No exclusive right on the image of property

The image of property cannot be subjected to an exclusive right. This is also valid for public domain properties, as stated in the Council of State’s decision dated April 13, 2018. (CE  13-4-2018 n°397047, Etablissement public du domaine national de Chambord c/ Société Kronenbourg).

In this case, the Kronenbourg company used a photography of Chambord castle as one of its advertisements. Chambord’s public facility then asked for a fee. In lower court, Orleans’s administrative tribunal gave reason to Kronenbourg by rejecting the fee demand. The court declared that only Chambord castle belonged to the public domain, not a photography representing the castle.

The public facility then appealed before Nantes’ administrative Court of Appeal on December 16, 2015. The Court rejected the public facility’s pecuniary claims, because it didn’t have jurisdiction on such issues, but nevertheless recognized that the Chambord castle had the power to manage the castle’s image, as a public domain’s administrator.

The Chambord castle then lodged an appeal in cassation before the Council of State.

The Council of State recalled that, according to article L1 of the General Public Property Code, the image of public properties is not part of the State’s concern. In addition to that, it also highlights that a public property’s image is likely to be a property.

Furthermore, the Council of State also brought some clarifications concerning the terms of use of public domain properties’ image. As such, it was stated that the use of public properties’ image is not subjected to any prior administrative control. Commercial use is thus available to all and free of charge, as long as the image does not lead to a private use of public property. If it isn’t the case, then an administrative authorisation will be necessary.

The Council of State appears to agree with the Court of Cassation’s position. Indeed, as a matter of private law, the question surrounding properties’ right to image has often been the centre of multiple judgments. Those same decisions have led to significant jurisprudential evolutions.

The first judgments found their origins in article 9 of the Civil Code, the right of private life’s respect. It was about proving that the publication of a building’s image constituted an infringement to private life, which turned out to be more difficult to demonstrate than expected. (Cour de Cassation, Chambre civile 2, du 29 juin 1988, 87-10.463).

Other judgments then relied on article 544 of the Civil Code, concerning property right. Property right is a fundamental right with a constitutional value (Cons. const., n° 81-132 DC, 16 janv. 1982 ). According to the Declaration of the Rights of Man and of the Citizen’s article 17, it relates to an “unavoidable and sacred right”. Since then, and in accordance also with article 544 of the Civil Code, property right is regarded as an absolute, exclusive and perpetual right.

At first, the Court of Cassation recognized on March10, 1999 that “only the owner owns the right to exploit his property, however he wishes to do so.” (Cour de Cassation, Chambre civile 1, du 10 mars 1999, 96-18.699, Café Gondré).

But afterwards, the Court of Cassation stated that the commercial exploitation of a property’s image does not in itself constitute an infringement to the right of use. It is only the case when there is a “noticeable disorder of an owner’s right of use”. (Cour de Cassation, Chambre civile 1, du 2 mai 2001, 99-10.709, l’îlot du Roch Arhon).

Following this judgement, the Court of Cassation strengthened its statement by affirming that “The owner of a property does not have an exclusive right on its image; however, they can still oppose itself the use of the image by a third-party when it causes an abnormal inconvenience”. (Cour de Cassation, Assemblée plénière, du 7 mai 2004, 02-10.450, Hôtel de Girancourt).

Since then, article 544 of the Civil Code has been replaced by ancient article 1382 of the Civil Code (now known as new article 1240 after the obligations law’s reform), in order to define the term “abnormal inconvenience”. For instance, a winegrower affixing images of a castle belonging to a competitor on his bottles is now recognized as an abnormal inconvenience. (Cour de cassation, civile, Chambre civile 1, 28 juin 2012 10-28.716).

Ultimately, it is no longer possible to stop a third-party from using someone else’s image of a property, unless one manages to prove that the broadcasted image causes an abnormal inconvenience to the property’s owner. Such an inconvenience can be related to free-riding, disloyal competition, or even infringement of private life.

The key takeaways from the last ICANN63 meeting

The last ICANN meeting of the year was held in Barcelona, Spain between October 20nd and 25th, 2018. ICANN Meetings provide a forum to discuss internet-related issues that affect brand owners. It is therefore critical for brand owners to follow and participate in discussions. Several topics were discussed during the meeting that are of particular relevance to brand owners, including the impact of the GDPR on the WHOIS, Rights Protection Mechanisms (RPMs) and new gTLD subsequent Procedures. Dreyfus attended ICANN63, and this article highlights the key takeaways from the ICANN 63.

