Art and brands: Is it possible to turn an artistic work into an intangible asset?

3月 2021

In our previous article we talked about the concept of copyright and its protection* which, as we already know, includes artistic and literary works, and even scientific works. But what happens if I want to take advantage of one of these works as a company image and turn it into my brand?

To answer this question, first of all we must assume that the work in question must belong to the public domain, since, if the author is alive at the present time or if the legally established period of 70 years has not yet elapsed after his death – at least in Europe – all rights will logically belong to the author of the work, or, if applicable, to his heirs. Having said that, let us start then, to make it easier, from a real question:

What if I want to open my own restaurant and I want to use “La Gioconda” as my brand image?

If we look only at the above-mentioned deadline requirement, technically there would be no problem since it has been a few years, well over seventy, since Leonardo da Vinci left us, but of course it doesn’t end there.

The first thing to bear in mind, before rushing to put a work of art in the public domain, is the requirements for registering a trademark, as well as its prohibitions. In this regard, the Directive (EU) 2015/2436 on trademarks tells us in its third article that “a trade mark may consist of any signs, particularly words, including proper names, or designs, letters, numerals, colours, the shape of goods or of their packaging, or sounds, provided that such signs are capable of: (a) distinguish the goods or services of one undertaking from those of other undertakings; and (b) be represented in the register in such a way as to enable the competent authorities and the public in general to determine the clear and specific subject-matter of the protection conferred on the proprietors thereof”.

We return, then, to the distinctiveness of the trademark*, that great sine qua non when we talk about registering a trademark. What does this mean? Simple: the protection as a trademark of a work of art that is in the public domain will not be possible if there is a lack of distinctiveness as a sign indicating the business origin of the goods or services. In other words, I cannot register the image of “La Gioconda” as a trademark for my restaurant if I have not achieved distinctiveness with respect to that work so that the consumer associates it with my restaurant. But the matter becomes even more complicated, because it does not end there either.

What if I have – surprisingly – achieved brand distinctiveness in relation to the artwork in question and the average consumer links it to my business origin?

The European Union has tried to find a stronger basis for opposing the appropriation of works that form part of the public domain as trademarks, in addition to the lack of distinctiveness, when they are works of great artistic and cultural value, as would be, for example, the case of “La Gioconda“. And that basis would be: “trademarks which are contrary to public policy or to accepted principles of morality” (Article 4(1)(f) of the Directive). Moreover, both EU legislation and case law clearly establish several safeguards against dysfunctional cumulation in relation to the overlap between copyright and trademarks:

  • One of these is the function of the trademark as a means of imposing appropriate limits on the grant and scope of protection which, increasingly, as far as its grant and maintenance is concerned, focuses on the use of the trademark sign to indicate the origin of the goods or services, rather than the use of the sign for its expressive and creative value. In other words, it does not matter how creative or aesthetic the trademark is, but rather that it distinguishes and differentiates the product or service it represents; so in this sense, it should not be possible to register a sign with cultural value (and thus perpetuate the expired copyright protection through trademark law).
  • Another safeguard would be that if a copyrighted work is unlikely to be perceived as a trademark, it should not be protected. This would be the case, for example, for works that are perceived primarily as a work of art and not as an indication of commercial origin.
  • It is also worth mentioning that trade mark law recognises a number of exclusions from registration, irrespective of whether or not there is distinctive character, such as the optional exclusion of signs of high symbolic value (Article 4(3)(b) of the Directive), among which works of art that have this particular status could be understood to be included.

However, these principles of trademark law suggest that overreach or overprotection that may result from the overlap between copyright and trademark rights should be resolved, whenever possible, within the scope of trademark law, without having to resort to the application of an external rule. Thus, it can be said that a sound application of such basic principles of trademark law should be sufficient to protect the public domain without having to resort to Article 4(1)(f), we recall, “trademarks which are contrary to public policy or morality”.

However, it is understandable that there is reason to fear that, in certain cases, the courts will have some difficulty in using trade mark law effectively and consistently – when it comes to protecting works of art as trademarks – and will therefore have to resort to the absolute ground of public policy. But, in any case, whether such registration as a trademark is contrary to public policy will ultimately depend on how the work of art is perceived in the member country and whether registration as a trademark can be understood as a kind of desecration of the work – let us not forget the territorial nature of trademarks – so that, ultimately, the value judgement will be up to the national body, always considering:

  • the extent to which use as a trademark is likely to blur the genuine cultural meaning of the sign concerned and diminish its value in the context of use for cultural purposes;
  • the extent to which the trademark right would prevent free availability, communication, adaptation and new uses of the public domain work;
  • and the extent to which registration would give the applicant an unfair competitive advantage because he could avail himself of positive connotations and associations which the sign already has because of its particular cultural value[1].

To conclude, always better with a practical example, it turns out that the hypothesis we suggested at the beginning of registering the image of “La Gioconda” as a trademark is not, or has not been, so far-fetched or coincidental. The famous Mona Lisa decision of the German Federal Patent Court is a clear example of this: This case concerned an attempt to register the well-known Mona Lisa from Leonardo da Vinci’s painting as a trademark, but was predictably refused because the applicant had failed to demonstrate the required distinctiveness, the Court arguing, in this particular case, that the painting was frequently used with third parties in advertising and, therefore, the average consumer would regard the Mona Lisa as a mere advertising tool and not as an indication of provenance or business origin of their goods or services.

However, the German Court was not prepared, in that particular case, to accept the additional argument that the registration of “La Gioconda” was contrary to public policy, since the appropriation of such a work on the basis of trademark law would not violate the principle that cultural expressions must remain freely available to the public after the expiry of copyright; rather, the invocation of this absolute ground for refusal in cases such as this would require a broadening of its scope.

Rather than asking whether the sign, or the relationship between the sign and the goods or services, is offensive, the conflict with public policy or morality would have to derive from the fact that trademark protection is sought to be used as a vehicle for re-appropriating a sign that has entered the public domain and, consequently, any attempt to enter the public domain by acquiring trademark rights could be considered contrary to public policy.

Be that as it may, what is certain is that we must place value on the protection of artistic freedom and let the authors of such iconic works, may they rest in peace, continue to evoke the essence of the era by promoting their cultural legacy and, in the meantime, continue to contribute – the new artists – to the history of art, which is one of the best disciplines that human beings have created, with its own style. In the same way that companies must give personality and self-expression to their brands.

[1] “Trade mark protection of public domain works: A comment on the request for an advisory opinion of the EFTA Court Case E-05/16 – Norwegian Board of Appeal for Industrial Property Rights – appeal from the municipality of Oslo” European Copyright Society, 1st November 2016.