Abstract

In the intellectual property (IP) system, overlaps of exclusive rights stemming from different protection regimes can easily lead to discords, if not a cacophony. The invocation of protection under one protection regime may erode checks and balances in the other regime involved. If trademark protection is an element of the rights cumulation strategy, it may also extend the life of other rights with temporal limits, such as copyright. Not surprisingly, the US Supreme Court warned in Dastar that overlapping trademark protection can have a corrosive effect on the “carefully crafted bargain” under which, once the copyright monopoly has expired, the public may use the work at will.[1] The Court of Justice of the European Union (CJEU) expressed similar concerns in Hauck/Stokke where it explained that the functionality doctrine in trademark law served the purpose of preventing the exclusive and permanent right which a trademark confers “from serving to extend indefinitely the life of other rights which the EU legislature has sought to make subject to limited periods.”[2]

Despite these statements, a clear boundary line between copyright and trademark protection is missing. Character merchandising leads to cumulative copyright and trademark protection of contemporary cultural symbols. Trademark rights to cultural heritage symbols may be granted once distinctive character has been acquired through use in trade. The situation differs markedly from the status quo reached in the area of patent/trademark overlaps where technical functionality prevents the cumulation of exclusive rights. Similarly, aesthetic functionality can lead to the separation of trademark and industrial design protection.

Against this background, the lecture will address strategies – from the denial of trademark rights to strict infringement criteria, robust defences and restrictions on remedies – to prevent the cumulative exploitation of copyright and trademark rights from becoming excessive. It will culminate in the overarching insight that double rights entail double obligations. Only if the rights holder is obliged to safeguard the balance of all IP regimes involved, the cumulation of IP rights can be deemed acceptable. In practice, this means that the cumulation of rights reduces exploitation options that are readily available. Making mixed IP portfolios less attractive in this way, the risk of disharmony in the choir of IP rights can be minimized.

[1] US Supreme Court, 2 June 2003, Dastar/Twentieth Century Fox, 539 U.S. 23 (2003), 33-34.

[2] CJEU, 18 September 2014, case C-205/13, Hauck/Stokke, para. 19-20.

Bio Speaker

Martin Senftleben is Professor of Intellectual Property Law and Director, Institute for Information Law (IViR), University of Amsterdam. His activities focus on the reconciliation of private intellectual property rights with competing public interests of a social, cultural or economic nature. Current research topics include platform and AI regulation in the EU, the preservation of the public domain of cultural expressions, the future of quality journalism and media diversity, and the impact of personalized advertising on supply and demand in market economies.

Professor Senftleben is a member of the Copyright Advisory Committee of the Dutch State. He provided advice to WIPO in several trademark and copyright projects. He is the President of the Trademark Law Institute (TLI), former President of the European Copyright Society (ECS), a member of the Executive Committee of the Association littéraire et artistique internationale (ALAI) and the International Association for the Advancement of Teaching and Research in Intellectual Property Law (ATRIP). As a visiting professor, he was invited to the National University of Singapore, the Engelberg Center at NYU Law School, the Oxford Intellectual Property Research Centre, and the Intellectual Property Research Institute of Xiamen University. His numerous publications include Copyright, Limitations and the Three-Step Test (2004), European Trade Mark Law – A Commentary (with Annette Kur, 2017) and The Copyright/Trademark Interface (2021). As a guest lecturer, he provides courses at the Centre for International Intellectual Property Studies (CEIPI), Strasbourg, the Munich Intellectual Property Law Center (MIPLC), the Jagiellonian University Krakow and the University of Catania.