Art as trade marks?
The use of established artworks in advertising is hardly new. It may bring some relief from the inanities generally dreamed up by marketing executives and brighten our commutes, but it does come with a downside, somehow cheapening works that might otherwise be uplifting. Can anyone really look at a portrait of Mozart these days without thinking of chocolate marzipan balls? Or hear more than a few notes of Orff’s setting of ‘O Fortuna’ without being put irrepressibly in mind of Old Spice and the X-Factor? Art
Perhaps there would be something whimsical and charming in the use of, say, Magritte to sell apples, Vermeer for pearl earrings or Dali for watches, but at some point we get beyond fleeting association and the identity of the artwork becomes compromised, permanently marring its cultural significance.
Mere use of art in advertising can be pernicious enough, but what of the registration of art as trade marks? To many, this might be an uncomfortable thought – the erosion of the public domain, wholesale privatisation of our shared cultural heritage and the stifling of referential practices in the creative industries all have something Orwellian about them, but there is no prima facie legal reason it cannot be done.
Vigeland and Oslo
This was the situation when the Municipality of Oslo applied to register several of the most notable works of Norwegian sculpture Gustav Vigeland as trade marks. Vigeland’s works are a significant part of Norwegian culture and identity, and the Vigeland sculpture installation at Frogner park in Oslo, which houses some 200 of his works, is one of the city’s major tourist attractions.
Vigeland left all his works to the Municipality of Oslo in his will when he died in 1943, and copyright in the works expired at the end of 2013. The Municipality therefore sought to extend their monopoly on his works by registering several them as trade marks, arguing that they had invested significantly in the reputation of the works, and so deserved legal protection.
The Norwegian intellectual property office refused the application, this decision was appealed, and the opinion of the EFTA court (A supervisory court for countries in the EEA but not the EU – i.e. Norway, Iceland, Switzerland and Liechtenstein) was sought.
The court gives judgement
Although the EFTA court acknowledged the general undesirability of the registration of art works as trade marks, there was some uncertainty as to the formal grounds under which a refusal could be made, as there is no law explicitly precluding public domain art works from being registered. The court considered various routes.
To be registered as a trade mark, a sign must be distinctive, that is, it must be capable of distinguishing the goods or services of one undertaking from those of another. This has been used to reject art related applications before, such as in in the Mona Lisa case, but is not unproblematic.
By rejecting art registrations as undistinctive, one implicitly acknowledges that if a work of art becomes associated in the mind of the public with a particular brand, to the extent that it could be used to indicate that brand as the source of goods it is applied to, it could be registered. This is known as acquired distinctiveness and is an accepted concept in European trade mark law.
Reliance on distinctiveness to protect artworks from commercial appropriation provides a perverse incentive to businesses to invest in publicity campaigns featuring their chosen artwork. If a company spends enough on marketing its goods under the work, it will eventually acquire distinctiveness and the company can apply to register it as their trade mark, making their legal claim to potentially perpetual monopolisation of the work. This is effectively the argument employed by the Municipality of Oslo in respect of the Vigeland works.
All trade marks are registered in respect of certain specified categories of goods or services, and another ground for rejecting a trade mark application is that the mark is merely descriptive of those goods or services. It wouldn’t be fair for one company to register a descriptive term because that would prevent its competition from using the term, for example if Cadbury were to register ‘Chocolate’, everyone else would have to start selling ‘cocoa based powdered milk and sugar confection’, which may somewhat damp sales.
The EFTA court considered this as a ground for rejecting the Vigeland applications, but the problem of acquired distinctiveness again arises: if a company can show that consumers really do perceive the mark as an indicator of that company as origin of the goods or services, the mark can be registered, and this would just incentivise cultural land grabs through targeted marketing campaigns.
Shapes Giving Value to the Goods
A shape cannot be registered as a trade mark if the shape gives substantial value to the goods in respect of which it is registered. Trade marks are supposed to protect brands as source identifiers, and shapes that give value are really performing a different function. Furthermore, shape registrations conflict somewhat with existing protection available for designs.
In the Vigeland case, the argument against registration would be that the shapes Oslo sought to register, that is, the shapes of several of Vigeland’s most famous sculptures, give substantial value to the goods as a result of their aesthetic appeal.
The problem with this argument is that it lives or dies based on exactly what type of goods the trade mark application is in respect of. If the application is to cover products that incorporate the shapes, such as decorative items or furniture, the grounds clearly apply as the shape of the trade mark gives value to the goods, but if the application was in respect of something else, for example sandwiches sold in a museum café, or a bus service in Frogner Park, the argument becomes rather shaky. The EFTA court therefore felt that this was not quite the tool for the job.
Public Policy and Morality
Finally, the court turned to the blanket provision that trade marks cannot be registered if they are contrary to public policy or accepted principles of morality. In the past, this provision has mainly been used to refuse applications that are obscene or likely to incite violence, in other words, it has been applied sparingly. In this case, the EFTA court took a bold step to expand the scope of the ‘morality’ part of the exclusion, which needs no paraphrasing:
“certain pieces of art may enjoy a particular status as prominent parts of a nation’s cultural heritage, an emblem of sovereignty or of the nation’s foundations and values. A trade mark registration may even be considered a misappropriation or a desecration of the artist’s work, in particular if it is granted for goods or services that contradict the values of the artist or the message communicated through the artwork in question. Therefore, the possibility cannot be ruled out that trade mark registration of an artwork may be perceived by the average consumer in the EEA State in question as offensive and therefore as contrary to accepted principles of morality”
It will be interesting to see how this new jurisprudence is applied in EU trade mark law going forwards, but it will certainly be received in some quarters with approbation. At the very least, examiners of trade mark applications may breathe a sigh of relief.
Especially interested readers are referred to Dr Martin Senftleben’s excellent article ‘Vigeland and the Status of Cultural Concerns in Trade Mark Law -The EFTA Court Develops More Effective Tools for the Preservation of the Public Domain’ published in the International Review of Intellectual Property and Competition Law, and to the text of the judgement itself, available here.
 German Federal Patent Court, 25 November 1997, case 24 W (pat) 188/96, Mona Lisa, in: Gewerblicher Rechtsschutz und Urheberrecht 1998, pp. 1022.