France

1. TRADE MARK

1.1. Sources of law

In France, trade marks are governed by both national and supranational rules.

  The main national source of law is the French Intellectual Property Code (IPC), Part I, Book VII (Article L.711-1 et seq. and the corresponding articles in the regulatory section), resulting from the original codification of IP rules in 1992 and later modifications, the last of which arise from the law of 11 March 2014 which reinforces the provisions against counterfeiting.

  As France is a member state of the European Community (EC), its national law must comply with the relevant Community instruments, as interpreted by the Court of Justice of the European Union (CJEU).

  The main European regulatory instruments concerning trade marks are:

  • EC Directive No. 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (replacing EC Directive No. 89104-EC of 21 December 1988); 
  • EC Regulation No. 207/2009 of 26 February 2009 concerning Community trade marks for industrial property titles covering the whole EU territory (replacing EC Regulation No. 40/94 of 20 December); 
  • EC Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights; 
  • EC Regulation No. 608/2013 of 12 June 2013 concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No. 1383/2003. 

  France is also party to several International agreements concerning trade marks, mainly:

  • the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended; 
  • the Madrid Agreement of 14 April 1891 concerning the International Registration of Marks and the Madrid Protocol of 27 June 1989 relating to the Madrid Agreement concerning the International Registration of Marks, as revised and amended; 
  • the Marrakech Agreement on Trade-related Aspects of Intellectual Property Rights of 15 April 1994; 
  • the Trade Mark Law Treaty of 27 October 1994, aimed at the simplification and harmonization of national and regional trade mark registration procedures, completed by the Singapore Treaty on the Law of Trade Marks of 27 March 2006. 

  When in conflict, the different applicable sources are prioritized as follows: the French Constitution, ratified international treaties in their scope of application including European law, French laws and then regulatory acts.

  Statutory law supersedes case law, which is not binding on other courts but may have a persuasive effect for similar cases. 

1.2. Substantive Law

Under French law, trade mark protection requires a registration and the scope of protection is limited to the goods and services covered.

  However, pursuant to Article L.713-5 of the IPC, there are two specific cases in which a sign can benefit from a broader protection:

  • a registered trade mark with a reputation (that is a trade mark that has acquired a reputation for the covered goods and services) which enables goods and services not covered to benefit from the protection; 
  • an unregistered well-known trade mark pursuant to Article 6 bis of the Paris Union Convention, which benefits from a protection for goods and services for which it is well-known. 

  Case law has specified that for this purpose, a trade mark is famous when it is "known by a significant part of the relevant public for the products or services it covers" (CJEU, General Motors, 14 September 1999, C-375/97; Court of Appeal of Paris, pole 5, ch. 2, 19 November 2010, No. 09/22653).

  Thus, registered trade marks with a reputation and well-known trade marks as per Article 6 bis of the Paris Convention, can be protected against reproduction or imitation that constitutes an unjustified exploitation of the sign or is likely to cause prejudice to the owner of the mark.

  This derogative protection only applies when the right holder demonstrates fault and prejudice, which basically covers two main hypotheses:

  • a use that either causes dilution of the trade mark and is therefore detrimental to its distinctiveness, or that causes the trade mark to be tarnished, thus affecting its reputation: the reproduction or imitation of the sign is therefore faulty because of the harm suffered by the trade mark owner; 
  • the use can also be reprehensible (even if not directly harmful for the trade mark) when a third party unfairly takes advantage of the reputation of the sign by reproducing or imitating it, similar to parasitism or the free-riding phenomena. 

  Beyond the specific protection for famous trade marks, there are no particular rules governing trade marks that exist in the luxury industry. However, the "aura" of luxury surrounding them can facilitate the proof of their reputation for the application of the provisions of article L.713-5 of the IPC. 

1.3. Enforcement

Strictly speaking, there is no objective test to prove that a trade mark is renowned; instead, the reputation of a trade mark is assessed on the basis of all relevant objective elements, so that the claimant has to provide a body of evidence showing that their trade mark has an independent and autonomous power of attraction.

