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European IP Bulletin, Issue 30, March - Copyright
Copyright
1. French Court Rules That Scents are 'Works of Art'
In 2003, cosmetic giant L’Oreal filed a lawsuit against Bellure, a Dubai-based perfume firm that was producing and selling near-identical copies of some of its major perfumes including Trésor, Acqua di Gio, Emporio Armani and Anaïs Anaïs. As Bellure did not copy the shape of the bottle and the name of the original products, L’Oreal could not sue on grounds of trade mark infringement or unfair competition. Instead, the company argued that Bellure had infringed the copyright on the smell of its perfumes.
The Tribunal de Grande Instance de Paris confirmed that a scent is a work of the mind, just like a sculpture, a photograph or a musical work and can therefore be protected by author’s right according to article L 112-1 of the French intellectual property code. This article states that the provisions of the code shall protect the rights of the authors in all works of the mind, whatever their kind, form of expression, merit or purpose. The Court further stated that “a fragrance is the result of an intellectual research of a composer which appeals to his accumulated imagination and knowledge to create an original bouquet of odorous products chosen for an aesthetic goal, and thus constituting a work of the mind”.
The Court, however, did not determine any copyright infringement. It decided that the originality and creative input of the works was not sufficiently established by the documentary evidence and that, consequently, there was no proof that the Bellure perfumes were exact replicas of the L’Oreal originals.
L’Oreal appealed the case and provided a chromatographic analysis of the constituent smells of one of the copycat perfumes. On 25 January 2006, the Paris Court of Appeal found that 50 out of the 52 elements of the copycat perfume were identical to the L’Oreal perfume. It decided that the olfactory architecture of Bellure’s copycat perfumes was almost identical to that of the original ones and ordered Bellure to pay L’Oreal 1.48 million euros in damages.
This landmark decision was welcomed by perfume creators as it added a new weapon to their fight against counterfeiting, in addition to the classical protection provided by trade mark law, design law and unfair competition that was used until now. Bellure has not announced yet whether it will appeal the decision.
2. The Droit De Suite Comes Into Force in the UK
The coming into force of the Artist’s Resale Right Regulations 2006 (SI 2006/346) (“Regulations”) introduced a new type of intellectual property right in the United Kingdom known as the resale right or the droit de suite. The Regulations implement European Parliament and Council Directive 2001/84/EC on the resale right for the benefit of the author of an original work of art.
The resale right belongs to the civil law tradition. Before the Directive, the UK and other common law jurisdictions were unfamiliar with rights that entitled artists to receive royalties on the resale of their works, even when limited to sales that involve an art-market professional and when the sale price falls below certain thresholds specified by law. The power to grant the droit de suite has always received little support in the UK. In addition, the resale right has been kept as an optional element of the Berne Convention (Article 14).
The reticent attitude towards the resale right might be partly due to the similarity between such a right with moral rights. In fact, the Regulations specify that a resale right is not assignable (Regulation 7) and cannot be waived (Regulation 8). Similar to other moral rights, the heirs of an artist can also exercise the droit de suite (Regulation 9). However, now and until 2010 (or 2012 if the UK Government takes advantage of a further derogation), the resale right is only applicable to sales of the works of living artists. After this initial phase, the right will then extend to a period of 70 years after the author’s death. The approach taken in the Regulations shows that time is required for all of the relevant stakeholders to adapt to the new right. For example, auction houses are clearly affected by the Regulations and they are currently conducting promotional campaigns in order to make their clients aware of the new ‘levy’.
The introduction of the Regulations also has relevant implications for the remuneration of collective management of emerging artists. According to Regulation 14, a resale right can only be exercised through a collecting society. This would allow a higher degree of efficiency in terms of costs and ease of operation. The role of a collecting society in the implementation of the directive is also important in complying with the artist’s right of information about sales. In the UK, the collecting society dealing with the droit de suite is the Design & Artists Copyright Society (DACS).
3. Allan Williams Entertainment v Hurd
Alan Williams Entertainment & Anor v Hurd & Ors [2006] EWHC Ch 81 involved a claim and a cross-claim for damages from the breach of a compromise agreement which specified that former members of a band could not trade as the original band. It was held that a proper construction of the agreement meant that each party was obliged to prevent the promotion of themselves as the original band, which included taking reasonable steps to correct erroneous third party descriptions.
The compromise agreement was formed with the 1999 split of a pop group known as “The Rubettes” who had had a hit single in the 1970s entitled “Sugar Baby Love”. Following the split, two bands were formed by original band members. The compromise agreement specified, amongst other things, that none of the artists could trade under the original band name, that both parties make mutual undertakings not to disparage others to third parties and not to threaten each other and that each party was not to use the existing Rubettes logo. The Claimant, a former band member alleged that the Defendants, also former band members breached the agreement by effectively trading as The Rubettes through a series of statements on websites, in advertisements and in other promotional material. The Defendants cross-claimed that the Claimant had breached the agreement through statements on websites, in promotional material and also in the use of the Rubettes logo.
Two issues of construction of the compromise agreement were addressed by the court. The first concerned the meaning of the expression “trade as” and the second whether the agreement imposed any obligations to control the activities of third parties in connection with the prohibition on trading as The Rubettes.
On 2 February 2006 Mr Justice David Richards held that the ordinary meaning “trade as” extended to any promotion of the band as an original group which could be done by the impression given by an advertisement, website entry or other material. Second, the court held that each party had an obligation to take reasonable steps to prevent the promotion of themselves as the original band. This obligation included correcting any errors where either band had been incorrectly described as the original. Both the claim and the cross-claim partially succeeded as the promotional material of both bands had blurred the distinction between the later bands and the original group.
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