[Guest post] The Pride rainbow flag and its IP protection history

The Pride rainbow flag was created in the late 1970s and has now become a well-known symbol of the LGBTQ community: but what is its IP history?

The IPKat is happy to host this fascinating overview and analysis provided by Andrea Rossi (also the author of the image below).

Here's what Andrea writes:

The Pride rainbow flag and its IP protection history

by Andrea Rossi 

Image credits: Andrea Rossi

June was Pride Month. This year marked the 50th anniversary of the Stonewall Riots that gave rise to the movement for gay liberation and the modern fight for LGBT (lesbian, gay, bisexual, and transgender) rights in the United States. For this reason you may have seen it on walls, buildings, t-shirts, hanged in offices, houses and bars or waived in parades: the rainbow flag. 

This colourful composition designed by Gilbert Baker has become, since its first appearance in 1978, the worldwide recognised symbol of the LGBTQ (lesbian, gay, bisexual, transgender and queer) community (read the full history of its creation here) and in 2015 the New York Museum of Modern Art (MoMA) ranked the rainbow flag as an internationally recognized symbol along with other emblematic icons as the Google Maps Pin or the International Symbol for Recycling (see here). 

In light of the meaning such colour combination has acquired in time, one might wonder whether IP does or should provide protection to this well-known sign. 

Trade mark law 

Under the EU legal framework and case law of the Court of Justice of the European Union (CJEU), a colour combination is registrable as a trade mark if the subject matter of protection is represented in a clear and precise manner (article 4(b) EUTMR), in line with the requirements set out by the CJEU in the Sieckmann decision (i.e. the subject matter of protection must be represented in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner). Furthermore, in order to comply with article 7(1)(a) EUTMR, the EUIPO requires a “reproduction of the colour combination that shows the systematic arrangement of the colour combination in a uniform and predetermined manner” in accordance with the CJEU finding that the “mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours ‘in every conceivable form’, […] does not exhibit the qualities standards of precision and uniformity […]” (see here and a recent Katpost on the application of this principle). 

However, the clear representation of the subject matter is not the only requirement to successfully obtain an EU trade mark registration. In order to be distinctive (article 7(1)(b) EUTMR) the EUIPO requires colours combinations: not to constitute simply a “decorative element of the goods or comply with the consumer’s request (e.g. colours of cars or T-shirts)”; not to derive from the nature of the goods; to have a technical function; not to “be usual in the market (e.g. colour red for fire extinguishers, various colours used for electric cables)”; not to “indicate a particular characteristic of the goods. Additionally, “a colour combination should also be refused if the existence of the colour combination can already be found on the market”. 

In the view of the above, the rainbow combination may be registrable as a trade mark as long as it has a systematic arrangement and complies with the other requirements set by the EUIPO. However, doubts may arise regarding its distinctive character because certainly such combination has been largely used in the market and it would be hardly perceived as originating from one specific undertaking. 

Leaving aside these considerations and taking into account the meaning that the rainbow flag has acquired over the years, article 6ter of the Paris Convention (PC) excludes from trade mark registration “any imitation from a heraldic point of view” of “armorial bearings, flags, and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them”. Although the Pride emblem is not protected as a flag or heraldic symbol among those listed in the WIPO database, LGBT organisations, as the ILGA or the ILGA-Europe, could ask for protection of the rainbow flag. This may be possible by signing an agreement in the same way in which, for example, the International Olympic Committee obtained protection for the Olympic symbol in 1981 (see the Treaty here). However, an agreement of this kind seems unlikely to happen as some WIPO Member states criminalise same-sex relationships sanctioning them from incarceration to death penalty (see the ILGA report). Therefore, under EU law, article 7(1)(h) EUTMR will not apply since it is based on article 6ter PC, allowing, in theory, the registration of the Pride colours. 

Pride rainbow flag

This said, according to the EUIPO Trade Mark Guidelines, with regard to article 7(1)(i), registration can be denied for those badges, emblems or escutcheons that “have not been communicated in accordance with Article 6ter (3)(a) PC, regardless of whether they are the emblems of a state or international intergovernmental organisation within the meaning of Article 6ter (1)(a) or (b) PC, or of public bodies or administrations other than those covered by Article 6ter PC, such as provinces or municipalities and are of particular public interest”. Therefore, it seems that any kind of organisation that operates in the public interest (as one fighting for LGBT rights) can oppose the registration of the rainbow symbol when the emblem has a particular link with the activities carried out by the organisation or body. Additionally, the Guidelines specify that "[…] Article 7(1)(i) EUTMR applies where the mark is liable to mislead the public as to the existence of a connection between the owner of the trade mark and the body to which the abovmentioned symbols refer. In other words, the protection afforded by Article 7(1)(i) EUTMR is conditional on a link between the mark and the symbol (no absolute protection). Otherwise, trade marks to which Article 7(1)(i) EUTMR applies would obtain broader protection than under Article 7(1)(h) EUTMR (10/07/2013, T-3/12, Member of €e euro experts, EU:T:2013:364).” It appears that marks including the rainbow colours may be opposed registration by organisations that operate in support of the LGBT community to prevent any possible misleading association, when the mark has a direct link with the meaning conveyed by the protected symbol. 

Copyright 

As Baker created the rainbow flag in San Francisco, according to US copyright law it can be stated that potentially (see here for a recent instance in which another flag was deemed insufficiently original) his flag is an “original work(s) of authorship fixed in [a] tangible medium of expression” (17 U.S.C. § 102). Additionally, the fact that Baker owns the copyright in the rainbow-coloured flag is further supported by the fact that, over the years, changes and variations of the flag were created, but no one ever claimed copyright infringement for the modifications or the new versions of the initial work. 

In any case, even if it seems that Baker owned the copyright in the rainbow flag (he passed away in 2017), he has always promoted the free use of his flag, and this includes freedom from any right. Accordingly, when he created his first rainbow flag, in 1978, an advocacy organisation tried to register it as a trade mark. Baker asked for help to LGBT rights lawyer Matthew Coles, who helped him prevent the registration and avoid any restriction in the use of the flag (see here and here). This initial protection (or lack thereof) allowed the creation of a symbol of freedom that Baker, and many others like him, envisioned more than fifty years ago. 

Conclusion 

It seems clear that the rainbow flag does not enjoy any strict IP protection as everyone is free to use it, incorporate it in a trade mark, create variations, and, yet, the rainbow flag maintains its clear meaning in representing the LGTB community. This is the most fascinating aspect of this emblem: its absolute freedom of use has reinforced the message this combination of colours conveys. This amounts to the exact opposite effect that freedom of use has on trade marks, since it usually makes them become generic. Nevertheless, despite the current strength of this symbol, its lack of protection is likely to allow the rainbow colours to become commonplace, or to be used in a confusing or misleading manner. For how long will its real meaning last? In Italy, for example, the rainbow-coloured flag is commonly associated to “peace”. For this reason, an organisation may take charge of acting for the protection of what is today the symbol of the LGBT community to make it last forever. After all, life is not all rainbows and unicorns.