14 november 2017

The Norwegian Board of Appeal for Industrial Property Rights refuses trademark registration of works in the public domain because registration would be contrary to public policy in accordance with Article 3 (1) (f) of the Trade Marks Directive

Trademark application
Gustav Vigeland was a famous Norwegian sculptor. He is most known for the Vigeland installation (Vigelandsanlegget) in the Frogner Park in Oslo. The installation  was commissioned and built by the City of Oslo from the 1920s and onwards. Vigeland died in 1943 and his copyrighted works therefore returned to the public domain on 1. January 2014.  

In 2013 the City of Oslo applied for trademark registration of about 90 representations of Vigeland's art. These included «The Angry boy» («Sinnataggen»), the «Vigeland monolith» («Monolitten») and several images of parts of the decoration at the cast iron gate at the entrance to the Frogner Park. At about the same time the City of Oslo also applied for trademark registration of several representations of Edvard Munch's paintings, including «The Scream» («Skrik») and «Vampire» («Vampyr»). The City of Oslo owns a large collection of Munch's paintings that are exhibited in the Munch Museum. (The decisions in these cases were put on hold until the Vigeland case was concluded.) 

The Norwegian Industrial Property Office (NIPO) registered the Vigeland trademarks in some classes, but denied registration in other classes where the marks were deemed to be devoid of any distinctive character. The black and white image of «The Angry boy» was for example registered in Class 28 for games and toys, but not in Class 6 for goods of common metal, Class 14 for goods of precious metals and Class 16 for paper and printed matter.

A handful of cases were appealed to the Norwegian Board of Appeal for Industrial Property Rights (KFIR) that chose to submit six questions to the EFTA Court for an advisory opinion in the case. The EFTA Court handed down its decision in Case E-5/16 Vigeland on the 7April.

On 13 November KFIR handed down its decision in cases 16/00148, 16/00149, 16/00150, 16/00151, 16/00153 and 16/0015416/00148, 16/00149, 16/00150, 16/00151, 16/00153 and 16/00154. Therein, the Board rejected all applications relating to Vigeland's art because such registration would be contrary to public policy in accordance with the Norwegian Trademarks Act Section 15 Para. 1 litra a (which implements the Trademark Directive Article 3 (1) (f). The Board argued that the works depicted in the trademarks must be considered to hold «considerable cultural value» to the Norwegian society and that the limited term of copyright protections is meant to safeguard fundamental societal considerations (para. 14)

The Board's decision

Gustav Vigeland
Photo: Anders Beer Wilse
The EFTA Court had ruled that the registration of a trademark consisting of a copyrighted work in the public domain is not in itself contrary to public policy under Article 3 (1) (f) of the Trade Marks Directive (para. 88 of the judgment of the EFTA Court). 

However, certain works of art could have a prominent status as part of a nation's cultural heritage, for example as a symbol of independence. Therefore, it could not be ruled out that a trademark registration of a work of art could be perceived as offensive by the average consumer in the EEA State concerned, and thus being contrary to accepted principles of morality (para. 92 of the judgment of the EFTA Court).

A trademark registration of a cultural work may also be contrary to public policy, but only in exceptional circumstances. This may be the case where registration of a cultural work in the public domain is considered to constitute a real and sufficiently serious threat to certain basic values ​​or where the need to ensure public access is considered to constitute a fundamental social interest in itself (para. 96 of the judgment of the EFTA Court).

The Board emphasized that copyright protection is an exception to the availability of a work to the public. Thus, when copyright protection expires, the public should again be free to use the work (para. 15). Copyrighted works, however, may have a distinctive character and may thus function as trademarks, and it should therefore be possible to achieve trademark protection for marks depicting such works (para 16).

Trademark application 201303786
On the other hand, trade mark registration of works of art could, in exceptional circumstances, potentially conflict with the considerations on which the limited term of copyright protection is based. A core consideration in this regard is the need to protect competition in the sense that the copyright holder should not be able to maintain a competitive advantage of an exclusive right once copyright in the work has elapsed, as this would give him an unjustified competitive advantage. If the registration allows the trademark holder to effectively exploit the value of the work as a work of art and thus exploit functions that are meant to return to the public domain, the registration could be seen as contrary to public policy.

Against this background, the Board assumes that there are special circumstances which indicate that registration of Vigeland's works as trademarks must be considered contrary to public policy (para. 22). It is emphasized that both the artist Gustav Vigeland and the Vigeland Institute must be regarded as belonging to the common Norwegian cultural heritage. By acquiring exclusive rights to Vigeland's works the city of Oslo will not only gain a competitive advantage, but also potentially limit the public's access to the works (para. 23).

The IPTroll's musings

In its decision the Board of Appeal clearly states that the «cultural value» of a copyrighted work in the public domain cannot unconditionally be appropriated through a trademark registration. The requirement that work must have «significant cultural value», however, sets the bar high meaning that only works by very famous artists or works that are very well known may be able to meet that requirement.. This will for example apply to the City of Oslo's applications regarding trademarks depicting Edvard Munch's paintings.

Trademark application 201315782
However, it is not sufficient that the work depicted in a trademark has «significant cultural value». The registration must also exploit the value of the work as a copyrighted work. The Board does not comment on situations where a copyrighted work both fulfils its functions as a trademark and has a cultural value that goes beyond this. This would typically be the case for works that are created for commercial purposes and exploited simultaneously as copyrighted works and trademarks. It would not be reasonable if such works were to lose protection as trademarks. For example, Disney should be able to maintain its trademark registrations depicting Mickey Mouse even after Mickey's copyright has entered the public domain. Copyrighted works in the public domain should therefore only be excluded from trademark protection on public policy grounds where the registration predominantly appropriates the cultural value of the work.

Apparently, the City Oslo  argued that it was in a similar position to Disney by having «the exclusive responsibility of managing the rights to Vigeland’s art since 1921». The City «must therefore be equated to the artist himself». The City's agreement with Vigeland had, however, restricted the City's commercial exploitation of Vigeland's works while they were still protected by copyright. Aggressive commercial exploitation of the works could in any case have conflicted with  the City's purpose of making Vigeland's art available to the general public.

This means that the City of Oslo and similar cultural institutions’ exploitation of well known works of art will rarely function as a trademark in the wayin which Mickey does for Disney. Trademark registration of such works will therefore in most cases predominantly appropriate the cultural value of the work.

Article 3 (1) (f) of the Trademark Directive has predominantly been applied to deny registration of offensive trademarks, such as PAKI (T-526/09 PAKI Logistics v. OHIM). Using the Article to refuse a registration of a trademark depicting a work in the public domain therefore seems a little odd at first. From a copyright perspective, however, works in the public domain should be available to the public. Hence, the denial of trademark protection for copyrighted works in the public domain that have a significant cultural value seems like a reasonable solution.

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