pooh” and expanded the media and merchandising Pooh-niverse. After a decades-long legal tussle between Disney and the Slesinger heirs, complete with stories of Disney destroying boxes of evidence and the Slesingers hiring an investigator to dumpster-dive through Disney’s garbage, Disney prevailed and officially owns the Winnie the Pooh copyrights and trademarks.

So, now that the original Winnie-the-Pooh book is in the public domain, what rights does Disney retain? What can it still prevent people from doing?

As explained by Karyn A. Temple, former United States Register of Copyrights, the public domain “is part of copyright’s lifecycle, the next stage of life for that creative work. The public domain is an inherent and integral part of the copyright system. . . . It provides authors the inspiration and raw material to create something new.”

One thing is clear: the copyright over the 1926 book expires in 2022. Disney, of course, still has copyrights in later books and movies. But the 1926 book itself enters the public domain. This means that anyone can post the book online, or print cheap educational editions. You can start your creative engines too—the plot, dialogue, and settings in that book are open for future creators. So too are the characters, including the appearance and traits of the original Winnie-the-Pooh, Piglet, Eeyore, Rabbit, Kanga, Roo, Owl, and Christopher Robin. (Not Tigger, though: Tigger was not introduced until 1928 in The House at Pooh Corner and that book does not enter the public domain until 2024.) Anyone can adapt the 1926 book into a play, musical, or film, or write a prequel or sequel. Want to write a story about how Pooh and friends stay sane during a pandemic? (Eat more honey!) Or a story in which Pooh and friends tackle online bullying? Now you can, without having to seek a license from Disney. 2  This is how the public domain supports creativity.

That said, some rightsholders have tried to interfere with legal reuses of public domain material. The owners of the Sherlock Holmes, Tarzan, and Zorro properties did this after the original works began to enter the public domain. Will Disney follow suit, or will it enforce only the rights it still owns? Many see this as a test drive for what it will do when Steamboat Willie enters the public domain in 2024. A lot has changed since 1926—not only has Winnie the Pooh become a multi-billion dollar franchise, but copyright and trademark rights have expanded. We live in a world of mega-brands, of franchised characters and comic book universes. But what happens when mega-brands and the public domain collide?

Copyright and Derivative Works: We begin with the question of copyright and derivative works. While the original 1926 Winnie-the-Pooh book is open to all, Disney still has a copyright over the later Pooh books, movies, and other creative works. When the same characters appear in a series, some of which is public domain and some of which is still copyrighted, what exactly is still owned? Under copyright law, Disney only owns the newly added material in those works, not the underlying material from the 1926 book—that content remains freely available. To quote the Copyright Office primer on derivative works:

“[I]t is not possible to extend the length of protection for a copyrighted work by creating a derivative work . . . the copyright in the derivative work will not extend to the public domain material, and the use of the public domain material in a derivative work will not prevent anyone else from using the same public domain work for another derivative work.”

In addition, Disney’s newer copyrights only extend to “original, creative expression.” Adding a “merely trivial” variation to an earlier work does not qualify. Quoting from the Copyright Office Compendium:

“Miniscule [sic] variations do not satisfy this requirement, such as merely changing the size of the preexisting work. Merely recasting a work from one medium to another alone does not support a claim in derivative authorship. . . . Nor can the requirement of originality be satisfied simply by the demonstration of ‘physical skill’ or ‘special training.’”

“It is a bedrock principle of copyright that once work enters the public domain it cannot be appropriated as private (intellectual) property, and even the most creative of legal theories cannot trump this tenet.” –Klinger v. Conan Doyle Estate (N.D. Ill. 2013) aff’d (7th Cir. 2014)

These two points were illustrated by the Conan Doyle Estate Ltd.’s unsuccessful attempts to artificially extend the expired copyright over the characters of Sherlock Holmes and Dr. Watson. First, the estate attempted to create a special “character copyright” end-run around the public domain. Leslie Klinger, a lawyer and Sherlock Holmes scholar, wanted to publish a collection of stories inspired by the public domain Holmes stories. The estate presented a bizarre legal theory that a “character is a work of authorship separate from the stories” so that the copyright term for characters does not commence until “the creation of the characters [is] complete.” This would have created a special copyright term for characters, which would remain copyrighted so long as their owners keep tweaking them in subsequent books, potentially forever. Because Sherlock Holmes’ character development continued in stories that are still under copyright, his entire character—including all of the core aspects fully developed in earlier public domain stories—would therefore remain copyrighted. In December 2013, a court firmly rejected this theory and confirmed that all of the story elements in the public domain Sherlock Holmes stories, including the Holmes and Watson characters, are “free for public use.” It explained: “Where an author has used the same character in a series of works, some of which are in the public domain, the public is free to copy story elements from the public domain works.” (This decision was later affirmed by the appeals court.)

