A concept before the courts

Published onJuly 2017

The French Cour de cassation, the highest civil court in France, recently issued a decision about how a concept can be protected through intellectual property rights. It is interesting to study this decision to be reminded that, although it is not impossible, protecting a concept can prove difficult. The important thing is to anticipate the obstacles to adopt the right strategy (see also our article about how to protect a concept here).

Here are the facts. YDP is a physical person who created stylised drawings, affixed on bottles of wine, depicting dishes and recipes with wines they can be associated with. YDP is also the owner of several trademarks registered for wines, representing such drawings in association with verbal elements such as « poulet chicken pollo », « poisson fish pesce » or « agneau lamb agnello ». He granted French company Vinival an exclusive licence for the entire world for using the trademarks and the drawings on bottles of wines.

According to the French judges, YDP’s concept was having and showing fun drawings depicting animals or dishes named in three different languages for presenting wines.

YDP’s concept was consequently protected thanks to:

  • Actually, YDP did not file anything since copyright protection is automatically granted to all works created by men, provided they are original. It would be more just to say that YDP believed he could claim copyright protection over the drawings.
  • YDP did own French and Community (now called EU) trademarks for wines which represented some of his drawings.
  • Licence agreement. YDP had granted a licence for both the trademarks and the copyright over the drawings (which was a good way for giving substance to the copyright).

Mid 2004, Vinival stopped paying royalties for using the trademarks and drawings. Mid 2007, relationships between YDP and Vinival went worse and YDP terminated the agreement. Mid 2008, YDP filed a lawsuit against French company Lacheteau (new owner of Vinival) claiming copyright and trademark infringement, as well as unfair competition or commercial free-riding, because Lacheteau kept on selling bottles of wines representing drawings associating dishes and wines.

Here is what the French Supreme Court decided on June 22, 2017 (1st civil chamber, case number 14-20310).

On trademark infringement

The court of appeals had found Lacheteau guilty of trademark infringement and the Cour de cassation approved the court of appeals. Although they found that there were differences in the ways the figurative elements were depicted, they considered that the signs produced the same overall impression because they were all childish representations of drawings of animals with many similarities, and of the same types of dishes, all associated with the same types of verbal elements qualifying the animals or the dishes in three words of different languages. According to the Court, intellectually, the signs refer to the same concept of showing fun drawings depicting animals or dishes named in three different languages for presenting goods identical or similar to those covered by the trademark registrations. There is consequently a likelihood of confusion on the part on the public.

Actually, the court of appeals went even farther than the Cour de cassation in its reasons. When comparing the signs intellectually, the court of appeals declared that they had the same function which consists in immediately knowing how to associate a wine to a certain type of dish, which appears unusual in the habits of the sector concerned.

This is really what the concept is about. However, the court of appeals went too far in our opinion. Maybe that is why the Cour de cassation did not keep the argument in its own decision. We can agree the signs refer to the same concept. We can agree that, because of that, there are intellectual similarities. But there was no need to say that the signs had the same function. The function of a mark is to guarantee the identity of origin of a good or a service. The function of a mark is not to convey a more complex commercial message.

On copyright infringement

YDP’s claims on copyright infringement had been rejected by the court of appeals and the Cour de cassation confirms the judgment, because YDP had not characterized how his works were original.

It is not the first time we warn about this. The courts are not here to compensate for the lack of arguments of the plaintiff. When you claim copyright infringement, you have to demonstrate how or why the author’s works are original in the first place.

And in this case, the courts stated that the mere facts that copyright was part of the licence agreement or that royalties were paid for using the copyright-claimed works are not evidence that the works are original.

On unfair competition (commercial free-riding)

Lacheteau had been found guilty of commercial free-riding by the court of appeals because it had appropriated an innovative way of representing on a bottle of wine a drawing, not only to illustrate the label of the wine as it is traditionally done, but to decorate the bottle itself in order to suggest in a fun way an association between the wine and a particular dish. By reproducing this concept, the court of appeals stated that Lacheteau had been free-riding on YDP’s economic success, without disbursing any money and for its own benefit.

The Cour de cassation disapproved and cancelled the decision of the court of appeals on this part, reminding the judges that ideas cannot be appropriated and that the mere fact of reusing a concept originating from a competitor is not an act of commercial free-riding or unfair competition.

Here is the protection of a concept again, but this time contemplated through the notion of unfair competition. It is interesting to observe that the reasons of the court of appeals here were very similar to the way it defined the function of the signs (“which consists in immediately knowing how to associate a wine to a certain type of dish” as opposed to “in order to suggest in a fun way an association between the wine and a particular dish”). On the trademark infringement ground, the Cour de cassation did not use the arguments of the court of appeals and we believe it was a good thing because they were poorly verbalized and had nothing to do with the function of a trademark. In a way, the Cour de cassation had ignored the reasons of the court of appeals.

On the unfair competition ground, the Cour de cassation recognized the reasons were wrong because they only give body to an idea and an idea cannot be protected in itself or for itself.

What you need to remember

The way the Cour de cassation resolved the matter is highly interesting and informative.

YDP had built a protection strategy on three parts: copyright, trademarks and licence agreement thereof. Because the contract had been terminated, YDP filed a lawsuit on three grounds: copyright infringement, trademark infringement and unfair competition.

YDP succeeded only on the ground of trademark infringement. And only registered trademarks were characterizing tangible IP rights, i.e. protecting the use of specific drawings in connection with specific goods.

In other words, when it comes to protecting a concept, one must focus on protecting the elements and the contents of the concept more than the concept itself. So you need to file trademark applications, industrial design applications, patent applications as much as you can…

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