Comments for Beware of the ‘mutant copyrights’ in a trademarked culture!

Article 4 of the European Union Trademark Regulation of 14 June 2017 provides that “An EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of: […] being represented on the Register of European Union trade marks (‘the Register’), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”.
Article 7(1) of the European Union Trademark Regulation of 14 June 2017 gathers the trademarks that should not be registered. For example : “trademarks which are devoid of any distinctive character”.
There are different types of registration procedures : there is one for the national office and one for the European trademark. For a national trademark, you have to go in front of national office and for a European trademark, you have to go to the EUIPO in Alicante. If you want to file a trademark in several countries at the same time, the Madrid Agreement allows an international filing system ; For international trademarks, first, you have to file the application in your country’s office. But the International filing system does not grant the trademarks; the decision to grant the trademarks is taken by each office separately.
In conclusion, trademarks must be registered in order to provide legal ownership. Without Intellectual property right, the information is in the public domain. When the author registered his work, he granted an exclusive right for 14 years, after which his work becomes a public domain. It is a right that is given to authors, it is a recovery of John Locke Theory.

In this judgment, the Court is seised by way of a request on the basis of Article 34 of the Agreement between the EFTA States on the Establishment of a Surveillance Authority and a Court of Justice by the Norwegian Board of Appeal for Industrial Property Rights (Klagenemnda pour industrielle rettigheter), in the case of the Municipality of Oslo, concerning the interpretation of Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks, in particular Article 3(1)(b) to (f) .

The initial facts concern the expiry of intellectual property protection for the copyrighted works of certain Norwegian artists. This is an application to register the works of the Norwegian artist Gustav Vigeland as trade marks. Indeed, after his works fell into the public domain, the Municipality of Oslo filed about 90 applications to register his signs, consisting of visual works and sculptures, as trademarks, but the Norwegian Patent Office refused most of the applications on the grounds of lack of distinctiveness.

The Norwegian Board of Appeals for Industrial Property Rights, to which an appeal was filed, then decided to request an advisory opinion from the EFTA Court. The EFTA Court ruled that an application for registration as a trade mark was not contrary to public policy.
However, the application was rejected by the Commission on the basis of Section 15 of the Norwegian Trade Mark Act. The Commission was concerned that the registration process would lead to the admission of certain “mutant copyrights”. This concept comes from the United States and refers to the attempt to circumvent the copyright statute of limitations by, for example, applying for copyright protection as a “trademark of unlimited duration”.
In a similar case in the US, the Supreme Court insisted that once a work enters the public domain, an entity cannot use federal law to extend that term.

The court was asked six specific questions. In answering the various questions posed to it, the court set out various principles, including the concept of copyright lapse, as a period of time after which anyone can draw on the ideas and creative content of others without limitation. The court also points out that the fact that the works are in the public domain should not be seen as a consequence of the expiry of copyright protection. In fact, the principle is such that once communicated, the creative content definitely belongs to the public domain and the Norwegian cultural heritage.

In January 2014, the works of the Norwegian artist Gustav Vigeland fell into the public domain. It means that his works are free of individual and exclusive protections. The Municipality of Oslo wanted to protect this cultural heritage by registering it as a trade mark. All the attempts were nevertheless denied by the Norwegian Patent Office, based on art. 3(1) of the Trade mark Directive and on Section 14, §1, 2nd sentence of the Trade mark Act. They consider that there was a lack of distinctiveness. The City of Oslo attacked those refusals and an opinion has been asked to the EFTA Court on the matter.

At the origin, the works of Gustav Vigeland should be protected by Copyright as its goal is to protect original works of authorship. However, the Municipality of Oslo wanted to register it as a trade mark because “it would guarantee the identity of the origin of the marked product” (summary of the judgement E-5/16 of April 6th 2017, Municipality of Oslo). The problem is that the cumulation of those two protections could create an anti-competitive situation by monopolizing the sign. It is precisely what the United States Supreme Court called “mutant copyright” in the Dastar Corp. v Twentieth Century Fox Film Corp. The Court said indeed that cumulating the two protections would create a “species of perpetual copyright”, which is quite contrary to the principle of an expiring protection.

In this case, the EFTA Court says that the registration didn’t violate public policy and morality, however, as we said, it could be considered as a threat to the fundamental interests of society, particularly by its anti-competitiveness and its unfairness.

This case deals with two subjects: Copyright and Trademark:

The first one has an objective of protection of authors of literary and artistic works by giving them a right of control on the exploitation that is made of their work. This right is effective only for a limited time. This right has an objective to provide public access to the author’s work after the limited period of control.

The second one guarantees the identity of the origin of the marked product which has a huge importance for brand competition in the market. This guarantee as opposed to copyright is in principle for an undetermined period.

These two notions have different objective, different application and different legal consequences. But in this case the municipality of Oslo waited for the end of the copyright and asked for trademarks. But the problem with this way of acting is that in effect it has the same effect as extending copyright which is not the objective of trademark.

It is therefore important that these two rights regimes be used for their real purposes and that the trademark not be used to extend certain rights and prevent copyright from achieving its real purpose (allow the public to have access to the author’s work after the limited period of exclusive control has expired).

