The need to keep cultural subject matter available – enjoying or having enjoyed copyright protection

Indeed, the need is there. But is it really hindered by trade mark rights to the same objects?

Marianne Levin, Stockholm University

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Just a Symbol

• A trade mark is nothing but a symbol in the course of trade.

• Contrary to copyright works, designs and patents, no real contribution to society is required, such as novelty, creativity or innovativeness (but a distinctive quality).

• The trademark becomes to something in its specific environment.

• But there it can, of course, have a considerable value as the link between the trader and the consumers.

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                                                                In the course of trade?            

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In the Course of Trade Identical Use Needed, Art. 5(1)(a)

• Arsenal, case C-206/01• Adam Opel, case C-48/05• Cf. also Anheuser-Busch, case C-245/02, and

BMW, case C-63/97. • The public’s opinion of the origin?• Guaranteeing to consumers the origin of the

product.• The trade mark owner cannot stop an identical

sign from being used if the later use cannot harm the rights of the registered owner.

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Valid Copyright Hinders Trade Mark Rights

• Under Art. 52 a Community Trade Mark shall be declared invalid, where the use of such trade mark may be prohibited pursuant to another earlier right, and in particular:

• (a) a right to a name; (b) a right of personal portrayal; (c) a copyright; (d) an industrial property right under the Community legislation or national law governing the protection.

• Thus, during the period of copyright protection, trade mark rights need authorisation of the copyright owner.

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Statutory exceptions• Trade mark protection excluded under Art. 3(1)(e)

without any remedy by use. • The second intent: Signs which consist exclusively of the

shape of goods which is necessary to obtain a technical result, cf. Case C-C-299/99 (Philips)– It could – at least in theory and depending on the national

copyright law – also be so that a shape has copyright, although it is functional in the meaning of Art. 3(1)(e).

• The third intent: Signs which consist exclusively of the shape which gives substantial value to the goods, cf. case C‑371/06 (Benetton).– This preclusion could precisely be a design or copyright

protected shape.

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Case T‑460/05 Trade Mark Protection & Copyright(?), Bang OlufsenRefused by OHIM on the same grounds as Benetton.Now case T-508/08 (Représentation d'un haut-parleur)

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Where Copyright has Lapsed,Trade Mark Rights may be Available to

Anyone – What is Wrong?• Case C-238/01 (Shield mar) e.g. “Für Elise”• Article 2 of Directive 89/104 must be interpreted as

meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically… and that its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

• In the case of a sound sign…, those requirements are satisfied where the sign is represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary, accidentals.

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Copyrights, Trade Marks and Free Movement of Goods within the EC

• Are different IPR disciplines of different ranking/-importance?

• Admittedly, in some jurisdictions Authors and Photographers rights are guaranteed in the Constitution.

• But also copyright, as holy it may seem, may be overridden by free trade principles in the EC (cf. case C-337/95); it is only in the case of serious damages to reputation copyright may override the primacy of free trade principles within the EC. = Similar treatment of copyright and trade mark rights.

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Same Right Holder– Basically no problem.– Has the work been used as a trade mark (use requirement)?

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Different, or New Right Holder

● Could be a problem:

E.g. in a Norwegian case, a designer made a logo for a company. The company made bankruptcy. The trade mark was sold to another company, which started to use the logo.

As the logo was found protected by copyright, it could not be transferred without the consent of the author… (Gulating lagmannsrett 14 Nov. 1988)

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Risk for Eternal Property Rights?• Would trademark protection unduly extend the protection

of valuable expressions, shapes and figurative signs that in some way deprive society as a whole from access?

• In my view, normally no – at least not in a detrimental way and not more than copyright does.

• Trademarks do not grant an exclusive monopoly on use.• They only grant the trademark holder the right to use the

trademarked items as a means of distinguishing his goods or services in a commercial marketplace.

Indeed, what could be negative for society since already copyright protection means

more or less eternal protection. What could possibly be regarded as

unduly added time that we could discuss or valuate today, when copyright is

basically also eternal?

Let us look at some examples:

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• Mickey Mouse, was due to come into the public domain in the year 2004. However Copyright Term Extension to 70 years after the death of the author, this event has now been pushed to the year 2024.

• Mini Maglite. Maglica is not dead, so where copyright is accepted to this lamp – which however is not everywhere – the copyright protection will continue for at least another 70 years.

• Pablo Picasso died on 8 April 1973. Thus, his work will be in the public domain, available, also for trademark use in 2044.

• Pierre August Renoir died in 1919, thus his works would be free for use as a trade mark, if you find one to be photographed. (Otherwise mind the photographic rights).

• Charles-Edouard Jeanneret (Le Corbusier) died in 1961. His famous pieces of furniture are their own trade marks, without authorisation could not be used until after 2031.

