Following a decision by the Shenzhen Nashan People’s Court in China, a work generated by an algorithmic program has been deemed eligible for copyright protection.
1. An infringement action of a work produced by an automated program
Tencent, a company specializing in internet services and online advertising, published on its website a financial report article written by an algorithm-based intelligent writing system and data set, called « Tencent Robot Dreamwriter ».
After noticing that the article was reproduced without permission on a website operated by Shanghai Yingxun Technology, Tencent filed an infringement action against the said company.
However, the underlying and main issue in this dispute is whether a work generated with the help of artificial intelligence can adequately benefit from copyright protection.
The issue has been a constant source of controversy on an international scale for several years, and the Beijing Internet Court ruled in 2019 that only legal subjects expressly specified by Chinese copyright law should be considered as appropriate authors of works. Therefore, algorithmic programs are excluded. The court had also investigated on the process of generating the artificial intelligence at issue.
2. A precarious apprehension of creations generated by artificial intelligence
According to Revised Issues Paper on Intellectual Property Policy and Artificial Intelligence of May 21, 2020 prepared by the WIPO Secretariat, a distinction should be made between « AI generated », which does not require human intervention and which can modify its behavior during an operation in accordance with the application of various factors and « AI assisted », which conversely requires material human intervention and/or direction.
Regarding the European Union, the Delvaux Report adopted in February 2017 by the European Parliament proposed to grant a « sui generis » intellectual property protection to works created by artificial intelligence and to reflect on the criteria of proper intellectual creation applicable to copyrightable works created by computers or robots.
3. Towards an evolution of copyright in the field of artificial intelligence
The case opposing Tencent to Shanghai Yingxun Technology is the first litigation to support copyright protection for a work generated by an algorithmic program.
During the proceeding, Tencent explained the entire process of the “creative team” used to generate and publish the article with the assistance of the “Dreamwriter” robot.
The court carried out a reasoning based in particular on two points of assessment.
Firstly, attention was classically paid to the form of expression, the content and structure of the article that have been judged original.
Then, the court turned to the generation process of the article. In this regard, it focused on the presence of factors indicating the creator’s individual selections, judgment and required skills, recognizing that the creation process differed from the ordinary process of creating written works.
This court decision tends to favor, eminently, a possible extension of copyright protection to works generated by artificial intelligence on an international scale. However, reflections on the criteria that could be specifically retained in order to appreciate the benefit of the protection of these works coming from a creative process that has been excluded until now, will continue to feed, and even prolong, the debate.
In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed about intellectual property and digital economy issues through articles written by Dreyfus’ legal team.
About this topic…
♦ All concerned: works generated by artificial intelligence
Aside from including related rights for press publishers and press agencies, and rebalancing relations between rights holders and content sharing platforms, the April 17, 2019 Directive strengthens the position of authors vis-à-vis assignees. These last provisions about copyright have just been transposed into French law.
Copyright begets fair remuneration of artists and creative enterprises in the member states of the European Union. The Directive’s purpose is to establish a global framework, where intellectual creators, authors, content editors, service providers and users will all be able to benefit from clearer, modernized and adapted rules of the digital era. As such, the Directive aims to ensure that online press publishers and authors/artists receive better renumeration – especially when leading platforms such as Google News or Youtube use their work. The adoption of this Directive is the result of negotiations that lasted more than two years.
What are the new provisions of the Directive?
The Directive aims at modernizing the European Union copyright law, taking into account the increase in digital and cross-border uses of protected content. This directive mainly provides:
1) measures to adapt certain exceptions and limitations to the digital and cross-border environment, among which are exceptions concerning:
– text and data mining (TDM exception),
– the use of works in digital and cross-border teaching activities, in particular the accessibility needs of people with disabilities, and
– conservation of cultural heritage;
2) measures to improve licensing practices and ensure more extensive access to content, which consist of harmonized rules facilitating:
– the exploitation of works that are not commercially available,
– the extension of collective licensing contracts by collective management organizations to rightsholders who have neither authorized nor excluded the application of these mechanisms to their works,
– the negotiation of agreements to make works available on video-on-demand platforms (VoD platforms), and
– entry into the public domain reproduction of works of visual art at the end of the initial term of protection; and
3) measures to ensure fair market practices with respect to copyright, liability of content sharing platforms, and contracts for the remuneration of authors and performers.