This loss did not stop the Conan Doyle estate from bringing another lawsuit in 2020, this time against Netflix for its Enola Holmes movie. The estate presented yet another strange legal theory: it argued that Sherlocks Holmes only "became capable of friendship" and began to “express emotion” and “respect women” in the later, still-copyrighted stories, and objected to Netflix’s unlicensed use of those character traits. (Apparently, wokeness conveys extended copyright. Who knew?) Netflix explained in its legal filings that personality traits such as warmth, empathy, kindness, and respect are unprotectable ideas under copyright law. The parties agreed to dismiss the lawsuit and settled in December 2020.

How does all of this apply to Winnie-the-Pooh? First, anyone can use the characters in that 1926 book—Winnie-the-Pooh, Piglet, Eeyore, and others from the Hundred Acre Wood—in their own art, even though those characters also appear in later, still-copyrighted works. Your Pooh can be thoughtful and loyal to his friends and charmingly self-deprecating, constantly referring to himself as the “Bear of Very Little Brain” even when he is “Brave and Clever.” He can wander around composing and humming songs and have a major penchant for honey.

Second, Disney can only stop you from using new material from the later stories that is copyright-eligible. Sticking with the “Best Bear in All the World,” take a look at the old and new Pooh. Beyond the character traits summarized above, you can also copy the bear’s appearance in the original sketches by E. H. Shepard. Disney would likely claim that the bear on the right is a copyrightable “derivative work” because it is sufficiently distinct from the original. Let us concede that point for the sake of argument. That means Disney gets a copyright in the derivative character, precisely because it is different from the original. It is stouter, less worried, and it wears a red sweater. In other words, to get its own copyright, Disney has to agree that it is different from the one that goes into the public domain and is free for reuse. What’s more, just as the Conan Doyle estate cannot own mere ideas such as “respect for women,” Disney does not own the underlying idea and stock features of a cuddly anthropomorphic teddy bear who loves to eat. If any drawing of such a bear would necessarily have certain anatomical features and, applying standard techniques, simple black dots or arcs for the eyebrows, eye, nose, and mouth, then that material is uncopyrightable. Nor can Disney prevent you from putting a shirt on the E.H. Shepard bear—in fact, Shepard’s Pooh sometimes wears a shirt of sorts in the 1926 book. Its claim would be over the aggregate appearance of the bear on the right above together with story elements that only appeared in the later Pooh works.

The plot thickens when you add Disney’s trademark rights to the picture.

First, some background. Copyrights and trademarks are different. Copyrights cover creative works and prevent people from copying and adapting them without permission, with the goal of providing economic incentives to create and distribute cultural products. The rights expire after a “limited time” so that the public and future creators can have unfettered access to those creative works.

Trademarks cover words, logos, images, and other signifiers that serve as brands identifying the source of a product. The goal is to minimize consumer confusion in the marketplace—Nike can prevent other producers of athletic apparel from putting “Nike” or a swoosh on their merchandise so that when purchasers see those indicators they know they are getting a Nike product. Unlike copyrights, trademarks do not automatically expire. They can last as long as a mark is still being “used in commerce.” If Amazon goes on using the “Amazon” brand for 500 years, the trademark stays alive. If it goes out of business or stops using the “Amazon” name, however, that trademark lapses and others can use it. While trademarks can outlast copyrights, the rights themselves are more circumscribed. For most marks, trademark law only prevents the use of a mark on similar products when it is likely to create consumer confusion about the product’s origin or sponsorship. 3  Non-confusing uses are not prohibited, and there are a variety of legal safeguards for uses of trademarks in connection with expressive works.

“We have been careful to caution against misuse or overextension of trademark and related protections into areas traditionally occupied by . . . copyright.” Dastar v. Twentieth Century Fox (Supreme Court 2003)

Sometimes copyrights and trademarks overlap. 4  A character such as Mickey Mouse might be covered both by copyright law (as a creative work) and trademark law (as a logo if, when people see Mickey on a backpack or pajamas, they think it must be official Disney merchandise). While the copyright is active, Disney can keep people from making unauthorized uses of Mickey in new works (unless those uses qualify for “fair use” protection, as with a parody). While the trademark is in effect, Disney can keep people from slapping Mickey on luggage or apparel. But what happens when the copyright expires and the trademark is ongoing? In a unanimous opinion, the Supreme Court made clear that trademarks cannot be used to make an end run around copyright law because this would “create a species of mutant copyright law that limits the public’s federal right to copy and to use expired copyrights.” 5  In other words, trademark rights cannot be used to block what the expiration of copyright allows, such as using a public domain character in a new creative work. Along the same lines, the Ninth Circuit Court of Appeals explained that when a work enters the public domain “[w]e all own it now” and trademark law “cannot be used to circumvent copyright law. If material covered by copyright law has passed into the public domain, it cannot then be protected by the Lanham Act [the federal trademark statute] without rendering the Copyright Act a nullity.” 6 

