When Trademarks Overlap With Other IP Rights: conference report 2

The second session, "Trademark and Copyrights", was chaired by former guest Kat Tara Aaron. First to speak was Professor Ansgar Ohly, who gave a breathtaking account of conflicts between trade marks and the public domain such as Raphael's Putti (registered by a prostitute, Jeannette, for the supply of unspecified personal services) and the Nebra Sky Disk, as well as the interface of trade mark law and copyright defences of parody, citing the celebrated Tania Grotter case in the Netherlands.  Essentially, he said, there is no problem with overlap of trade marks and copyright when the freedoms allowed by each body of law are not restricted (which is not the case where copyright deposits a work into the public domain but trade mark law retains control). So how much restriction should be tolerated?

Ansgar then reviewed the extent to which copyright might vest in trade marks.  Word marks were not normally susceptible of protection, while logo protection was possible but varied considerably between different countries and where different criteria of originality were applied. Copyright-protected words, images and shapes can however be registered as trade marks.  But what of a work of art that consumers perceive as a work of art? Will that really have the ability to distinguish goods or services? The German refusal to allow registration of La Giaconda (the 'Mona Lisa') is a case in point. Other cases (eg Marlene Dietrich) have gone the other way: it's necessary to look at the goods/services and the relevant consumer too.

The first legal scenario Ansgar reviewed was that of the copyright and trade mark having different owners: whose right overrides whose, and does it depend on which was created first? The second scenario is where both rights fall within the hands of the same owner, as in Case C-377/05 Christian Dior v Evora. This can be of relevance where eg parody defences might permit a copyright use but not a trade mark one.

Ansgar emphasised the fact that trade mark protection is limited to the use of a sign as a trade mark: thus registration of a piece of music as a trade mark does not prevent anyone playing it or performing it in public (citing Case C-283/01 Shieldmark). Likewise, the use of even a trade mark in an ornamental fashion will not infringe it; likewise the use of trade marks for descriptive purposes. This being so, there is no real objection to the use of public domain works as trade marks.

Axel Nordemann spoke next, adding some EU perspectives. He observed that European registered trade mark law was largely harmonised, while copyright's 10 directives had still achieved only partial harmonisation. Three specific issues were addressed here: priority, registration of public domain works as trade marks and the problem of book titles.

As to priority, prior copyright will destroy a later trade mark, though the circumstances in which this happens have been litigated in the curious case of the mano portafortuna [Case C-530/12 P National Lottery Commission, noted here by the IPKat]. Neither the General Court nor the Court of Justice looked closely at the application of non-harmonised copyright law in an application to challenge a Community trade mark right.

Axel then returned to the Nebra Sky Disk (see illustration above), since that object, as a previously unpublished work, enjoyed copyright till the end of 2027 under the principle of editio princeps but was registered as a trade mark by the state of Saxony-Anhalt.  Saxony later successfully sued the city of Querfurt for depicting it on souvenirs.

Turning to titles of books, these may be descriptive but can be registered as trade marks if they're not. Ansgar had suggested that they are basically descriptive; however, some jurisdictions have special laws to protect them irrespective of their quality. Where a book title falls into the public domain, it must be possible for other books to use it.  Since public domain works must be in principle free to use, any restrictions on their use must be construed narrowly.

Moving to Latin America, the floor was taken by Barbarita Guzmán, Barbarita started with the Andean Community, which governs trade marks and copyrights for four countries (Bolivia, Colombia, Peru, Ecuador). Under Decision 486, trade marks cannot be registered if they infringe copyright -- but what is the position regarding infringement of moral rights, she asked.

Barbarita discussed the position of the registration of characters that are associated with copyright but which are now in the public domain, such as POPEYE (whose author Elzie Seager died in 1938), who has now been registered in Andean Community countries for a variety of goods and services by a variety of different parties. She then reviewed the position of musical compositions and sound trade marks, figurative art, titles of literary and artistic works and literary works or slogans, there being possibilities for overlap in all cases. Musical works in the public domain are more difficult to register as a trade mark since the need to respect the moral integrity of the work must be respected; this suggests that the whole of the work must be registered rather than just snippets.

Venezuela used to be an active member of the Andean Community, Barbarita added, but denounced it, leaving much to be resolved under the Industrial Property Law of 1951.  Given the political uncertainty inherent in that jurisdiction, it is unclear how IP overlaps are going to be handled there.

The fourth speaker on this panel was Andrew P. Bridges, addressing the US position -- not so much in terms of how they overlap but in terms of those elements of which that don't overlap, which is really important when seeking to estimate the significance of overlap. Andrew first addressed the different objectives of trade mark and copyright protection and the standards required in each case before protection becomes available. Fonts, letter strings, short phrases, simple colours and designs are not protected by copyright, but are registrable as trade marks. Limitations on rights are different too, as are defences and the operation of the rules relating to exhaustion and abandonment. He reminded us that protection is not enjoyed by the person who has the first idea, so brands aren't owned by their creators.

The respective rights are subject to different formalities too, added Andrew, since registration of a trade mark is "nice but not essential" while registration of copyright is unnecessary for entitlement but essential for a domestic litigant who wants to sue for infringement if he seeks statutory damages.  In terms of duration, trade marks last potentially forever, but copyright seems to be just as long in respect of works created today and is de facto forever too.  Andrew then underlined the procedural differences and the role of government in IP enforcement.