Similarly, Article 15 of the said Directive creates a new neighbouring right for press publishers. Remember, neighbouring rights are exclusive rights, more recent than copyright, and are exercised independently of the latter. They were born from the need to make the auxiliaries of creation benefit from making their works available to the public. Finally, article 17 (ex-article 13) created a liability regime adapted for internet content sharing platforms, while establishing a new exception for the monopoly of rightsholders.
What are the new obligations of content-sharing platforms?
The targeted main players (Title IV of the Directive) are platforms for mass sharing of copyright and related rights protected content – such as such as Google, YouTube, Dailymotion, or Facebook. The Directive more precisely defines it as:
“The provider of an information-focused service, whose main objectiveor one of its main objectives is to store and give the public access to a significant quantity of copyrighted works or other protected subject matter that has been uploaded by its users, which it organizes and promotes for profit.”
There are cumulative criteria that determine their obligations. Platforms that have been active for less than three years and have an annual turnover of fewer than 10 million euros will be subject to reduced obligations. On the other hand, platforms exceeding this limit will be subject to a proactive obligation provided for by the Directive regarding works distributed without authorization. The Directive excludes from the liability regime non-profit online encyclopedias such as Wikipedia, non-profit educational and scientific directories, open-source software platforms, online marketplaces like Amazon, Cdiscount or eBay, and individual cloud storage services with no direct access to the public. With regard to the regime applicable to content sharing platforms falling within the above-mentioned scope, the most important thing is to have the rightsholders’ authorization, which allows copyrighted work to be available to the public through, for example, a license agreement.
– That it has “made its best efforts” to obtain permission from the rightsholder to release the work to the public,
– That it has “made its best efforts” “in accordance with high industry standards of professional diligence” to ensure the unavailability of the copyrighted work once the unauthorized communication of it has been reported by the rightsholder by means of “relevant and necessary information,“
– That it acted promptly to withdraw or block access to the work upon receipt of “sufficiently motivated” notification from the rightsholder.
Finally, the platforms must be transparent towards rightsholders about the measures taken within their area of responsibility. This Directive gives certain platforms greater responsibility for the content they publish. Meanwhile, the liability system for online selling platforms, where counterfeits abound, will not change. Their status as host or publisher will always determine their liability regime.
In France, in addition to the debates surrounding compliance with the Intellectual Property Code, it will be interesting to see to the court’s decisions in the months to come.
We are a law firm with a unique expertise in the exploitation of intangible assets. We keep you updated on issues related to intellectual property and the digital economy through articles written by the Dreyfus legal team.
Directive (EU) No. 2018/1808 of the European Parliament and of the Council, adopted on November 14, 2018 and amending Directive 2010/13/EU (AVMS Directive), has (finally) been transposed into French law, via the Order of December 21, 2020. This directive is part of a context of international competition on the one hand and profound transformation of the audio-visual and the evolution of demand on the other hand.
Redefinition of the essential concepts of the 2010 European Directive
The Order deals with essential concepts that one needs to fathom to understand the issues at stake. First of all, what are audio-visual media services (AVMS)? There are two types:
Linear television services (traditional services);
Non-linear services, e.audio-visual content-on-demand services or media-on-demand services (MOS). These SMAD services allow the customer to choose both when and what they wish to watch.
The Order also calls into question certain principles, such as the old principle of media chronology resulting from a 1960 legislation. This legislation coordinated the diffusion of films, after their release in cinemas, to optimise their profitability.
Modernisation and adaptation of the rules to the transformation of audiovisual services
The Order transposing the Directive has implemented several measures aiming to ensure the effective contribution by market players and to protect both the minors and the public.
While this principle is a leading point of the reform, the AVMS Directive also acknowledges the profound changes in multimedia by extending audio-visual regulation to video-sharing platforms, social networks and live video platforms. This way, Brussels wishes to protect minors against certain harmful content and harmonise the legal framework of the European audio-visual sector.
Reform of the 1986 Act and safeguarding the French cultural exception
France wanted to implement the directive and collaborate in the European project while defending the French cultural exception. The Order is mainly concerned with reinforcing the rules of transparency for service publishers and with establishing more complete objectives, such as the inclusion of the system of funding for production (particularly independent production) over time, but also the guarantee that French broadcasters and global platforms are on an equal footing.
