Presenters, authors and performers: a case-by-case assessment

Two recent rulings have assessed the status of the presenter of an audiovisual program under author’s rights.

In its first ruling, dated October 15th, 2024, the Court of appeal of Bordeaux upheld a judgment acknowledging the status of author of the presenter of a television program, namely “Suivez le guide”.

In this case, the presenter of the television program challenged the qualification of mere presenter resulting from his employment contract and claimed to be the author of the program, for which he considered that he had brought his own creative mark. This position was upheld by the High Court of Bordeaux in January 2022. Company TV7 lodged an appeal and the first instance decision was confirmed.

The ruling confirms the lower court’s reasoning that the documentary programs hosted by a presenter are intellectual works. Based on articles L. 112-1 and L. 112-2 of the Intellectual Property Code, the Court found that the presenter demonstrated that he provided a significant creative work, including documentation, script writing and technical production, giving the programs their own originality. The testimonies and documents in the file corroborate these elements.

By contrast, in a judgment rendered on September 20th, 2024, the High Court of Paris denied the claims of the presenter of the television program “Village de France” broadcasted on Arte, who tried to obtain recognition of his neighboring rights as a performer and the protection of the format of his program as a work.

In this second case, the Court considered that the characteristics of the program format invoked by the presenter were more a matter of general concepts than a concrete and original form of expression.

To reject the claimed neighboring rights, the Court then ruled that a presenter could only qualify as a performer insofar as he interpreted a pre-existing or simultaneously created literary or artistic work, which was not the case in this instance.

Court of appeal of Bordeaux, October 15th, 2024, No.22/0095; High Court of Paris, September 20th, 2024, No.22/08144

Update on the interpretation of music authors’ contracts :

The ruling handed down by the Court of appeal of Aix-en-Provence on September 18th, 2024 settled the dispute between the rapper, songwriter and performer SCH, and the music publishing and phonographic production company Braabus Inc. over a number of contracts, among which two music publishing contracts and an editorial preference pact.

The artist SCH appealed to the Court of Aix-en-Provence against the judgment of the High Court of Marseille which dismissed his claims for termination of the contracts, and the Court of appeal judged as follows:

On the alleged nullity of the assignment of rights and publishing contracts and of the editorial preference agreement

SCH invoked non-compliance with Article L. 131-3 of the Intellectual Property Code, which requires contracts for the assignment of author’s rights to clearly delimit the rights assigned in terms of scope, purpose, duration and place of exploitation, and argued that certain provisions in these contracts were imprecise.

The Court firstly recalls that such provisions are not enacted on pain of nullity. It then acknowledges that the clauses in this case lacked precision but considers that these irregularities do not affect the validity of the contracts, since the parties have demonstrated their clear intention to collaborate and the interpretation of the agreements made it possible to determine the rights actually assigned.

The Court then examined the argument that the inclusion of a clause assigning audiovisual adaptation rights in publishing contracts infringed Article L. 131-3, paragraph 3 of the IP Code, which requires that such assignment be set out in a separate contract.

The Court holds that this legal obligation concerns only the establishment of proof and not the validity of the contract. Consequently, even if this clause is irregular, it does not constitute an essential element of the contract and cannot render publishing contracts null and void.

On the alleged nullity of the editorial preference agreement for lack of financial consideration

The author argued here that the contract was unbalanced, since it did not provide for any explicit financial consideration. The Court examined this question in the light of Article 1169 of the Civil Code, which provides that a contract for valuable consideration is void where the consideration agreed for the benefit of the party making the commitment is illusory or derisory. It concluded that, although no specific sum of money had been provided for in return for the author’s 5-year commitment, the overall contractual relationship included a form of implicit consideration, namely the general obligations of Braabus Inc. relating in particular to the obligation to exploit the works on a permanent and ongoing basis.

On the request for termination of the publishing contracts for breach of the obligation to render accounts and to operate on a permanent and ongoing basis

The Court did note that Braabus Inc. had not provided statements of account within the required timeframe but ruled that this delay did not constitute a sufficiently serious breach to justify termination.

