On October 17, 2024, the Court of Justice of the European Union (CJEU) delivered a pivotal judgment in the case of Sony Computer Entertainment Europe Ltd v. Datel Design and Development Ltd (Case C-159/23). This decision addresses the extent of copyright protection for computer programs under Directive 2009/24/EC, particularly concerning software that modifies variable data during program execution without altering the program’s source or object code.
Background of the case
Sony, a leading developer and distributor of PlayStation consoles and associated video games, initiated legal proceedings against Datel, a company specializing in software and devices that interact with gaming consoles. It identified that Datel was marketing products such as the “Action Replay PSP” software and the “TiltFX” device. These products allowed users to alter gameplay by unlocking features or modifying controls, achieved by running concurrently with Sony’s games and altering variable data in the console’s random access memory (RAM) during execution. Sony contended that such modifications infringed upon its exclusive rights to authorize alterations of its computer programs, as protected under Directive 2009/24/EC on the legal protection of computer programs.
Legal questions referred to the CJEU: Analysis and judgment
The Bundesgerichtshof (Federal Court of Justice, Germany) referred two primary questions to the CJEU:
Scope of Protection: Does the modification of variables transferred to a computer’s RAM by a protected program, without altering its source or object code, fall within the protection afforded under Article 1(1) to (3) of Directive 2009/24/EC?
Definition of Alteration: Does such modification constitute an “alteration” under Article 4(1)(b) of the Directive, which grants the copyright holder exclusive rights to authorize or prohibit any alteration of their computer program?
In its deliberation, the CJEU focused on the interpretation of “forms of expression” of a computer program as protected under Article 1 of Directive 2009/24/EC. The Court emphasized that protection extends to the program’s source code and object code, as these are the expressions that enable the reproduction or subsequent creation of the program. Conversely, elements such as functionalities, programming languages, and data file formats do not constitute protected forms of expression.
The Court concluded that the content of variable data inserted by a program into a computer’s RAM during execution does not fall within the protection conferred by the Directive, provided that such content does not enable the reproduction or subsequent creation of the program. Consequently, modifying these variables without altering the source or object code does not constitute an infringement of the copyright holder’s exclusive rights under Article 4(1)(b).
Implications of the decision
This judgment delineates the boundaries of copyright protection for computer programs within the EU, clarifying that:
Variable Data vs. Source Code: Alterations to variable data during program execution, which do not impact the source or object code, are outside the scope of protection under Directive 2009/24/EC.
Functional Modifications: Software that interacts with existing programs by modifying runtime variables, without altering the program’s code, does not infringe upon the exclusive rights of the original program’s copyright holder.
This decision has significant ramifications for developers of ancillary software, such as game enhancement tools or customization applications, affirming that certain modifications at the execution level are permissible under EU copyright law.
Conclusion
The CJEU’s ruling in Case C-159/23 provides critical guidance on the interpretation of copyright protection for computer programs, particularly concerning the distinction between protected forms of expression and permissible modifications during program execution. This clarification is essential for both software developers and rights holders in understanding the legal parameters of program modification and the scope of intellectual property rights within the European Union.
At the Dreyfus firm, we bring expertise across all areas of intellectual property, including copyright law, to provide you with the highest level of guidance and protection for your rights and innovations.
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In an emblematic decision that underscores the complex relationship between artificial intelligence (AI) and copyright laws, the Municipal Court of Prague has set a precedent with potential far-reaching implications. This decision, one of the first of its kind in Europe, determined that an image generated by the AI tool DALL-E could not be copyrighted because it was not created by a natural person.
Background of the case
The case involved an unnamed claimant who used OpenAI’s DALL-E to generate an image for their website, with the prompt : “Create a visual representation of two parties signing a business contract in a formal setting, such as a conference room or a law firm office in Prague. Show only hands.” After the image was created and posted on the website, it was copied by a local law firm and used on their own website, presumably to illustrate a publication or message.