Article 19 of the Order, therefore, now requires “publishers of television services and on-demand audio-visual media services aimed at French territory” “when they are not established in France and do not fall under the jurisdiction of France”, to financially contribute in the same way as French publishers do.
Article 28 substantially reforms the principle of media chronology and now allows the industry players to negotiate an agreement with the professional organisations within six months to reduce broadcasting delays.
Extension of the powers of the CSA and protection of minors
As platforms are now part of the regulatory landscape, the CSA has seen its competencies and powers broadened and, in particular, has been assigned two new essential missions: the accessibility of AVMS programmes, and the protection, in particular of minors, against content that is violent, incites hatred or constitutes a criminal offence. The CSA will then have jurisdiction if the head office or a subsidiary of the platform is established in France.
Furthermore, the CSA is also in charge of ensuring that publishers have issued guidelines of best practice (particularly regarding food advertising to which minors could be exposed) and highlighting audio-visual services of general interest on new audio-visual platforms.
In addition, the Order completes Article 15 of the 1986 Act by prohibiting in programmes not only incitement to hatred and violence but also a provocation to commit acts of terrorism, while entrusting the CSA with the task of ensuring that these provisions are respected.
If the Oder is already a significant step forward, the implementing decrees are just as important. In particular, on June 23, 2021, the audio-visual media services on-demand decree (or SMAD decree n°2010-1379 of November 12, 2010) was published in the French Journal Officiel, which probably represents the most valuable step in the project to modernise the financing of French and European audio-visual services. Among other things, SMADs will have to devote at least 20% of their turnover in France to finance the production of European or original French cinematographic and audio-visual works.
We are a law firm with a unique expertise in the exploitation of intangible assets. We keep you updated on issues related to intellectual property and the digital economy through articles written by the Dreyfus legal team.
A perfume involves several assets, rather than a single right covering every aspect of its scent.
A perfume combines a composition, a name, a bottle and a commercial presentation. These four elements do not fall under the same legal rules. Under French Court of Cassation case law, the fragrance itself does not qualify for copyright protection. This does not exclude protection of the other assets (name, bottle, formula) or prevent action against certain forms of imitation. It requires the business to identify exactly what it wishes to protect and the evidence supporting its position.
For a perfume brand, risks arise during the first exchanges with the laboratory, manufacturer or distributor. Who owns the formula? Which information remains confidential? Were the name and packaging protected before public disclosure? A trademark protection strategy must work alongside contracts and other available rights. For lawyers and in-house legal teams, the priority is a substantiated case, not a promise of exclusivity over every similar scent. The response to imitation will depend on the rights held, the signs used and the documented circumstances of production and sale.
An intellectual property assessment identifies, for a perfume, the rights that can be relied on (trademark, design, trade secret, patent) and the evidence available before any action against a copy. Nathalie Dreyfus’s qualifications can be checked through the official directories: the Paris Court of Appeal 2026 directory (PDF), under trademarks and designs, the Court of Cassation directory, 2025 edition (PDF), and the CNCEJ directory. Listings relate to defined specialisms. A private opinion is distinct from a court-ordered investigation. The engagement is defined according to the matter and the skills required.
Separate the scent from the other creative elements
In its decision of 10 December 2013, appeal no. 11-19.872, the commercial chamber of the French Court of Cassation rejected copyright protection for a perfume fragrance because its perceptible form could not be identified with sufficient precision to be protected as a work. This does not mean that everything associated with a perfume is available for unrestricted use.
A bottle design, campaign photograph or advertising text may, by contrast, be protected by copyright if it is original. The file should distinguish the scent, its technical formulation and the creative elements of the presentation. This prevents a broad claim being built on a right that does not protect the subject matter actually copied. French conclusions should not be presented as a universal statement about every jurisdiction.
Protect the name, bottle and commercial presentation
A trademark protects a sign for specified goods and services. Clearance searches, the specification and territorial choices should precede launch. The owner must also define the uses permitted to manufacturers and distributors. Registering a name does not protect a formula or scent. Trademark rights need renewal and genuine commercial use in accordance with the applicable rules.
