Marks misleading the public on the paternity of copyright works are fraudulent - say French Supreme Court

Earlier this year, the French Court of Cassation (the country’s highest civil court) considered the registration of the word mark "Bébé Lilly" to be fraudulent because it was likely to confuse the public regarding the paternity of the claimant’s copyright works.  Cass. Com. 11 January 2017, No 15-15750, Bull: Monsieur X c. Société Heben Music – here (in French). This decision extends trade mark protection to the bond existing between an author and his/her work. 

In a decision dated 11 January 2017, the French Supreme Court settled a dispute between the recording company Heben Music and Mr X, the author of two songs commercialised under the name of a cartoon-character known as “Baby Lilly” (“Bébé Lilly” in French). The songs, titled “Allo Papy Bébé Lilly” and “A l’école”, were produced between June 2005 and June 2006, with the first title being launched in March 2006. 

Bébé Lilly "Allo Papy Bébé Lilly"
album/DVD cover (2006)

Three months after the commercialisation of the first song, Heben Music applied to register the word mark “Bébé Lilly” with reference to a number of goods and services categories (including class 9, 16, 38) at national and international level. Mr X only found out about the registration of the mark after his professional relationship with the producer had deteriorated. In 2010, the composer decided to file for the revocation of the trade mark he regarded to be fraudulent, and simultaneously, for the registration of the work-mark “Bébé Lilly” under the classes 9 and 41.  

Mr X argued that Heben Music’s registrations misled the public with regards to “the origin and paternity of the works and recordings” at stake, and as such fell foul of Article L711-3(c) of the French Intellectual Property Code (IPC) – here. The latter holds that signs which may “mislead the public, particularly as regards the nature, quality or geographical origin of the goods or services”, serving as the national equivalent to Article 4(1)(g) of the 2015 Trade Mark Directive - here. 

"Papy" is not picking up for this Kat...

The Paris Court of Appeal rejected the author’s claim in a decision heard on 27 January 2015. The Paris Bench considered that the questions of copyright works’ “origin” or “paternity” fell outside the ambit of Article L711-3 of the IPC. On appeal of the decision, the Court of Cassation corrected this interpretation of Article L711-3 and received Mr X’s arguments. The French Supreme Court considered that the above-mentioned absolute ground of refusal would also apply whenever a mark deceives the public with regard to the authorship of a protected work. The Court concluded that trade mark law protects the average consumer's perception of "the relationship between the sign the mark embodies and a work covered by authors’ rights or related rights”.

The French Court of Cassation also found Heben Music in breach of a contractual obligation of loyalty towards their partner, Mr X, for registering word mark “Bébé Lilly” without his consent or knowledge. Under French contract law, loyalty is recognised as a component of the obligation of good faith parties owe to each other. As a result, the highest civil court ordered the transfer of the marks to Mr X on the basis of Article 712-6 of the IPC. (IPC, Art. 712-6 reads: “where registration has been applied for, either fraudulently with respect to the rights of another or in violation of a statutory or contractual obligation, any person who believes he has a right in the mark may claim ownership by legal proceedings” – here). 

All in all, this decision of the Court of Cassation confirms that one of the main functions of trade mark rights remains to secure the public’s perception of the origin of goods and services, whether these be manufacturers or authors. This decision is also interesting because it associates the connection between the origin of goods and services with the concept of “paternity” found under copyright law.  The US Supreme Court reached the same conclusion in Dastar Corp, in which Scalia J wrote " 'origin of goods' [...] must be deemed to include not merely the producer of the physical item [...] but also the creator of the content that the physical item conveys" (Dastar Corp v Twentieth Century Fox Film Corp, 539 US 23, at 33). 

To an extent, this interpretation may help filling some of the gaps left in authors’ protection against false attribution conferred by moral rights; although the application of this would remain confined to cases of trade mark registrations. This case also reasserts that the function of trade mark rights is to protect the origin of goods and services in its broadest sense, and as such includes the authorship of creative works. This means two things. The first, authors' claims of 'paternity' are not the preserve of copyright protection. And second, the overlap with copyright protection on this point does not rule out the use of trade mark rights to achieve the same result. As one might say, two [rights] are better than none.