The French civil Supreme Court, the Cour de Cassation, reaffirmed on December 10, 2013 that perfumes are not copyrightable under French law.

In this case, a man had been sued for possessing counterfeit bottles of perfume at an open-air market in France, among them counterfeited bottles of Trésor, a best-selling Lancôme perfume. Lancôme and others perfume companies sued him for copyright and trademark infringement.

Lancôme and the other companies argued that since article L. 112-1 of the French Intellectual Property Code (FIPC) protects “all works of the mind, whatever their kind, form of expression, merit or purpose,” the fragrance of a perfume is therefore a work of the mind protectable under French law. They also argued that a perfume is original, and thus protectable, because it shows the creative input of its author.

The Court of Appeals of Nancy had held, following the general view of French courts, that a perfume is not copyrightable, but rather only implements a know-how and thus cannot benefit from the protection of the FIPC.

The Cour de Cassation was not convinced by the plaintiff’s arguments and confirmed that French copyright “protects creations in their tangible form, so far as they are identified with sufficient precision to allow their communication; the fragrance of a perfume, which, outside of its development process, which is not in itself a work of the mind, does not have itself a form with [the] characteristic [of a work of a mind] and therefore cannot be protected by copyright.”

General Principles of French Copyright Law

Article  L.111-1 states as a general principle that the author of a “work of a mind” enjoys, by the mere  creation of the work, an exclusive incorporeal property right enforceable against all. The law, however, does not define what is a “work of the mind.” Article L112-2 enumerates what is protected by French copyright, but the list is not exhaustive, and does not help define what “work of the mind” really means. Indeed, cutting grass, or baking, can also be described as works of the mind. That does not make a neatly clipped lawn or a batch of chocolate and orange cookies (my specialty) protectable by French copyright.

Even the Most Mundane Work of the Mind Can Be Protected

Article L.112-1 states that the FIPC “protects the rights of authors in all works of the mind, whatever their kind, form of expression, merit or purpose.” This article codifies the theory of art unity (unité de l’art) which allows the most mundane objects to be protected, as long as they have been created by an “author.”

To be Protected, a Work of the Mind Must Bear the Personality of the Author

However, only original works are protected. The law does not, however, define what “original” means. One way for French courts to decide whether a particular work of the mind is indeed original is to find out whether one can discern in it the personality of its author.

For example, the Cour de Cassation upheld on January 29, 2013, the decision of a Court of Appeal which had refused the protection of copyright to a piece of furniture because it ”was able to deduce from the absence of the imprint of the personality of the author on the disputed models, which would have made them original” and that they are therefore not protectable by copyright.

What About Perfumes?

One could argue that a perfume, or at least some perfumes, posses the imprint of the personality of their authors. Chanel Number 5, probably the most famous perfume in the world, was presented last year at an exhibition in Paris, cosponsored by the Chanel company, as reflecting the personality of Coco Chanel. The couturière had, however, commissioned in the 1920’s Numéro 5 by French perfumer Ernest Beaux.

But the French courts refuse to consider that the “nose” who creates perfume is an author. The Cour de Cassation confirmed a Court of Appeals on  June 6, 2006, which had held that a ‘nose’ could not be considered an author under the FIPC, and thus could not ask the company selling the perfume to give her royalties from the sale of this perfume.

The Cour de Cassation held that “the fragrance of a perfume, which comes from the simple implementation of expertise, is not, within the meaning of [article L.112-1 and L. 112-2 of the FIPC], the creation of a form of expression that can benefit from the protection of works of the mind  by copyright.”

Before the June 6, 2006 holding, some French lower courts had granted copyright protection to perfumes, and a few days after the Cour de Cassation case, the Dutch High Court ruled that perfumes are copyrightable (Kecofa B.V. v. Lancôme Parfums et Beauté) (see here for more information on the case).

What About Trademarks?

Interestingly, it may soon become easier to trademark a perfume in the European Union (EU). Under current EU law, it is possible to register as a trademark a sign which is not and of itself capable of being perceived visually, if it can be represented graphically. Under European Court of Justice case law, Sieckmann v. Deutsches Patent-und Markenamt (C-273/00), the representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. This case ruled out scents to be registered as trademarks in the EU.

But this may soon change. The European Commission published last March a proposal for a Regulation which would amend Council Regulation number 207/2009 on the Community trade mark (CTMR), and a Proposal for a Directive of the European Parliament and of the Council, which would recast Directive 2008/95/EC (TMD).

Article 2 of the Directive regarding “signs of which a trade mark may consist,” which would become article 3, would have a new paragraph (b) stating that a trademark may indeed consist of any signs, provided that such signs are capable of “being represented in a manner which enables the competent authorities and the public to determine the precise subject of the protection afforded to its proprietor.”

Savvy trademark practitioners will certainly then find convincing ways to “represent” a perfume. This may indirectly help IP attorneys to argue successfully in front of French courts that a perfume is identified in such a precise way that it can indeed be protected by the FIPC.

Image is  Find ick dufte!  courtesy of Flickr user Dennis Skley pursuant to a CC BY-ND 2.0  license.

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