Sampling: infringement or freedom of expression?

On February 8th, 2023, the Court of Cassation finally ruled on whether the use of a sample constitutes an infringement of copyright and neighboring rights. This decision is essential given that sampling is now one of the most widespread techniques for creating music.

Sampling refers to the use of a musical work in a new composition, without the prior authorization of the copyright owner. Unsurprisingly, this process raises many questions about intellectual property rights and artistic freedom.

In this case, the music group The Dø, along with its producers, sued the DJ Feder for infringement of copyright and neighboring rights for his use of an extract from their work The Bridge is Broken in his track Goodbye.

In first instance, judges initially rejected the claim for copyright infringement, but accepted the claim based on neighboring rights. They found that the work Goodbye reproduced an unauthorized sample of the recording of The bridge is broken (High Court of Paris, November 7th, 2019, No.19/03440).

On September 10th, 2021, the Court of Appeal of Paris partially overturned the first istance judgement, ruling that there had been no infringement of either copyright or neighboring rights (Court of Appeal of Paris, September 10th, 2021, No.19/22618). For the Court, the segment of the song that had been sampled did not constitute a gimmick (a cell of a few notes that catches the listener’s ear), was not a determining factor in characterizing the author’s personality, and therefore did not contribute to the originality of the original work taken as a whole. In addition, the Court was not convinced that neighboring rights had been infringed insofar as the exact reproduction of the excerpt from The Bridge is Broken in Goodbye was not certain as regards the evidence produced before the Court.

The group The Dø and its producers then filed an appeal before the Court of Cassation, criticizing the Court of Appeal in particular for its arguments on the lack of any imprint of the author’s personality in the litigious cover. In order to uphold a claim for copyright infringement, the sampled part must bear the imprint of its author’s personality and, in essence, be original in itself. On this point, the High Court recalled that it was in the exercise of its sovereign power that the trial judges considered that the sampled part of The bridge is broken did not contribute to the originality of the original work taken as a whole.

On another point, the plaintiffs criticized the Court for rejecting their claims for infringement of neighboring rights, i.e. the rights of the phonogram producer and performers. Regarding the infringement of neighboring rights, it is necessary to show that the recording has been reproduced identically, which was not exactly the case here. Again, the Court of Cassation held that it was up to the trial judges, in their sovereign discretion, to assess this infringement.

Cass. Civ 1re, February 8th, 2023, No.21-24.980

SPCs: when the Court of Cassation considers the interpretation of the SPC Regulation

In its seven decisions rendered on February 1st, 2023, the Commercial Chamber of the Court of Cassation had the opportunity to rule on some of the admissibility criteria for supplementary protection certificates (SPCs) as set out in Regulation No.469/2009 on SPCs.

However, it stayed the proceedings in three of the cases submitted to its review (No.18-21.903, 19-16.741 and 20-20.904), involving MERCK SHARP & DOHME, which concerned the specific question of SPCs for combinations of a new active substance and another substance already known. Preliminary questions on this subject were referred to the CJEU by Finland and Ireland (cases C-119/22 and C-149/22), regarding the interpretation to be given to the criteria of articles 3 a) and c) of the SPC Regulation (product protected by a basic patent, and which has not already been the subject of a certificate).

In the other four decisions, the Court of Cassation ruled on disputes arising from appeals against decisions rendered by the French trademark office (INPI) rejecting various SPC applications. Thus, it clarified the interpretation to be given to articles 1 b), 3 c) and above all 3 a) of the SPC Regulation.

In the halozyme decision (No.21-15.221), the Court of Cassation established, on the basis of Article 1 b) of the SPC Regulation (which defines the concept of product), a rebuttable presumption under which when, in a marketing authorization, a substance is not defined as an active ingredient, then it “does not produce any pharmacological, immunological or metabolic effect of its own covered by the therapeutic indications referred to in that marketing authorization”. Therefore, it confirmed the decision of the Court of Appeal which had itself upheld the INPI’s decision rejecting the SPC application for a combination of trastuzumab and recombinant human hyaluronidase, the latter substance being presented in the marketing authorization as an excipient, and trastuzumab having been the subject of an earlier marketing authorization.