The claimant sought legal redress for copyright infringement, asserting authorship of the AI-generated image and requesting injunctive relief against the defendant.
Analysis of the decision
The crux of the court’s deliberation centered on the issue of authorship and whether an AI could be recognized as the author of a copyright work under existing legal frameworks. The Czech Copyright Act, particularly Article 40, recognizes the rights of the author, including the ability to challenge unauthorized use of their works. However, Article 5(1) of the Act specifies that the author is “the natural person who created the work.”
In this instance, while the claimant argued that the image was created under their instruction and thus, they were the rightful author, the court noted that the claimant had not provided sufficient evidence to substantiate this claim beyond their own testimony. Therefore, the claimant failed to meet the necessary burden of proof for establishing authorship and lacked the legal standing to pursue the claim.
Moreover, the court observed that the image, being the product of an Artificial Intelligence, did not fulfill the criteria of a work resulting from the creative activity of a natural person as required by the Act. Consequently, the image was not eligible for copyright protection.
Commentary
This ruling is not entirely unexpected given the current legal standards, but it does highlight several key considerations for the future of AI in creative domains. The court did not entirely dismiss the possibility that the plaintiff could be considered the author if sufficient evidence were presented. This opens up discussions on what could constitute sufficient evidence and the level of human involvement necessary for AI-generated works to qualify for copyright protection.
As AI technology continues to evolve and integrate more deeply into creative and commercial practices, this case sets a significant precedent. It emphasizes the necessity for artists, businesses, and legal professionals to consider alternative forms of protection, such as contracts, to safeguard their interests.
The decision also serves as a reminder of the urgent need for legislative bodies to revisit and possibly revise copyright laws to better accommodate the realities of AI-driven creativity. This is especially pertinent in Europe, where the integration of AI in various sectors is accelerating, necessitating clear legal frameworks that recognize and protect the contributions of both human and technological creations.
Dreyfus Lawfirm can offer expertise on Copyright and AI matters.
In a world where the lines between different artistic disciplines are becoming increasingly blurred, fashion designers often draw inspiration from art to bring their collections to life or to promote their brands.
This issue echoes the recent dispute between the brand Zadig&Voltaire and artist Julian Charriere over a promotional video for the brand that features a flaming fountain, similar to the one captured by the artist in his “And Beneath it all Flows Liquid Fire” video in 2019.
Many fashion designers are inspired by works of art to create their collections and advertising campaigns. However, some of them cross the line and copy the work of established artists almost exactly, without giving them the credit they deserve. This practice is not only ethically questionable, but can can also be harmful to the original artists in terms of violating their intellectual property (“IP”) rights.
Legal issues of intellectual property in fashion and art
Copyrighting protects original works of the mind, whether they are literary, musical, graphic, plastic or photographic creations. Fashion designers may be tempted to take inspiration from a work of art to design a new piece or an advertising campaign, but it is essential to consider the legal issues related to IP.
Plagiarism, or mindless copying of a work, is a violation of copyright. In the case of fashion, it can mean using a work of art without permission to create prints, patterns or even the shape of a garment. If the copying is obvious, the original artist can sue for damages.
The fine line between fashion and art is even more blurred as many luxury brands have launched their own art foundations such as the Cartier Foundation or the Louis Vuitton Foundation.
However, it is important to note that copyright does not protect ideas, only their expression. Thus, taking inspiration from a work of art in order to create a fashion piece is not necessarily illegal, so long as the creation is suitably original and does not directly copy the work in question. Additionally, some artists occasionally can collaborate with fashion designers, such as Louis Vuitton, who recently worked with Japanese artist Yakoi Kusuma to produce a new collection as well as to transform the Louis Vuitton store in Paris, now decorated with a monumental silhouette of the artist.
Consequences of intellectual property infringement
IP infringement can have negative consequences for artists and the fashion industry.