The bottle and certain packaging features may warrant an assessment under design law, if they meet the requirements of novelty and individual character. An ordinary shape or a feature dictated solely by its technical function does not qualify for this protection. The date of each public presentation of the bottle should be recorded: in the European Union, a filing remains possible within twelve months of the designer’s first disclosure (grace period), but this period does not exist in every country. Photographs of prototypes and launch materials help establish the sequence of events.
The chain of ownership also requires attention. Paying the designer is not enough: under French law, copyright is transferred only by a written assignment specifying the rights assigned. Agreements should identify the deliverables, rights transferred, authorised uses and contributors to the project. Dated files, approvals and contracts are useful evidence when entitlement or copying is disputed. The assessment should cover both the registered rights and the supporting contractual records.
Registering a scent trademark remains difficult
Removing the graphical representation requirement for EU trademarks did not make every smell registrable. The representation must enable the authorities and the public to determine clearly and precisely what is protected. The EUIPO guidelines concerning smell marks explain the representation difficulties associated with the means currently available.
A chemical formula describes a substance without necessarily representing its smell. A verbal description or sample does not satisfy clarity, durability and objectivity requirements. In practice, a scent trademark application therefore has very little chance of being accepted. The available options need checking with the relevant office against the criteria applicable when filing. A distinctive fragrance and an acceptable representation are different questions.
information that is not generally known or readily accessible,
commercial value because it is secret,
reasonable steps to keep it secret.
Calling a formula confidential in a document is insufficient if it circulates without meaningful controls.
Safeguards can include restricted access, confidentiality commitments, separation of the information shared and version tracking. Teams should identify who receives the complete formula, who may amend it and what must be returned or deleted when the relationship ends. Contractual obligations need to reflect the actual practices of laboratories and service providers. Evidence that safeguards were applied is important, not merely evidence that a template agreement existed.
Secrecy does not provide a monopoly equivalent to a registered right. A competitor that rediscovers the formula by its own means (independent development, analysis of a lawfully purchased product) does not, in principle, infringe the secret, unless it is bound by a contractual undertaking. The file should establish the source of the information and the conduct alleged. A similar smell is not, without more, proof that the formula was unlawfully obtained or used.
Choose between patent protection and confidentiality
A composition or manufacturing process may justify an assessment under patent law if the patentability requirements are satisfied. Development costs or commercial novelty alone are insufficient. The assessment should address technical novelty, inventive step, existing rights and the territories where protection would be valuable. It should distinguish patentability from freedom to operate.
A patent requires the invention to be published, generally eighteen months after filing, in exchange for a monopoly of up to twenty years. Secrecy instead depends on controlling access to information. The choice between these options should precede public communications that could affect novelty. Relevant factors include how easily the formula can be reconstructed, the expected useful life of the advantage and whether unauthorised exploitation could be detected. These approaches are not interchangeable, and their costs and limitations should be explained before choosing.
Assess imitation and comparison lists separately
A similar smell does not, by itself, establish infringement. The signs, goods, packaging and commercial uses need examination. A list describing one perfume as equivalent to a well-known product raises a separate issue. References to another party’s mark and the way its reputation is used should be assessed independently from the fragrance composition.
The L’Oréal v Bellure judgment of 18 June 2009, case C-487/07, held that a list presenting a product as an imitation of a branded perfume is unlawful comparative advertising and may amount to taking unfair advantage of that mark’s reputation. It does not justify treating every product described as a “dupe” identically. The wording, public perception and marketing context remain material. Evidence should record the complete presentation rather than an isolated statement removed from its context.
Unfair competition and parasitism claims may also be considered under French law. They require proof of specific wrongful conduct (for example, deliberately creating confusion or free-riding on another’s investment) and of harm. Resemblance or the success of the original product does not remove that burden. Screenshots, purchases and records should be preserved before the disputed offers change, with collection methods proportionate to the intended proceedings.
The role of the IP adviser
The IP adviser defines the legal grounds, remedies and strategy. It also contributes to the analysis of registered rights, comparison of assets and organisation of evidence. The technical engagement must state its limits: recording a similarity, identifying a sign and examining a formula answer different questions. The weight of evidence also depends on how it was collected (bailiff’s report, infringement seizure) and on respect for adversarial proceedings.