In the other decisions, the Court of Cassation then ruled on the interpretation to be given to Article 3 a) of the SPC Regulation, in line with the position of the CJEU in ROYALTY PHARMA (C-650/17) regarding the concept of autonomous inventive step. These three cases had in common to relate to SPC applications for substances not identified in the basic patent used for the application, such patent including a functional definition of a product, but discovered subsequently and protected in subsequent patents.

In the two cases involving company ONO (No.21-13.663 and 21-13.664), the Court overturned the judgments handed down by the Court of Appeal concerning pembrolizumab and nivolumab, in which the Court of Appeal had held that it had taken several years for inventors to file patents relating specifically to these substances, constituting “a robust indication of the complexity of the research to be carried out and the need to carry out […] an autonomous inventive step” within the meaning of the ROYALTY PHARMA case law. The Court of Cassation thus censured the approach of the Court of Appeal, which was required to investigate whether the discovery of these substances could not have been made by a person skilled in the art, in the light of the prior art, and by carrying out routine operations.

It was precisely this test that was validated in the case involving WYETH on osimertinib (No.21-17.773), in which the Court of Cassation dismissed the appeal against the Court of Appeal’s finding that osimertinib did not fall “within the scope of protection of the basic patent invoked”.

Lastly, in the nivolumab decision, the Court of Cassation, with regard to the assessment criterion in Article 3(c) (product not already the subject of a certificate), also recalled, in relation to joint ownership of the basic patent, that such a criterion “must be assessed in relation to each of the joint proprietors of a patent on the basis of which an SPC is sought for the same product, and not in relation to the joint ownership constituted by the joint proprietors, which has no legal personality”.

In line with the case law of the CJEU on SPCs, the Court is therefore attempting, through these seven decisions, to clarify the admissibility criteria for SCPs in France.

To the possible admissibility in France of the patentability of inventions involving software

Under French law, software is protected by copyright and therefore cannot be patented. To that extent, French judges have traditionally been reluctant to allow software-based inventions to be patented.

The Court of Cassation has just opened a loophole in this approach, in a dispute between the INPI and company THALES, concerning registration of French patent No.10 04947 relating to a “process for displaying the mission of an aircraft over time”. In this case, the INPI refused to register the patent on the grounds that its subject matter only concerned a presentation of information associated with a mathematical method, which are excluded from patentability under Article L. 611-10 of the French Intellectual Property Code. Therefore, THALES lodged an appeal before the Court of Appeal.

In a judgment of May 21st, 2019, the Court of Appeal identified two features in claim 1 of the patent, and held that the second one, which enabled the pilot user to choose the part of the display device he wished to see, included a “technical means distinct from the content of the information itself”, said means producing a technical effect by “helping the pilot to select the most relevant among them”.

Following the INPI’s appeal, the Court of Cassation quashed this decision and referred the case back to a differently composed Court of Appeal, criticizing the first Court of Appeal for not having provided a legal basis for its decision “by merely reproducing the terms of claim 1, without establishing the existence of a technical contribution made by the patent application or explaining in what way the means claimed in this application had the character of technical means distinct from the mere presentation of information”.

In other words, the Court of Cassation does not exclude the possibility of patenting an invention using software, provided that the existence of a technical contribution is demonstrated.

Some commentators have seen in this decision an alignment of French case law with that of the EPO, and in particular with the HITACHI decision of April 21st, 2004 (T 258/03) according to which, in terms of inventive step, claiming technical means is sufficient to characterize the invention.

The forthcoming decision of the Court of Appeal in this case will therefore be closely scrutinized.

Cass. Com, January 11th, 2023, No.19-19.567

What about protection of slogans under trademark law?