Plagiarism robs original artists of recognition and fair compensation for their work. When a piece of work is copied without permission, the original artist is not credited or paid for their work. This can lead to a loss of income for artists, causing them to abandon their creative work or settle for less than their talent.
In addition, intellectual property infringement hinders innovation in the creative industry. When artists are not rewarded for their work, it can discourage innovation and the creation of new works. Companies that copy original works do not need to devote resources to research and development of new ideas, as they can simply copy those of others.
Finally, intellectual property infringement can have a negative impact on the brand image of companies that engage in this practice. Consumers are increasingly aware of the importance of ethics and corporate social responsibility. When a company is accused of plagiarism or intellectual property infringement, it can damage its brand image and consumer confidence in the company.
In summation, the phenomenon of plagiarism of art by fashion raises complex questions and considerable stakes, both artistically and legally. The line between inspiration and copying can sometimes be unclear, and the fashion industry seems to navigate these murky waters in search of creativity and innovation.
While some see this appropriation as a democratization of art and a way to enrich fashion, others see them as a threat to the value and integrity of original works. At a time when legislation is struggling to adapt to these issues, it is the responsibility of fashion designers and consumers to commit to ethical fashion that respects art and its creators.
It is critical to continue the dialogue between the different actors involved and to rethink the mechanisms of intellectual property protection to ensure a fair balance between creative freedom and respect for copyright. Creators, as well as artists, can call upon professionals such as Industrial Property Attorneys, with their networks of lawyers specialized in intellectual property, to ensure that no IP rights are infringed upon.
We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets. We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.
This article is current as of the date of its publication and does not necessarily reflect the present state of the law or relevant regulation.
Intellectual property (IP) litigation is an important tool for protecting and enforcing rights in IP assets, such as patents, trademarks, and copyrights. When an IP owner’s rights are infringed or someone else is using their IP without permission, the owner may have the right to take legal action against the offender. IP litigation can help the owner to protect their valuable IP assets, as well as their reputation and market position.
The benefits of IP litigation include:
1. Protection of IP Rights IP litigation is an effective way to protect your IP assets from infringement. It allows you to enforce your IP rights and stop unauthorized use of your IP, while also deterring future infringers. By filing a lawsuit, you can also seek damages or other relief to make up for any losses caused by the infringement.
2. Strengthening of IP Rights Through the process of IP litigation, you can also strengthen your IP rights. This is because the court may issue an injunction that requires the infringing party to stop using your IP or to pay you for any profits they made from using your IP. This can help to bolster your IP rights and make it more difficult for others to infringe on them in the future.
3. Deterrence of Unlawful Use The threat of IP litigation can also act as a deterrent to others who may be considering using your IP without permission. By demonstrating that you are willing to take legal action to protect your IP rights, you can create a deterrent effect that can help to discourage others from infringing on your IP.
4. Valuable Legal Remedies IP litigation can also provide you with valuable legal remedies that can help you to recover the costs of defending your IP rights. In some cases, you may be able to recover damages or other relief to compensate you for any losses caused by the infringement.
In addition to these benefits, IP litigation can also provide you with a sense of satisfaction that you are protecting your IP rights and standing up for what is right. It can be a powerful way to make sure that your IP is respected and protected. So how can you make the most of IP litigation? Here are a few tips:
1. Understand Your IP Rights The first step to making the most of IP litigation is to understand your IP rights. You should be familiar with the different types of IP protection and what rights they provide, as well as any related laws or regulations. This will help you to identify potential infringements and determine whether or not you have the right to take legal action.
2. Seek Professional Advice It is also important to seek professional advice when it comes to IP litigation. An experienced IP lawyer can provide you with guidance on your legal rights and remedies, as well as help you to pursue a successful legal action.
3. Take Action Quickly Acting quickly is key when it comes to IP litigation. You should take action as soon as you become aware of a potential infringement, as the longer you wait, the more difficult it may be to prove your case.
