Marion Lucattini July 25 2022 Almost automatic restriction of copyright protection in France for certain industries? MIIP MADE IN IP | Intellectual Property - France Marion Lucattini Intellectual Property IntroductionFactsDecisionCommentIntroductionThe premise of copyright dates back to the 15th century, with the invention of printing. At that time, copyright as such did not exist; instead, it was a system that enabled the exploitation of intellectual works to be reserved for printers and booksellers. It was not until the 18th century that an exclusive property right on intellectual works was established.French copyright refers to the notion of "work of the mind", which can take different forms – for example:books;paintings;films;musical works; andadvertising creations or slogans.Over the years, copyright has grown in power, offering holders powerful protection over their creations. Indeed, it is a right that can be categorised as "strong" insofar as its only conditions are that the work must be original (ie, it must bear the imprint of the author's personality), and that it must be put into form (ie, ideas cannot be protected); no other particular criterion is required and filing is not mandatory.The scope of the rights resulting from such works is particularly delimited, with a distinction between moral rights (ie, perpetual, inalienable and indescribable rights) and economic rights (ie, transferable rights that enable the author or their successor to prohibit the exploitation of the work by third parties in any form whatsoever). It should also be noted that the transfer of copyrights, by virtue of the IP Code, must be carried out in a particular manner in order to be valid, failing which it will be judged null.In recent years, there has been a tendency for the perimeter of application of copyright to be restricted in certain sectors of activity, which has been the subject of much debate. This is notably the case:in the field of perfumery – fragrance cannot be protected under copyright because it is the result of technical knowledge and a particular "know-how";(1)in the journalism sector – the journalistic technique seems to prevent any possible protection under copyright.(2)In a recent case, the judges prevented copyright from being applied to the creations of a communications agency – namely, the slogan "we love cycling as much as you do".(3)FactsBUG is a communications agency offering services including visual identity, publishing, packaging, web design and multimedia, architecture and environmental design, and corporate communication in all fields and on all media. IXOW France and IXOW International (IXOW) are bicycle equipment manufacturers offering accessories such as anti-theft devices and brackets for the storage and transport of bicycles for sale both directly and via distributors.In 2016, IXOW called on BUG to provide a visual identity and communication strategy. The companies accepted BUG's quote of €30,000 (not including tax), and BUG sent invoices to IXOW International.IXOW then entrusted BUG with the design of new packaging and the follow-up of the production of their website (which had been developed by the company PEPPER). BUG's service was again quoted and accepted.BUG stopped providing serves to IXOW after five invoices went unpaid (a total amount of €20,540 (not including tax)). However, IXOW continued to exploit BUG's work and went on to develop its site with PEPPER.BUG sued IXOW and PEPPER on the grounds of copyright and unfair competition.DecisionThe judges considered that no copyright was vested in BUG's creations. Even though they made it possible to compensate for the absence of copyright protection via freeriding, the decision points to the fact that while the provisions relating to copyright can be invoked, it is increasingly difficult to win a case on that ground. Therefore, it would be highly advisable to jointly claim the provisions relating to freeriding, which are based, as explained in this case, not on the criteria of originality of the work (and infringement of the latter) but on the "unjustified and unrequited appropriation of an economic value resulting from know-how, work or investments".No copyright in visual identity and communication strategyThe judges first established that to be original, a work must be the result of a free and creative process and result from arbitrary choices revealing the personality of its author. They specified that "the originality of the work can result from the choice of colours, drawings, shapes, materials or ornaments but also, from the original combination of known elements".They also held that:The type of font used, the elements of the brand identity and the symbols and colour codes used were common in the technical or mechanical field (ie, sports equipment – relating to the expression "gear up").The fact that the slogan could be perceived as "user-centered to ensure its promotion" (the expression "we love cycling as much as you do" implies a communication from the company to the customers) indicated a "professional mastery of the communication tool", which did not reveal the personality of the author.The brand identity, "whose symbols and colour codes associated with universes or a category of products are part of an attractive but usual presentation of the offer proposed under the sign