Eliminating ‘Aesthetics’ from Copyright Law: The Aftermath of Cofemel

The recent Cofemel judgment of the Court of Justice of the European Union extended the European Union’s (EU) originality criterion (i.e. the author’s own intellectual creation) to the realm of works of applied art. The Court excluded ‘aesthetically significant visual effect’ as a condition of copyright protection. It was condemned as subjective and incompatible with the EU originality criterion. The decision may signal a shift in several national copyright laws, under which requirements relating to ‘aesthetics’ are laid down as a condition to acquire protection. This article will demonstrate that the ‘aesthetics criterion’, as it emerged historically and has been employed in national copyright laws, is associated with a different meaning than it conveys at first glance. The aesthetics criterion designates the elbow room remaining to the author after functional constraints have been taken into account, and thus represents a form of the functionality doctrine in the domain of copyright law. However, to some extent it also excludes – though not uniformly – commonplace designs from the scope of copyright protection. Against this background, this article suggests that the aesthetics criterion can arguably be reconciled with the EU originality criterion. The aesthetics criterion represents a balance struck between the need for copyright protection in the field of applied arts, on the one hand, and competition, on the other. In order not to upset this careful balance, a robust application of the EU originality criterion is advocated, precluding protection not only to functionality, but also to commonplace creations.

Overlapping and Sequential Copyright, Patent, and Trademark Protections: A Case for Overruling the Per Se Bar

Should extant or expired copyright or patent designs (such as those featuring Mickey Mouse, Wonder Woman, and the Coca-Cola bottle) be eligible for trademark or trade dress protection? Or, should they enter the public domain upon expiration of the copyright or patent without regard for their source-indicating capacity? The law is in conflict on this question. Early Supreme Court precedent imposed a per se bar precluding trademark or trade dress protection for designs of extant or expired copyrights or patents. Yet, later Supreme Court and regional appellate court cases deviated from that precedent, creating conflicting jurisprudence and promoting marketplace conditions that undermine trademark law’s purpose and policy ofmaintaining a fair and ordered marketplace. Disallowing trademark protection for nonfunctional source-indicating designs because of their current or past copyright or patent status sets up the possibility for consumer confusion, deception, and fraud in the marketplace. This is precisely the type of marketplace disorder that trademark law is designed to prevent. This Article offers normative justifications for the eligibility of copyright or patent protected designs to receive overlapping and sequential trademark protection, as well as a path for resolving the conflicting jurisprudence. This Article addresses the conflict in overlapping intellectual property protections at the patent/trademark interface and the copyright/trademark interface. At the patent/trademark interface, the per se bar is unnecessary because trademark law’s functionality doctrine properly resolves the concerns with overlapping IP rights, asfunctional designs are categorically ineligible for trademark protection. Unfortunately, the Supreme Court and regional appellate courts use different tests for assessing functionality, yielding inconsistent and conflicting results that are impractical in the new economy. This Article proposes a single functionality test that is more comprehensive than the plethora of existing and conflicting tests currently in use. The proposed test assesses a design’s use in relation to the product and the design’s function in a manner that is less conceptual and more specific to a particular application of the design. At the copyright/trademark interface, the per se bar is also unnecessary for two reasons. First, trademark law’s functionality doctrine resolves the conflict for useful articles. A modified version of the functionality test applied to useful articles precludes trademark-ineligible designs from protection. Second, for character designs and music, it is their specific use that would determine their eligibility for trademark protection. Therefore, the proposed use test would examine that specific use to determine whether the design is being used as a source indicator or as an unlawful attempt to extend copyright protection. The proposedtests at the patent/trademark and the copyright/trademark interfaces provide processes for identifying both functional designs and uses of character designs and music that would be ineligible for trademark protection, further demonstrating that a per se bar is unnecessary. Courts have attempted to ground their reasoning for the per se bar in the copyright and patent law policy that grants the public a right to exploit the subject matter of expired copyrights and patents. This Article posits that trademark law’s public policy for maintaining a fair and ordered marketplace preempts the per se bar’s public policy of a right to copy, rendering the bar inapplicable in the trademark context. There is a presumption running through current jurisprudence that trademark rights must yield to the public’s right to copy, but copyright and patent law are already deemed acceptable incursions on that right. The rules of statutory interpretation, as well as the natural law origin of the right to copy, debunk the presumption that trademark protection must be denied purely because of copyright or patent status. Since there is simply no basis in law or policy for a per se bar of trademark protection, the time has come for Congress or the Court to end the per se bar and resolve the conflict in jurisprudence.

