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12.28.11

I trolled Jay Jopling into paying the Kingdom of Belgium 1,620 EUR in chump change and all I got was this lousy legal correspondence from his high profile law firm

In much the same way as any person worth their chips will sniff out a zeitgeist only to rebrand it with their own self at the helm (what Elvis and Eminem were to black music, what Jeff Koons is to kitschy artifacts made by little known plebes, what Google and Facebook are to the broad, populist lust for increased sharing and communication between people and organizations alike, etc), so has Jay Jopling grabbed hold of the coat tails of an art world terminology made famous by Brian O’Doherty in the seventies, and ran for gold. In 1993 he started a gallery under this term. In December of 2008, he trademarked it. His registration for “white cube” ends in December of 2018.

Emerging in early 2011, whitecu.be was a critical experiment masquerading as an exclusive, invitation-only artist portfolio site. It ran for less than a year, and is now in the process of being shut down by Jopling and his high profile law firm. The base of their complaint is that the domain name (“whitecu” + the “.be” extension for Belgium) is an infringement on Jopling’s trademark, and that an artist portfolio site which shows up on page six of a Google search is capitalizing on the relevance of an established brick and mortar gallery through search engine optimization.

whitecu.be was given an opportunity to respond to the complaint. This response was written collectively, and without the assistance of lawyers, between November and December of 2011. It was never sent. The danger that Jopling’s move represents for intellectual property and how far one is allowed to stake their claim on language, public content, or turns of phrase shouldn’t need to be spelled out. whitecu.be‘s response, along with a copy of the initial complaint filed against them, follows.

-ED

 

Answer to the Complainant

“[T]he assumption that domain name space is and should be an extension of trademark space . . . is both unwarranted and unwise [and] brings us perilously close to conceding that ownership of a trademark gives one the exclusive right to use the word on the Internet.”

- Professor Jennifer Litman (Reed)

We (‘The Registrant’) reject all claims made by Jay Jopling and his representatives at Finer Stephens Innocent (‘the Complainant’). We move that the Complainant has acted in bad faith in filing this complaint. Further, we move that Article 6(1)h of the First Council Directive 89/104/EEC of 21 December 1988 (‘the Directive’) to approximate the laws of the Member States relating to trade marks directly prevents the Complainant’s infringement claims.

History of the term ‘White Cube’

The history and origin of the term “white cube” and its many usages must be explored. An Amazon search for the term “white cube” (attached as Material One: http://vvhitecu.be/slir/art/MaterialOneA.png, http://vvhitecu.be/slir/art/MaterialOneB.png) does return one link relating to the Mark referred to by the Complainant. Every other result, however, refers to the broader meaning of the term, including book titles published in Europe. The Complainant must have been unable to defend their Mark rights to prevent the publication of these book titles, as they are still available for sale.

The first book in the search result is the most important. It is titled Inside the White Cube: The Ideology of the Gallery Space by Brian O’Doherty, published in 2000. The book contains a series of essays first published in Artforum magazine in 1976. From the Amazon description:

When these essays first appeared in Artforum in 1976, their impact was immediate. They were discussed, annotated, cited, collected, and translated–the three issues of Artforum in which they appeared have become nearly impossible to obtain.

The most important essay in the collection is where the title of the book comes from. Published in 1976, these essays had an enormous impact on the art world. Due to the success and influence of the term they introduced, it is now commonplace for people in the art world to use “white cube” colloquially and mentally when referring to and thinking of art galleries in general.

It is evident that the Complainant’s initial choice to call itself ‘White Cube’ (established in 1993) makes direct reference to O’Doherty’s concept and further purloins his book by calling one of their programs ‘Inside the White Cube’. The Complainant, who has clearly borrowed this Mark from another source, did not originate the term, its concept, or usage and therefore cannot apply the privileges given to the Mark to usages referencing the prior, famous usage of the term.

The second book in the search result is titled New Media in the White Cube and Beyond: Curatorial Models for Digital Art. The book was first published in 2008, well after the establishment of the Complainant and their Mark. There is no evidence that the Complainant pursued the author or publisher of this work, and if the Complainant did so, they completely failed. We hold this to be a pertinent test of the claims of the Complainant.

