Simple combination of clothing styles does not confer originality

A Kat taking a rest.

Facts

ROSAE PARIS designs and sells ready-to-wear clothing, leather goods and accessories. The French brand sells a range of blouses that are both romantic and classic (e.g. Darcy, Fraisier), minimalist tops (e.g. Esterel), oversized sweatshirts with delicate details (e.g. Erlanger, Dunes) and jumpers combining a cosy and structured style (e.g. Falguière).

 
In April 2021, ROSAE PARIS found out that SEVEN AUGUST was selling on its website items similar to its own.

 
On 7 May 2021, ROSAE PARIS unsuccessfully sent a cease-and-desist letter to SEVEN AUGUST. On 26 November 2021, ROSAE PARIS brought an action against SEVEN AUGUST before the Paris Court, claiming infringement of its copyright and unregistered Community designs.

“Fraisier” top

Analysis

To rule on this dispute, the court first analysed the alleged infringement of unregistered Community designs. The court then analysed the copyright infringement.

Relying explicitly on a combined reading of articles 4, 5, 6, 10 and 11 of Regulation no. 6/2002, the court recalled that an unregistered Community design could be protected provided that it is new and has an individual character. This protection lasts for three years from the date of disclosure. The Court then reviewed whether each of the ROSAE models met these criteria. In the end, the TJ held that four of six ROSAE’s models met the conditions for protection.

 
Once the question of protection under unregistered design law had been settled, the TJ addressed the infringement questions and ruled that out. The designs at hand differed in a number of non-minor details (e.g. in the case of SEVEN AUGUST’s Tosca model, “the amplitude of the ruffles, the gathers, their pleats, their length and their placement”).

In the end, the court rejected ROSAE PARIS’ claim.

Several points should be emphasised. It is regrettable that the court merely referred to the general definition of an informed user as defined by the CJEU [IPKat on Pepsico] but did not try to identify who precisely that informed user would be in this case.

Relying on unregistered Community design may seem practical and view as a cheap option as no registration process is required. However, the cumulative conditions for protection must still be met. The satisfaction of only one of the criteria would not suffice.

Infringement of copyright

After dismissing the plaintiff’s action for infringement of unregistered Community design rights, the court ruled on the alleged copyright infringement. To do this, it recalled that the author of a work of the mind enjoys an exclusive intangible property right in this work, enforceable against all, by the sole fact of its creation, within the meaning of article L. 111-1 of the French Intellectual Property Code (CPI). Protection of clothes is explicitly provided under article L. 112-2 14° of the CPI, as the court recalled.

 
What’s more, “a work implies an original object, i.e. an intellectual creation specific to its author, which reflects his personality by manifesting his free and creative choices, and this object must be identifiable with sufficient precision and objectivity, which rules out an identification based essentially on the sensations of the person receiving the object”. This is in line with the CJEU case law [IPKat on Cofemel here or here]. It seems commendable that at last a court has decided to explicitly take up the terms of the CJEU on the subject of originality (i.e., Funke Medien, C-469/17, at [23]), something that does not happen very often [IPKat on this subject here or here].

The court also reiterated the now well-established principle that “it is up to the person claiming to be the victim of copyright infringement to explain the originality of his or her work” [IPKat here or here].

The court therefore assessed the originality of the plaintiff’s garments. It was able to deduce that the details cited (e.g. structured shoulders or ruffles on the shoulders, gathers, press studs, oversized cuts) are commonplace and not protectable as such.

Moreover, ROSAE PARIS argued the originality of its garments resulted from the combination of these elements and the contrast between two opposing styles. However, according to the TJ, the mere idea of the combination of opposing styles was not sufficient to characterise the originality of each of them by reflecting the personality of their author. The plaintiff’s action for copyright infringement was therefore dismissed by the TJ, as ROSAE failed to establish the originality of its designs.

On this point, this judgment illustrates the particular attention that copyright owners must pay to the characterisation of the originality of their work, which was far too light and brief in this case. An overly descriptive characterisation, and one that focuses purely on non-appropriable elements, can only lead to rejection. However, a subjective demonstration is not synonymous with a finding of originality. It turns out that assessing the right degree of characterisation of the elements on which the originality of a work is based is complicated before the French courts, as this judgment shows. Some courts prefer a more objective or more subjective demonstration, others a mix of the two. This ambiguity can be a source of legal uncertainty. A clarification therefore seems timely and welcome.

In the end, if the same object, such as a work of applied art, can potentially be protected under both copyright and design law, their respective conditions must still be met [IPKat on this point here, here and here]. This was obviously not the case here.