Whois : the Temporary Specification

One of the major topics of discussion at ICANN63 was, of course, the impact of the European Union’s General Data Protection Regulation (GDPR) on the WHOIS. As a result of the entry into force of the EU’s GDPR in May registrars have redacted domain name registrant’s details, making it difficult for brand owners to enforce their rights. As a result, ICANN adopted a Temporary Specification to allow registries and registrars to continue to comply with their ICANN contractual requirements and with the GDPR.

The Temporary Specification still allows collecting registration data (including registrant information, administrative and technical contact). However, it restricts the access to personal data. Users who have a legitimate interest to get access to the information will have the possibility of contacting the registrant or administrative and technical contacts through an anonymized email or web form.

The Expedited Policy Development Process (EPDP) created to develop permanent policy to comply with the GDPR, met at ICANN in Barcelona to continue discussions on this topic in order to decide whether to confirm the Temporary Specification (becoming ICANN Consensus Policy) or modify it by May 25th, 2019 (the date on which it will expire). The EPDP published the Initial Report on the Temporary Specification on November 21rst, 2018 which was open for comment (until December 21rst) Following the review of public comments, the EPDP will work on the Final Report on final adoption of the temporary specification.

The unified Access Model

ICANN also initiated a separate process for a « Unified Access Model », a centralized WHOIS system managed by ICANN. They will be sending their feedback to the EPDP working group. The idea behind the Unified Access Model is that ICANN will assume responsibility and liability from registries and registrars for disclosing registrant data to third parties with a legitimate interest. Whilst this concept is still in very early stages of development, it was welcomed by many stakeholders. Brand owners therefore should keep an eye on this very important topic.

The analysis of all rights protection mechanisms

Another important matter for brand owners is the GNSO (Generic Names supporting Organization)’s Review of all Rights protection Mechanisms (RPMs) in all gTLDs by the PDP (policy development process) Working Group. The working Group is still in phase 1 –  reviewing all RPMs developed for the new gTLD program, including the Sunrise and Trademarks Claims services offered through the Trademark Clearinghouse (TMCH) and the Uniform Rapid Suspension (URS), a dispute resolution procedure similar to the UDRP specifically designed for new gTLDs. At ICANN63, the Working Group met to present its initial survey findings on the TMCH. It also met to present and discuss its initial review of the URS proposals for operational fixes and policy recommendations. The Working Group also discussed the timeline and next steps for developing the Initial Report. It is expected that phase 2, which consists of a review of the UDRP, will begin in mid 2019. The UDRP is one of the most effective tools for brand owners to tackle infringing domain name registrations, and so it is also an important issue for brand owners that needs to be closely monitored.

New gTLD subsequent procedures

Finally, the New gTLD subsequent procedures Working group was created to review the 2012 round of new gTLDs (generic Top-level domains) and identify recommendations. The working group published its Supplemental Initial Report at the end of October 2018, which was open for comment. It covered several topics, including ICANN auctions as a last resort.

Approval given for ‘.amazon’

The ICANN approved the ‘.amazon’ new gTLD despite the opposition of the Amazon Cooperation Treaty Organization (ACTO). In return, the Amazon corporation agreed to implement special measures, so called “public interest commitments”, in order to avoid any confusion between the new gTLD and the Amazon geographical region or with the Amazon Cooperation Treaty Organization.

The approval of ‘.amazon’ as a new gTLD may open the way to a future new gTLD application rounds.

Between unfair commercial use and infringement of a reputed trademark: the fate of an identical brand name

In a decision of 10 July 2018 (no. 16-23694), the judges of cassation clarified the criteria for assessing unfair commercial use as well as the concept of just cause with respect to the usage of a well-known trademark, all within the scope of the disputed employ of the Taittinger surname. The affair opposes a member of the Taittinger family and the company Taittinger CCVC which acquired shares in the family-run company. For the Taittinger family sold all of the shares of this company, which owns a brand of champagne of the same name. One of the clauses in the transfer agreement was a hold harmless clause which stipulated that the members of the family undertook not to use the “TAITTINGER” trademark to designate products that would be in competition with the transferred business, namely the marketing of champagne. Later, one of the members of the Taittinger family filed the trademark “Virginie T” to designate various products and in particular champagne. To promote her activity, the applicant reserved the domain name but also several names reproducing her surname in full, including and . These latter redirect to the website attached to the domain name , where, moreover, the name Taittinger appears a number of times. As a consequence, Taittinger CCVC invoked the use of the Taittinger sign to promote and sell the champagne called “Virginie T” but also the “implementation of communication systematically oriented on the surname” Taittinger and summonsed the owner of the “Virginie T” trademark on the basis of breach of the transfer of securities contract, infringement of the reputed trademark “TAITTINGER” and unfair commercial use.