With regard to the ongoing exploitation, the artist criticised Braabus Inc. for not having ensured graphic reproduction of his works and for not having generated significant revenues for certain years. The Court here considers that the obligation to provide graphic reproduction, although provided for contractually, has become incidental in the modern context of the music industry and cannot be considered a material breach. The requests for termination were therefore rejected.

More generally, the Court upheld the judgment which had emphasised that a deterioration in relations between the parties, provided that it did not result in a breach of contract, could not justify termination of the contracts, which should therefore be enforced. Thus, by confirming the validity of the contracts despite certain formal irregularities and rejecting the author’s requests for termination, the Court of appeal of Aix-en-Provence favoured a pragmatic approach, focusing on the will of the parties and the effective performance of essential obligations.

Court of appeal of Aix-en-Provence, September 18th, 2024, No.20/03143

Partial revocation of the IOC’s trademark “THE OLYMPICS” for lack of genuine use

The Lithuanian company Olympic Casino Group has asked the European Office to order revocation of the IOC’s European trademark THE OLYMPICS, registered since 2002, on the grounds that the trademark has not been put to genuine use in respect of all the goods and services for which it is registered.

Strictly applying the rules on proof of use, on November 25th, 2024, the EUIPO, in first instance, partially cancelled the THE OLYMPICS trademark for lack of use.

This decision was rendered on the basis of Article 58(1)(a) of Regulation (EU) 2017/1001, which, as a reminder, requires genuine and effective use of trademarks in the European Union for the goods and services claimed, over a continuous period of five years, failing which the rights of the proprietor may be revoked. The use reported by the trademark owner must be genuine, commercial and intended to identify the origin of the goods or services, which rules out any symbolic or defensive use.

In this case, the EUIPO found that the IOC reported use of the mark for cultural and sporting services in class 41.

On the contrary, for the other classes of goods and services for which the trademark was registered, the EUIPO found that the evidence of use provided by the IOC was insufficient to establish genuine use of the trademark.

Firstly, the EUIPO considered that some of the evidence of use submitted was internal IOC documents, which should therefore be assessed with caution, or Wikipedia pages whose probative value was not certain. Secondly, the Office considered that many of the proofs of use did not show use as a trademark but use in the common sense. Furthermore, in the case of some of the proofs of use submitted, it did not appear that they demonstrated use of the trademark within the European territory. Finally, the EUIPO considered that the presence of the trademark on an online sales website did not show that the goods were actually sold and purchased by consumers.

Above all, it should be noted that the EUIPO ruled that the use of the THE OLYMPICS trademark by sponsors or partners cannot be considered genuine use of the trademark in that the products in question from the sponsors or partners will clearly be perceived by the consumer as products of the sponsors and not of the Olympic Committee.

This decision demonstrates the European Office’s requirement for proof of use and the limits of the strategy of filing a trademark for all classes of goods and services.

An appeal against this decision will probably be lodged by the Olympic Committee.

EUIPO, November 25th, 2024, THE OLYMPICS

Trademarks LENNON vs. LEMOON: conceptual difference rules out likelihood of confusion

In its ruling of September 19th, 2024, the European Court of First Instance applies the “principle of neutralization”, according to which a marked conceptual difference between two signs may suffice to exclude any likelihood of confusion, even when those signs are otherwise phonetically or visually similar.

The case pits the earlier trademark LENNON, registered for alcoholic beverages, against an application for the trademark LEMOON for similar products. Following a partially upheld opposition, the EUIPO Board of Appeal concluded that the conceptual differences between the signs neutralized the visual and phonetic similarities identified. The case was referred to the General Court of the European Union for reexamination.

The Court first noted that the relevant public in this case was the average Spanish consumer, with an average level of attention when purchasing alcoholic beverages, before proceeding with the classic comparison of the signs at issue. Despite the finding of visual and phonetic similarities, the Court confirmed the Board of Appeal’s analysis: the conceptual difference neutralizes the phonetic and visual similarities of the signs at issue.