4. Gather Evidence The more evidence you have to support your case, the stronger it will be. This means gathering evidence such as documents, emails, and other records that show the infringement occurred.
By following these tips, you can make the most of IP litigation and protect your valuable IP rights.
We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets. We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.
Over the past decade, the architecture, engineering, construction and Operations (AECO) industry has undergone several developments, particularly in the area of information technology. Building Information Modelling (BIM) is now globally considered a better solution to enormous building problems, which made a huge effect on the building and construction industry. The industry is facing a practical challenge in protecting design when conflict arises between owner’s and architect’s proprietary rights.
There was a time when pencil, paper and complex drawing were the base of construction planning, creating a tiring process with lots of loopholes. However, things have changed. It is now all about Building Information Modelling (BIM) which has been part of the construction industry for some time now. It connects the AECO professionals to design, build and operate infrastructure more efficiently. It is more than just 2D or 3D modelling. It is the process of designing a building collaboratively using one cohort system of computer models rather than as a separate set of drawings.
So, what does make BIM so exciting?
It provides insights into design constructability, reduces errors, and improves the efficiency and effectiveness of the construction phase. It can help owners in predictive maintenance, asset tracking and facilities management for future changes and renovation work. It does not solely refer to buildings, but to all sectors that have to do with construction, including roads, railways, utilities, bridges, tunnels, structures, architecture, topography, etc. BIM can be classified into different levels.
Where does intellectual property come into this conversation?
Let’s take a situation- an architect draws a design plan for the construction of a cafeteria. The contractor executes the work as per plan. However, the owner decides to reuse the design with some small changes for a second cafeteria. In such a case, apart from monetary consideration for services of design, does the architect have any other rights? Can he stop the owner from making changes to the design suggested by him? The answer to all such questions lies in Copyright and Design Law.
BIM models created in the tendering process before the award of the contract will not usually be registered. Therefore, BIM models cannot be protected by Design Law. Article 10 of Directive 98/71/EC, provides that the protection of designs is subject to their registration. However, unregistered designs can be covered by copyright under the concept of artistic work although EU Member States differ in how national copyright law protects unregistered designs. For instance, the French Intellectual Property Code (Code de la propriété intellectuelle) article L112-2.7, and the Danish Consolidated Act on Copyright 2014, Consolidated Act No 1144 of 23 October 2014 (Bekendtgørelse af lov om ophavsret (LBK nr 1144 of 23/10/2014)) in section 1.1, all list works of architecture under copyright law.
Determining the ownership of IP rights over the BIM model and its elements is necessary to determine the lawful exercise of ownership. Generally, an owner of a model is granted exclusive right regarding the use of Intellectual Property, and consequently to copy and disclose it as it wishes. In BIM Level 3, however, the authors of the model are regularly indistinguishable. However, if the contracting authorities are services of design, does the architect have any other rights ? Can he stop the owner from making changes to the design suggested by him ? The answer to all such questions lies in Copyright and Design Law.
BIM models created in the tendering process before the award of the contract will not usually be registered. Therefore, BIM models cannot be protected by Design Law. Article 10 of Directive 98/71/EC, provides that the protection of designs is subject to their registration. However, unregistered designs can be covered by copyright under the concept of artistic work although EU Member States differ in how national copyright law protects unregistered designs. For instance, the French Intellectual Property Code (Code de la propriété intellectuelle) article L112-2.7, and the Danish Consolidated Act on Copyright 2014, Consolidated Act No 1144 of 23 October 2014 (Bekendtgørelse af lov om ophavsret (LBK nr 1144 of 23/10/2014)) in section 1.1, all list works of architecture under copyright law.