Illustrative case
A fictional brand supplies its composition to a laboratory and develops a bottle with a designer. After launch, it discovers a product referring to its perfume in a comparison list. It wants all sales stopped immediately, without distinguishing the formula, name and packaging. Its agreements with the different contributors have not been collected into one file.
The firm would first assemble registrations, contracts, disclosure records and marketing evidence. It would compare the signs and packaging features, then assess possible grounds, confidentiality obligations and suitable evidence-preservation measures. A technical analysis of the composition would be commissioned only if it answered a relevant question, rather than being treated as an automatic first step.
The aim would be a focused claim and improved agreements for future products. This fictional educational example does not describe a client matter, successful judgment or guaranteed outcome.
A five-stage protection process
The strategy brings rights, confidentiality and evidence together during development.
Identify assets. Separate scent, formula, name and bottle.
Preserve secrecy. Define access and commitments before disclosure.
Protect signs and shapes. File before relevant disclosures.
Define contracts. Clarify ownership and exploitation.
Monitor and document. Preserve evidence before taking action.
FAQ on perfume protection
Does copying a smell establish infringement?
Not by itself. A scent is protected neither by copyright nor, in practice, by trademark law. The claim must rely on another right (sign, bottle, secrecy of the formula) or on wrongful conduct such as parasitism. The legal basis depends on the proven facts.
Does a confidentiality agreement protect the entire formula?
It can contribute, but its scope and implementation require checking. Public information and uncontrolled access raise separate issues. Effective safeguards matter alongside contractual wording and the persons bound by it.
Should a patent be filed before presenting the perfume?
Novelty and disclosure timing should be examined beforehand. The decision depends on the composition or process, patentability requirements and other protections. Assess the consequences before making public disclosures.
Can a comparison list be challenged?
Potentially, depending on wording and context. Trademark uses, comparison rules and any advantage taken of reputation require assessment. Similar smells alone do not determine the claim.
Why work with Dreyfus
Dreyfus assists businesses and their advisers with protection strategy and alleged infringement, coordinating rights, contracts and evidence to define a proportionate response.
With the rise of the digital age, setting up a reliable and effective compliance strategy as well as mobilizing the skills of professionals have become key factors in the company’s performance, particularly in the field of intellectual property.
From the outset, it seems important to remember that compliance includes all the processes intended to ensure that a company, its managers and its employees comply with the legal and ethical standards applicable to them.
Likewise, the challenges and risks of intellectual property have increased in the virtual world. Domain names as well as social networks are likely to be the targets of multiple attacks.
The key challenges of compliance with regards to intellectual property risks (I) raise questions both about the practical consequences of compliance in all aspects of intellectual propertythe role of the “compliance officer” in this framework (II) and the role of the “compliance officer” in this framework (III).
The challenges of intellectual property compliance
The environment as well as legal decisions revolve around the long-term development of the company and justify the establishment of real legal engineering within companies whose intellectual property is decisive. This is the key challenge of compliance, which is both a framework for thinking and a method of solving problems, involving a large number of tools and components oriented by company strategy.
Legal, regulatory and fiscal constraints are increasingly stringent and make companies bear increased responsibility in case of negligence, or even simple inaction. In particular, the regulatory framework sets out increased requirements regarding the protection of consumers and personal data.
In the field of intellectual property, domain names are key assets to contemplate when analyzing the risks and drafting compliance plans. While they are a major asset, essential to the very functioning of the business (for example, for e-mail servers, they are also risk vectors: phishing, fraud, identity theft, forged e-mail …
Online fraud can lead to loss of turnover, endangerment of consumers, and if so, risks of civil or criminal liabilities of directors for non-compliance with enforceable laws and regulations. impact the stock market price, thus causing loss of customers.
It is therefore very important to put in place the appropriate strategies to anticipate dangers, react effectively in the event of a breach and ultimately protect the company.
The practical consequences of compliance in all aspects of intellectual and digital property
Beyond its legal meaning of compliance with the requirements of laws, regulations, Codes or even directives, compliance aims to protect the company and intellectual property professionals against any non-compliance with internal and external standards and its values. Intellectual property frauds are growing and becoming increasingly complex in the digital era, which requires taking action to mitigate risks for the company business, including in terms of compliance. Its objective is to avoid adverse consequences for the company and its managers, both financial and civil or criminal liability, or damage to image and reputation. It is ultimately part of a desire for lasting growth in all aspects of intellectual property, both in France and internationally.
