An artwork by Mr. Peers (Source: Cedricgallery.com)

The case

The case involved a Belgian artist, Cedric Peers, a former marketeer who self-describes his artistic style as "Contemporary, playing with pointillism & pop-art". Indeed, many of his artworks are collages featuring well-known brand logos and trade marks [a sample of Mr Peers' paintings can be viewed here]. The art works at issue often feature naked or scantily-dressed women holding Dom Pérignon champagne bottles and, in some instances, mere outlines of such bottles and their iconic label. The latter paintings were advertised by Peers as the 'Damn Pérignon' series. In addition, Peers was engaged in the sale of clothing items displaying the Dom Pérignon outline.

Moët Hennessy Champagne Services, which holds the Dom Pérignon trade marks, sued for infringement before the Brussels commercial court, alleging that the paintings and clothing items showing (just) the bottle outline infringed their marks.

The Brussels court accepted that the Dom Pérignon trade marks enjoy a strong reputation and, as far as the sales of clothes were concerned, were infringed by Mr Peers. As for their use in the outline paintings, the Court considered that this was use "other than for the purposes of distinguishing goods or services" which, under Article 2.20(2)(d) Benelux Convention on Intellectual Property, may be forbidden if it (i) unfairly profits from or damages the repute of the sign, and (ii) does so without "due cause" [cf. Article 5(5) of Directive 89/104/EEC, the (old) Trade Mark Directive].

The Court observed that Benelux case law on the issue is scarce. The only case more or less on point was a 2011 decision by the District Court of the Hague, where an artist made a Picasso-inspired collage called Darfurnica which centred around a small boy holding a Louis Vuitton bag—according to the court, this did not infringe Louis Vuitton's registered designs [see here, decision in Dutch]. Incidentally, the same case was brought in France, where the outcome was different and Louis Vuitton prevailed [see here]. One wonders to what extent the different outcome might be related to the fact that in France, it was brought as a copyright case.

In the end, the Brussels court asked the Benelux Court of Justice to weigh in on the matter. Put briefly, it asked (i) whether artistic expression can constitute due cause for using a trade mark and (ii) if so, under what conditions [the referring decision, also in Dutch, can be found here].

In a rather concise opinion, the Benelux Court of Justice held that the concept of "due cause" also appears in Article 5(2) of the Trade Mark Directive [providing protection for well-known marks] and that it must be explained in the same manner. It turned to CJEU C-65/12 Leidseplein Beheer [here], where the CJEU established that 'due cause' may also relate to the "subjective interests" of a third party using a trade mark or a similar sign. The Benelux Court then cited Recital 27 of Directive 2015/2436, the (new) Trade Mark Directive, which states that use of a mark "for the purpose of artistic expression should be considered as being fair as long as it is at the same time in accordance with honest practices in industrial and commercial matters".

On this basis, the Benelux Court of Justice concluded that use of a trade mark or a similar sign other than for distinguishing goods or services is allowable, where the artistic expression is the original result of a creative design process which does not aim to harm the trade mark or the trade mark holder.

DAMN Pérignon (Source: Cedricgallery.com)

Comment

To this Kat, the outcome of the decision is not surprising. It seems clear that artists must be free, at least to a certain extent, to use trade marks or similar signs in their work [think of Andy Warhol's iconic Campbell's Soup Cans series]. It also seems fair that there are limits to this freedom where such use is aimed at harming the trade mark or the trade mark holder, though that limit should probably not be applied too strictly so as to allow critical expressions [such as Barbara Kruger's "I shop therefore I am" series].

In a response to the decision Professor Dirk Visser, whose writings taught this Kat a great deal about soft IP, expressed the view that assuming an artistic expression "will probably not be too high a threshold" [here, unfortunately also only in Dutch]. That sounds correct and it is worth adding that commercial expressions also enjoy protection under the European Charter of Human Rights. Thus, the mere fact that an artwork which incorporates a trade mark is sold, or appears on items that are sold, seems insufficient to deny due cause.

A 2016 case also involving Louis Vuitton, decided by the U.S. District Court for the Southern District of New York, might be informative in this respect [see here]. There, the defendant was selling canvas tote bags showing, on one side, the text "My Other Bag" and, on the other, drawings meant to invoke iconic handbags by luxury designers. According to Judge Furman, such use of Louis Vuitton's trade marks was "obviously a joke" and as such allowable. As a matter of policy, that outcome seems opportune, also under European trade mark law.