Determining the ownership of IP rights over the BIM model and its elements is necessary to determine the lawful exercise of ownership. Generally, an owner of a model is granted exclusive right regarding the use of Intellectual Property, and consequently to copy and disclose it as it wishes. In BIM Level 3, however, the authors of the model are regularly indistinguishable. However, if the contracting authorities are to be granted ownership of a BIM model jointly with a tenderer or winner, exercising their right by disclosing it to a third party would be contrary to the interest of the other joint owner. Therefore, the French, German and Danish legislatures grant joint ownership of jointly developed BIM models and regulate in their copyright laws the right of the owners in exercising ownership rights.
In this regard, the French Intellectual Property Code Article L.113-3 provides:
‘The collaborative work is the common property of the co-authors. The co-authors must exercise their rights by an agreement. In the event of disagreement, it is for the civil jurisdiction to rule.’
The developers of a BIM model in a tendering process will be the joint owners of the model and the exercise of their rights is governed by the copyright law of the relevant EU Member State. Since the exercise of its ownership rights by each owner can potentially conflict with the interests of another owner, such exercise would generally only be permitted with the consent of the other owner(s). Therefore, the contracting authorities would not have the right to disclose the BIM model to third parties without the prior consent of the tenderer with whom they developed the BIM model.
The possibilities of BIM are endless, the trend in the construction industry is, and when there is something new, people immediately want to assign more risk to it. Thus, companies/individuals have Thus, companies/individuals have started getting the intellectual property right registered during the initial stage of a project.
Science and technology are developing faster than intellectual property legislation. As a result, previously unknown products of intellectual activity are regulated by general rules. While working and exchanging digital data on a collaborative platform can cause problems related to intellectual property such as if a copyright violation of models and intellectual property enters the court process, it poses a great financial risk and can cause project delays that will result in its loss. Before a project is implemented, there needs to be a clear understanding not only of who owns the model but also of who is responsible for the model. Then, we must consider which actors have the potential to retain the collaborative product for its sustainability. Therefore, it is necessary to conduct a review and synthesis of the related studies to identify the model ownership and intellectual property rights.
Social media platforms allow their users to create unique usernames which become part of their virtual identity, allowing them to share content and network with other platform users. These accounts become an integral part of our virtual life so many would say they are, in fact, one’s intangible property.
A. Can we know for sure who has right to ownership?
There are different types of social media accounts – personal and business – and although, in most cases they are easily distinguishable, sometimes the lines are blurred especially when employees of companies take on marketing roles.
Personal accounts are straightforward, as long as you read the fine print. You go on vacation, snap a photo and update your status on how your well-deserved vacation is going by uploading it to Instagram or Facebook, a platform you may use to connect with your friends and family. You are the only one who has access to your unique log in details such as username and password, hence a private account.
‘Business’ accounts run by a company’s employees are more complicated, regarding ownership and access to, what would otherwise be, private information. So, who owns business social media accounts accessed and controlled by employees? There are various factors which contribute to making that decision. Ideally, you want to ensure that other platform users recognise the username and associate it with the business, not the employee, like a trademark. The subject of content is still a grey area – is it the intellectual property of the employee or the company itself?
B. The hardships of distinguishing ownership in Hayley Paige v JLM Couture
The former question was the focal topic of discussion in the U.S. case of Hayley Paige Gutman v JLM Couture, where the parties disputed ownership rights of the hybrid Instagram account. Referring to the account as ‘hybrid’ due to the nature of the arguments presented by the parties.
This case was filed as a result of an alleged misuse of the account after Gutman advertised third party products without the approval of her employer, JLM Couture. The defendant, Gutman, argued that due to the style of the posts on her Instagram handle @misshayleypaige, the account was of a private and personal nature, created in personal capacity, even though she has used the account to promote her bridal collection designed for her parent company, JLM Couture.
The appellant, JLM Couture, counter proposed the account being a business account due to the significant percentage (95%) of the content consisting of marketing for the brand, Hayley Paige. The decision favoured the arguments of JLM Couture, stating that Gutman was under a contractual obligation to give her employer access to the account in question since she has signed a contract allowing the company to reserve the right of ownership over any marketing platform and contents published under the name of Hayley Paige or any derivative thereof in relation to her branding. Eventually, multiple negotiations and a restraining order (against Gutman) later, it was agreed that Gutman’s social media account was primarily used for marketing purposes, regardless of the odd personal content here and there, and JLM Couture had the contractual right to access it.