In addition to the Amazon search results we have attached search results for the phrase “white cube” from the Oxford Art Journal (Material Two: http://vvhitecu.be/slir/art/MaterialTwoA.pnghttp://vvhitecu.be/slir/art/MaterialTwoB.png). To add to this, on the University of Pittsburgh’s PhilSci-Archive we have found a paper called White Cube and Black Box: Irwin, Turrell, and the return of the subject to art and psychology in the 1960s (attached as Material Three: http://vvhitecu.be/slir/art/MaterialThree.png). These results reveal the tip of the iceberg of a multitude of colloquial and academic usage.

For a recent instance of colloquial usage we refer you to an interview with the artist, Ofri Cnaani, published December 14th, 2011 (attached as Material Four: http://vvhitecu.be/slir/art/MaterialFour.png). Rhizome.org, founded in 1999, is a longstanding, prominent website that focuses on the preservation of net art and new media. In the final paragraph of the interview, the artist begins her response by stating, “A lot of the things I do are presented somewhere on the scale between the white cube and the black box”. Droves of examples of similar, casual usage of the term “white cube” are to be found in competent arts circles and publications. The phrase is extremely common as a generic term that refers to certain aesthetic circumstances of art galleries in general, and not to our website nor to the Complainant’s Mark.

For recent usage of the term by an art critic we refer you to a review of “Mon Winnipeg”, an exhibition that took place at La Maison Rouge between June 23rd and September 25th, 2011. The review was published August 7th, 2011 in the Parisian art journal, Œuvres (attached as Material Whatever: http://vvhitecu.be/slir/art/MaterialWhatever.png). Toward the end of the text, the reviewer states, “On est passé du plongeon ethnologique à au regard distancié du white cube. La magie du musée est passée par là.”

It does not take any effort to find numerous other websites focusing or expanding upon on the term “white cube”. We refer you to http://www.nyu.edu/greyart/exhibits/whitecube/patrickhome.html, http://www.societyofcontrol.com/whitecube/, http://en.wikipedia.org/wiki/Brian_O’Doherty, http://www.thewhitecube.net and so on. A quick Google search reveals a plethora of websites on the subject considered as a significant aesthetic and art-historical concept with no relation whatsoever to the White Cube galleries in London.

It is clear, without a reasonable doubt, that the term “White Cube” has a longstanding and older use descriptive of a service. In other words, “White Cube” has meant ‘art gallery’ for 30 years longer than the most recent registration of the Mark in the Benelux Countries. This is a fact that all artists, gallerists, curators, critics, art journalists, academics and ‘informed consumers’ in the art world are aware of. The term has important artistic, colloquial, academic and journalistic meanings that are in wide circulation unrelated to the Complainant and the Mark.

Breach of Article 6(1)h by the Complainant

“White Cube”, therefore, does not solely refer to the Mark. Rather, as defined in Article 6(1)h of the Directive, it refers to an ‘intended purpose’ and ‘other characteristic of goods and services,’ namely, a term for an art gallery. The colloquial and ‘informed’ nature of the term “white cube” is most succinctly demonstrated with the attached (Material Five: http://vvhitecu.be/slir/art/MaterialFive.png). This is a review from an arts advocacy and public relations firm, Argot & Ochre, published on their website on September 12th, 2011. We did not pay for this review, nor did we ask Argot & Ochre to write it. We were not aware of the existence of Argot & Ochre prior to this review. From the very first paragraph:

Not to give a condescending art history lesson that most of us are all aware of anyway, I am nonetheless opening up today’s blog talk by reminding the audience that the term “White Cube” was coined in 1976 by Brian O’Doherty in an Art Forum article titled “Inside the White Cube: Notes on the Gallery Space.” This is that landmark kind of essay that your professors assign you so you can start ruminating on the ills of the modern gallery system and fling wise 21 year-old accusations at the way the commodification of art is eroding its inherent value and lament the general state of aesthetics in the post-modern apocalypse we all inhabit. In the same vein as that last sentence, I introduce Whitecu.be, an online visual arts platform for art-viewing that succeeds at bending my mind, as well as some of the rules. [sic]

The reviewer starts out with a disclaimer indicating just how common the term is, that “most of us are aware” of it. It is evident that the reviewer, an arts public relations specialist, considers an introduction to the history of the term “White Cube” condescending to her audience because its point of origin in the 1976 Artforum articles is commonplace knowledge in arts milieus. It should now be clear that the accusation of infringement is in violation of Article 6(1)h of the Directive, which states:

The trade mark shall not entitle the proprietor to prohibit a third party (we, the registrant) from using, in the course of trade, indications concerning the … intended purpose … or other characteristics of goods or services. 

