Trademarks for public domain artwork can be accepted, says court

Trademarking artwork that is in the public domain does not contravene public policy or the principles of morality, according to the Court of Justice of the European Free Trade Association States (EFTA Court).

The EFTA Court has jurisdiction over EFTA states which are also parties to the European Economic Area Agreement—Iceland, Liechtenstein and Norway.

Handed down on Thursday, April 6, the decision resulted from a request for an advisory opinion from Oslo Municipality concerning the interpretation of Directive 2008/95/EC.

The case stemmed from the expiration of copyright protection for a number of artworks situated around Oslo.

Oslo Municipality, which manages some of the copyright, sought to register the artwork of Gustav Vigeland, a Norwegian sculptor, as trademarks instead.

However, the Norwegian Intellectual Property Office (NIPO) refused to register some of the trademarks, holding that the marks lacked distinctive character or consisted of a shape that adds substantial value to the goods.

With regard to some of the trademarks, registration was granted for certain types of goods and services.

Oslo Municipality appealed against these decisions to the Norwegian Board of Appeal for Industrial Property Rights.

In addition to the grounds considered by NIPO, the board considered whether registration of the marks in the public domain may be contrary to “public policy or … accepted principles of morality”, which would fall within the absolute ground for refusal outlined in article 3(1)(f) of the directive.

In its decision, the court held that the protection of copyright and trademarks “pursue different aims, apply under distinct legal conditions and entail different legal consequences”.

Because of this, said the court, in principle nothing prevents a sign from being protected under both trademark and copyright law.

But a trademark based entirely on copyright-protected work, such as in this case, carries a “certain risk of monopolisation” of the sign for a specific purpose.

According to the court, a trademark on a copyright-protected work grants the mark’s proprietor such “exclusivity and permanence of exploitation which not even the author of the work or his estate enjoyed”.

The signs here would not be “offending by their nature a reasonable consumer with average sensitivity and tolerance thresholds”, but trademark registration may be considered a “misappropriation or a desecration of the artist’s work” if granted for goods/services that contradict the values of the artist.

Additionally, registration of a sign as a trademark may only be refused as contrary to public policy in “exceptional circumstances”.

“In light of the above, the answer … is that the registration of a sign that consists of works for which the copyright protection period has expired as a trademark is not in itself contrary to public policy or accepted principles of morality within the meaning of article 3(1)(f) of the directive,” said the court.