The hold harmless (against the actions of the seller) clause 

While this point does not constitute the heart of the judgement, it nonetheless provides clarification on the scope of a mandate within the framework of the sale of securities. In the case at hand, the owner of the “Virginie T” trademark had mandated her father, with a substitution option, that he had moreover exercised, to sell her shares to Taittinger CCVC. In this respect, the Court of appeal had convicted Mrs Taittinger for having violated the hold harmless clause. The Supreme court of appeal recalled that the mandate encompasses only administrative acts, the agent can do nothing beyond what is included in their mandate. If the sale mandate authorised the agent to “subscribe to any undertaking or guarantee”, this did not imply the power to grant a prohibition or limitation on the principal’s use of the surname insofar as it constitutes a disposal of assets. The Supreme court of appeal therefore censored the judgement of the Court of appeal on this point.

Infringement of the reputed “Taittinger” trademark

One of the two main contributions of the judgement of 10 July 2018 lies in the appreciation of the concept of just cause vis-à-vis the use of a reputed trademark. Taittinger CCVC invoked article L713-5 of the Intellectual Property Code which stipulates that “the reproduction or imitation of a well-known trademark for products or services not similar to those designated in registration engages the legal liability of the author if it could be prejudicial to the owner of the trademark or if this reproduction or imitation constitutes an unjustified exploitation of the trademark”. While the reputation of the “TAITTINGER” trademark is not in dispute, Virginie Taittinger replied however by invoking the exception of just cause taken from article 5, 2° of the European directive 89/104/EEC of 21 December 1999 and in the light of which the French judge must interpret the French legislation. Consequently, the Court of appeal noted that the consumer was led to establish a link between the trademark transferred and invoked and the promotion of the products of Virginie Taittinger. However, the Court of appeal did not convict Ms Taittinger insofar as, recalling her family origin, she was not taking unfair advantage of the reputation of the “TAITTINGER” trademark, nor did she prejudice its distinctive value. The Court had then added that her name sufficed to identify her career path or her past experience, even with added photographs. In its order of 10 July 2018, the Supreme court of appeal therefore censored the judgement of the Court of appeal on this point. The Court emphasised that, in the light of the European directive, article L713-5 must be applied in two stages. The owner of the reputed trademark must first of all demonstrate that unfair advantage had been taken of the reputation of the trademark, then the third party must establish that there is just cause for the use of this reputed trademark, or a similar sign. Consequently, the Court of appeal should not have assessed the unfair advantage taken of the trademark in relation to the possible existence of just cause but should have assessed the unfair advantage once the infringement had been established. The novelty contributed by this judgment therefore resides in the fact, for the Supreme court of appeal, to indicate that the exception of just cause is not an element of the infringement against the trademark noted, but a fact that exonerates and applies once the infringement has been established. No further details were given, however, as to a possible definition or application of the concept of just cause. The fact that a well-known trademark is identical to the surname used by the third party could have been the occasion for the Supreme court of appeal to use this concept and, consequently, to clarify it.

Unfair commercial use

The Supreme court of appeal’s assessment of unfair commercial use in the judgement of 10 July 2018 constitutes its second contribution. In this respect, as recalled by the Supreme court of appeal, unfair commercial use “consists, for an economic operator, of placing itself in the wake of another in order to take advantage, at no expense, of their efforts and know-how, the recognition acquired or investments made”. The Court of appeal had thus also rejected the claims of Taittinger CCVC on the basis of unfair commercial use. According to the judges, the company had not established how adopting a corporate name or a commercial name as such would alone express the efforts and investments, in particular promotional, necessary to establish an act of unfair commercial use. Here again, the Supreme court of appeal therefore censored the judgement of the Court of appeal. According to the judges of cassation, the latter should have taken into consideration the prestige and recognition acquired, and not disputed, of the corporate name and of the commercial name of the company to examine whether or not an instance of unfair commercial use was present in the case in hand.

This judgement is therefore not only to be placed among the affairs dealing with a well-known trademark that is a homonym of a surname, but also provides a better understanding of the use of the concept of just cause in the context of the infringement of a well-known trademark, as well as the criterion of recognition in the framework of what constitutes an instance of unfair commercial use. Taking advantage of the reputation of a trademark does not necessarily therefore constitute infringement of a well-known trademark, but this can be a decisive factor with regard to establishing an instance of unfair commercial use for which there is no exception for just cause.