University of Bayreuth Chair for Civil Law VIII: Private Law and Intellectual Property Law - The need to keep cultural subject matter available – Part 1: Focus on subject matter enjoying or having enjoyed copyright protection Ansgar Ohly Trademark Law and the Public Interest in Keeping Signs Available Trademark Law Institute, Leiden, 21 March 2009

0. Introduction Raffael‘s putti or Jeanette‘s putti?

0. Introduction 3600 years old and yet not in the public domain? (LG Magdeburg GRUR 2004, 672 – Himmelsscheibe von Nebra)

0. Introduction Cumulating TM and copyright protection? (High Court (Ch.), ”Karo Step“ Trade Mark [1977] RPC 255 )

0. Introduction Avoiding exceptions by cumulation? (Rechtbank Amsterdam, J.K. Rowling et al. v. Uitgeverij Byblos BV, [2003] E.C.D.R. 23, aff’d by GerechtshofAmsterdam, [2004] E.C.D.R. 7)

1. Overlap Overlap between copyright and TMs TM protection for public domain works and work titles?

1. Overlap Copyright protection for TMs? Thresholds of © protection differ in Europe P!: overlap © / design right (which can subsist in graphic symbols, art 1 (b) DD, art 3 CDR) Originality (UK CDPA 1988): low threshold -Generally no protection for word marks (Exxon Corp v Exxon Insurance Consultants [1982] RPC 69, 78) -But more than trivial devices likely to be protected („Karo step“ TM [1977] RPC 255, 273)

1. Overlap Copyright protection for TMs? (cont‘d) Personal intellectual creation (§ 2 (2) German CA 1965) -Different thresholds for works of pure art and works of applied art -Generally no protection for word marks (LG Mannheim ZUM 1999, 659 (660) – Heidelbär) -Criteria difficult to meet for device marks (see LG Hamburg, GRUR- RR 2005, 106: logo of former GDR Communist Party) unless seen as works of pure art (see BGH GRUR 1995, 47 – Rosaroter Elefant)

1. Overlap Scenarios of overlap Different owners -© = relative ground for refusal (art 4 (4)(c)(iii) TMD = art 8 ) or for invalidity (art 52 (2)(c) CTMR) Same owner -Double protection not objectionable as such  different functions of both rights -But risk of “asymmetric convergence“ = avoidance of exceptions -Exhaustion, but see ECJ, C-377/05, Dior v Evora -Parody: differing “internal”or common “external” approach?

2. TM protection for public domain works? Overlap between copyright and TMs TM protection for public domain works and work titles?

2. TM protection for public domain works? Exclusion of public domain works: arguments for Works should be freely available after end of copyright protection For whichever use (even as signs) Hard and fast rule -prevents unnecessary transaction costs -prevents abuse Possible legal basis: public policy (art 3 (f) TMD = art 7 (f) CTMR)

2. TM protection for public domain works? Exclusion of public domain works: arguments against No such exclusion in TMD / CTMR TM ≠ monopoly right in word / device  does not prevent use as such Expropriation of copyright protected TMs Distinction between world-famous works and lesser known works -Registration of world-famous works may be prevented by lack of distinctiveness -Whereas lesser known works may well be or become distinctive

2. TM protection for public domain works? Some old German marks which are (arguably) protected by copyright

2. TM protection for public domain works? Exclusion of public domain works: arguments against No such exclusion in TMD / CTMR TM ≠ monopoly right in word / device  does not prevent use as such Expropriation of copyright protected TMs Distinction between world-famous works and lesser known works -Registration of world-famous works may be prevented by lack of distinctiveness -Whereas lesser known works may well be or become distinctive

2. TM protection for public domain works?

Registration Descriptiveness (art 3 (1)(c) TMD = art 7 (1)(c) CTMR), but restricted to certain product categories Lack of distinctiveness (art 3 (1)(b) TMD = art 7 (1)(b) CTMR) -for particular product categories -or even for broad range of products (BPatG 1998, 1021 – Mona Lisa) -Related issues: names of historical persons (e.g. BPatG GRUR 2008, 517 – Mirabeau); pictures of historical persons (BGH GRUR 2006, 333 – portrait of Marlene Dietrich); titles of events (BGH GRUR 2006, 850 – Fussball WM 2006) Bad faith (art 3 (2)(d) TMD, art 51 (1)(b) CTMR)

2. TM protection for public domain works? Scope TM use -TM must be used in order to distinguish goods or services -(-) if piece of music is played or if picture is shown at exhibition -Example: OLG Dresden NJW 2001, 615 – Johann Sebastian Bach Infringement regularly limited to art 5 (1) TMD = 9 (1)(a, b) CTMR cases

2. TM protection for public domain works? Work titles Sui generis protection in some jurisdictions -See BGH GRUR 2003, 440 – Winnetous Rückkehr TM Protection? -Descriptiveness / lack of distinctiveness? BGH GRUR 2003, 342 – Winnetou ; BPatG GRUR 2006, 593 – Der kleine Eisbär

3. Conclusion TM protection for works protected by / works out of copyright not objectionable as such But copyright should be prevented from being used as an instrument to avoid limitations of TM rights And TM protection for works should be tailored in a way which avoids restrictions of the public domain -No registration of world-famous works -Strict test of trade mark use -No TM protection for book titles

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