  In particular, it may be useful to highlight elements such as the use of the trade mark for commercially successful products and services, and in particular the market share held by the trade mark, the intensity, geographical extent and duration of use of the trade mark, the scale of the investments made by the undertaking in promoting the trade mark, the reference to the trade mark in press articles, and so on (see CJEU, General Motors; Court of Appeal of Versailles, ch.12, 27 April 2006, No. 05/03166; Court of Appeal of Paris, pole 5, ch. 2, 11 March 2011, No. 10/06428; Court of Appeal of Paris, 6 October, 2004 'Desperados', ch. 4 A).

  Oral testimony, affidavits and expert evidence can be admitted even though they are not the most relevant elements used to prove the renown of a trade mark before French courts. Furthermore, claimants often produce surveys, which may be taken into consideration by national judges (Court of Appeal of Paris, pole 5, ch. 2, 11 March 2011, No. 10/06428), but are not always considered to be good indications of the notoriety of the trade mark, since they might not be formulated objectively and the interpretation of the results is quite subjective. This is all the more true since the CJEU has stated that the degree of knowledge required in order to benefit from the protection of Article 5§2 cannot be defined as a predetermined percentage of the public (aforesaid CJEU, General Motors).

  Once the reputation of the trade mark has been demonstrated, the owner can "enforce it against all uses 'in the course of trade'" including against a domain name (Court of Appeal of Paris, pole 5, ch. 2, 19 November 2010, No. 09/22653), a trade name (Court of Appeal of Paris, pole 5, ch.2, 11 May 2012, No.  11/12836), or other distinctive signs. On those grounds, it is also conceivable to enforce a trade mark against an unauthorized use in social media, provided it is 'in the course of trade'.

  Furthermore, if, on principle, the owner of a trade mark cannot enforce it against its use as keyword(s) in a search engine as this use is not considered as being 'in the course of trade' (CJEU, 23 March 2010, C236/08 à C238/08, Google; Court of Cassation, Commercial chamber, 25 September 2012, No. 11-18.110, 904), the owner of a famous trade mark can do so, provided this unauthorized use enables the competitor to take unfair advantage of the distinctiveness or repute of the renowned mark. Such behaviour can indeed provoke a dilution or tarnishing of the well-known trade mark that is prejudicial to its owner as per Article 5§2 of the Directive or Article L.713-5 of the IPC (CJEU, 22 September 2011, C-323/09, Interflora). The same reasoning should apply to metatags.

  With respect to comparative advertising, the use of a trade mark which is disparaging, takes unfair advantage of the reputation of the trade mark or creates a risk of confusion, could be prohibited.  This is particularly the case when the behaviour of the third party directly aims to benefit from the marketing efforts made by the owner of a trade mark with a reputation in order to create and maintain the mark's image and of its subsequent power of attraction (CJEU, LOréal/Bellure, 18 June 2009, C-487/07).

  In the same way, the use of a trade mark in parodies for criticism, controversy or mere humour is considered a legitimate exercise of freedom of speech, valid as long as the use is limited to what is necessary for the needs of free expression, and that it remains "outside of the course of trade" (which, for example, is not the case when a well-known trade mark is used with a humorous comment on the front of tee-shirts offered for sale) and does not create a risk of confusion for consumers.

  It has to be noted that the right holder cannot simultaneously make claims on both grounds of trade mark infringement and unfair competition for the same set of facts.

  However, unfair competition and parasitism claims can be made before the court in charge of the trade mark dispute in addition to the infringement claims when the surrounding facts, aside from the mere use of the trade mark, amount to separate unfair practices and worsen the harm suffered (under specific conditions, the French distributor of the right holder can also make claims for acts of unfair competition and parasitism). 

2. COPYRIGHT

2.1. Sources of law

The main source of law governing copyright is the French Intellectual Property Code (IPC), which, in 1992, codified the previous statutory law on copyright of 1957 and the law on related rights of 1985, both as revised and amended.

  Copyright is also subject to supranational provisions contained either in Community legislation (France being a member state of the European Community relevant Directives and Council Regulations apply) or in international treaties regarding copyright of which France is a contracting party, mainly:

  • the Berne Convention for the Protection of Literary and Artistic Works of 9 September 1886; 
  • the Geneva Universal Copyright Convention of 6 September 1952; 
  • the Geneva WIPO Copyright Treaty of 20 December 1996. 

  When in conflict, the different applicable sources are prioritized as follows: the French Constitution, ratified international treaties in their scope of application including European law, French laws and then regulatory acts. 

2.2. Substantive law

There is no copyright registration in France: original works of the mind are protected as of their creation.