IXOW, and whose photographs illustrating the spirit of the mark - namely the sports and escape experiences lived by means of the bicycle - are of an aesthetic quality intended to serve effectively the message to be transmitted, but do not bear the imprint of the personality of an author. Originality is again lacking according to the judges, who retain instead the notions of quality and efficiency of the design work" (emphasis added).A thorough knowledge of the field in question, inducing the application of a particular technique, as well as professional mastery thereof, does not allow the application of copyright. It would thus seem that the qualification of originality/arbitrary choice must be significantly different from the technique/mastery of the field in question in order to find its place and applicability.This reasoning can be debated – it may be asked why a novelist, a sculptor or a painter can have copyright applied to their creations, even though such creations are also the fruit of their know-how and the application of techniques of their art.Victory without copyrightAlthough the company's claims based on the provisions of copyright were rejected, it did win on one point – namely, the payment of unpaid invoices. The price agreed for the creation of the visual identity in question had not been paid for in full. The judges therefore held that IXOW's use of the visual identity constituted an "unjustified appropriation of an economic value", characterising, as a result, "the parasitic acts complained of". It was agreed that "the services of the company were exploited while more than half of the agreed remuneration had not been paid [which makes it possible to] evaluate the damage suffered at a sum of 22.000 euros" (emphasis added). It was this exploitation(4) that constituted the unjustified appropriation of the economic value of the company.CommentAlternative means of protectionThis decision suggests that it is prudent to think about alternative means of protection to copyright, especially in sectors where this right has already been denied by the courts. Creators should consider claiming complementary provisions – for example, freeriding, as in the case at hand – in order to try to win their case (eg, compensation for damages and payment of remuneration due) within the framework of an action that could not be based solely on the provisions of copyright.Indeed, although copyright can be a strong right, it remains entirely unrecognised in certain sectors. It is therefore useful to complement it with other legal tools. Parasitism may be invoked if it lends itself to the case, but it may also be possible to consider registering a name, packaging designs or other models or slogans as trademarks. Another way of protecting a trademark could be for the agency to state in its contract that the advertiser recognises the original nature of the creations through its payments and refrains from contesting their protection via copyright.If a creator wishes to benefit from copyright protection, it is necessary to correctly define not only the very character of the creation, but also:whether it arises purely from the technique of the trade;whether a particular but common know-how has been applied to the field of activity;whether a certain professional mastery has been used; andwhat arbitrary choices have been made?It is also important to emphasis the originality of the creation (ie, how it differs from these techniques through the personal contribution of the creator).TakeawaysThis decision shows that unpaid invoices for the execution of a marketing creation service (eg, a logo, brand identity or slogan) should not allow their exploitation by the advertiser. If such exploitation occurs, the creator can obtain, a posteriori, compensation for the economic prejudice, provided that adequate provisions are made. This is a consolation prize for authors who, not being able to guarantee protection under copyright law, may be able to win their case on the grounds of parasitism. It should be noted that other protection tools must be considered beforehand.For communication agencies, it should be kept in mind that the difficulty of proving copyright is real; it is indeed difficult to prove originality. In this case, an action based on parasitism could be envisaged – it appears essential to organise a complementary protection by contractually providing that the creation can be exploited and that the copyrights will be transferred at the end of the complete payment of the services. This makes it possible to avoid useless discussions as to whether copyright exists and to prohibit by principle the exploitation as long as the invoices have not been paid.For further information on this topic please contact Marion Lucattini at INLEX IP Expertise by telephone (+33 1 56 59 70 90) or email ([email protected]). The INLEX IP Expertise website can be accessed at inlex.com.Endnotes(1) For further details, see "Parfums piratés. A l'abordage !".(2) CA Paris, 22 September 2020, 077/2020.(3) Tribunal Judiciaire de Paris – 9 October 2020, BUG v IXOW France et autres.(4) The logo designed by the company appeared on all the pages of the site captured by the bailiff and on Facebook and Twitter accounts. The slogan and the pictograms and colour codes comprising the brand identity had also been reproduced.