We were interested to read The IPKat’s post here about a decision from the French courts on the relationship between trade marks and copyright. The decision calls into question whether it is possible for a party such as a record producer or a publisher to own a trade mark which identifies an artist or author whose work they produce. It also raises questions about the public perception of the origin of creative works and how that relates to the ‘essential function’ of trade marks as identifiers of the commercial origin of goods and services.

Bébé Lilly, an animated baby girl, has released thirteen singles, of which two were recorded by M. Abdelkader Daroul in 2005 and 2006. At around the same time, the record company Heben Music applied to register BÉBÉ LILLY as a trade mark. Some years later, M. Daroul discovered the trade mark registration and applied to revoke the mark.

The case reached the French Court of Cassation, the country’s highest civil court. In its decision the Court considered, amongst other things, whether the registration fell foul of article L711-3 (c) of the French Intellectual Property Code, which corresponds to Article 4(1)(g) of the EU Trade Marks Directive. That provision prevents the registration of marks ‘which are of such a nature as to deceive the public, for instance, as to the nature, quality or geographical origin of the goods or service’.

The French Court found that this ground of refusal applies where a mark would deceive the public with regard to the authorship of a work protected by copyright. The Court reasoned that the average consumer would perceive an artistic work as originating from the author and therefore a trade mark which guarantees the origin of goods and services as being another party (such as a record company) is deceptive. The decision is predicated on a view that trade mark law should not come into conflict with other legal doctrines which protect an author’s rights, in particular the moral right to attribution. The paternity of the work, from a moral rights perspective, seems to have been important to an assessment of how the mark acts as a guarantee of origin.

This decision runs contrary to that of the CJEU in Elizabeth Emanuel. In that decision the Court found that where the goodwill in the name ‘Elizabeth Emanuel’ had been assigned from the designer herself to another company, there was not a risk of deception under Article 4(1)(g). The CJEU ruled that, regardless of whether or not a consumer might think that the designer herself was involved in the design of the garment, the characteristics and qualities of that garment remain guaranteed by the undertaking that owns the trademark. As long as the trade mark functions as a guarantee of single origin, it doesn’t matter whether that origin is the designer usually known by that name or another party.

As the BÉBÉ LILLY decision is currently only available in French, this blogger can only speculate based on other case comments available as to how the French Court reached its decision. However, it seems plausible that the Court drew a distinction between works protected by moral rights (e.g. songs) and works not protected by such rights (e.g. clothing designs). This would seem to create a two-speed system, where a designer’s name can be registered by a third party, but the name of an author of a copyright work can only be registered by that individual. Whilst moral rights may afford that sort of differential protection, its logic seems alien within the context of trade marks.

If we follow the underlying logic of the decision, it is tempting to speculate whether the same principles should apply where an artist commercialises their work under their own given name, and where an artist commercialises their work under an invented name. Is the connection between the paternity of work, the author’s identity and their brand the same for artists such as Elena Ferrante or Gorillaz, who do not use their own given names in relation to their work?

And taking it further, should the same principles also apply in the case of a manufactured pop band, where their manager or record company has played a crucial role in developing the band’s name and identity, and in writing (though not performing) their songs? Under those circumstances, would the manager or record company have a better claim to the trade mark rights in the name of the pop group, even if the public might associate that group’s songs with the group as singers, rather than with the manager or record label?

And further still, does the logic extend to identifiers other than the name, stage name or nom de plume of an artist which a consumer might use to identify the origin of goods and services? Does a consumer encountering the mark HARRY POTTER connect to that mark to J.K. Rowling via her authorship of the books in the same way that a consumer encountering the mark BÉBÉ LILLY associates that mark with M. Daroul as the composer of the songs? If so, what does that mean for Warner Brothers’ ownership of the rights in that mark?

This decision does not of course have any effect in the UK. It seems likely that a UK Court hearing same case would reach a different conclusion, given the different cultural approaches towards the importance of moral rights in France and the UK. However, if the decision is appealed to the CJEU it could see the creation of a new precedent which would (Brexit aside) have effect in the UK. That might give brand owners in the creative industries cause to reassess their approach towards ownership of authors’ and artists’ brands. Would a CJEU decision in similar terms provoke businesses in the creative industries to clarify the ownership of their artists’ brands and secure their ability to continue exploiting such marks? For now, these questions are purely hypothetical but it would be interesting to see where they might lead.