Nevertheless, Edgar Rice Burroughs, Inc. and Zorro Productions, Inc. have tried to use trademark laws to try to control new works using public domain material from the Tarzan and John Carter works and the Zorro works. Burroughs was able to extract a joint licensing deal from the publisher of new “Lord of the Jungle” and “Warlord of Mars” comic books, while Zorro lost in court—because the Zorro story was in the public domain, a new “Queen of Swords” TV series about Zorro’s sword-wielding daughter could proceed. 7 

This brings us to Winnie-the-Pooh. The copyright over the original book has expired. But Disney still retains trademark rights to use the words “Winnie the Pooh” on all sorts of products including books, movies, TV shows, video games, and a wide range of merchandise. And until recently they also had Federal trademark registrations over images of the Pooh characters. If you make your Winnie the Pooh sequel, can Disney use trademark law to interfere?

Let’s begin with Disney’s trademark over the words “Winnie the Pooh.” As mentioned earlier, trademark law is all about preventing consumer confusion, so Disney might claim that consumers will think your new book or movie is a Disney-sponsored product. On the one hand, there are non-Disney versions of Snow White and Cinderella that people do not think emanate from Disney. Is “Winnie the Pooh” so closely associated with Disney that people would assume Disney is behind new productions? Either way, one way to dispel any claim of confusion is to add a disclaimer making it clear that your creation is not produced or sponsored by Disney. One court noted: “When a public domain work is copied, along with its title, there is little likelihood of confusion when even the most minimal steps are taken to distinguish the publisher of the original from that of the copy. The public is receiving just what it believes it is receiving—the work with which the title has become associated. The public is not only unharmed, it is unconfused.” 8 

Even without the disclaimer, putting “Winnie the Pooh” on toys or onesies is different from using “Winnie the Pooh” to describe the content of a new creative work. With the latter, First Amendment protection for freedom of expression comes into play and there are trademark defenses that allow you to use “Winnie the Pooh” in a title. A case called Rogers v. Grimaldi explains specifically that people are allowed to use trademarks in the title of an expressive work as long as the term has some artistic relevance to the new work and does not explicitly mislead as to the source of the work. (This is why when Mattel sues people for using “Barbie” in the titles of songs and photographs, they lose in court.) The policy underlying this rule is that trademark law should only apply to artistic works when the public interest in avoiding consumer confusion outweighs the public interest in free expression. Thus, the disclaimer should be unnecessary. But if you wish to put the matter beyond doubt, a disclaimer would do so.

What about possible claims by Disney that your use of the images of the Pooh characters causes consumer confusion? Here it is important to distinguish between using the Pooh images as a brand identifier on the kind of merchandise Disney’s trademarks cover and using the images of Pooh in a reprinted book or a new movie or cartoon. In theory, even on a shirt or a lunchbox, if that image of a bear or donkey is merely decorative, as opposed to being a brand-indicator, then there is no trademark problem. But that inquiry is fact-specific. Easier simply to avoid something that could be seen as competing and branded merchandise. Using those original Shepard drawings in a comic book or animation is different—this is not the kind of use that misleads as to the source of a product. It is something that copyright expiration plainly allows. 9 

Intriguingly, Disney used to have Federal trademark registrations for the following images, but then it let them lapse by not filing the required paperwork indicating they were still being used. If they are no longer in use, then you can use them on merchandise, but it is not clear whether this is the case, and even without a Federal registration Disney could still bring a trademark claim based on an unregistered mark if it is still in use.

Conclusion

The original Winnie-the-Pooh book from 1926 is in the public domain. However, Disney still owns copyrights over later works, and trademark rights for “Winnie the Pooh” on a variety of products. Hopefully they will not follow the example of the Sherlock Holmes, Tarzan, or Zorro rights holders and try to use residual rights to prevent what copyright expiation allows. This could lead to unnecessary litigation, and even the threat of lawsuits could chill the creative reuse the public domain is designed to promote.

In fact, Disney’s own beloved works show just how valuable the public domain is. Many of its animated classics were remakes of public domain books and folk tales. Works from Alexandre Dumas, Charles Dickens, Gabrielle-Suzanne de Villeneuve, Jules Verne, Lewis Carroll, The Brothers Grimm, Victor Hugo, Charles Perrault, Hans Christian Anderson, Carlo Collodi, Mark Twain, English folklore, and The Book of One Thousand and One Nights fed Disney’s The Three Muskateers, A Christmas Carol, Beauty and the Beast, Around the World in 80 Days, Alice in Wonderland, Snow White, The Hunchback of Notre Dame, Sleeping Beauty and Cinderella, The Little Mermaid, Pinocchio, Huck Finn, Robin Hood, and Aladdin, to name a few. When it got into a dispute with the rightsholders of Bambi, Disney even filed an unsuccessful lawsuit claiming that the book had gone into the public domain much earlier. Let us hope that Disney remembers its own debt to the public domain when Pooh, and later the Steamboat Willie version of Mickey Mouse, enter the realm from which it has drawn so heavily!