To cope with these new standards, companies must put in place a governance policy capable of minimizing their exposure to risk vis-à-vis their customers, their shareholders, but also regulatory authorities.
To begin with, it is essential to identify the risks through the relevant audits.
Then, it is important to assess those risks and map them. The risk management policy shall be defined accordingly.
In particular, a policy for the management of Intellectual Property related risks calls for a virtually systematic surveillance system of trademarks among domain names.
The role of the “compliance officer”
The compliance officer must protect the company from any risk of non-compliance, and therefore ensure that the organization adopts good conduct in business practice, respects the rules of ethics and finally, complies with the various laws, regulations, or even European directives. It must therefore undertake a proactive approach, organize and implement the means necessary to comply with the regulations.
Likewise, it is important to anticipate risks: once they have been defined and supervised, the mission of the compliance officer being to protect the group and its reputation, he will have to analyze the rules and standards according to the context, the activity, and the business sector.
According to a study“Who are compliance professionals?”published on March 27, 2019 and carried out by the firm Fed Legal, 92% of compliance officers have a legal background. They are operational professionals who have a strategic vision as well as a multiplicity of soft skills, in particular an ability to persuade and an interest for teaching. In addition, 60% of compliance officers belong to legal services in which there are many recruitments, both in large and small companies.
When a company is questioned, the consequences are at the same time financial, commercial and human: the company reputation will suffer greatly. The compliance officer thus takes care of protecting his company from the financial, legal and reputational risks that it incurs in the event that it does not comply with laws, regulations, conventions, or quite simply a certain code of ethics or professional conduct.
Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Please feel free to contact us.
Published in June 2020,EUIPO’s “2020 Status on IPR Infringement” reportshows that e-commerce has fostered the phenomenon of counterfeiting. The majority of counterfeit products come from Asia. These products are reconditionned in smaller boxes in countries such as Albania, Ukraine or Morocco.
Due to the forced closure of stores, consumers increased their online purchases. Thus, the counterfeiting phenomenon expanded, as well. According to this report, most consumers are attracted by a cheaper price, but they are completely unaware that they are buying a counterfeit product.
The report shows that:
– More than 50% of internet buyers search Google, Amazon and other marketplaces before buying. They look for the product description, features, price and possible discounts.
This is what can lead them to choose websites promoting counterfeit products, since:
– 70% of buyers opt for counterfeiting for price reasons.
– 82% of the buyers had indicated that they would continue to buy online even when the stores reopen.
In addition, a survey published by the French consumer association UFC- Que Choisir, on October 22nd, 2020, showed that online frauds, on an online purchase, are not always reimbursed by banks. Only one out of three frauds per year was reimbursed last year. The bank generally blamed the consumer for negligence.
The new DSP2 Directive (European Payment Services Directive 2nd version) requires that the transaction must be confirmed by the bank through a “strong authentication” system, when making an online purchase. The French authorities have given a deadline for the first quarter of 2021 for all the banks to be compliant.
In light of these elements, companies must actively protect their intellectual property rights, including property on the Internet, to avoid the drop in sales and the loss of customers. Indeed, it is known that consumers who are victims of a scam will tend to turn away from the company whose products or services have been counterfeited.
An effective defence of the brand on the Internet is carried out through a strategy that includes prior searches and surveillance. The prior search provides a snapshot of the current situation of the trademark on the Internet (existing infringements, potential prior art in certain countries, etc.). The surveillance allows the detection of all domain name registrations reproducing or imitating the trademark, from the moment the surveillance is set up. It keeps in check any potential infringement as soon as it is detected.
Companies which specialise in the audiovisual sector often require protection for their program titles through trademark law. If granted, this protection obviously offers considerable advantages for the company, but it is necessary to take into consideration some limits to it.
The advantages of trademark protection
First, the term of protection of a title by trademark law. Trademark law initially grants protection for 10 years, but this term is renewable indefinitely (Art L712-1 CPI). Thus, provided the owner submits a renewal application within the time limit, the trademark can be protected indefinitely. Copyright, on the other hand, can grant protection up to 70 years after the death of the author of the work, but the ‘guarantees’ of protection may be less obvious than trademark law because there is no register of copyright.