The Complainant’s accusation of infringement is a breach of Article 6(1)h because our sign, “whitecu”, both represents the intended purpose of the original term as a critical term for an art gallery, and is absolutely a characteristic of an arts ‘good or service’, because the “History of the term ‘White Cube’” (see above) highlights the usage of the term “white cube” as an art gallery.

Bad Faith on the part of the Complainant

The breach of Article 6(1)h is enough to dismiss this claim of infringement. However, we would also like to take the opportunity to point out the bad faith nature in which the Complainant is operating. In Case C-529/07 Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH, the ECJ clearly states:

an intention to prevent others from using similar signs in respect of similar products may be incompatible with such standards [of good faith] if the trade mark owner was, or must have been, aware that others were already legitimately using similar signs, particularly if that use was substantial and longstanding.  

The Complainant clearly acted in bad faith by not mentioning in the infringement claim the well known history of the term “white cube”, which has certainly had substantial and longstanding use prior to the Complainant’s registration of the Mark. The Complainant is fully aware of this prior use, having named one of their exhibition programs ‘Inside the White Cube’, a direct reference to the title of the aforementioned book by Brian O’Doherty.

The Complainant has acted in bad faith and broken Article 6(1)h of the Directive in accusing us of trademark infringement. The terms in which the Complainant has accused us relies on bad faith intent and on both ‘using an identical mark’ and a mark ‘that is likely to confuse,’ and are also false.

Accusation of Bad Faith Intent

The accusation of bad faith on our part is easily resolved. Attached (Material Six: http://vvhitecu.be/slir/art/MaterialSix.png, a tweetbackup.com backup of our twitter account @whitecu_be) are twitter logs from February 11th, 2011. In these logs, through the twitter platform and not on the domain in question and therefore in no way pertinent to the accusations of Complainant, a user questions us. From these logs:

11/02/2011 01:26 @aboatlorry besides, I’m not “WHITE CUBE” – I’m “WHITE CU” from Belgium, nicca

11/02/2011 01:25 @aboatlorry “white cube” was slang for an art gallery long before some art bureaucrat gave it a building

In addition, hosted on our site is correspondence between an ‘art insider’ and us, dated September 13th, 2011 by our email logs (attached as Material Seven, email correspondence). The art insider never confused us with the Mark, but thought that other gallerists would not want to be associated with us because of our name, precisely because our identity as whitecu.be was unmistakably distinct from the Mark. The art insider thought that other gallerists would immediately recognize this obvious distinction and then choose, predictably, to defer to ‘White Cube’ over ‘White Cu’ out of conformism. The terms ‘White Cube’ and ‘White Cu’ are undeniably distinct apart from other considerations mentioned here, after all.

Our response was clear.

why do you think other galleries won’t use the site when there are already eight galleries using it (and more on the horizon)? Not all gallerists kowtow to White Cube in London.

A single building that houses art in London doesn’t own the critical/slang phrase “white cube”. That phrase was around long before Jay Jopling discovered it. Besides, we’re “whitecu” with a .be extension – we’ve never once identified as “White Cube” at any point in the site’s history!

We also refer you again to Material Five. In this case, there was no confusion between us and the Complainant by the reviewer, and if we were acting in bad faith, we would have encouraged confusion. Our intellectual and aesthetic interests lie in critically vamping on and further developing Brian O’Doherty’s concept of the white cube. To us, the Complainant’s galleries represent a failed appropriation of the term. Any further accusations of our supposed intent to benefit from the Complainant’s reputation are completely rejected by us.

Furthering this point, we refer you to screenshots of a Google search for the phrase “white cube gallery” provided by the Complainant. You will immediately notice that there are no search results pointing to our website in these screenshots. It is clear from the search engine results provided by the Complainant that we have not been trying to optimize our website to benefit from their reputation. Our website does not appear in search results for the search keywords that the Complainant has submitted as important to their website because we are not (and never were) competing with the Complainant for those search results to begin with.