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• For Whom the Bell Tolls was a poem by John Donne, who died in 1631. Ernest Hemmingway, used the same title on his famous novel from 1943. Hemmingway died in 1961. The title has been considered eligible for copyright in a Danish Supreme Court case of 1951 – which has not precluded Metallica to launch a music video.

• Would it preclude someone to use this title as a slogan for a clock shop? Maybe, because Hemmingway’s copyright does not expire until 2031.

• But then, maybe an undertaker’s use might be morally/ethically objectionable.

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Freedom of Parody

• The only explicit exception is in French copyright law.

• In both trade mark and copyright cases an assessment has to be done in the individual case…

• Maybe, there is more freedom in this respect under copyright law(?) Cf. the extended protection of reputed trade marks.

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Tuesday, 28 January, 2003, 10:05 GMT Toy maker loses Barbie song battle                                           It's acceptable to poke fun at Barbie, the court ruled

The makers of children's toy Barbie have lost their legal appeal over a song which mocked the blonde doll. The US Supreme Court upheld a previous ruling dismissing Mattel's lawsuit against MCA Records Inc over the 1997 pop hit Barbie Girl. Mattel claimed the song, by Danish pop act Aqua, infringed on the toy maker's trademark and sulliedBarbie's reputation. But appeal judges dismissed the lawsuit, saying the song was "parody" and "social commentary" covered by the US constitution's free speech protections.

                  

               The ruling is another blow for Mattel

Aqua stormed the charts with the song, in which a female singer portraying Barbie refers to herself as a "blonde bimbo" and says "life in plastic, it's fantastic". She is also enticed to "go party" by a male singer representing Ken, Barbie's plastic boyfriend.

Mattel had argued that the song, which sold more than 1.4 million copies in the United States, could confuse consumers and dilute the power of the Barbie brand. But MCA defended the song as "social commentary", saying the album Aquarium featured a disclaimer noting the song was not sanctioned by the maker of Barbie dolls. Mattel appealed to the Supreme Court after losing its initial case in July last year. But the appeals court and a federal judge in California determined the song's title was not misleading and that consumers would not be confused.

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Moral Rights• Should not be affected by trade mark use; they

are still to be respected under the law.• At least, where such respects are paid, their use

as trade marks could even be seen like a “educational advantage”.

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Ethical considerations?

Could be an ethical issue. But ethics are difficult to regulate, apart from what is OBVIUOSLY objectionable.

On the other hand, we talk about business:If the reactions on the use of a work as a trade

mark would create opposition and negative feelings, the trade mark is no good as such, and

the proprietor could be expected to leave this “hot potato”.

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Monopolization of What Ought to be Free?

• It could hardly be claimed that society is deprived of free use of the “cultural heritage”…

• Any non-trade mark use would be available.• It is only another competing trader who is deprived of

using this item as a trade mark for his/her goods• Cf. C-108/97 and C-109/97 (Windsurfing Chiemsee).• However, one identifiable problem could be that the

trade mark will be regarded as reputed, because the work is well known; a decision for national law.

• Then, rights covered could become too broad (protectable outside the normal scope of specialization)

• But still only in the course of trade.

To me it seems to be a bigger problem, where copyright protection subsists and is claimed to

what would basically be (treated as) a trademark: (Simple) logos etc. could cause

problems, because under copyright law they are protected

not only in the field of speciality.An exception could be where works have originally been developed as artistic and

turned into trade marks.

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Andy WARHOL

A Happy Marriage of Trade Mark Right Holder and Artist?

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Copying for Charity

                                                               

Louis Vuitton filed a suite. (On what basis?)

Unhappy Marriage Between Artist and Trade Mark Holder

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Other Trade Mark – Copyright Conflicts: Trade Mark Use??

New York, July 31, 2008 –

Louis Vuitton announced that the company has concluded a world- wide settlement agreement with Sony BMG Music Entertainment under which Sony BMG has agreed to refrain from future activityinvolving Louis Vuitton’s intellectual property.

This settlement agreement resolves all claims by Louis Vuitton against Sony BMG regarding the unauthorized use by Sony BMGlabels concerning the artists Da Brat, Britney Spears, and RubenStuddard, of Louis Vuitton’s trademarks and copyrights, including the Toile Monogram and Multicolore trademarks. Over the past 5 years, Louis Vuitton had filed lawsuits in the District Court of Paris seeking injunctive relief and damages for trademark counterfeiting and infringement, unfair competition, injury to business reputation and false and deceptive business practices arising out of the sale and offer for sale of DVDs, video clips and CDs bearing Louis Vuitton intellectual property by the artist Da Brat and a clip video on CDs by Britney Spears and had received favorable judgments in each case, totaling €154,000.

• Under the terms of the agreement, Sony BMG has agreed to e.g.: Make a settlement payment to Louis Vuitton for the Ruben Studdard CD, the amount of which will not be disclosed, and the amount of €97,000

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Dior sandal with what is reportedly a Masai fertility figure as its heel.  But this then is a

matter for the next speaker …