Indeed, conceptually, LEMOON evokes associations linked to the English words “lemon” and “moon”, while LENNON refers to the famous personality John Lennon. This conceptual association, described as clear and immediately perceptible, creates a break in the mind of the relevant public and significantly reduces the risk of the public confusing the trademarks, even though they are otherwise similar.

The Court concludes that the relevant public, confronted with these two trademarks, is not likely to associate them or to believe that they come from the same company.

This judgment thus reiterates the pre-eminence of conceptual differences in the analysis of likelihood of confusion, while recalling the limits of phonetic and visual arguments when they are not corroborated by a broader analysis.

European Court of First Instance, September 19th, 2024, T-1099/23

Employees’ inventions: on the boundary between the jurisdiction of the High Court and that of the Labour Court

In a ruling handed down on October 23rd, 2024, the Court of cassation upheld the decision rendered by the Court of appeal on June 1st, 2022, which had ruled that the Labour Court had no jurisdiction to rule on an employee’s claim for additional remuneration in consideration for various inventions.

An employee who had been dismissed from her company brought an action before the Labour Court seeking annulment of her dismissal, payment of an additional remuneration for various inventions made on assignment, and damages resulting from an infringement of her image rights. All her claims having been rejected on appeal, the employee appealed to the Court or cassation.

She criticised the Court of appeal for having in particular rejected her claim for payment of an additional remuneration on the ground that these fell within the exclusive jurisdiction of the High Court in patent matters as resulting from a combined reading of Articles L. 615-17 and L. 611-7 of the Intellectual Property Code. Article L. 615-17 establishes the exclusive jurisdiction of the High Court for all “civil actions and claims relating to patents, including in the cases provided for in Article L. 611-7”. Article L. 611-7 sets out the rules applicable to employees’ inventions, and states that “if the employer is not subject to an industry-wide collective agreement, any dispute relating to the additional remuneration shall be submitted to the conciliation commission instituted by article L. 615-21 or to the High Court“.

In confirming this rejection, the Court of cassation took account of the applicable collective agreement, which made the payment of an additional remuneration to the employee “conditional on the patent being taken out and exploited“. It then examined the parties’ substantive arguments and concluded that the employee’s action on this point fell within the jurisdiction of the High Court.

In this case, the question of a possible additional remuneration required a ruling on the patentability of the inventions relied on by the employee, and therefore implied, to use the expression used by the Court of cassation in other decisions, “an examination of the existence or infringement of a right attached to a patent“. This judgment can thus be compared with three judgments handed down on February 18th, 1988 (Cass. Soc., No.85-40.213), February 16th, 2016 (Cass. Com., No.14-24.295) and May 3rd, 2018 (Cass. Soc., No.16-25.067), in which the Court made the exclusive jurisdiction of the High Court conditional on the need to apply patent law.

In other words, the Court of cassation recalls that the jurisdiction of the Labour Court in matters of employees’ inventions is limited to cases in which the dispute relates solely to the interpretation of a collective agreement, and does not involve, as such, to apply the provisions of patent law (for example to assess the patentability of the invention at issue).

Cass. Soc., October 23rd, 2024, No.22-19.700

Timetable for the implementation of the « Design Package » following its publication in the Official Journal of the European Union

Following its adoption by the Council on October 10th, 2024, the « Design Package » was published in the Official Journal of the European Union on last November 18th. It comprises Directive 2024/2823 on the legal protection of designs and Regulation 2024/2822 amending Regulation 6/2022 on Community designs and repealing Regulation 2246/2002.

The purpose of the « Design Package » is to modernize design law throughout the European Union and to harmonize the national laws of the Member States on this matter, as was done with trademark law with the « Trademark Package ».

The new Regulation will be directly applicable from March 1st, 2025, with the exception of certain provisions listed in article 3, which will be applicable from July 1st, 2026. The deadline for transposition of the Directive is December 9th, 2027.

To be continued…