The Copyright / Trademark Interface

The Copyright/Trademark Interface

How the Expansion of Trademark Protection Is Stifling Cultural Creativity

Martin Senftleben

The registration of cultural icons as trademarks has become a standard protection strategy in the field of contemporary cultural productions and plays an ever-increasing role in the area of cultural heritage. Attempts to register and ‘evergreen’ the protection of cultural signs, ranging from ‘Mickey Mouse’ to the ‘Mona Lisa’, are no longer unusual. This phenomenon – characterized by the EFTA Court as trademark registrations motivated by ‘commercial greed’ – has become typical of an era where trademark law is employed strategically to withhold or remove cultural symbols from the public domain. In an extraordinary analysis of the clash between culture and commerce, and imbalances caused by protection overlaps arising from cumulative copyright and trademark protection, this book draws attention to the corrosive effect of indefinitely renewable trademark rights and underscores the necessity to safeguard central preconditions for the proper functioning of the copyright system in society at large: the freedom to use pre-existing works as reference points for the artistic discourse and building blocks for new creations, and the need to ensure the constant enrichment of the public domain.

Emphasizing how overlapping copyright and trademark protection endangers the proper functioning of intellectual property rights in the literary and artistic domain, the author examines whether the intellectual property system is capable of mitigating the risks arising from cumulative protection. Such issues and topics as the following are treated in depth:

• the different configuration of intellectual property rights in accordance with different policy objectives and societal functions, in particular the cultural imperative in copyright law and the market transparency imperative in trademark law;
• problems arising from the registration of cultural icons for use on souvenir and merchandising articles;
• lack of sufficient safeguards in trademark law against cultural heritage branding;
• current scope of trademark rights, including the protection of brand value and communication functions, and the deterrent effect of trademark protection on cultural creativity;
• possibility of a categorical exclusion of contemporary cultural icons and cultural heritage material from trademark protection;
• development of a strict gatekeeper requirement of ‘use as a mark’ to prevent unjustified trademark infringement claims;
• development of robust, culturally based defences against trademark infringement claims; and
• general guidelines for the regulation of protection overlaps in intellectual property law, based on insights derived from the analysis of copyright/trademark over...