  French copyright law may cover any works of the mind independently of their type, form, merit or purpose except for certain documents for which protection is expressly dismissed either by the IPC or courts (such as official documents like texts of laws or court rulings).

  An indicative non-exhaustive list of the works of the mind that may be protected by copyright law is provided by Article L.112-2 of the IPC which notably mentions:

  • Works of applied art. 
  • Creations of seasonal industries of dress and articles of fashion. (Industries that, by reason of the demands of fashion, frequently renew the form of their products, particularly the making of dresses, furs, underwear, embroidery, fashion, shoes, gloves, leather goods, the manufacture of fabrics of striking novelty or of special use in high fashion dressmaking, the products of manufacturers of articles of fashion and of footwear and the manufacture of fabrics for upholstery shall be deemed to be seasonal industries.) 

  In any event, the work must be formalized enough to be past the stage of a mere idea and original meaning that it must result from arbitrary choices reflecting the personality of the author to be eligible for the protection granted by Books I and III of the IPC.

  In addition, to be protectable, its features must not be exclusively dictated by functional purposes.

  Industrial design objects are classified as works of applied art, and as such are eligible for copyright protection so long as their features are original and not exclusively dictated by functional purposes.

  When a work is eligible for copyright, the author is entitled to claim both moral and economic rights on this work of the mind.

  The author has the following moral prerogatives on the work:

  • right of disclosure: the exclusive right to disclose the work to the public and to determine the conditions of this disclosure; 
  • right of withdrawal and reconsideration: the right to reconsider or withdraw the work after it was first disclosed; 
  • right of paternity: the right to be identified as the author of the work; 
  • right of integrity: the right to defend the form and spirit of the work against all modifications.

  These moral rights of the author are perpetual, inalienable and imprescriptible.

  The economic prerogatives of the author include the exclusive right to authorize or forbid the reproduction of the work through any means enabling its communication to the public (that is, the right of reproduction) and the performance of the work in public (the right of public performance).

  Economic rights expire at the end of a time-period of 70 years starting on the first day of the year following the death of the author (with exceptions, in particular for collective work for which the time period starts on 1 January of the year following the first disclosure).

  In accordance with the IPC, the author is the creator of the work and there is a presumption in favour of the person under whose name the work has been disclosed to the public, unless otherwise proven.

  The author is therefore conceived as the natural person who has created the work of the mind.

  Despite this definition, a legal entity can be the initial owner of the copyright when the work was made in a collective manner that is, according to article L.113-2 of the IPC, provided that the work was created on the impulse of the legal entity who then proceeded with its production, publication and disclosure under its name and provided that the personal contributions of the authors merge together so that no distinct right can be granted to any of them on the work as a whole.

  Furthermore, when no claim of authorship has been made by a third party, a legal entity is presumed to be the owner of the copyright on the work it commercializes under its name, for the purpose of suing alleged counterfeiters.

  In any event, it is often in the best interest of a legal entity to acquire the rights on the work each time it has not been created collectively but results from the work of an employee, a consultant, a director or another member of the staff of the legal person.

  Indeed, pursuant to Article L111-1 of the IPC, employment contracts are of no effect regarding the copyright ownership of works created by employees who remain the copyright owners: a transfer of the rights must therefore normally be considered.

  Any copyright assignment agreement with an author must comply with specific requirements that add up to those of general contract law, in particular:

  • the general assignment of future works of the mind is not valid and, consequently, assignment contracts must have a limited object; 
  • the contract must distinctly mention each assigned right and the scope, destination, geographical extent and time period for which the right is assigned; 
  • specific assignment contracts providing for the publishing, the public performance or the audio-visual production of the work must be made in writing; however, this formal requirement is highly recommended for all assignment contracts so as to evidence the precise specification of the assigned rights; 
  • the author cannot waive its moral rights. 

Therefore, when drafting such contracts, particular care must be paid to the precise determination of the scope of the contract. In addition, in the event where the author is an employee, there must be a clear and distinct payment in addition to the employee's normal wages for the transfer of the copyright and it is preferable to underline the standard industry practices in the contract.

Companies frequently include in employment contracts an acknowledgment by the employee that the works will be classified as collective works developed by all the contributors under the supervision of the employer in order to try to benefit from the very favourable status of the collective works explained above; however, even though such a practice allows a company to strengthen its position, it also must be capable of providing evidence demonstrating the collective character of the work. 