There was never a point where we intended to confuse anyone (more below), but when the issue of supposed similarity did come up, we flatly rejected any association, acting not only in good faith, but out of a strong desire to distance ourselves aesthetically and intellectually from the Complainant’s shortcomings in relation to the term “white cube” when considered as a beacon of criticality and institutional critique.

Complainant’s accusation of Identical Mark and Identical Goods and Services

It is clear that the Complainant does not truly believe this accusation, as they introduce ‘likelihood of confusion’ as a backup method for accusing infringement. But we will take this accusation seriously.

The Complainant, in another gesture of bad faith, misrepresents the findings of Case C-291/00 LTJ Diffusion SA vs. LTJ Diffusion SA Sadas Vertbaudet SA. While it is true that the emphasis on the particular is brought up in the case, it is only to balance the court’s emphasis on the overall understanding of the mark. The ECJ says,

a sign is identical with the trademark where it reproduces, without any modification or addition, all the elements constituting the trademark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer

Therefore, the real question comes down to whether an ‘average consumer’ would or would not notice the difference between our website and the Complainant’s. The suggestion that an average consumer would not notice the difference between our website and the Complainant’s is frivolous and hard to believe on several points. In Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v. Klijsen Handel BV, the ECJ states concretely:

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect.

As demonstrated above, an ‘average consumer of the category of products’ in question (the arts), someone who is ‘reasonably well-informed’ and ‘reasonably observant’, is able to tell the difference between 1) the ‘famous’ White Cube Gallery, 2) the conceptual, journalistic, aesthetic, art-historical and colloquial meaning of the term “white cube”, and 3) our website whitecu.be, not a gallery at all but a collection of portfolios for artists located entirely on the Internet. We find the Complainant’s insinuation that an average consumer of the arts would not be able to tell the difference between our website and their Mark to be both disingenuous and highly insulting to the intelligence of ‘reasonably well-informed’ arts consumers. The current Internet user is sophisticated enough to understand that images seen on a tumblr or blog or Facebook, in certain circumstances, are not the work of the poster, but a ‘curated’ collection of that user’s ‘likes’, and also understands that this person is not an art gallery. Clearly we are not to believe that a ‘reasonably well-informed and reasonably observant and circumspect’ consumer who can navigate these distinctions would suddenly lose this ability upon reaching our website.

In any case, if an Internet-illiterate person, and therefore not an average consumer of the category of products concerned, were to believe the Complainant’s Mark and our sign to be identical, this would still not be infringement. In Case C-59/05 Siemens AG v VIPA GmbH, the ECJ declares:

Article 3a(1)(g) of Council Directive 84/450 [as amended] must be interpreted as meaning that, in circumstances such as those in the main proceedings, by using in its catalogues the core element of a manufacturer’s distinguishing mark which is known in specialist circles, a competing supplier does not take unfair advantage of the reputation of that distinguishing mark.

Here, the bar of understanding is set even higher to “specialist circles” rather than “average consumers”. If one were to erroneously agree that the Complainant’s Mark and our sign are identical, the ECJ still states that because the term “white cube” has a specific meaning in specialist circles (as we demonstrated amply in “History of the term ‘White Cube’”), we are not taking unfair advantage of the reputation of that Mark. The reputation of the Mark sits on the coattails of over 30 years worth of historical dialogue on the term “white cube” based in specialist circles, and, of course, among a broader field of arts consumers as well.