An Autonomous EU Functionality Doctrine for Shape Exclusions

Exclusionary subject matter are often underpinned by public interest considerations. In the case of shapes of products, the Court of Justice of the European Union has aligned the interpretation of the relevant exclusionary provisions within design and trade mark laws. More recently, European jurisprudence within copyright law in relation to conditions of protection has imported the same considerations so as to regulate the protection of shapes of products. This article explores the multitude of doctrinal and policy reasons underpinning shape exclusions and argues that the Court is consciously creating an EU autonomous functionality doctrine within intellectual property law. We also argue that the Court is building a European macro-rationale within these laws namely to ensure that protection does not unduly restrict market freedom and competition.

ZNAČAJAN UTJECAJ OBLIKA PROIZVODA NA VRIJEDNOST PROIZVODA KAO APSOLUTNA PREPREKA ZA REGISTRACIJU ŽIGA

The paper provides a comprehensive analysis of “substantial value rule” as an absolute ground for trademark refusal. Originating from the US “aesthetic functionality doctrine”, the rule took a specific form in the EU. There it was incorporated in Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trade marks – Article 4 (1) (e) (iii), as well as in Regulation (EU) 2017/1001 on the European Union trade mark - Article 7 (1) (e) (iii). Pursuant to “substantial value rule”, signs consisting exclusively of the shape that gives substantial value to the goods are not to be registered as trademarks or, if registered, are liable to be declared invalid. The objective of the paper is therefore threefold: a) to define the rationale of “substantial value rule”; b) to analyze relevant case law; c) to conclude whether a respective rule shall be abolished (providing its purpose may be achieved by other legal instruments without negative side-effects) or kept in the EU trademark law system. Bearing in mind the rationale of “substantial value rule” (on the one hand) and numerous problems that arise whenever “substantial value rule” is applied in practice (on the other hand) the paper provides guidelines for its appropriate interpretation.

Why is the Functionality Doctrine in Trade Mark Law worth Advanced (Re)Consideration?

This article considers the necessity of preparing a comprehensive study, over absolute refusal grounds pertaining to functional signs set in the EU trademark law, which would meet the business community’s need to register non-traditional trade marks. The study aims to define the exact scope of the aforementioned exclusions through objective criteria that can render them a workable tool, distinct from refusal grounds pertaining to distinctiveness, and able to solve problems of overlapping rights. As its specific research methodology, the study adopts comparative results coming from the US trade dress functionality doctrine, and a specific input offered from a ‘law and economics’ perspective, including competition rules related to market definition and substitutability of products.

Non-Traditional Trademarks and the Dilemma of Aesthetic Functionality

As American trademark law has expanded to cover non-traditional designators, the law’s “functionality” doctrine has arguably become the most important bulwark against overly broad trademark rights in the U.S. While the law has a stable analytic framework for “utilitarian” functionality, the same cannot be said of “aesthetic functionality,” i.e., the notion that some product features are so aesthetically pleasing or trigger such specific mental responses among consumers that those features should not be monopolized by one competitor through trademark rights. This chapter explores the aesthetic functionality doctrine in American trademark law, proposing that the most convincing cases for aesthetic functionality are really about consumers’ cognitive and psychological responses, not aesthetics. The chapter proposes that aesthetic functionality should bar trademark protection only for product features related to specific cognitive, perceptual, or aesthetic biases that were widespread among consumers before the trademark owner began its own marketing efforts.

Cybermarks

The commercial development of the Internet has been punctuated with legal disputes over the use of trademarks as domain names, as metatags, as search terms, and as advertising keywords. As in previous disputes in copyright over the legal status of software, these Internet trademark disputes arise from the overlap of communicative and functional symbols in information technology. Such "cybermarks" are not merely indicators of product source, but function both as symbolic indicia for human recognition and as strings of computer code in the operation of automated search and indexing mechanisms. Application of trademark law's functionality doctrine, perhaps with some modest amendment, could begin to resolve disputes over the use of cybermarks.