2.3. Enforcement

Since there is no copyright registration in France, for each dispute that arises, it is necessary to demonstrate:

  • the original character of the works, including objects of industrial designs, on which copyright is claimed: it may be evidenced by any means, including oral testimony, affidavits, expert reports, and so on; 
  • the reproduction of the original features protected by the copyright; substantial similarity is enough to establish an infringement and is assessed by the Court in respect of the resemblances and not the differences between the litigious object and the copyrighted work. 

  The right holder has a monopoly that is enforceable notably against trade marks, registered designs, patents, domain names, trade names, pseudonyms or other distinctive signs, any use in social media or in comparative advertising, as long as they reproduce the original characteristics of the work.

  The only limits to these prerogatives are the legal exceptions of article L.122-5 of the IPC, including:

  • private and free performances exclusively carried out within the family circle; 
  • copies or reproductions reserved strictly for the private use of the copier and not intended for collective use; 
  • analysis and quotations provided that they are justified by the critical, polemic, educational, scientific or informatory nature of the work they are extracted from; 
  • press reviews; 
  • publishing or the broadcasting of speeches as long as they are considered as current news; 
  • reproduction of works in catalogues of judicial sales, available for the public prior to the sale, held in France for the sole purpose of describing the works of art offered for sale; 
  • reproduction or performance of a work extract used as an illustration for an educational purpose; 
  • parody, pastiche and caricature; 
  • acts necessary to access the contents of an electronic database for the purposes of and within the limits of the use provided by contract.

  In any event, the acts in question must not be prejudicial to the normal use of the work and must not cause any unjustified harm to the legitimate interests of the author; in addition, most of the exceptions listed above can only apply as long as the source, including the author's name, is indicated.

  These exceptions are restrictively listed and precisely specified, so that the doctrines of 'fair use' or 'fair dealing' do not apply as such.

  The usual way to defend oneself against infringement claims is to challenge either the copyrightable character of the work (due to lack of originality or expiry of the protection), the ownership on the copyright, or the similarities between the litigious object and the copyrighted work.

  In particular cases, an otherwise valid copyright might, however, be deemed unenforceable if the claimant abuses their right to bring a claim (in particular, judges may order any appropriate measure in the event that the heirs obviously abuse the disclosure right after the death of the author) or in the case of the work being reproduced within a trade mark, if the copyright owner has tolerated the use for five years. In any case, the copyright holder cannot initiate any action if the prescription period has expired, that is, three years for criminal actions and five years for civil actions.

  It has to be noted that the right holder can bring an action claiming both copyright and design infringement for the same set of facts, since the purposes and requirements of these rights are not the same; so, an object of industrial design may be eligible for each of these protections. In all cases, unfair competition and parasitism claims can be made before the court in charge of the copyright dispute in addition to the infringement claims when the surrounding facts (aside from the mere use of the work) amount to separate unfair practices and worsen the harm suffered (under specific conditions, the French distributor of the right holder can also make claims for acts of unfair competition and parasitism). 

3. DESIGN

3.1. Sources of law

Designs are mainly regulated by Book V of the legislative and regulatory parts of the French Intellectual Property Code (IPC), which, in 1992, codified earlier texts such as the law of 1909 on designs and the statutory text adopted on 25 July 2001 to transpose the EC Directive 98/71/EC of 13 October 1998 on the legal protection of designs.

Community designs are governed by the Community Regulation No. 6/2002 of 12 December 2001 (hereafter 'ECR').

When in conflict, the different applicable sources are prioritized as follows: the French Constitution, ratified international treaties in their scope of application including European law, French laws and then regulatory acts. 

3.2. Substantive law

All national designs must be validly registered at the French Industrial Property Office (INPI) while Community designs may either be registered at the Office for Harmonization in the Internal Market (OHIM) or unregistered these being subject to a different set of rules.

  All designs are conceived as protecting the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.

  Both the IPC and the ECR define said products as "any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs".

  A design may therefore be considered for a wide range of products, apart from features of appearance of a product which are solely dictated by its technical function and apart from interconnecting parts.

  Also excluded from design protection are appearances of products that are contrary to public policy or morality.

