Preamble
The copyright protection term for the works of Gustav Vigeland expired on 1 January 2014. Oslo Municipality, the custodians of Vigeland’s rights, attempted to trademark several of his works in various iterations with the goal to secure the sole rights to commercial utilization of the aforementioned works. The municipality saw six of its applications rejected by the Norwegian Industrial Property Office for not being able to meet the terms of the registration provisions. The municipality appealed the rejections to the Norwegian Board of Appeal for Industrial Property Rights (henceforth KFIR).
KFIR passed their verdict in the case on 13 November 2017 to uphold the decision, albeit with a dissimilar argument than the one presented by the Norwegian Industrial Property Office.
Below, the verdict is examined and its consequences are analyzed further.
Case review by the Norwegian Industrial Property Office
The Norwegian Industrial Property Office has chiefly argued its rejection due to a lack of distinctive features, pursuant to the Norwegian Trademarks Act (henceforth vml.) § 14, 1st subsection, which goes as follows:
§ 14. General conditions of registration
(1) A trademark to be registered shall consist of a sign which is capable of being protected pursuant to Section 2 and capable of being represented graphically. It shall have distinctive character as a sign for the relevant goods or services.
For four of the applications, there was also a refusal cited based on § 14, 2nd subsection, letter a), which prohibits the registration of descriptive trademarks.
(2) A trademark cannot be registered if it exclusively, or only with insignificant changes or additions, consists of signs or indications that:
a) 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, or
And for three of them, refusal was cited, since the form provides a significant value, ref. vml. § 14 (1), ref. § 2, last alternative.
Decision and argument by KFIR
Oslo Municipality filed an appeal to KFIR. During the review, KFIR obtained an advisory statement from the EFTA court (The Court of Justice of the European Free Trade Association States), which has jurisdiction to submit statements relating to EEA jurisprudence, and subsequently passed a verdict.
In the verdict, KFIR upheld the refusal; however, this is now justified through vml. § 15 a), as opposed to § 14. § 15 of the vml. states:
A trademark cannot be registered if it:
a) is contrary to law or public order or is liable to cause offence, The EFTA court concluded in its response that a registration of a work where the copyright has expired, will not in itself be in violation of § 15 a), but that the conditions surrounding the individual artwork may entail this in certain special instances.
Regarding the concrete assessment which reflects the consideration for “public order or is liable to cause offence”, and what would constitute a special instance, the EFTA court states that a refusal must be based on an assessment of objective assets. The assessment topic that the court is presenting is whether there is a “real and adequately serious threat against essential societal interests” present. The necessity to ensure the general public’s access to artworks is mentioned as one example, but only where the necessity for access in itself must be deemed an essential societal interest. In other words, there are only certain special instances which permit the utilization of this alternative. The court points out that a refusal based on this argumentation can only be considered when the sign, which is subject to application for registration, solely consists of a work which has entered the public domain after the expiration of the copyright protection term, and when the registration constitutes a real and adequately serious threat against essential societal interests.
Application no. 201315782, registration refused
In the relevant cases, KFIR states that such special considerations are present, so that registration of the relevant works must be deemed an infraction on the public order. KFIR emphasizes that the works in question must be deemed to have significant cultural value, and that both Gustav Vigeland as an artist and the Vigeland Installation must be deemed to be an essential part of our common cultural heritage.
KFIR recognizes that Oslo Municipality has aspirations to register, precisely because they want to continue the work of promoting Vigeland and his works, and counteract attempts by others to utilize the works in potentially harmful ways. However, this is not deemed a legitimate interest which would fall under the auspices of vml.
It is noted that the copyright term, in accordance with the Norwegian Copyright Act, has been determined after a weighing of the aforementioned essential societal interests, in particular the general public’s interest in access to these works is an essential consideration. Principally, there is nothing stopping one from registering a trademark for a work after the expiration of the copyright protection term. However, registration of such notable and important artworks for continued protection may violate the essential societal considerations which form the basis of the argument behind the copyright protection term.
As such, KFIR refuses registration of the relevant trademarks.
The implications of the verdict.
Oslo Municipality has not appealed the verdict, which means that it will stand.
However, the Norwegian Industrial Property Office has not finalized the procedural work of all the applications, since they decided to place the application procedures for the other cases in abeyance until KFIR had made a decision in the initial cases. Oslo Municipality has also applied for a trademark registration for a selection of Edvard Munch’s most famous paintings since these also entered the public domain at the same time. These have also not been finalized; however, it is reasonable to assume that these cases will also face a refusal based on an argumentation corresponding with the one presented by KFIR in reference to the works of Vigeland.
Application no. 201212819, under review
The verdict may contribute to strengthen the public’s access to known works of art about to enter the public domain upon expiration of the copyright term, since there are consequently no expanded, exclusive rights tied to these.
It should be noted that the argumentation on which KFIR based its decision only concerns the most well-known works and artists, where the public’s access is in itself of essential societal interest. For less familiar works and artist, it is not as conducive to apply the same reasoning.
Reg. no. 274684, registered for various leather goods and luggage in class 18
The Norwegian Industrial Property Office has also allowed registration of certain Vigeland works, in particular less familiar versions and for the appropriate classes where the utilization of the work will come across as more indirect. As such, one cannot automatically surmise that works of art entering the public domain cannot be registered as trademarks. However, for very well-known works of art, we can say – with a high degree of certainty – that this will not apply, even if the purpose of the registration carries with it the best of intentions.
06.06.2018 Attorney Tora Krogsæter Vinje for Acapo AS.