Guest Book Review: The Copyright/Trademark Interface: How the Expansion of Trademark Protection is Stifling Cultural Creativity

Katfriend Dr Sabine Jacques, Associate Professor in IP, IT & Media law at the University of East Anglia and author of The Parody Exception in Copyright Law (OUP 2019), provides the follow review of The Copyright/Trademark Interface: How the Expansion of Trademark Protection is Stifling Cultural Creativity – by Martin Senftleben. 

The title of this book clearly sets out its premise: trademark protection has encroached into what used to be solely copyright’s domain, resulting in an undesirable over-protection of works which impoverishes the public domain and restricts others’ creative endeavours. Senftleben has responded laudably to addressing this colossal challenge by writing a scholarly book which is sure to be a ‘go to’ reference for anyone interested in IP overlaps and protection asymmetries. 

Figure 1: Get your paws on this new book y'all!
Image: Sabine

Chapter 1 sets the scene by identifying reasons why we might care to limit copyright/trademark overlaps. Whether it is by expanding the scope or duration of copyright protection or attempting to revive protection when a copyright work has fallen in the public domain, overlapping copyright and trademark protection can be detrimental to what Senftleben terms ‘cultural follow-on innovation’.  We have lost sight that ‘acceptance of expiry of protection and the enrichment of the public domain are the price to be paid for the enjoyment of exclusive rights during the limited term of copyright protection’ (p.7). 

Chapter 2 highlights that overlaps may be the result of regime imbalance. As we know, although each IP regime seeks to strike a delicate balance struck between various interests, evolution of IP regimes has tended to tilt the balance more favourably towards IPR owners’ interests as protection boundaries and thresholds have been lowered. This expansion of protection then shrinks the opportunities for further creative endeavours based on copyright works. While IP can sometimes be reined in by recourse to fundamental rights or competition law, the author argues for a ‘back to basics’ approach focussed on the rationales for copyright and trademark protection.

The book then looks at the underlying principles of copyright (Chapter 3) and trademark (Chapter 4) law, which serves to highlight how the basic aims of these regimes clash. Copyright law is rooted in cultural considerations and, according to Senftleben,  has two key inalienable goals: ‘intergenerational equity’ (the idea that copyright should foster creativity by permitting future authors to learn and be inspired by earlier works) and ‘preservation of a rich public domain’ (vital to ensure that society hears a multiplicity of voices and essential to keep free the creative raw materials). The ability to protect cultural works as trademarks disrupts these goals, by affording trademark owners more communication power than other speakers and preventing works from ever entering the public domain. Trademark rights are not granted to reward authors or incentivise future creations or dissemination of cultural works – because trademark law has a more static goal of preserving market transparency. Trademark law is not there to encourage the creation of more signs, but to protect that which already exists – the link consumers make between the sign and specific goods – ensuring efficient markets.  

While this clash of ideals might indeed impact negatively on the creative process, one might wonder when these overlapping rights are most concerning. Chapter 5 examines which cultural expressions should be kept beyond trademark protection to ensure a flourishing of creative expressions. Here, Senftleben develops a list of factors which helps to reach an objective identification of a potentially valuable cultural sign, which not only include traditional, iconic works such as the Mona Lisa, but also more mainstream productions, like Mickey Mouse. Conversely, the chapter argues that signs which do not meet the originality threshold should not enjoy copyright protection but should remain within the trademark sphere. An iconic sign should not be elevated to a cultural work, irrespective of the powerful communication value it might embody.

Nevertheless, culture vs commerce, dynamic vs static, exploitation rights vs defensive mechanisms … given as how different the two regimes are, one might still wonder if any corrosive effect on ‘cyclic cultural innovation’ is actually significant. Chapter 6 assesses the risk and demonstrates that (at least some) trademark rights have evolved to mimic copyright’s exploitation rights, particularly once confusion-based protection yields to anti-dilution rights, and the trademark owner acquires an exclusive communication channel in all active markets. Here, Senftleben flags an important corrosive effect on cultural innovation, especially having regard to the chilling effect of well-aimed cease-and-desist letters. Once in court, Senftleben further demonstrates how trademark law’s infringement prerequisites are either too low (use in the course of trade) or too broad (in relation to goods and services), leaving ‘legitimate’ creators, such as parodists, reliant upon ill-matched defences such as due cause or referential use, measured against the problematic yardstick which the ‘honest practices’ proviso presents. 