  The appearance of a product can be covered by a valid design each time two requirements are satisfied:

  • The design must be new, meaning that no identical design has been made available to the public before either the date of filing of the application for registration (or the date of priority, when applicable) for national or registered Community designs, or, for unregistered Community designs, the date on which the design for which protection is claimed has first been made available to the public. The design is not considered as being made available to the public when the disclosure is attributable to the designer, its successor or a third party informed by them within a 12-month time period preceding the filing for registration (or date of priority) or when said disclosure is the result of an abuse. Disclosure is also not established when the claimed use could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community. 
  • The design must also have individual character, meaning that the overall impression the design produces on the informed user differs from the overall impression that may be produced on such user by any design which has been made available to the public before. 

  For registered designs, the duration of the protection is 5 years renewable 4 times for 5 years (up to 25 years), whereas the protection for unregistered design is granted for 3 years after the first disclosure of the design within the European Union. The owner of the design is the registrant or the person under whose name the unregistered design was disclosed.

  If the creation protected by registered/unregistered design is also eligible for copyright protection, the owner of the copyright could challenge its validity. Therefore, it is necessary to secure (and evidence) the transfer of any, and all, possible copyrights from the author (employees, authors, design agencies, and so on).

Usual rules of contract law apply to design assignment, but to be enforceable against third parties, said agreement must be in writing and published on the register of the French or EU Office.

 Again, it is necessary to pay attention to the conditions of transfer of any copyright between the possible author and the owner of the registered/unregistered design.

Strictly speaking, the designer is not entitled to a moral right on the appearance of the product; however, article 18 ECR provides that the designer has the right to have their name cited as such before the Office and in the register. 

3.3. Enforcement

A design may be enforced against all designs that do not produce a different overall impression on the informed user.

  Registered designs are protected against unauthorized uses by third parties, in particular against the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or storing such a product for these purposes.

  For registered designs, this also applies against slavish copies and similarities.

  Unregistered Community designs enjoy the protection against uses described above when they result from purposely copying the protected design.

  The right holder can enforce the design against any kind of infringement, including infringement arising from use of the design in trade marks, registered designs, patents, domain names, trade names, pseudonyms or other distinctive signs or IP rights.

  There are nonetheless a few exceptions to the protection, notably private use with no commercial purpose or, under certain conditions, use for experimental or illustrative purposes (quotes, for example).

  Furthermore a valid design might be deemed unenforceable in the case where the design is reproduced within a trade mark and the design owner has tolerated the use for five years.

  In defence, the alleged infringer may challenge the validity or ownership of the design right invoked (for example, citing the expiry of the protection, the existence of prior art that removes novelty or the purely functional features of the design).

  Another way to defend oneself would be to show that the litigious design does not produce a similar overall impression on the informed user or that the design invoked in not enforceable, due to the expiration of the prescription period (if the claim is filed more than five years after the facts relating to the infringement arose).

  Furthermore, Article 8.2 ECR for Community design provides the repair clause that excludes protection of the Community design from a component part used for the purpose of the repair of a complex product.

  The owner of the design is possibly entitled to claim both copyright and design infringements for the same set of facts.

  In all cases, unfair competition and parasitism claims can be made before the court in charge of the design dispute in addition to the infringement claims when the surrounding facts aside from the mere use of the design amount to separate unfair practices and worsen the harm suffered (under specific conditions, the French distributor of the right holder can also make claims for acts of unfair competition and parasitism). 

4. RIGHT OF PUBLICITY

Private individuals are entitled to control the use of their name, image and other aspects of their identity.

  Although case law acknowledges the existence of a right for individuals to defend their personal attributes, uncertainties remain as to the grounds on which this right is based. Some claim it is a mere derivation of the right of privacy granted by Article 9 of the French Civil Code to all living private individuals, without condition of legal capacity, while others consider this right as an application of the civil liability principles governed by Article 1382 et seq. of the same Code.

  This distinction is not merely theoretical, it is also decisive in categorizing the right to defend oneself against unauthorized commercial uses of one's personal attributes either as a plain patrimonial right (as exists in common law with the right of publicity), or as a simple derivation of the extra patrimonial right of privacy based on renouncing the right to enforce one's right to privacy.

  Despite the absence of clarity as to the most appropriate legal basis, the trend in favour of acknowledging the existence of a patrimonial value of one's image, name or other elements of identity seems to be well established and judges are more and more inclined to order compensation to private individuals for the illicit use of such personal aspects and information.