At the same time, there should be safeguards in place to protect the interests of the trade mark holder. There seems little reason to allow others to profit off a trade mark's reputation where the trade mark, or the product bearing the trade mark, basically is the art work.

The decision by the Benelux Court thus sets a standard for balancing the interests of the trade mark holder against those of the artist in these kinds of cases. Curiously, the Benelux Court did not expressly find that a desire to unfairly benefit from the repute of the trade mark could be a reason to assume infringement—though this may still be subsumed in the holding, since such use also may also harm the trade mark and its holder. Alternatively, a 'functional' approach could be taken to the "original result of a creative design process"-standard, for instance where the cited artistic nature really only covers up an intention to profit by selling posters or canvases showing a well-known brand. Arguably, such use might not meet the standard the Benelux Court of Justice had in mind when formulating this criterion.

Lastly, it is interesting to note that the decision seems symptomatic of a growing structural divergence between trade mark and copyright law. In its recent decision in Spiegel Online [C-516/17, here], the CJEU held that freedom of information and freedom of the press cannot justify derogation from the author's exclusive rights beyond the exceptions provided for in Directive 2001/29, the InfoSoc Directive. Thus, copyright retains a 'closed' system of exceptions to infringement and any balancing of fundamental rights takes place when applying the proportionality test at the enforcement stage.

Trade mark law, on the other hand, contains several open-ended checks on the trade mark holder's exclusivity, such as the due cause requirement here discussed. One might also think of the CJEU's case-law on the functions of the trade mark, which can exempt certain uses from infringement without a specific exception in the Directive or Regulation. That makes trade marks flexible IP rights with infringement regularly being dependent on some balance of interests, in contrast to copyright [Dr Porangaba recently made a convincing argument that European trade mark protection is, to an increasing extent, becoming 'context-specific' – see here]. The decision of the Benelux Court is an example of this more flexible approach to exclusivity, and the field of tension it addresses – between protection of brand reputation and artistic expression – shows clearly the need for such flexibility.

Another British success in China

No, it's not the Olympics, but rather the news in the Scotsman that the Scotch Whisky Association has succeeded in gaining geographical indication protection in China for the term 'Scotch Whisky'. China imports 17 million bottles of Scotch a year.

The IPKat is too busy celebrating this Scottish triumph in traditional fashion to comment.


Fair use take-down victory

The LA Times reports that Stephanie Lenz, a mother who posted a clip of her baby dancing to the artist formerly known as the artist formerly known as Prince's song, 'Let's Go Crazy' has won the first stage of her battle against Universal Music (see earlier IPKat post here). Ms Lenz's clip was removed from YouTube after the site received a takedown notice under the Digital Millennium Copyright Act from Universal, the holder of the copyright in the song. The clip was reinstated after a month, but Lenz sued under the DMCA, pointing to the requirement therein that copyright owners can only demand the taking down of a work if they have "a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law."

Universal argued that copyright holders, in making this assessment, did not need to take into account whether the use made by the subject of the notice was fair use, since fair use is a defence, rather than a legal right. Not so, according to Judge Jeremy Fogel, who states:

"Even if Universal is correct that fair use only excuses infringement, the fact remains that fair use is a lawful use of a copyright. Accordingly, in order for a copyright owner to proceed under the DMCA with “a good-faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent or the law,” the owner must evaluate whether the material makes fair use of the copyright. 17 U.S.C. § 512(c)(3)(A)(v)."

However, he went on the conclude that Lenz was unlikely to win the case at full trial as she would need to show subjective bad faith on the part of Universal, i.e. that when it issued the takedown notice, it knew it was making a groundless threat of infringement.

The LA Times observes that the need to evaluate fair use will make it difficult for copyright owners to use automated 'bots to root out works which borrow from copyright works and issue take down notices ('bots can't evaluate whether use is fair).

The IPKat reckons that this is a good decision. On the whole, copyright owners are likely to be in a better position to evaluate fair use than individuals who post materials, and hosting sites, if forced to evaluate fair use may take a risk-averse strategy that would prevent them from allowing many socially useful works. The IPKat reckons that unless copyright owners are forced to evaluate fair use, many works which constitute fair uses will just disappear if made the subject of take-down notices since only exceptional individuals like Ms Lenz will persevere in getting their work reinstated.