The London Skyline - an IP view
The famous London skyline is constantly evolving with new buildings such as The Shard, "The Walkie Talkie" and "The Cheesegrater" adding to the more traditional sights of St Paul's Cathedral, Big Ben and the Houses of Parliament. Whilst gazing out of the window of our Riverbank House offices, we ask ourselves what IP rights protect these familiar London icons?
The first IP right to consider is copyright. In the Copyright, Designs and Patents Act 1988 ("CDPA"), copyright may subsist in works of architecture, which include "buildings" or "models for buildings". In turn, a building is defined as including any fixed structure and a part of a building or fixed structure. In the UK, there is no need for formal registration. Copyright therefore arises automatically, provided that the work is original, recorded and the result of some effort (all of which have fairly low thresholds). Because buildings and models of buildings are considered to be artistic works, they do need to have some artistic merit to take advance of copyright protection. However, architectural plans or drawings are graphic works, which are protected irrespective of artistic quality.
The architect is generally the owner of any copyright in the plans and the building created by the plans, unless there is an agreement to the contrary or he creates them as an employee during the course of his or her employment, in which case the employer will be the owner. If the architect works on a commission basis, the architect will still own the copyright but there may be an implied licence for the company commissioning the work to use it. If the commissioner of the work wants to own the copyright, they should ensure that it is assigned by contract. It is important to have this discussion at the outset.
Copyright in a building or building model or plan lasts for the life of the architect plus 70 years. Accordingly, the current St Paul's Cathedral, which was famously designed by Sir Christopher Wren who died in 1723, has been out of copyright for some time. Since 1938, however, the City of London Corporation has operated a unique policy known as the "St Paul's Heights" to protect and enhance important local views of the Cathedral from the South Bank, Thames Bridges, and certain points to the north, west and east. Anyone wishing to develop within the area needs to satisfy planning restrictions that the view will be protected. The distinctive wedge of the "The Cheesegrater" was specifically designed with this in mind. This creates an area of clear sky between the new building and the dome of St Paul's and thereby retains the much-loved view of the cathedral from the West (i.e. up Fleet Street).
Newer buildings such as The Shard still retain copyright protection. Previously, under s52 CDPA, if the artistic work in a building had been exploited with the licence of the copyright owner to make articles by industrial process (e.g. mass-produced miniatures) and these were marketed in the UK, the copyright protection would only last 25 years. However, this section is being repealed with effect from 28 July 2016 so the full term of 70 years copyright protection will apply (see our blog here).
Freedom of Panorama
In the UK, there is a specific defence to copyright infringement (known as "Freedom of Panorama") covering some uses of the London skyline. Section 62 CDPA allows third parties to take photographs or make films incorporating buildings or other works of artistic craftsmanship that are permanently situated in public places or premises that are open to the public. Similarly, third parties can broadcast a visual image of these buildings and communicate such photographs to the public without permission from the copyright owner.
The exception does not extend to making a 3D reproduction of a building. It is therefore still an infringement of copyright to make another building which copies or incorporates a substantial part of a building (or part of a building) protected by copyright and this is assessed on a qualitative basis. However, it should be remembered that copyright protects the expression and not the idea so general architectural ideas or concepts may be applied and developed without risk of infringement.
Is the position the same in other countries?
The short answer is no. Article 5 of the InfoSoc Directive(1) lists Freedom of Panorama in its optional exceptions and limitations to copyright infringement. The German defence(2) only allows the public to make pictorial representations of what is visible from the street (the "freedom of the streetscape" defence). Other countries such as Denmark, Sweden and Finland have exceptions that only cover buildings (not other works of art) and Romania, Bulgaria and Slovenia only have an exception for non-commercial use.
Countries such as France, Greece and Italy have chosen not to implement the defence at all to date. This leads to a peculiar situation at the moment regarding the Eiffel Tower in Paris. It was built back in 1889 so copyright in the building itself has expired and citizens are free to take photographs of it during the day. However, the light system that illuminates the tower at night is newer and considered to be a work of art so photographing it still currently requires permission from the Eiffel Tower's operating company. However, the French parliament is currently considering the introduction of a limited non-commercial exception for individuals, at least in relation to architectural works and sculptures permanently located in public roads.
Freedom of Panorama under threat?
The Freedom of Panorama defence has recently become the subject of scrutiny from the European Parliament and European Commission.