On the other hand, while copyright imposes a condition of originality (Art.L711-2 CPI), trademark law requires a distinctive character (Art L711-2 CPI). Thus, if the title of TV show or audiovisual program is distinctive and acts as an indicator of origin, it may be protected. In contrast, for copyright, it is necessary to prove originality, which is more difficult to prove. Since copyright is not subject to registration, the condition of originality must always be demonstrated in the course of a dispute. Thus, copyright protection is never certain.
A title may be protected by trademark law if it does not directly designate the goods and services for which registration is sought. Thus, if the title is arbitrary, there is nothing to prevent the title from benefiting from this protection. Finally, it should be borne in mind that trademark protection is not an impediment to copyright protection; it is thus possible to combine both protections.
The limits of trademark protection
Some limitations to the protection of audiovisual programs’ titles by trademark law should nevertheless be noted. The protection conferred by trademark law grants a monopoly on the use of the registered terms (Art L-713-1 CPI) and therefore the right to oppose use by third parties. However, in order to do so, it is necessary to prove :
The use of the sign by a third party “as a trademark”
First, it must be proven that the use of the title by a third party was “as a trademark”. To illustrate this concept, we can refer to the judgment rendered about the series “Le Bureau des Légendes”. In this case, the Paris Court of First Instance (TGI) dismissed the infringement action brought against a book, using the title, devoted to the study of the series. The purpose here was not to offer goods and services designated in the registration, but simply to refer to the series as such (TGI Paris, réf., April 16, 2018, n°18/53176). Use as a trademark would have been in the context of the sale of derivative products in connection with the series.
A commercial use of the sign
Secondly, in order to oppose the use of a sign, the owner must provide proof of commercial use. This means that it is not sufficient to prove merely a reference to the title. The use must take place in the course of business and not only for illustrative purposes. There must be a genuine commercial link between the sign and the use made by a third party.
A risk of confusion in the mind of the public
Finally, the risk of confusion in the public mind must be shown. The use of the sign must raise doubts as to the origin of the goods and services offered. A trademark is intended to guarantee in particular the origin of the goods and service. Thus, the use of the sign by a third party must infringe this guarantee of origin, severing the direct link between the sign and its owner.
For instance, the judges considered that there was no likelihood of confusion between Canal+’s trademark “LE ZAPPING” and the trademark “LE Z#PPING DE LA TELE”. In view of the evidence provided, and the overall impression, there was no likelihood of confusion. The phonetic and visual differences of the two signs were sufficient to eliminate this risk (CA Versailles, 12th ch., July 3, 2018, n°18/02091).
However, the principle of speciality of the trademark may be used against the owner of a trademark. Since a trademark is registered for specific categories of goods or services, the owner can only oppose the use of the sign for identical or similar goods or services. Thus, if a sign is used for a completely different area of activities, the owner will not be able to oppose this use of the sign. This was the case for Canal +, concerning its mark “LE ZAPPING”. The notoriety of this brand was certainly recognized by the Court, but only in the field of television broadcasts. Thus, it was not possible for Canal + to oppose the filing of a similar trademark for other categories of goods and services than those designated in registration of the trademark “LE ZAPPING”.
Conclusion
Trademark law grants additional protection to a title of an audiovisual program. It complements the protection that copyright can grant, in a more certain way through the requirement of registration. The point of filing a sign representing the title of an audiovisual work is therefore to acquire double protection, on both grounds. Admittedly, the conditions to be met in order to be able to bring an infringement action under trademark law may be difficult to achieve. Nevertheless, trademark law offers more means of action, and therefore of compensation for damage in the event of unjustified use by third parties.
Dreyfus law firm, expert in trademark law, will assist you in the management of your trademark portfolio.
In the decision of June 18, 2019, the General Court of Justice of the European Union applied Article 7, paragraph 1, m) of Regulation No. 2017/1001, which prohibits the registration of trademarks that consist of “an earlier plant variety denomination registered in accordance with Union legislation” or “or reproduce in their essential elements, an earlier plant variety denomination”.