In its decision of March 15th, 2023, the General Court of the European Union upheld the decision of the Board of Appeal of the EUIPO rejecting the application for registration of a slogan as a trademark, for lack of distinctive character.

In September 2020, company Katjes Fassin filed for registration with the EUIPO of a European Union trademark for the word sign “THE FUTURE IS PLANT-BASED”. The trademark application designated goods in classes 5 (food supplements), 30 (herbal flavorings) and 32 (effervescent tablets).

The EUIPO rejected the application for registration on the grounds of lack of distinctive character. The examiner noted that only the positive aspects of the products were highlighted by the sign, namely that plant-based products represent the future of human nutrition. In this context, the mark appeared to be purely laudatory.

Following this rejection of the application for registration, the applicant lodged an appeal.

In its decision of December 21st, 2021, the Board of Appeal then recalled that a slogan can be registered as a trademark provided that it is distinctive, i.e. when it can be perceived by the relevant public, beyond the mere advertising message, as an indication of the commercial origin of the goods or services in question.

In the present case, the Board noted that the products covered by the application for registration could all be made from plants. Thus, when consumers see the slogan “THE FUTURE IS PLANT-BASED”, they can only understand it in the sense that the products have been made naturally from plants (“IS PLANT BASED”) and are therefore forward-looking (“THE FUTURE IS”).

Repeating the examiner’s reasons, the Board held that the slogan “THE FUTURE IS PLANT-BASED” did indeed praise plant-based products. Consequently, it was a purely factual advertising message, according to which plant-based foods are the products of the future. The slogan was therefore devoid of any distinctive character, in that it did not indicate the commercial origin of the goods covered by the application for registration.

There are many decisions relating to slogan applications. In October 2021, the EUIPO published a report on the distinctive character of slogans, aimed at helping companies to register slogans as trademarks. A slogan constitutes a distinctive mark if the applicant makes a conceptual or linguistic effort to depart from a mere advertising message.

TUE, T-133/22 du TUE, March 15th, 2023, Katjes Fassin / EUIPO.

Design: thorough review by judges of a product’s appearance allowing rejection of infringement

Company SAS Idéal Promotion is the owner of a French design for an egg-shaped box.

In April 2017, company L’Occitane France was sued by SAS Idéal Promotion before the High Court of Marseille for infringement of the aforementioned design, as company L’Occitane France was offering ovoid-shaped metal packaging for sale.

In a decision rendered on September 12th, 2019, the High Court of Marseille upheld this request.

L’Occitane France then lodged an appeal against the judgment, arguing that the egg-shaped design belonging to SAS Ideal Promotion was invalid in that it did not meet the dual requirements of novelty and individual character set out in Articles L. 511-2 and L. 511-3 of the French Intellectual Property Code.

In its decision of April 6th, 2023, the Court of Appeal of Aix-en-Provence upheld the validity of the model belonging to SAS Ideal Promotion.

In this respect, regarding the criterion of novelty, the Court noted significant differences between the claimed design and earlier designs. With regard to the distinctive character of the design, which is assessed by taking account of the freedom left to the designer in creating the design, the Court held that the combination of the product’s ovoid shape, a flattened base on a small surface at the lower end of the object, and a thin longitudinal line made “the design pure in all its lines, and produces on an informed observer a clear difference from that produced on him by the heritage of designs for egg-shaped boxes”.

However, the Court rejected the claim for infringement. Judges noted significant differences between the design and the contested packaging. They considered that the contested packaging did not have “grooved” or “lipped” edges to allow the two parts of the box to fit together, one of the essential characteristics of SAS Ideal Promotion’s design. The result was a different overall impression.

This decision is in line with the Court of cassation’s established case law, which regularly points out that assessing whether a design has been infringed only requires an assessment of whether the overall visual impression produced by an alleged copy is identical to, or different from, the design for which infringement is claimed (see for example Cass, com, June 23th, 2021, No.19-18.111).

Court of Appeal of Aix-en-Provence, April 6th, 2023, No.19/17628.