On December 10, 2013, French Cour de cassation (Civil Supreme Court) once again refused to admit that a fragrance could be protected by copyright (Cour de cassation, commercial section, 10 December 2013).
In 2006, the Court had already decided that a fragrance could not be considered as an original creation because it was the result of the implementation of a specific know-how (Cour de cassation, 1st civil section, 13 June 2006).
At the time, the decision was welcomed with a certain form of defiance from many authors and civil judges, relying on the very wording of Article L.112-1 of the French Intellectual Property Code: “The provisions of this Code shall protect the rights of authors in all works of the mind, whatever their kind, form of expression, merit or purpose.”
They saw no reason justifying that perfumes or fragrance be excluded per se from the scope of copyright protection. A very interesting decision was then issued on 14 February 2007 by the Court of Appeals of Paris according to which fragrances could be protected by copyright on condition they be original, even if a certain amount of technical know-how is required for their creation.
However, last December the Supreme Court decided to confirm its previous opinion stating that copyright only protects creations with a perceptible or discernible form that can be identifiable with enough precision. The Court added that a fragrance does not have such a form and that its creation process cannot be considered as an original work of the mind.
This time, even if the Court made a reference to the specific know-how implemented to create fragrances, it clearly did not use this criterion to exclude them from copyright protection. The ground for the refusal is that fragrances do not have a perceptible form that can be identifiable with enough precision so as to be communicated. The Court seems to require that copyrightable works of the mind have a tangible or physical form.
This condition is still absent from above-cited Article L.112-1 even if we can understand why works of the mind should have a tangible form, if only to assess their originality.
That being said, it is commonly admitted that a fragrance can easily be materialized with gas chromatography. Why would the Court not accept that such a technical process is enough to identify with precision the form of a fragrance?
Maybe the Court is afraid of the practical and technical consequences of an opposite decision in favor of copyright protection for fragrances. How to assess originality? How to decide if a fragrance bears the stamp of its creator’s personality? How to judge if two fragrances are similar enough so as to give rise to infringement?
Surely, admitting that fragrances could be protected by copyright would create such difficulties but we do not believe the decision should be up to the Cour de cassation. It should be decided by law and the sooner the better.
This case offers an opportunity to make a parallel with the undergoing reform of European trademark law, especially of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks.
Article 3 of the proposed future Directive (at present Article 2) reads as follows:
“Signs of which a trade mark may consist
A trade mark may consist of any signs, in particular words, including personal names, designs, letters, numerals, colours as such, the shape of goods or of their packaging, or sounds, provided that such signs are capable of:
a) distinguishing the goods or services of one undertaking from those of other undertakings;
b) being represented in a manner which enables the competent authorities and the public to determine the precise subject of the protection afforded to its proprietor.”
The proposition sort of replaces the condition of graphical representation by a condition of representation “in a manner which enables the competent authorities and the public to determine the precise subject of the protection afforded to its proprietor”.
Such proposition has been interpreted as being a sign in favor of new types of trademarks such as sound trademarks or olfactory trademarks. However it is easily noticeable that only sound trademarks are explicitly part of the new wording. Even if the list is not exhaustive smells or odors are not in it.
Maybe this is the sign that legislative bodies are not ready yet to open the debate on the protection of odors, fragrances or perfumes through intellectual property rights. As a consequence, creators of fragrances should still keep their formulas secret as long as they can.