In this case, the German company Kordes filed an application for the European trademark “KORDES’ ROSE MONIQUE” in Class 31 for the following description of goods: “Roses and rose bushes as well as products facilitating the multiplication of roses”. However, the European Union Intellectual Property Office (EUIPO) refused the registration of the trademark in question because it is composed of the term “MONIQUE”, corresponding the variety denomination “MONIQUE” registered in the Dutch register of plant variety protection.
To do so, the EUIPO must rely on the fact that the plant variety denomination “MONIQUE” is reproduced in the same way in the trademark applied for, and also the fact that this term is an essential element of the trademark.
Kordes appealed to the General Court of the European Union to reverse the EUIPO’s decision. In this respect, the company argued that the term “MONIQUE” cannot be considered as an “essential element”. In addition, the company argued that the public would perceive the trademark as an indicator of roses of the “Monique” variety commercialized by the company Kordes.
The Court held that the distinctive and dominant element of the mark KORDES’ ROSE MONIQUE is the element “KORDES”, placed at the beginning, this word is the essential element and the indicator of the source of origin. Accordingly, the Court considered that the variety denomination “Monique” cannot constitute an “essential element” of the trademark.
Consequently, the Court reversed the decision of the EUIPO refusing the registration of the trade mark KORDES’ ROSE MONIQUE.
In this case, Fourth Estate Public Benefit Corporation, an online news producer, had granted copyright licenses on some of its content to Wall-Street.com, a news website. The license agreement required that the licensee delete any item produced by Fourth Estate after the license had expired, which Wall-Street.com refused to do. Therefore, Fourth Estate filed a copyright infringement suit against Wall-Street.com., which in response requested dismissal of the action, claiming that Fourth Estate could not take legal action before the Copyright Office had followed up on its application for registration. The district court granted this motion and the Court of appeals for the Eleventh Circuit affirmed. Fourth Estate asked the United States Supreme Court to review the case, and its petition for certiorari was granted.
The debate focused on the interpretation of section 411 (a) of the Copyright Act (1976). This article states that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title”.
The question was whether, in order to bring an infringement action, it was sufficient to have filed an application for registration, payed the fee, and provided copies of the work, or if the Copyright Office had to have already granted the application for registration. The Supreme Court held that the fact that registration “has been made” means that the Copyright Office has registered the copyright or has definitively refused to register it, after having examined the duly filed application. This judgment therefore highlights the importance of the registration procedure before the Copyright Office.
In this respect, we recommend applying for copyright registration as soon as possible. Indeed, an earlier registration offers important advantages for right’s owners. Indeed, if the registration is made within five years of the publication of the work, it has probative value. If the registration is made within three monthsof the publication of the work, a right’s holder may be granted statutory damages and attorney’s fees, not merely damages. In addition, once registration has been completed, the copyright owner may object to the importation of counterfeit works into the United States.
Therefore, the right to file an infringement suit to protect rights is only one of the advantages granted by the Copyright Act to copyrights holders. Following the Supreme Court’s decision, copyright owners must now pay close attention to the Copyright Office’s examination delays. It takes approximately seven months to examine an application. Exceptionally, an accelerated procedure, called “special handling”, allows the Office to rule within five working days. However, this accelerated procedure carries higher fees. Therefore, it is in the holder’s interest to anticipate having to defend his rights. The earlier the application for registration is filed, the more likely the applicant will be able to defend his rights by filing a copyright infringement suit.
Under section 411 of the Copyright Act, if registration is refused, the applicant may nevertheless file an infringement action if a notice to that effect is sent to the Copyright Office, along with a copy of the complaint. The Office can choose within sixty days to become a party to the action with respect to the issue of registrability of the copyright claim. . A right’s holder can thus take legal action even if the absence of registration makes his situation more precarious.
In conclusion, we note that it is in the best interests of rights holders in the U.S. to register their copyrights. Furthermore, despite the United States’ accession to the 1886 Berne Conventionin 1989, this text is not directly applicable in U.S. law, under the Berne Convention Implementation Act of 1988. As a result, rights holders from a country party to the BerneConvention, such as France, have to register their rights with the Copyright Office in order to be able to invoke all the rights conferred by American copyright law. This registration is particularly recommended if the owner wishes to exploit his work through licensing agreements (e.g. software), or if the work is to be distributed online (e.g. music).[/vc_column_text][/vc_column][/vc_row]
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Written by Nathalie Dreyfus13/12/2021 
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