Monday, 14 November 2016

Should a Work in the Public Domain Be Able to Become a Trademark?

Here is the latest post from our Intern Tibbie McIntyre.

Gustav Vigeland was an eminent Norwegian sculptor whose most notable works include the Vigeland installation, a staggering arrangement of two hundred and twelve granite and bronze statutes covering eighty acres in Oslo’s Frogner Park, and the design of the Nobel Peace Prize medal.

A particularly unique deal was struck between Vigeland and the Municipality of Oslo (Oslo commune, “the Municipality”) in 1921, stating that Vigeland would bequeath the copyright contained within his life’s work to the city in return for the use for the remainder of Vigeland’s lifetime of a purpose built house and studio.
Monolitten’ (The Monolith)

Photo Credit: Nickrds09, available here

It is Vigeland’s work which is now at the centre of a case before the European Free Trade Association (“EFTA”) Court (E-05/16), which at a previous stage in proceedings, has been reported on over at the IPKat here.

With copyright protection for Vigeland’s work coming to an end in 2014, the Municipality applied for trade mark protection in relation to over one hundred of his pieces, including ‘‘Monolitten’ (The Monolith) (pictured above) and Sinnataggen’ (The Angry Boy) (pictured below).

The move could be considered by some as an attempt to extend legal protection for Vigeland’s work beyond the usual life of copyright, usurping the policy objectives behind copyright legislation with trade mark law. It could be considered by others as an astute commercial move by the Municipality (which has invested considerable money and effort in the promotion and curation of these treasured cultural artefacts) in order that it might maintain some control over its investment. In any event, the Municipality appears to be attempting to layer various different forms of IP rights in order to extend the originally bestowed copyright protection for the works of Gustav Vigeland. 

Sinnataggen’ (The Angry Boy) at Frogner Park, Oslo

Photo Credit: Hiytel under a CC BY-NC-SA 2.0 licence.

The bulk of the trade mark applications submitted by the municipality for trade mark protection have been put on hold, and a number of the applications were refused by the Norwegian Industrial Property Office (“NIPO”), on the basis of:

-          Section 14 first paragraph of the Trade Marks Act, with NIPO finding a lack of distinctive character in relation to the applications refused,

-          Section 14 second paragraph (a) of the Trade Marks Act on the prohibition of purely descriptive marks (i.e. the prohibition on marks that exclusively indicate the kind, quality, quantity, intended purpose, value or geographical origin of the goods or services, the time of production of the goods or of the rendering of the services or other characteristics of the goods or services)

-          Section 2 second paragraph third alternative of the Trade Marks Act on trade marks, where a right may not be acquired for signs that consist exclusively of a shape that results from the nature of the goods themselves, is necessary to obtain a technical result or adds substantial value to the goods.

The Municipality appealed NIPO’s decision to the Norwegian Board of Appeal for Industrial Property Rights (Klagenemnda for industrielle rettigheter; “The Board of Appeal”), which in turn considered whether the trade mark applications should be refused on additional grounds. The Board of Appeal consequently requested an Advisory Opinion for the case from the EFTA Court.

In The Report for the Hearing, the additional grounds the Board of Appeal considered might be the basis for refusal are cited as Section 15 first paragraph (a) of the Trade Marks Act (designed to implement Article 3(1)(f) of Directive 2008/95/EC), which details the absolute ground of refusal to register a trade mark, where the mark is found to be contrary to public policy or to accepted principles of morality.

The Board of Appeal also referred to the Mona Lisa case (Case 24 W (pat) 188/96, GRUR 1998, p. 1021 of the German Federal Patent Court), in which there was an attempt to register the Mona Lisa as a trade mark. In that case, the application was refused because of a lack of distinctiveness; the Da Vinci painting is often used by third parties, and would not serve to convey the origin of any specified goods or services. The Board of Appeal questions whether that decision should set precedent in European law, and whether trade mark applications of well-known works can only be refused on grounds of lack of distinctiveness.  If this is the case, is there the possibility where distinctiveness can be achieved through use – therefore qualifying the work for registration at a later stage?

This same point is eloquently expressed by The European Copyright Society’s (“ECS”) cogent response; “The decision of the German Federal Patent Court thus raises the possibility that the obstacle to registration may be overcome through intensive use of the sign in product marketing and advertising.” (Page 7 of the ECS response)

The Board of Appeal also references the Opinion of Advocate General Ruiz-Járabo Colomer in Shield Mark. Shield Mark may be relevant as the Advocate General states at paragraph 52;

“I find it more difficult to accept … that a creation of the mind, which forms part of the universal cultural heritage, should be appropriated indefinitely by a person to be used on the market in order to distinguish the goods he produces or the services he provides with an exclusivity which not even its author’s estate enjoys.”

Parallels can clearly be drawn in this case from the Advocate General’s words quoted above, and to grant trade mark protection for Vigeland’s work would most definitely grant the Municipality an exclusivity the creator’s estate never enjoyed.

The full set of questions referred to the EFTA court can be found here, as well as The Report for the Hearing, which includes written observations from the Municipality, the Norwegian Government, the EFTA Surveillance Authority, the European Commission and the German, Czech and UK Governments.

ECS’s response deals with the layering of IP rights and specifies that – in some cases – the cumulation of various forms of IP can potentially undermine policy objectives. This can lead to ‘dysfunctional cumulation’, which may “distort competition or may lead to a situation in which protection in one area of intellectual property law undermines the rationales and objectives of protection in another” (ECS opinion, page 2).

This writer would most definitely welcome comments from interested parties on this case, whether the consensus is that the Municipality are usurping copyright policy objectives or whether the decision to apply for trade mark protection is an astute commercial move. Keep watching the 1709 blog for updates on this case.

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