The economic value of a business social media account is often greater than a personal one, especially those which have a large following. Companies rely on these social media platform followings to grow the image and reputation of their establishment. Often, when there are blurred lines regarding the ownership of social media accounts, employees can easily damage a company’s imagine. For instance, in the case of PhoneDog v Kravitz, after the termination of Kravitz’s employment, he used the Twitter account originally created to advertise the services of PhoneDog during his employment, to advertise the services of its competitor. The appellant sued for misappropriation of the account and disclosure of trade secrets. The parties settled and Kravitz continued to use the Twitter account, but the appellant endured financial loss and, without a doubt, a loss of clientele.
A business’ right to ownership of social media accounts used for marketing purposes should be made clear, not only to avoid legal disputes such as those mentioned above but also to protect the integrity and image of the company. Employment contracts should contain social media clauses stating that any content produced and published on the social media account under the management of the business belongs exclusively to the business. So, a business social media account constitutes virtual property so why should you risk losing it?
Who really owns a social media account?
The user is the account holder, but the platform retains ownership of the infrastructure. The terms of use generally state that access can be restricted or removed at any time.
➡ A social media account is an intangible asset, governed by contractual terms.
Can a social media account be transferred or sold?
In principle, selling or transferring a personal account is prohibited by most platforms’ terms. However, in a professional context (influencer, brand), monetization or transfer may be allowed under contractual arrangements.
What happens if there is a dispute over a social media account?
In the event of a dispute (employer/employee, co-founders, heirs), courts analyze management, usage history, and intent to determine ownership. Including specific clauses in contracts or policies is strongly advised.
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
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.
Expertise and the scope of the assessment
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.
In a decision handed down on 23 February 2021, the Paris Court of Appeal offers some guidelines in copyright infringement, recalls some key principles and provides an overview of all the usable means of defense.
In this case, the internationally renowned artist Jeff Koons was condemned for copyright infringement, in solidum with his co-defendants and the Court awarded €190 000 in damages. This amount greatly exceeds the amount awarded in the first instance, where the Court ordered Jeff Koons and his co-defendants to pay €135,000 in damages.
Let’s dive into the facts: in 1988, Jeff Koons started his “Banality” series of works, which consisted of creating three-dimensional objects inspired by various images. One of the works in this series, “Fait d’hiver”, shows a young woman in a fishnet corset, lying in the snow, with a small pig wearing a barrel around its neck.
In November 2014, the Centre Pompidou in Paris hosted a retrospective of Koons’ work, in which several works from the “Banality” series were exhibited, two of which have been subject to infringement lawsuits.
One of the two disputed works is “Fait d’hiver”. The designer of a 1989 advertising campaign for the company Naf-Naf, Frank Davidovici, sued the Centre Pompidou and Jeff Koons, among others, for copyright infringement of the campaign. At that time, the Naf-Naf brand’s Autumn/Winter collection was presented to the general public thanks to a photo of a young woman lying on the snow and accompanied by a pig, wearing a collar reminding one of a Saint Bernard dog.
On November 8, 2018, the Paris Court of First Instance found all the defendants guilty of infringing Frank Davidovici’s economic and moral rights. In their appeal, the defendants then set out all the possible defences in the context of such infringement action.
Was the “fair use” exemption a good idea?