  Contractual freedom entitles individuals to enter into assignment or licensing agreements (that may or may not be exclusive) in order to make money out of the use of their right of publicity, as a whole or in parts (in particular, see French Court of Cassation, civil chamber 1, 11 December 2008, No. 07-19494; Court of Appeal of Versailles, chamber 12, 22 September 2005).

  This freedom prevails as long as such contracts remain within the limits of the principle of human dignity and public order. However, the proximity between the right of publicity and the individual personality of a private person forbids the general and definitive assignment of one's right to oppose the use of their image or personal attributes, so that such contracts should only be in the form of temporary concessions.

  No specific provision under French law governs contracts for the use of one's personal attributes, which are therefore regulated by the common rules of contract law.

  Consequently, when drafting such contracts, special attention should be paid to demonstrating the valid consent of the contracting parties, the existence of compensation (not necessarily a financial compensation) and the sufficient delimitation of the scope of application of the contract, in particular as regards its duration, geographical scope, the subject matter and uses covered, the forbidden uses, and so on.

  Indeed, the right of publicity being a sensitive matter, case law is particularly protective of the consent of the person in this context and has developed a principle of specificity of consent that imposes a strict interpretation of all authorizations concerning the use of one's personal attributes. The limitations and scope of application of the commercial use allowed should therefore be stipulated with particular care.

  Another peculiarity due to the inherently personal nature of these contracts is that they can be revoked unilaterally and without justification by the person whose attributes are concerned, as long as this revocation is not abusive. The licensor may however be obligated to compensate the licensee for the harm suffered as a consequence of the revocation of the licensing agreement.

  Unless otherwise specified, the contract remains binding until the agreed term has expired, including for the heirs of the person whose personality rights are the subject matter of the contract.

  If no distinction of the qualities of the individual is made as regards the existence of the right of publicity, in practice a person's name, image or likeness is considered to be more valuable when their activity or reputation has made them famous as compared to the average anonymous individual, so that the demonstration of a violation of their patrimonial right of publicity is easier and enables higher compensation.

  The commercial value of one's attributes may be evidenced by various elements, including press articles or, possibly, expert evidence or affidavits or existence of assignments or licencing agreements.

  Even though individuals are best positioned to bring an action for a violation of their right of publicity individually, the exclusive or non-exclusive licensee or assignee suffering harm as a result of the illegitimate use of personal features covered by the contract would also be entitled to act, on the grounds of Article 1382 of the French Civil Code in order to obtain compensation for his own loss (see for example, Court of Appeal of Versailles, chamber 12, 22 September 2005).
In defence, the alleged infringer may dispute the infringement to one's right of publicity on several grounds.

  Firstly, the defendant may oppose the fact that the person has authorized the specific use of the personal attributes that is the subject of the dispute.

  This consent may expressly result from contractual provisions or, in very specific situations, be the tacit consequence of the person's unequivocal behaviour; however this authorization cannot arise from the mere absence of protest from the person. 

  The authorization given for a specific use cannot be invoked to support a commercial use of one's personal attributes that is different from the one allowed.

  Moreover, freedom of speech can also legitimize the use of one's personal attributes, when this use is in direct link with a debate of public interest or is necessary to illustrate current events.

  However, in such hypotheses, the use is made in the interest of the right of the public to be informed, rather than for commercial purposes.

  In any event, this exception remains subject to the condition that the use of the person's attribute(s) (generally one's image), is appropriate and proportionate in respect of said event.

  Actually, the most efficient defence is often most effective in an attempt to reduce the compensation to be awarded following a finding of unauthorized commercial use.

  For this purpose, the defendant can rely on the fact that the person whose image or name was used without their consent did not suffer any consequent harm from the commercial use, for example, because the amount of money they could have earned by authorizing the use would have been very low.

  Lastly, the issue of the transmissibility of the personal attributes of a deceased person to the heirs, and, if applicable, of the scope of such a transmission, remains debated.

  It is rather admitted that heirs of a deceased person can obtain compensation when the right of publicity of the deceased was breached before the death. Similarly, the rights and obligations provided by assignments or licensing agreements entered into by the deceased persons before their death should be transmissible to their heirs.