An artist can hardly be expected to be aware of behavioural norms in industry and commerce. The proviso … is thus not only undesirable because it obliges artists to align their cultural work with commercial standards of fairness and honesty but also impractical because artists do not have the knowledge necessary to ensure compliance with established industrial and commercial standards during the process of creation. (p. 198).

At this stage, the picture for cultural follow-on innovation appears bleak. 

Chapter 7 builds further on this bleak picture by looking at how trademark law facilitates perpetuation of protection of cultural expressions. Although the trademark functionality exclusions serve to prevent problematic overlaps between trademarks with patents or designs, Senftleben demonstrates that the functionality rules are ineffective when it comes to copyright. Since the trademark paradigm allows copyright overlaps to occur, the impact on cultural follow-on innovation is real.

Chapter 8 examines the reappropriation of cultural expressions already in the public domain. Senftleben finds no good reason for allowing private trademark rights over cultural signs, as removing these from the public domain destroys the possibility that future creators may rely on public domain works as a source of inspiration. Faced with this threat, Senftleben proposes ways to preserve this essential breathing space by revising trademark legislation. Top of the list is a categorical exclusion of cultural signs, along with a greater recognition of users’ freedoms by, e.g. new, more robust, defences. 

At over 200 pages long, Chapter 9 is indisputably the crux of this book! Having painted a sombre future for cultural follow-on innovation, we now look to how to mitigate these risks. At this stage, the reader is unsurprised that the first suggestion is to exclude trademark protection of cultural signs irrespective of whether they still enjoy copyright protection or vest in the public domain (ex ante exclusion). Senftleben then analyses whether any existing trademark requirements might fulfil this gatekeeper role, and two are proposed. The first is a stricter interpretation of ‘use as a trademark’ in the infringement test and the second is a more robust defence for cultural uses, neither of which is straightforward under the current EU legislative context. The final chapter, Chapter 10 not only provides a helpful summary, but also reflects on avenues for future research.

Just as it takes a highly skilled watchmaker to make a truly accurate mechanical watch, so it takes a stellar IP scholar to explore and resolve the tensions between copyright and trademark law. Borrowing the eyeglass of a watchmaker, Senftleben explores the internal mechanisms of copyright and trademark to suggest new ways of applying trademark doctrines without impoverishing the public domain, hindering creativity or even diluting the true aims of trademark law. Akin to watchmaker’s deft touch in creating a watch movement, the author’s meticulousness in addressing every possible scenario is commended. 

Nevertheless, not all will agree with some of the work’s premises, such as the conception of the author and the role of the public domain in copyright. Others (including the reviewer) would perhaps have liked to have seen more on the impact of the US Court of Appeal case,  Rogers v. Grimaldi, which is relied upon heavily in Chapter 9, because it identified a defence based on ‘artistic relevance.’ A court in a later case, Stouffer v. Nat’l Geographic Partners, LLC, No. 18-cv-3127-WJM-SKC, 2019 U.S. Dist. LEXIS 140947 (D. Colo. Aug. 20, 2019) - which perhaps came too late for included in this edition of book – highlighted some shortcomings in the Rogers test, and established a different test of ‘genuine artistic motive’. Finally, although the author discusses (US-style) ‘fair use’ and its absence from EU IP law, the reader is left to wonder whether the author is in favour of introducing fair use into EU trademark legislation. Whilst this may be desirable in copyright which requires a dynamic paradigm, might trademark law’s static focus precludes a fair-use-type analysis? However, all this is just nit-picking. Senftleben has written a marvellous, scholarly monograph which will feed into and fuel discussion for years to come. It is not only comprehensive; it is a thoroughly enjoyable read. 

Book details:

ISBN: 9789403523705

SKU: 10083607-0001

£130 (Paperback)

639 pp.

Available from Wolters Kluwer Publishing here.