Insofar as Jeff Koons’s work “Fait d’hiver” was conceived in the United States, the artist upheld that United-States law should have applied. To strengthen his argument, he relied on the Rome II Regulation, which seeks to preserve the principle of “lex loc protectionis” about “a non-contractual obligation arising from an infringement of an intellectual property right”. It would have been a mistake for Jeff Koons not to try to benefit from this Regulation, notably since American law provides for the “fair use” exception, which allows the exclusive rights of an author to be limited, in particular, to allow his work to be parodied (17 U.S.C. §107). But let’s remember that in 1992, Koons lost an action in which he had claimed this exception. At the time, the Court charged him with copyright infringement for his sculpture “String of Puppies”, which was considered a copy, with a few differences, of a photo taken by the American photographer Art Rogers. The judges deemed that the slight differences between the original photograph and the sculpture were insufficient to rule out infringement.
That said, and thus contradicting one of Jeff Koons’s arguments showing the differences between his “Fait d’hiver” and that of Naf-Naf, the Court of Appeal recalls that infringement is not assessed regarding the differences, but rather in terms of the similarities between the works involved.
Not too much of a surprise, the Paris Court of Appeal found that French law applied to “Fait d’hiver” insofar as the copyright infringement took place in France. Hence, the exception of fair use was not applicable in the present case.
Did Frank Davidovici have legal standing?
Koons then claimed that Frank Davidovici lacked legal standing. Indeed, the original photograph was a collective work and therefore the property of Naf-Naf. The evidence provided by the appellants was not enough for the Court of Appeal, which came to the same conclusions as at first instance, namely that the advertising campaign was not a collective work but a collaborative work, in which Frank Davidovici’s contribution could be “individualized”, and that the other authors had assigned their economic rights to him.
On the French five-year limitation period for infringement
The appellants argued that the work had been created more than 20 years before the subpoena (which took place on January 9, 2015), that it had been exhibited since 1995 in a Parisian gallery. In addition, they claimed that Jeff Koons displayed the reproduction on his website where he described it as ‘unmissable to anyone interested in [his] work’ and by “anyone”. Koons targeted the respondent.
The Court of Appeal rejected this argument since the respondents were criticising the exhibition at the Centre Pompidou, which had begun in November 214, i.e. two months before the subpoena.
Pleas in law based on the freedom of artistic expression and the parody exception
The appellants invoked Article 10 of the ECHR (European Convention for the Protection of Human Rights) to remind them that judges shall not interfere with the artists’ creative freedom or deny their artistic approach. However, this article also states that the artistic freedom of expression includeslimitations, and in this case, the latter was legal since it relied upon Article L.122-4 of the French Intellectual Property Code. This article condemns any adaptation or transformation of a work without the consent of its author. Considering that the sculpture uses the dominant elements of the original photograph (the penguins and the pig’s flower necklace being of little relevance) and that it makes no mention of Davidovici’s work, Koons was obviously at fault. There is a very narrow line between inspiration and infringement of earlier work.
The appellants also sought to invoke the parody defence, relying on the definition given by the CJEU (Court of Justice of the European Union) in 2014 in the Deckmyn case, which stated that “the essential characteristics of parody are, first, to evoke an existing work while being noticeably different from it, and, secondly, to constitute an expression of humour or mockery“. The Paris Court of Appeal considered here that the humorous purpose was certainly not obvious, insofar as Koons described his “Fait d’hiver” as being “a work on renewal“, the illustration of the “process of self-acceptance“. Besides, according to the Court, there was a gap of almost 30 years between the advertising campaign and the sculpture. This period was so long that the public might not have perceived the parody.
The boundary between free inspiration and art infringement is very narrow, and sometimes difficult for artists to apprehend. Despite the solid defence strategy of Jeff Koons, one must acknowledge that it is essential to obtain prior approval before creating a work that may infringe the rights of another artist.
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Written by Nathalie Dreyfus04/02/2025 
Over the past decade, the architecture, engineering, construction and Operations (AECO) industry has undergone several developments, particularly in the area of 
In a decision handed down on 23 February 2021, the Paris Court of Appeal offers some guidelines in copyright infringement, recalls some key principles and provides an overview of all the usable means of defense.