Trademark Law Institute Leiden, March 20-21, 2009 The Need to Keep Signs, Belonging to the Cultural Heritage, Free Prof. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague

The problem (macro perspective)

Copyright law: an inspiration system public domain of cultural expression (cultural heritage)

Trademark law: a transparency system public domain of cultural expression (cultural heritage)

Risks drying-out of sources of inspiration monopolisation of building blocks of new creations =impediment of the cultural inspiration cycle

Counter-arguments (micro perspective)

Registration unlikely

BPatG, 25 November 1997, ‘Mona Lisa’ The Mona Lisa is not distinctive. The Mona Lisa has become customary in trade practices. But there is no conflict with morality or public order.

Guernica for weapons? distinctive? customary in trade practices?

Solveig’s song for beer? distinctive? customary in trade practices?

ECJ, C-283/01, Shield Mark/Kist ‘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.’ (Opinion A-G Colomer, April 3, 2003, para. 52)

Limited scope of protection

Overview requirement of trademark use principle of specialty restriction to use in trade

Broad notion of trademark use ECJ, C-63/97, BMW/Deenik ECJ, C-48/05, Adam/Autec ECJ, C-17/06, Céline ECJ, C-533/06, O2/Hutchison structural incentive: no harmonisation under Art. 5(5) of the Trademark Directive

ornamental trademark use taking advantage of the distinctive character of the Milka mark with due cause as it is justified by the constitutional guarantee of freedom of arts ‘Über allen Wipfeln ist Ruh, Irgendwo blökt eine Kuh. Muh!’ (Rainer Maria Milka) BGH, 3 February 2005, Lila Postkarte

deterrent effect of potential trademark infringement Impact on cultural productions

Low threshold of becoming well-known criterion: knowledge/recognition of the mark amongst the public US: famous marks, niche fame (-) EC: marks having a reputation, niche reputation (+)

favorable image of cultural symbols Risk of free riding

Impact on cultural productions registered painting as a book cover? registered portrait in a concert advertisement? =impediment of the marketing of cultural productions

Only use in trade nonetheless: definition power individuals are no longer free to attach meaning to cultural symbols for creators, a specific cultural symbol is not substitutable

Commercial definition supersedes cultural meaning technology commerce culture patent law trademark law copyright law

Solutions?

copyright: moral rights of the author? traditional cultural expressions: rights of indigenous peoples? trademark law: concept of bad faith?

Cultural grounds for refusal risk of privatising (re-monopolising) parts of the cultural heritage undesirable redefinition of important cultural expressions in commerce free riding on the status, reputation and favourable image of cultural expressions discouragement of ‘cultural heritage grabbing’

The end. Thank you!