Business owners must constantly adapt to the market and launch new brands, logos, designs or slogans that capture the attention of consumers. While they may be aware of the interest of filing Trademarks & Designs that generates a competitive advantage through the legal monopoly of registration, a question remains: do they really hold all rights on the registered sign ?
By Stève Felix, managing partner. Cabinet Lambert
The non-specialist will tend to believe that once his trademark is registered before the National Trademark Office (INPI in France), it has the full rights on the sign registered as trademark, as if the registration purges the sign from any other possible concerns. This optimism must be tempered facing the omnipresence of copyright in France in all forms of creation and the issues regarding the ownership of the brand. Failure to anticipate this can have severe consequences.
The creation of the brand:the emergence of a copyright
Let’s recall first that a trademark registration does not protect against prior rights, and among those, registered brands, company names and domain names which are identical or similar and generate a likelihood of confusion. If third party and competitor’s rights are the visible part of the iceberg, the submerged risks should not be underestimated.
Indeed, in France, the style, the originality and the entire universe of a brand may be protected by copyright, which means that the designer/author of the device (which could be filed as Trademark or Design), may claim rights on the sign if he can demonstrate that he marked his creation with the stamp of his personality and with originality ! Of course, in most of the case, he will not be able to claim ownership of the corresponding Trademark or Design, but he could obtain before a court the prohibition of every use of his work, annihilating in such case all of the business associated with the brand.
The scope of protection of French copyright is extremely broad and protective of the authors as it covers all works of the mind including logos, texts, drawings, photographs, slogans, packaging ... Indeed, Article L.112-1 of the French Intellectual Property Code (FIPC) protects the rights of authors “whatever their kind, form of expression, merit or purpose» of their creation and without any particular formality (Art. L.111-1 of the FIPC).
The definition is so large that most of the material used by a company to market its products and services and to communicate is likely to fall under the protection of French copyright. However, following the creation of the sign/logo that will become a brand, the designer shall enjoy an exclusive right on it, whether he is an employee of the brand owner company, a freelance or an advertising agency.
This right includes patrimonial and moral attributes, which, if they are not assigned or at least adjusted (moral rights remain inalienable) may severely limit the use of the work and de facto, of the brand. Indeed, the designer of the brand could prevent any future modification of his work and eventually, prevent any reproduction of the brand if the assignment of its copyright to the trademark owner has not been anticipated.
The importance of setting up an assignment of French copyright
It can therefore be understood why it is important to retain ownership of the rights attached to a work made for the purpose of becoming a Trademark : to remain free to continue to use the brand and more basically, to have the possibility to adapt that brand to the market by modifying its logo, its shape, its colours... Be careful, because a total overhaul of a figurative element may fall within the scope of moral rights of the author, which are not transferable. Therefore, it is appropriate to sign precisely drafted contracts and to clearly assign the right to adapt and modify the device in the future. This is essential in order to maintain significant flexibility in brand communication.
The implementation of a copyright assignment policy will also be worthwhile as it allows some guarantees that are not automatic, including the guarantee that the work is an original work that has not been inspired by pre-existing material or that the assignor is the only author of the work.
In all circumstances, even if there is a presumption of copyright ownership in favour of the one who discloses the work, the pursuit of a complete legal security imposes writing an accurate and detailed copyright assignment clause in order to avoid future disputes with the author.
Fortunately, when it comes to dealing with the relationship between communication professionals and their clients, the French courts have considered that the transfer of rights could derive from the common intention of the parties, allowing the brand owners who use the work to continue to utilize its slogans, photograph or logo in the absence of a formal assignment clause.
Of course, this does not apply to all situations and an employer, for example, cannot benefit from the presumption of assignment from its designer employees.
The rules of employee Works
If organizing the assignment of the copyright of works coming from outside the company (freelance) comes without saying (although rarely formalized properly according to the strict French legislation), the transfer of the copyright owned by its own employees does not immediately come to mind. However, the question of ownership of the copyright must be asked as soon as possible to ensure a peaceful exploitation of the brands, logos, pictures, slogans…
Beyond the usual copyright assignment clause (to be signed frequently by each employee who has a creation activity in order to include all their works immediately after its creation and overcoming the legal prohibition of transfer of future works), the employer should implement the basis of the Collective Work regulations that will allow him to claim, from the beginning, all the rights attached to the work.
The Collective Work shall mean “a work created at the initiative of a natural or legal person who edits it, publishes it and discloses it under his direction and name and in which the personal contributions of the various authors who participated in its production are merged in the overall work for which they were conceived, without it being possible to attribute to each author a separate right in the work as created” (art. L.l13-2 and 5 FIPC).
It results from the foregoing that the copyright issue in the management of a Trademark and Design portfolio must be seriously taken into account. And Nike will not say otherwise after the complaint filed this year by M. Jacobus Rentmeester to obtain the withdrawal of all products branded with the Air Jordan «Jumpman» logo (CA $ 3 billion in 2014). Mr. Rentmeester is the author of the famous photograph of Michael Jordan flying in the air that «inspired» the logo at its creation… in 1985.