MEP and Pirate Party member, Julie Reda, published an "own initiative" Report in Jan 2015 on the implementation of the InfoSoc Directive. Her original proposal was that the Freedom of Panorama exception should be made mandatory in all Member States. However, the amended version approved by the Legal Committee in July 2015 recommended that the commercial use of photographs of public buildings should always be subject to authorisation from the author. On 9 July 2015, the European Parliament removed the proposal to restrict Freedom of Panorama and the EU Commissioner, Günther Oettinger, stated that the EU would not limit Freedom of Panorama, so that "[p]eople can take pictures of whatever they see in public places". Nevertheless, in December 2015, the EU Commission Communication "Towards a modern, more European Copyright framework", stated that the Commission intends to clarify the Freedom of Panorama exception in order to take into account new dissemination channels and has a pending public consultation seeking views on the impact of a harmonised exception across the EU.
We therefore wait to see what concrete proposals the Commission comes up with this year and whether these require an amendment to the InfoSoc Directive. Commercial photographers and filmmakers may need to change their practices if the defence is limited to non-commercial use of photographs of famous buildings. If they can no longer rely on the Freedom of Panorama defence, they will need to obtain licences to include buildings in their footage or exclude them from their stock imagery. The Commission will also need to consider any distinction between commercial and non-commercial use to avoid introducing unnecessary uncertainty. For example, as Julia Reda has pointed out, many individuals post their holiday snaps on Facebook or Instagram, and in doing so, agree to commercial Terms and Conditions. Would this everyday use fall within the revised exception?
Other copyright issues
There may be additional copyright protection in any logos or artwork visible at the building. However, there is an exception in s31 CDPA for the "incidental inclusion" of such items in photographs or film, for example if the inclusion is of secondary importance and not the focus of any shot. There is also the paternity right (a so-called "moral right"), which gives the architect the right to be identified on graphic works or photographs issued to the public representing any building that he or she has designed.
The buildings in the London skyline might also be protected by a number of forms of trade mark registration.
The building officially known as 30 St Mary Axe is one of London's most widely recognised examples of contemporary architecture and, because of its unusual appearance, it has affectionately become known as "The Gherkin". Tower Properties (Luxembourg SARL) has a registered UK series mark for "30 ST MARY AXE" (UK2591413). However, it has also registered a number of marks (e.g. EUTM 010202257, EUTM 11119898 and UK 3099171, 2591348 and 2631317) for "THE GHERKIN" and "GHERKIN". This raises interesting questions about fair ownership of the marks because these names weren't devised or developed by Tower Properties or any of the other companies associated with the buildings but the general public.
The marks are generally registered in various classes, including class 37 for services such as "property development", "real estate development" and "building maintenance services". However, none of the marks cover the product i.e. the building itself, perhaps because of registrability difficulties such as proving that the mark does not consist exclusively of the shape of the product or a shape which is necessary to achieve a technical result or provide substantial value to the product.
Many other of the newer London buildings have similar nicknames, which might also be registered as trade marks, provided they also satisfy the usual requirements for registration such as distinguishing the goods or services of one undertaking from those of another.
Tower Properties (Luxembourg SARL) is also the registered owner of shape marks for the Gherkin:
There have been a number of recent UK and EU Court cases that illustrate the potential difficulties in registering and enforcing these sort of 3D shape marks: (i) the shape of the four finger KitKat bar has been held to be devoid of distinctive character(3); (ii) the shape of the newer form of Coca-Cola bottle has been refused registration because it does not possess any characteristics that distinguish it from other bottles available on the market(4); (iii) UK and EU three-dimensional trade marks representing the shape of London taxis have been held invalid because they are a variation on the typical shape of a taxi, not inherently distinctive and not perceived as identifying the origin of goods(5). Marks that are devoid of distinctive character can still be registered if they have in fact acquired a distinctive character as a result of use in the market place. However, the threshold is high because the applicant must prove that the relevant class of persons perceive that the mark alone (as opposed to any other branding) identifies the particular undertaking from which the goods or services originate(6). A further difficulty in obtaining an EU-wide registration for a 3D shape (such as the Lindt bunny) is the need to prove acquired distinctiveness through use in ALL of the Member States(7).
The CJEU in the Apple v Deutsches Patent case(8) held that a 3D representation of the internal layout of a retail store was, in principle, capable of registration as a trade mark. This shows that the CJEU is willing to recognise non-traditional signs and might also be amenable to considering applications to protect the exterior of the building. In order to function as a trade mark, however, the building must distinguish the goods or services of one undertaking from those of another e.g. where it departs significantly from the norm. One possible example might be whether the exterior of famous and unusual Lloyds Building distinguishes the insurance services provided by Lloyd's of London from those of others? However, it is harder to imagine any practical use for this mark, as opposed to the desire for Apple to protect others from copying the distinctive design of its stores.
Marks which consist exclusively of the shape of goods themselves or a shape which is necessary to obtain a technical result are also excluded from registration and this cannot be rectified by acquired distinctiveness. Therefore, buildings that have an exclusively functional shape might fall foul of this rule. For example, is the shape of The Walkie Talkie necessary to maximise the building's square footage from the footprint? Is The Gherkin's swirling striped pattern exclusively the result of the building's energy-saving system which allows the air to flow through the spiralling wells? Could one argue that the design of the Lloyd's building (or "Inside-Out Building"), with its service structures on the outside, is exclusively functional?
