“De toutes les matières, c’est la ouate qu’elle préfère“: no infringement of a lyric extracted from a song, independently of the melody, despite its protection by author’s right

A lyric extracted from a song, alone, may be protected by author’s right, provided that its originality is demonstrated. This is in essence what the Court of Appeal of Paris ruled in a decision dated March 8th, 2024. In this case, the authors of the 1980s song “C’est la ouate” had sued company MAAF because of the latter’s use of the sentence “Rien à faire, c’est la MAAF qu’il (elle/ils) préfère(nt)!” in its new advertising campaign. This action took place in the context of a long-standing contractual relationship between the parties, MAAF having subscribed to rights to use the song and adapt its lyrics for several years.

These contracts having expired, they accused the company of having infringed the lyric “De toutes les matières, c’est la ouate qu’elle préfère“, taken from the song, and subsidiarily of having committed acts of unfair competition and parasitism.

In first instance, the High Court of Paris dismissed the claim on the grounds that the lyric “De toutes les matières, c’est la ouate qu’elle préfère” alone was not protectable by author’s right, but that it was protectable by such right only in combination with the melody.

On the contrary, the Court of Appeal considers that the melody and lyrics of a song “may be protected independently of each other, apart from the protection granted to the musical work taken as a whole“. In this case, the Court notes that “the choice of words that make up the lyric, which can have a double meaning – “ouate” can be cotton/material in the literal sense or the psychological state in which a character finds himself – and their arrangement and combination, which convey an equivocal message, bear the imprint of the authors’ personality and express their free and creative choices“.

However, the original lyric “De toutes les matières, c’est la ouate qu’elle préfère” and the disputed sentence “Rien à faire, c’est la MAAF qu’il préfère!“, apart from their structure, only have the verb “to prefer” in common, which the plaintiffs cannot appropriate. The rejection of the claims for infringement, unfair competition and parasitism is therefore confirmed.

Court of Appeal of Paris, March 8th, 2024, No.11/03274

The synchronization of extracts from a musical work within a film does not in itself constitute an infringement of the moral rights of its author, which must be demonstrated.

In a decision handed down on February 28^th, 2024, the Court of cassation recalled the scope of Articles L. 131-2 and L. 131-3 of the French Intellectual Property Code and ruled that the synchronization of a musical work in the form of extracts in a film does not in itself constitute an infringement of its author’s moral rights.

In this case, the rights holders of the song “Partenaire particulier” complained about the synchronization of extracts from the song in the film “Alibi.com“, on several grounds.

As regards the lack of authorization to use the song, the producer and publisher of the song invoked the lack of written authorization to use the song given to the audiovisual rights trading company and the film’s production company to challenge their authorization.

The Court of cassation pointed out that the provisions of Articles L. 131-2 and L. 131-3 of the French Intellectual Property Code, which require contracts to be evidenced in writing, only apply to contracts entered into by the author in the exercise of his or her exploitation rights. These provisions therefore did not apply to the transferee’s relationship with sub-operators.

For their part, the authors and performers of the song “Partenaire particulier” considered that the synchronization of extracts from the song in the film “Alibi.com” infringed their moral rights as such.

The Court rejected this argument, ruling that the synchronization of a musical work within the soundtrack of an audiovisual work, which necessarily takes the form of extracts, cannot be regarded as necessarily infringing the right to respect for the work.

It is then up to the author alleging an infringement of his moral rights to justify this, which was not the case in this case according to the Court of Appeal, “in the absence of proof of an alteration to the melody, rhythm or lyrics of the song due to the selection of the sequences produced in the film soundtrack“.

In essence, the Court of Appeal had found that the spirit of the song “Partenaire particulier” had not been undermined by its synchronization within a film containing explicit sexual references, insofar as, on the one hand, the song was already based on such references and, on the other hand, the authors had already consented to its devaluation “by authorizing its use in an advertising spot for a medicine against headaches“.

Cass. 1st civ. February 28^th, 2024, No.22-18.120

Author’s right: no acquisition of the statute of limitations in the event of continuation of the alleged breaches under the contractual obligation to render accounts.

In this decision, the Court of cassation recalled that the five-year limitation period did not apply if the breaches complained of continued during the non-barred period (five year before the summons).

In 2009, Lobster Films commissioned a composer to write and record the soundtrack for a documentary. Contracts for the commissioning, assignment and publication of musical works were signed for the benefit of Lobster Films.

In 2018, Lobster Film granted to an advertising agency the rights to use an excerpt from the aforementioned musical work to illustrate an advertising film.

In 2019, the composer of the work summoned Lobster Films to terminate the aforementioned commissioning contract and contract for the transfer and publication of the musical work and to pay compensation. The composer considered that the use of his work in the advertising film constituted an alteration of his work and that Lobster Films had not fulfilled its obligation to render an account to him.

The Court of cassation has overturned the decision of the Court of Appeal (CA Paris, September 14^th, 2022) which had declared that the composer’s claims for termination of the contracts for failure to render accounts, and consequently his claims for damages in this respect, were time-barred. The Court of Appeal had found that the composer had not made any claims against Lobster Films in respect of the rendering of accounts, even though he had been aware of said alleged breaches since 2011.

