ARTISTIC USES OF TRADE MARKS IN EU LAW: THE NEED FOR THE U.S. Rogers v Grimaldi DOCTRINE? A growing number of scholars have drawn attention to need to protect the public domain and cultural follow-on innovation, which is threatened by protection of non-traditional marks.1 These scholars oppose trade mark registration in the first place, advancing valuable academic proposals in this regard. This paper contributes to these debates but goes beyond the existing scholarship by arguing that it is a unlikely that legislators will undertake a volte face regarding the trend towards statutory protection, and proposing instead to rely on the newly created defence of artistic use as a means for preserving the cultural significance and inherently valuable expression of signs that become subject of trade mark registration. It argues that existing doctrinal precedence of permitted uses of EU trade marks will not help as their focus is entirely on the private interests of proprietors. It proposes instead adopting the Rogers test,2 which exists in U.S. case-law as a tool for balancing competing interests in disputes involving trade marks in expressive creations, as a EU framework for incorporating other interests and values in deciding non-infringing artistic uses that implicate fundamental freedoms such as freedom of the arts and freedom of expression. The 2015 EU trade mark law reform introduced new limitations to the use of registered marks, one of which relates to non-infringing use for artistic expression. This expressive use defence to infringement is also bolstered by the introduction of a general obligation to apply the EU Trade Marks Directive “in a way that ensures full respect for fundamental rights and freedoms, and in particular the freedom of expression.”3 These changes were hardly due to legislators’ sensitivity to the artistic and expressive interests of creators, consumers and the general public but largely due to scholarship calls for EU reforms to stress the importance of the need for providing more breathing space for values other than private interests in the system of undistorted competition underlying EU law.4 There are nonetheless no examples or illustrations of the type of non-infringing artistic or expressive uses of registered Martin Senftleben, “Towards a New Copyright/Trademark Interface –Why (And How) Signs with Cultural Significance Should be Kept Outside Trademark Law” in Graeme Dinwoodie (ed), Research Handbook on Trademark Reform, (2021, EE) p.130. See also the following articles published in Irene Calboli and Martin Senftleben (eds), The Protection of Non-Traditional Trade Marks, (OUP, 2019): Martin Senftleben, “A Clash of Culture and Commerce: Non-Traditional Marks and the Impediment of Cyclic Cultural Innovation,” Lisa Ramsey, “Non-Traditional Trade Marks and Inherently Valuable Expression,” and Katya Assaf-Zakharov, “Non-Traditional Trademark Protection: A (Non-Traditional) Means of Cultural Control.” 2 Rogers v Grimaldi, 875 F.2d 994 (2nd Cir. 1989). See also, VIP Products LLC v Jack Daniel’s Properties, Inc, 953 F.3d 1170 (9th Cir. 2020) (affirming the application of Rogers beyond titles and also to the use of trade dress elements to parody a registered mark). For the district court’s decision on remand granting judgement for the defendant, see 2021 WL 5710730 (D. Arizona, 2021) (unreported). An appeal to the 9th Circuit has been filed. 3 Recital 27, TMD. 4 Martin Senftleben et al, “The Recommendation on Measures to Safeguard Freedom of Expression and Undistorted Competition: Guiding Principles for Further Development of EU Trade Mark Law”(2015) 6 E.I.P.R.37 1 trade marks that EU legislators envisaged and which may be permitted even where their proprietors can establish a likelihood of infringement. However this absence of legislative illustrations arguably provides extensive leeway for EU courts and tribunals to develop much-needed defences within the growing intersection of intellectual property rights such as trade marks and freedom of expression. This intersection is only going to become more widespread in the light of significant changes to the EU concept of a registrable mark, which after 2015 allows for flexibility in the technical means of representing and claiming an almost unlimited range of subject-matter as trade mark including such nontraditional marks as scents, sounds, taste, touch and multimedia. Non-infringing artistic uses of trade marks are arguably a positive legislative development since these non-traditional marks not only raise important competition concerns but also contain highly relevant expressive content that artists, competitors, consumers and the general public may use to communicate ideas or opinions. With no legislative guidance however, it is difficult to know several questions that govern the potential scope of this newly created artistic use defence, namely its relationship to the infringement analysis (Does the defence apply only after a proprietor has proved the risk of infringement, or does it apply as a factor within perhaps an appropriately modified infringement analysis?), what the relevant circumstances are for finding that the defendant is indeed making artistic use (Does the defence require objective or subjective facts for establishing a defendant’s artistic motives?), what factors are relevant for finding expressive content.