1 An earlier iteration of Pooh named Mr. Edward Bear (Edward being the long form of “Teddy”) appeared in Milne’s 1924 poem “Teddy Bear,” but the 1926 book was the first collection of Winnie-the-Pooh stories.

2 Obtaining licenses to use older works can be expensive and challenging, thwarting creative projects. With many older works, the rightsholder cannot be identified or located at all, making licensing impossible. The public domain removes these barriers to creativity.

3 A small subset of superbrands with “famous” marks gets extra protection against “dilution” that impairs the distinctiveness or harms the reputation of the famous mark, but this is subject to exceptions for expressive uses.

4 For more detailed legal analyses of this phenomenon, see Elizabeth L. Rosenblatt, The Adventure of the Shrinking Public Domain and Irene Calboli, Overlapping Trademark and Copyright Protection: A Call for Concern and Action. You can also read related stories by Sansu the Cat in Medium and Timothy B. Lee in Ars Technica.

5 Dastar v. Twentieth Century Fox, 539 U.S. 23 (2003) dealt with an attempt to make an attribution-like claim under the federal trademark statute over public domain works, but the larger policy underlying the decision is that trademark law cannot be used to circumvent copyright expiration. Dastar had repackaged parts of a public domain documentary, removing the original credits and presenting it as a Dastar production. Twentieth Century Fox owned the copyrights to the documentary before they expired and claimed that Dastar violated trademark law by passing off Fox’s work as its own and failing to attribute it to Fox. The Supreme Court rejected this claim.

6 Comedy III v. New Line, 200 F.3d 593 (9th Cir. 2000).

7 See Sony v. Fireworks, 137 F.Supp.2d 1177 (C.D. Cal. 2001) (the case also included unsuccessful copyright claims). You can read more about Zorro Productions, Inc.'s tactics in Stephen Carlisle's "Will the 'Mark' of Zorro Defeat Court's Public Domain Ruling?".

8 Maljack Prods. v. Goodtimes Home Video Corp., 81 F.3d 881 (9th Cir. 1996), quoting Leslie A. Kurtz, Protection for Titles of Literary Works in the Public Domain, 37 Rutgers L.Rev. 53, 77 (1984). See also Walt Disney Productions v. Souvaine Selective Pictures, Inc. (2d Cir. 1951) (Disney could not prevent another film producer from using the title “Alice in Wonderland” because “the book ‘Alice in Wonderland’ is no longer subject to copyright and is as much in the public domain as are Shakespeare’s plays. Anyone has a legal right to make a picture based on Louis Carroll’s book and entitled ‘Alice in Wonderland.’”)

9 The McCarthy trademark treatise explains: “The expiration of copyright on a copyrighted work, such as a motion picture containing a cartoon character, should place limits on the scope of trademark rights in the character. Under the view that upon expiration of copyright the public should have free use of the work, copyright policy requires that anyone should be able to reproduce, display and perform the out-of-copyright motion picture so long as there is no confusion as to the source, sponsorship or affiliation of the seller of the reproduced film,” and “a court should not permit trademark in an image to serve the same function as did the lapsed copyright to exclude others from reproducing and distributing the out-of-copyright work, such as a film . . . a balancing of the rights of trademark and of the 'public domain' status of out-of-copyright works is needed. A similar balancing is made when constitutional free speech policies are balanced against the prevention of consumer confusion.” J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 6.30.

10 See US Trademark Registrations 4,372,744 (cancelled Winnie the Pooh image for movies, TV shows, theater productions) and 4,195,045 (cancelled Winnie the Pooh image for a range of merchandise including cosmetics, jewelry, school supplies, stationery, backpacks and luggage, picture frames, pillows, beverageware, dinnerware, household linen, kitchen towels, apparel, costumes, action figures, games, and toys); 4,342,795 (cancelled Piglet image); 4,475,449 (cancelled Eeyore image); 3,354,484 (cancelled “Classic Pooh” in oval); 2,623,099 (cancelled “Classic Pooh” in rectangle). They also let design marks for Rabbit and Tigger lapse. You can read more about these registrations by searching them on the US Patent and Trademark Office’s Trademark Electronic Search System.

Written by Jennifer Jenkins. Special thanks to our tireless and talented research maven and website guru Balfour Smith for building this site and compiling the list of works from 1926.

Public Domain Day 2022 by Duke Law School’s Center for the Study of the Public Domain is licensed under a Creative Commons Attribution 3.0 Unported License.