  However, it is not clear whether heirs can enter into agreements on the use of the personal attributes of a deceased person after the death, or claim damages for the "unauthorized" use of the image of the deceased person after the death. Some Courts have found such claims admissible (Court of Appeal of Paris, 1st Chamber, 10 September 1996) but others ruled to the contrary (Court of Appeal of Paris, Pole 5, 4th chamber, 6 November 2013). The question was recently placed before the French Cour de Cassation, which however dismissed the recourse on other grounds and did not resolve the issue (Cass. Civ 1, No. 1411458, 4 February 2015). 

5. PRODUCT PLACEMENT

Under French law, product placement is governed by provisions of article 14-1 of Law 86-1067 of 30 September 1986 and mainly by the regulatory provisions defined by the public authority in charge of audio-visual matters, the Superior Council of Audio-visual (CSA) in its decisions No. 2010-4 of 16 February 2010 and No. 2012-35 of 14 July 2012.

All product placements must comply with the common rules governing all commercial audio-visual communication as well as satisfy the requirements governing this specific matter:

  • only cinematographic works, audio-visual fictions and video clips can host product placement;
  • product placement is forbidden for all programs aimed at children; 
  • product placement is forbidden for beverages with an alcohol level above 1.2 degrees, tobacco, tobacco products and similar substances defined by law (medicines, firearms and ammunitions unless under specific circumstances and infant formulae);
  • the products and services of the sponsor of a program cannot be subject to product placement in said program; 
  • product placement shall not endanger the editorial independence of the media service provider nor directly encourage the purchase of the good or service; 
  • product placement must be clearly identified as such to avoid all risk of confusion for viewers and for that purpose in particular, a predefined pictogram must appear during the broadcasting in a precise manner specified by law; 
  • a written contract must be concluded to govern the relationship between the producer, the editor and the advertiser concerning the product placement for all programs produced, co-produced or pre-purchased by the editor. 

The CSA ensures that these conditions are complied with and, in the event a violation is identified, has the power to impose sanctions such as the infliction of monetary fines, the withdrawal of the broadcasting authorization or the suspension of the broadcasting of a program or an advertising sequence, even though most proceedings never get past the stage of the letter of formal notice.

If civil jurisdictions have the authority to forbid the broadcasting of a program, such a measure is only contemplated when the circumstances are particularly severe and would certainly be deemed disproportionate if only based on the mere breach of a product placement contract or trade mark infringement.

There are no specific remedies provided in the event a products placement contract is breached, but the injured brand owner is entitled to seek compensation through standard civil proceedings. 

6. . PROTECTION OF CORPORATE IMAGE AND REPUTATION

A company may defend its image or reputation on the grounds of defamation, unfair competition, and denigration.

Moreover, the 'aura of luxury' of prestigious and luxury trade marks is deemed to play a role in their ability to identify goods and services and to be part of the actual quality of the goods they cover, so that the elements contributing to this aura of luxury can be protected by means of selective distribution agreements.

Therefore, players in the luxury goods industry may resort to the execution of selective distribution agreements requiring that distributors comply with high-end standards for their points of sale and the displaying of the goods so as to protect their reputation.

Such agreements may lawfully include protective provisions such as:

  • clauses prohibiting any reselling by operators that do not reach the high quality requirements necessary to preserve the prestige of the luxury goods, such as discount stores (CJEU, COPAD/Christian Dior, 23 April 2009, C-59/08; French Court of Cassation, commercial chamber, 4 October 2011, No. 10/20914, Chanel).
  • liquidated damages clauses for breach by a party of contractual provisions are permitted, unless the set amount is obviously excessive or derisory, in which case the judge may, even on their own motion, increase or decrease the amount of damages (article 1152 of the French Civil Code).

 However, in all cases, competition law forbids clauses that would be too restrictive or not legitimate in view of the principle of free competition, such as:

  • imposing a minimum resale price to distributors; 
  • prohibiting the purchase of non-original but otherwise legitimate spare parts or components by the distributor. 

Finally, the owner of a trade mark with a reputation may benefit from broader protection since the latter can claim trade mark protection against a third party who might be selling the covered products outside of the agreed network or a licensee breaching the requirements of the selective distribution agreement, if this behaviour is a real impairment to their reputation.

4.1. Sources of law

4.2. Substantive law

4.3. Enforcement