Che Guevara portrait cannot fulfil trademark function, says court


In Sodisud v Sarl Legende LLC (Case 07/06427, November 21 2008), the Paris Court of Appeal has held that Che Guevara's famous portrait by Korda was incapable of fulfilling the function of a trademark. 

In 1960 a photographer known under the pseudonym 'Korda' took a picture of Che Guevara during a memorial service. In 1995 Korda licensed the copyright in the famous picture to Patrick Magaud for a period of 10 years. Under the agreement, Magaud was allowed to register the picture as a trademark in France and other countries, as necessary. After Korda’s death in 2001, his daughter extended the contract until 2008. In 2002 Magaud licensed the copyright in the picture to Legende LLC for a period of one year. He also registered the picture as a Community trademark for goods and services in Classes 16, 25 and 41 of the Nice Classification (Registration 002 550 036).
Subsequently, Korda's daughter, Magaud and Legende sued several companies in the French courts for copyright and trademark infringement. One of them, a Spanish company, filed counterclaims regarding the validity of the mark (it had previously started cancellation proceedings at the Office for Harmonization in the Internal Market). The Paris Court of First instance ruled in favour of the plaintiffs. The case was appealed to the Paris Court of Appeal.
With regard to copyright, the court had to decide which law was applicable to the facts. It concluded that the applicable law was that in force at the time of the facts (and not that in force at the time of the creation of the copyrighted work). The court also confirmed that the picture was a copyrightable work, even though it had been taken during a public event - especially as it had been modified afterwards. The court thus held that copyright in the picture had been infringed.
The defendant sought the cancellation of the mark on the following grounds, among others:
  • a historical character cannot be appropriated;
  • the mark was registered in bad faith in order to take advantage of a well-known image; and 
  • the mark had been previously registered in Classes 18, 25 and 26 by a German company.
The court rejected these claims, noting, among other things, that the fact that Che Guevara was a historical character was irrelevant. The court also refused to take into account the fact that under Spanish law, a historical character cannot be registered as a trademark without the consent of his or her heirs, since this prohibition was not included in the Community Trademark Regulation (40/94).
Surprisingly, the court referred to a question contained in the defendant's brief, which asked whether a mark such as the sign at issue was valid since a mark is intended to identify the source of the goods and/or services concerned. A court is supposed to decide a case based on the claims raised by the parties, and not based on a hypothetical question. Nevertheless, the court decided to analyze the question as a claim and applied Article 7 of the regulation, even though the defendant’s brief made no reference to this provision. 
The court took into account the fact that the mark consisted of the reproduction of a picture and, as such, was not descriptive of the goods and services concerned. With regard to the issue of distinctiveness, the court considered that the picture was well known internationally and had become an icon of contemporary history. Therefore, the relevant public would not perceive the mark as a sign which designates the origin of the goods and services concerned, but as a political or artistic reference to the work of Korda which glorifies Che Guevara.
Consequently, the court ordered that the mark be cancelled. There was thus no need to consider the issue of trademark infringement.
The defendant was nevertheless ordered to pay damages to Korda's daughter and Magaud for copyright infringement. The court also ordered that:
  • the defendant cease selling the infringing goods; and 
  • the decision be published.
The decision seems to create a new type of relationship between reputation and distinctiveness. If a sign evokes too much to too many, this can justify the cancellation of the mark for lack of distinctiveness. However, one might wonder whether this reasoning justifies the cancellation of the mark for goods in Class 16 (printed matter and teaching materials). 
Richard Milchior, Granrut Avocats, Paris

Unlock unlimited access to all WTR content