Dorian GREGOIRE et Charles-Eric de DECKER

In this judgment, the court is requested by means of a request on the basis of Article 34 of the Agreement between the EFTA States on the Establishment of a Surveillance Authority and a Court of Justice by the Norwegian Board of Appeal for Industrial Property Rights (Klagenemnda for industrielle rettigheter), in the case of Municipality of Oslo concerning the interpretation of Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks, and in particular Article 3(1)(b) to (f).

The original facts concern the actual or imminent lapse of intellectual property protection for copyright protected works by some Norwegian artists. Indeed, it concerns an application to register as trade marks the works of the Norwegian artist, Gustav Vigeland. After his works fell into the public domain, the Municipality of Oslo filed approximately 90 applications for registration as trade marks of his signs consisting of visual works and sculptures. However, the Norwegian Patent Office refused most of the applications on the ground of lack of distinctiveness. So, the Norwegian Board of Appeal for Industrial Property Rights, before which appeal was filed, decided to request an Advisory Opinion before the EFTA Court.

The main fear in this process was the admission of some ‘mutant copyright’. This notion comes from the United States and refers to the fact of wanting to circumvent the limitation period of copyright by asking for example for the protection of this right as a “trademark of unlimited duration”.
In a similar case in the US, the Supreme Court insisted that once a work enters the public domain, an entity could not appeal to a federal law to extend that term.

Six specific questions were put to the court. By answering these various questions put to it, the court puts forward various principles. Indeed, the court defines the concept of forfeiture of copyright protection as being time frame after which anyone can draw from ideas and creative content of others without limitation. The court also stresses that the fact that works are part of the public domain should not be seen as a consequence of the expiration of copyright protection. In reality, what explains this is that in principle once it is communicated, the creative content therefore belongs to the public domain.

Intellectual property law has created well-defined categories of protection; each work, invention, or creation has its own specific protection. So, in principle, the “cohabitation” of the various types of protection does not pose a problem. However, in certain situations, cumulation can distort competition and run counter to the objectives of the protection granted.

This issue of problematic cumulation was also dealt with by the EFTA Court in a judgment in 2017. The EFTA Court, therefore, had to decide whether a work previously protected by (expiring) copyright could also be protected by trademark protection. The Court thus replied that, in principle, the registration of works as a trademark of a sign composed of works for which the period of copyright protection has expired is not contrary to public policy and morality (Art. 3 Directive 2008/95/EC). However, such registration may be refused if the work belongs exclusively to the public domain and if it would “constitute a genuine and sufficiently serious threat to a fundamental interest of society” (EFTA Court, E-5/16). This serious threat must also be analyzed based on the country’s customs and practices.

The issue of “mutant copyrights” is a complex one with many dissenting opinions.
In a positive approach, we agree with the position of the EFTA Court: stacking protection is not a bad thing as it allows the works and the artist to benefit from broader and more complex protection. To take an example, Mickey Mouse, the face of Disney, has long been protected by both copyright and trademark. Thus, from this point of view, it can be considered that this combination does not create a hybrid form of protection but provides broader protection.

However, beyond this artist-centered view, we must look at the public. Thus, the extension of the protection of works through the multiple uses of protections may cause several problems and imbalances in the IP Law. Indeed, on this point, two considerations must be made:

• Firstly, the combination of protection causes certain legal problems. Indeed, the rules governing these protection methods are not the same. Thus, to take the example of Mickey, which is both protected by copyright and trademark: if a cartoon of Mickey is made public, it won’t be problematic based on the rules applicable to copyright. On the other hand, the same cartoon will be problematic under the trademark rules. This creates a significant imbalance when the protections do have not the same scope.

• Secondly, when work is subject to numerous protections (sometimes used to extend expired protection), a great loss is created for the public domain. In sum, this creates another imbalance since society has to “suffer” the rules of IP protection but gets nothing “in return”.

In conclusion, it is true that the use of several protections is very favorable to the artist since it allows, on the one hand, to protect him and, on the other hand, to encourage creation (through the copyright granted). However, as mentioned, this cumulation creates legally problematic and unbalanced situations combining protections with diverse and sometimes even opposing rules that tend to deprive the public of works in the public domain.

KATOVIK Sara – MANGAIN Pauline – MILKOWSKA Julia – MOUBACHAR Basma

ln this case, we are facing a new type of intellectual property law: “mutant copyright”.Indeed, this case explains why the municipality of Oslo wishes to create a trademark to protect the art of Gustav Vigeland.

The works of this man fell into the public domain in 2014 (the artist having died in 1943). Following this, the municipality of Oslo tried to obtain a trademark application.Unfortunately, these applications were refused by the Norwegian Patent Office, which stated that the application was not possible due to the lack of distinctiveness of Vigeland’s works.

Faced with these refusals, the municipality of Oslo attacked and went to court before the Norwegian Board of Appeals. This last one could not rule and thus requested the opinion of the EFTA Court.

The EFTA Court therefore had to determine whether a work that has fallen into the public domain can still be granted trademark protection. In this case, the court considered that it was not normal that several intellectual property protection rights could benefit the same work. It concluded that the affixing of a trademark on works that are part of the culture goes against the balance and the objective set by the intellectual property law.

The outcome of this case shows how complex the field of intellectual property law is and how it calls for a variety of responses that can give rise to divergent opinions. However, we understand the opinion of the EFTA Court that it is not reasonable that a work that has benefited from the rights granted to intellectual property can be given new protection when it has fallen into the public domain. After a certain period of time, it is normal that these works become part of the common culture.