Kent Gardner, Chief Executive Officer of Evans Randall, previous co-owners of the Gherkin, has told Fieldfisher: "The idea that a building can be a brand is comparatively new but it’s one that we as building owners have recognised for some time. We believe that the commercial value of a property is determined not merely by its income stream or by capital appreciation. It can also be a function of its brand, its design or its iconic appearance. That is why during our ownership of the Gherkin we trademarked its nickname and distinctive shape. As investors we wanted to protect inherent value from potential erosion by inappropriate use of the asset’s name, appearance or any other manifestation of its unique brand.”
In general, the person or entity that uses the trade mark should be the owner. After all a trade mark is not a trade mark until it is used in connection with goods or services on the market. The party who controls the nature and quality of the goods and services used in connection with the mark should therefore be named as the trade mark owner for registration purposes. There might be some debate about whether this would be the owner or the architect of any building. However, in the event of a dispute, it might be possible to demonstrate to the Trade Marks Registry that a party has wrongfully tried to appropriate the brand, either because the application was made in bad faith or on the basis of prior passing off rights where a reputation already exists (s3(6) and s 5(4) Trade Mark Act 1994). Marks can also be refused under Article 6septies (Paris Convention) where they are applied for by an agent or representative without authorisation.
The corporate branding of major buildings is an ever-increasing practice. New Yorkers and those frequenting Canary Wharf are used to landmark buildings showcasing brands through neon signs and lighting. However, architects have been developing ingenious designs to advertise their products for years. All Londoners will be familiar with the OXO Tower, which was re-built in 1929 when owned by the manufacturers of OXO beef stock cubes. After permission for an illuminated advertisement was refused, the tower was built with 4 sets of windows spelling out ‘OXO’, which are lit at night and create an identifiable piece of branding that's become something of a local icon. The London Eye also courted controversy and a dispute with Lambeth planning applications committee in 2011 when it painted one of its capsules in the corporate orange colour of its then sponsor, EDF.
Third parties therefore need to consider obtaining consent from trade mark owners to incorporate this type of branding in any photographs or films of these buildings. It is debatable whether the photograph or film uses the signs as a trade mark or affects the functions of the trade mark, which are requirements for trade mark infringement. It will also be necessary to consider whether the third party use relates to the goods or services for which the trade mark is registered or whether there is a risk of dilution or "free-riding" on the reputation of the registered brands. All of this will depend on the particular use of the mark in each individual case.
Some iconic buildings become known to the public, over time, as representing a particular business. Well-known examples are Old Trafford and Manchester United and The Lloyd's Building and Lloyd's of London. A third party that uses an image of these well-known buildings in its own advertising might therefore run the risk of misrepresenting to the public that it is in some way associated with or endorsed by the business that is historically connected with the building. This is unlikely to occur, however, if the building is used in a way that is incidental to the main advertisement messaging or there is a clear disclaimer that the advert is not endorsed or licensed by the connected business.
Certain elements of a building may not qualify for copyright protection but have sufficient novelty and individual character to be protected as a design. In general, it is a relatively simple and inexpensive process to obtain UK registered design protection or Registered EU Design protection for the outward appearance of a product (or part of it) provided that the design is not dictated exclusively by its technical function. Architects need to be careful when using CAD technical drawings to apply for designs, however, because the Supreme Court in the recent Trunki case has held that their inherent shading can be a critical element of the design(5). Registered design protection can offer protection for up to 25 years (subject to renewal every 5 years) and prevents unauthorised third parties from making or putting on the market products which incorporate the design or a design that does not create a different overall impression.
Unregistered Design Right might also cover the original 3-dimensional shape of a non-artistic building and this protection arises automatically upon the creation of the original design (i.e. one that is not commonplace in the design field at the time of its creation). An unregistered design would allow the owner to prevent others from making articles that are the same or substantially the same as the design or dealing with such articles knowing that they are infringing. Generally, an element of copying is required but this can be inferred if the articles are similar.
We sometimes take the beauty of the London landscape for granted when going about our day to day lives. However, we wait to see if the European Commission continues to allow it to be shared by commercial photographers, broadcasters and tourists alike. Also whether Trade Mark Registries and Courts might allow building owners to obtain and enforce non-traditional trade marks covering the iconic shape of some of our most striking buildings.
(2) s59 German Copyright Act
(3) EWHC 16 (Ch)
(5)  EWHC 52 (Ch)
(7)Chocoladefabriken Lindt & Sprungli AG v OHIM (C-98/11)