Here is the latest post from our Intern Tibbie McIntyre.
Gustav Vigeland
was an eminent Norwegian sculptor whose most notable works include the Vigeland
installation, a staggering arrangement of two hundred and twelve granite
and bronze statutes covering eighty acres in Oslo’s Frogner Park, and the
design of the Nobel
Peace Prize medal.
A particularly unique deal was
struck between Vigeland and the Municipality of Oslo (Oslo commune, “the Municipality”) in 1921, stating that Vigeland
would bequeath the copyright contained within his life’s work to the city in
return for the use for the remainder of Vigeland’s lifetime of a purpose built
house and studio.
‘Monolitten’ (The Monolith)
|
It is Vigeland’s work which is now at the
centre of a case before the European
Free Trade Association (“EFTA”) Court (E-05/16),
which at a previous stage in proceedings, has been reported on over at the
IPKat here.
With copyright protection for Vigeland’s
work coming to an end in 2014, the Municipality applied for trade mark protection
in relation to over one hundred of his pieces, including ‘‘Monolitten’ (The Monolith) (pictured above) and Sinnataggen’ (The Angry Boy) (pictured
below).
The move could be considered by some as an
attempt to extend legal protection for Vigeland’s work beyond the usual life of
copyright, usurping the policy objectives behind copyright legislation with
trade mark law. It could be considered by others as an astute commercial move
by the Municipality (which has invested considerable money and effort in the
promotion and curation of these treasured cultural artefacts) in order that it
might maintain some control over its investment. In any event, the Municipality
appears to be attempting to layer various different forms of IP rights in order
to extend the originally bestowed copyright protection for the works of Gustav
Vigeland.
‘Sinnataggen’ (The Angry Boy) at Frogner Park, Oslo
Photo Credit: Hiytel under a CC BY-NC-SA 2.0 licence.
|
The bulk of the trade mark applications submitted
by the municipality for trade mark protection have been put on hold, and a
number of the applications were refused by the Norwegian Industrial Property
Office (“NIPO”), on the basis of:
-
Section
14 first paragraph of the Trade Marks Act, with NIPO finding a lack of
distinctive character in relation to the applications refused,
-
Section
14 second paragraph (a) of the Trade Marks Act on the prohibition of purely
descriptive marks (i.e. the prohibition on marks that exclusively indicate the
kind, quality, quantity, intended purpose, value or geographical origin of the
goods or services, the time of production of the goods or of the rendering of
the services or other characteristics of the goods or services)
-
Section
2 second paragraph third alternative of the Trade Marks Act on trade marks,
where a right may not be acquired for signs that consist exclusively of a shape
that results from the nature of the goods themselves, is necessary to obtain a
technical result or adds substantial value to the goods.
The Municipality appealed NIPO’s decision to
the Norwegian Board of Appeal for Industrial Property Rights (Klagenemnda for industrielle rettigheter;
“The Board of Appeal”), which in turn considered whether the trade mark
applications should be refused on additional
grounds. The Board of Appeal consequently requested an Advisory Opinion for the
case from the EFTA
Court.
In The
Report for the Hearing, the additional grounds the Board of Appeal
considered might be the basis for refusal are cited as Section
15 first paragraph (a) of the Trade Marks Act (designed to implement Article
3(1)(f) of Directive
2008/95/EC), which details the absolute ground of refusal to register a
trade mark, where the mark is found to be contrary to
public policy or to accepted principles of morality.
The Board of Appeal also referred to the Mona Lisa case (Case 24 W (pat) 188/96,
GRUR 1998, p. 1021 of the German Federal Patent Court), in which there was an
attempt to register the Mona Lisa as a trade mark. In that case, the
application was refused because of a lack of distinctiveness; the Da Vinci
painting is often used by third parties, and would not serve to convey the
origin of any specified goods or services. The Board of Appeal questions
whether that decision should set precedent in European law, and whether trade
mark applications of well-known works can only
be refused on grounds of lack of distinctiveness. If this is the case, is there the possibility
where distinctiveness can be achieved through use – therefore qualifying the
work for registration at a later stage?
This same point is eloquently expressed by The
European Copyright Society’s (“ECS”) cogent
response; “The decision of the German Federal Patent Court thus raises the
possibility that the obstacle to registration may be overcome through intensive
use of the sign in product marketing and advertising.” (Page 7 of the ECS
response)
The Board of Appeal also references the
Opinion of Advocate General Ruiz-Járabo Colomer in Shield Mark. Shield Mark may be relevant as the Advocate
General states at paragraph 52;
“I find it more
difficult to accept … that a creation of the mind, which forms part of the
universal cultural heritage, should be appropriated indefinitely by a person to
be used on the market in order to distinguish the goods he produces or the
services he provides with an exclusivity which not even its author’s estate
enjoys.”
Parallels can
clearly be drawn in this case from the Advocate General’s words quoted above,
and to grant trade mark protection for Vigeland’s work would most definitely
grant the Municipality an exclusivity the creator’s estate never enjoyed.
The full set of
questions referred to the EFTA court can be found here,
as well as The Report for the Hearing, which includes written observations from
the Municipality, the Norwegian Government, the EFTA Surveillance Authority,
the European Commission and the German, Czech and UK Governments.
ECS’s
response deals with the layering of IP rights and specifies that – in some
cases – the cumulation of various forms of IP can potentially undermine policy
objectives. This can lead to ‘dysfunctional cumulation’, which may “distort competition
or may lead to a situation in which protection in one area of intellectual
property law undermines the rationales and objectives of protection in another”
(ECS opinion, page 2).
This writer
would most definitely welcome comments from interested parties on this case,
whether the consensus is that the Municipality are usurping copyright policy
objectives or whether the decision to apply for trade mark protection is an
astute commercial move. Keep watching the 1709 blog for updates on this case.
No comments:
Post a Comment