Protecting artworks as trade marks: Contrary to public policy and accepted principles of morality?

A recent case has explored whether out-of-copyright artworks can be protected as trade marks, and under what circumstances this might be possible.

In an appeal brought by the Municipality of Oslo against a decision of the NIPO (the Norwegian Intellectual Property Office), the NIPO Board of Appeal referred a number of questions to EFTA (the Court of Justice of the European Free Trade Association) seeking guidance on the application of Article 3(1)(f) Directive 2008/95/EC in this context.

The EFTA judgment ( Case –E-5/16 ) and NIPO’s subsequent application of the law, raises some interesting questions on the issue of ownership of out-of-copyright artworks. It is a complicated topic, and as such, could form the basis of a far lengthier discussion than this blog piece.

The Municipality of Oslo, which managed the copyright of various artworks produced by Norwegian artists, including the sculptor Gustav Vigeland, applied to register some of the artworks as trade marks in order to retain control over how those artworks are reproduced once the copyright expired.

NIPO refused some of the applications on the basis that the ‘marks’ at issue did not satisfy the requirements for registration because they lacked distinctive character or consisted of shapes which added substantial value to the goods.

The Municipality of Oslo appealed the decision. As well as considering the issue of distinctive character and the law surrounding the protection of shapes as trade marks, the NIPO Board of Appeal also questioned whether registration should be prohibited under Article 3(1)(f) Directive 2008/95/EC, i.e. whether the trade mark is contrary to public policy or to accepted principles of morality. Six questions were referred to EFTA seeking guidance.

The NIPO Board of Appeal referred to the Opinion of the Advocate General Ruiz-Járabo Colomer in Shield Mark (C-283/01 at 197) in which he finds it 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.”

The consideration is a valid one. The purpose of copyright law is to protect creative works. Conversely, the purpose of trade mark law is to protect commercial signs used in trade to distinguish the goods and services of one undertaking from those of another. It somehow seems at odds to allow one party (even if that party is a cultural body, rather than a commercial entity) a monopoly over artworks that should be returned to the public domain once copyright has expired.

The resulting EFTA judgment deals with many interesting and important issues surrounding the protection of artworks as trade marks (including the issue of distinctive character, and the application of Article 3(1)(e)(iii) to two dimensional representations of sculptures). However, the question of whether the registration of artworks as trade marks is contrary to public policy or accepted principles of morality is the most interesting aspect of the case in my view.

In relation to this issue specifically, the Board of Appeal referred the following three questions to EFTA:

May trade mark registration of works, for which the copyright protection period has expired, under certain circumstances, conflict with the prohibition in Article 3(1)(f) of the Trade Marks Directive on registering trade marks that are contrary to ‘public policy or … accepted principles of morality’?
If Question 1 is answered in the affirmative, will it have an impact on the assessment that the work is well-known and of great cultural value?
If Question 1 is answered in the affirmative, may factors or criteria other than those mentioned in Question 2 have a bearing on the assessment, and, if so, which ones?

It is worth noting at this point that several parties, including the governments in the UK, the Czech Republic, Germany, and Norway, as well as the European Commission (amongst others), submitted observations in respect of all six questions. The European Copyright Society also issued an opinion on the subject.

The UK government’s position is that the notion of public policy should be applied restrictively. There are three situations that might trigger an application of Article 3(1)(f): (i) trade marks with criminal connotations (ii) those with offensive religious connotations; and (iii) those which are considered explicit or taboo.

Furthermore, the official UK line is that it is unnecessary to stretch the scope of Article 3(1)(f) in order to prevent the monopolisation of famous works of art from occurring. It is likely that famous cultural works will fail to satisfy the requirement of distinctiveness in Article 3(1)(b). Registration may also be denied under the ’bad faith’ provisions pursuant to Article 3(2)(d), if registration is sought merely to obtain a monopoly.

Whilst I agree that there must be a cautious approach taken to broadening the application of Article (3)(1)(f), and that the provisions of Article 3(1)(b) are likely to prevent registration of most famous artwork as trade marks, I question whether the application of Art. 3(1)(f) should be restricted to the three scenarios cited by the UK government above. The wording “contrary to public policy” allows for an interpretation beyond the remit of ‘bad taste’ or offensive/explicit content.

Having considered the observations, and the legal points at issue, EFTA concludes the following in response to those three questions:

The registration as a trade mark of a sign which consists of works for which the copyright protection period has expired, is not in itself contrary to public policy or accepted principles of morality within the meaning of Article 3(1)(f) of Directive 2008/95/EC.
Whether registration for signs that consist of works of art as a trade mark shall be refused on the basis of accepted principles of morality within the meaning of Article 3(1)(f) of Directive 2008/95/EC depends, in particular, on the status or perception of the artwork in the relevant EEA State. The risk of misappropriation or desecration of a work may be relevant in this assessment.
Registration of a sign may only be refused on basis of the public policy exception provided for in Article 3(1)(f) of Directive 2008/95/EC, if the sign consists exclusively of a work pertaining to the public domain and registration of this sign would constitute a genuine and sufficiently serious threat to a fundamental interest of society.

Applying these principles, the NIPO BoA rejected the appeal by the Municipality of Oslo on the basis that registration would be contrary to public order and that the works should be made available to the public for use now that the limitations of copyright do not apply. In reaching this decision, the BoA considered the nature of the artworks at issue. The fact that the Applicant was a cultural heritage institution (rather than a commercial entity) did not make a difference to the assessment.

EFTA’s decision makes it clear that the perception of the artwork in question and its status must be taken into account when deciding whether or not Article 3(1)(f) applies.

At a time when art can mean big business and high value deals, the EFTA judgment and the BoA’s subsequent application of the law seem to be sympathetic to the true purpose of art and to those who create it.

Jan Dalley, Art Editor at The Financial Times, summed up the position recently when she wrote:

“It is generally believed that as much as 80 per cent of the world’s art is in storage…Works are now regularly bought and sold without even emerging from their well-guarded racks….It is surely a crazy consequence of crazy market forces – that works whose whole and only purpose is to be seen and appreciated are locked away. Something has gone seriously wrong with a society in which the value of art has become purely monetary” (my emphasis, The Financial Times, 9/10 ^th December, Life & Arts, pp. 1 – 2)

Whilst this article was considering the state of the art market and auction practices in the context of the recent sale of Leonardo da Vinci’s ‘Salvator Mundi’ at Christie’s for $400m, Dalley’s comments are relevant here too.

Who does have the right to own and exploit art once copyright has expired? And should it be possible for anyone other than the artist (or the artist’s estate) to have a monopoly right, such as that provided by trade mark law?

Although the practical relevance of this case is perhaps limited insofar as it is an issue which is unlikely to find its way into the Courts frequently, the interplay between the different facets of IP protection and the ownership of certain types of IP, such as famous artworks, is thought provoking.

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