We also dispute that we provide Identical Goods and Services as the Complainant. Services provided by the Complainant and services provided by ourselves are not even remotely similar in appearance nor in self-description. White Cube the art gallery and whitecu.be the Internet site are two different things entirely, both in respect to Marks and in respect to Goods and Services. No attempt to conceal this self-evident distinction has ever been made. Unless the Complainant is prepared to argue that working with images constitutes Identical Goods and Services, and is therefore prepared to ban all use of the word “White Cube” in any book, television show, film, home video, poster, photograph, postcard, greeting card, documentary, graffiti, doodle, etc., then there should be no serious discussion of Identical Goods and Services. The Complainant is a traditional art gallery. We host Internet portfolios of artists in a manner similar to companies like Cargo Collective. We absolutely reject Identical Goods and Services. In this case, again, if non-average Internet-illiterates do find our marks to be identical, in Case C-323/09 Interflora Inc., Interflora British Unit v Marks & Spencer plc, Flowers Direct, the ECJ first of all recalls that the use by a third party of a sign identical to the trademark for identical goods or services for which the trademark is registered (“double identity”), can only be prevented if that use will have an adverse effect on one of the “functions” of the trademark. Certainly an Internet arts-portfolio website does not have any relationship to, nor does it adversely affect, a brick and mortar gallery. Both have entirely different scopes and functions. Both are in different fields and could not ever compete or detract from each other by use of identical Marks, not to mention non-identical ones, as is the case here.

Complainant’s accusation of Likelihood of Confusion

An aspect overlooked by the Complainant is the tenth recital in the preamble to the Directive, which states:

whereas the ways in which likelihood of confusion may be established, and in particular the onus of proof, are a matter for national Procedural rules which are not prejudiced by the Directive

Therefore, in addition to the ECJ ruling (see below), we must also defer to the Uniform Benelux Law on Trademarks. Article 13a of the Uniform Benelux Law on Trademarks adopts the concept of resemblance between marks, rather than that of likelihood of confusion, in defining the scope of the exclusive right conferred by a trademark. Therefore, Likelihood of Confusion concerns should not even come into consideration in countries (Belgium) adhering to the Uniform Benelux Law on Trademarks. With the Uniform Benelux Law on Trademarks, article 13(2) states:

… use of a mark or a similar sign shall mean, in particular:

(a) the affixing of the sign on goods or on their packaging;

(b) the offering, putting on the market or stocking of goods for such purposes under that sign;

(c) importing or exporting the goods under that sign;

(d) using the sign on business papers and in advertising.

Under the Uniform Benelux Law on Trademarks, which is to be referenced in these circumstances according to the tenth recital in the preamble of the Directive, the ‘likelihood of confusion’ test is replaced by a ‘use of a mark or a similar sign’ test. It can therefore be considered that the ‘likelihood of confusion’ accusation brought by the Complainant is not even valid. We have done nothing that resembles anything whatsoever near the meaning of similarity in article 13(2), as we do not even have commercial goods for sale.

To further clarify, the ECJ ruled directly in Case C-251/95 Sabel BV v Puma AG about the Benelux notion of similar and associated signs. In Sabel v Puma, contrary to what the Complainant would have you believe, the ECJ held that a mere mental association between the sign and the trade mark was insufficient for there to be infringement under Article 5(1)(b), and confusion as to origin or source was necessary, and also clears up how the Uniform Benelux Law on Trademark is to be enforced. The ECJ states clearly:

the mere association which the public might make between two trade marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion within the meaning of that provision.

There is no demonstrable evidence or proof of confusion of origin or source. Materials One, Two, Three, Four, Five, Six and Seven clearly show no confusion.

Additionally, according to the ECJ in Lloyd Schuhfabrik Meyer & Co GmbH v. Klijsen Handel BV,

account should be taken of all relevant factors, and in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services

In this case, the term “white cube”, as amply demonstrated in “History of the term ‘White Cube’”, does indeed contain an element descriptive of the goods or services, a description of an art gallery. The fact that the Complainant’s Mark is simply a descriptive term enjoying high colloquial, academic, journalistic and art-historical use must be taken into consideration.

Conclusion

The Complainant has acted in bad faith and has breached Article 6(1)h of the Directive by claiming that we have infringed their Mark. Their accusations of bad faith, identical marks and likelihood of confusion simply don’t stand up to the test of common sense, not to mention legal precedent. Furthermore, as our epigraph implies, no logical court would support the move to domain name infringement on trademarks, especially in the circumstances of a term already ingrained in the common language of the audience. It would be as if the Weather Channel were to ban the use of the word “weather” on any other website in the world.

Please see Shiveh Roxana Reed, Sensible Agnosticism: An Updated Approach to Domain-Name Trademark Infringement, 61 Duke Law Journal 211 (2011). Available at: http://scholarship.law.duke.edu/dlj/vol61/iss1/5

VIEW INITIAL COMPLAINT HERE

 

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