The Court of Cassation pointed out that although article 2224 of the Civil Code provides that personal or movable actions are time-barred after five years from the date on which the holder of a right knew or should have known of the facts enabling him to exercise it, the Court of Appeal, which had not investigated whether the breaches imputed to the company Lobster Films under the obligation to render accounts had not continued during the non-time-barred period, deprived its decision of a legal basis.

Cass. 1^st civ. June 5^th, 2024, No.22-24.462

Patent: cancellation of a main claim for lack of inventive step or novelty does not automatically entail cancellation of the dependent claims

In a decision dated April 24th, 2024, the Court of cassation reiterated that cancellation of a main claim of a patent for lack of inventive step or novelty does not necessarily entail cancellation of the dependent claims.

The dispute opposed several companies in the Philips group to CSI Audiovisuel, a company selling lighting equipment for the entertainment and architecture industries. Company CSI Audiovisuel sued Philips for cancellation of the French part of their European patents and for unfair competition. In response, the Philips companies filed counterclaims for infringement of their patents.

In a decision dated October 19th, 2021, the Court of Appeal of Paris cancelled the main claims and certain dependent claims of the French part of the European patents of the Philips companies on the grounds of lack of inventive step and novelty, and consequently declared the Philips companies’ claims for infringement of all these claims to be inadmissible. The Philips companies then appealed to the Court of cassation.

While the Court of cassation endorsed the reasoning of the Court of Appeal insofar as it upheld the invalidity of the aforementioned claims, it nonetheless partially overturned the judgment insofar as it declared the claims for infringement of the dependent claims inadmissible on account of the invalidity of the main claim.

In line with its previous case law (Cass. com., July 12^th, 2005, No.04-10.105), the Court of cassation thus states that “while the validity of a main claim entails that of the claims dependent on it, the cancellation of a main claim for lack of inventive step or novelty does not automatically entail that of the dependent claims“. As a result, any valid claim, even if dependent, can be the basis of an infringement action.

Cass. Com., April 24th, 2024, No.22-15.379

Action for the revocation of a trademark composed of a patronymic name brought by the assignor: admissibility and assessment of the deceptiveness of the trademark

Can the assignor of a patronymic trademark bring an action for revocation? This was the question finally decided by the Court of cassation in its decision of February 28^th, 2024. The designer Jean-Charles de Castelbajac, who created the eponymous CASTELBAJAC trademarks, had sold them to a third party, company Pmjc. Considering that the continuation of his activities by this renowned designer infringed its rights, Pmjc sued Jean-Charles de Castelbajac and his company Castelbajac Créative for trademark infringement and unfair and parasitic competition. As a counterclaim, Jean-Charles de Castelbajac sought revocation of the CASTELBAJAC trademarks on the grounds of deceptiveness, alleging a misleading use of the trademarks by Pmjc, leading the public to believe that the designer was still involved in the creation of Pmjc’s products.

In a decision rendered on October 12^th, 2022, the Court of Appeal of Paris ruled that Jean-Charles de Castelbajac’s claim for revocation was admissible, ruling out the application of the warranty against eviction owed by the assignor to his assignee under the French Civil Code, insofar as the claim was based on the existence of an alleged fault on the part of the assignee, Pmjc. The Court found that Pmjc marketed its products in such a way as to lead the public to believe that Jean-Charles de Castelbajac was still involved in the design of those products, and that Pmjc had been convicted twice for infringement of his author’s rights, thereby characterizing deception that justified revocation of the CASTELBAJAC trademarks which had been assigned to it.

The Court of cassation confirmed the position of the Court of Appeal with regard to the admissibility of the action: it recalled that while the warranty against eviction may prevent an action for revocation initiated by the assignor of the trademarks in question, it is on condition that the eviction suffered by the assignee is not the result of its own fault. An exception is therefore made to the rejection of the warranty against eviction “where the revocation action for acquired deceptiveness of a trademark is based on the occurrence of wrongful acts subsequent to the assignment and attributable to the assignee“, which is the case here.

Unlike the Court of Appeal, the Court of Cassation did not rule on the revocation of the CASTELBAJAC trademarks. The Court of Appeal had considered that European case law, according to which the assignee of a patronymic trademark may not have its rights revoked only because that trademark is in itself misleading to the public (CJEU, case C-259/04), did not preclude such a revocation, provided that the misleading use of the trademark was demonstrated. It based its decision on Article 12(2)(b) of Directive 2008/95/EC of October 22^nd 2008 and Article 20(b) of Directive (EU) 2015/2436 of December 16^th, 2015, which establish the principle that a trademark that has become misleading as a result of its use should be revoked.

The Court of Cassation referred a question to the CJEU for a preliminary ruling on whether or not those provisions allow a patronymic trademark to be revoked because of the way it is used by its assignee, likely to lead the public to believe that the designer assignor is still involved in the creation of the branded products when such is no longer the case.

The position of the CJEU will clarify the question of whether assignors of trademarks comprising their name can obtain revocation when the assignees use them in such a way as to mislead consumers.

Cass. Com. February 28^th, 2024, No.2