Failure to comply with the terms of a copyright assignment agreement held to amount to copyright infringement in France

This Kat is always on the hunt for new copyright rulings. This time he has found a recent ruling issued by the Paris Court of Appeal, concerning a copyright assignment agreement, a subject that is the source of many disputes in France. This time, the dispute notably concerns both the originality of photographs and their use for a period exceeding that stipulated in the copyright assignment contract.

A Kat while using à L'Oréal shampoo

Facts

Between 2013 and 2015, L'Oréal asked Ms Y to take photographs of products in its KERASTASTE brand ranges. For each product range, a copyright assignment agreement was drawn up, including a fixed fee for taking the photographs and a permission to use them for 12 to 18 months. In 2016, L'Oréal changed the packaging for its Kérastase products. Subsequently L’Oréal asked its subsidiaries to stop using Ms Y's visuals. However, Ms Y realised that some of her photographs continued to be visible online after the agreed exploitation period. L'Oréal regularised the situation by renewing the licences. In early 2019, Ms Y noticed that several of her other photos were still available online and had been altered. The French company refused to regulate the situation.

On 8 July 2019, Ms Y unsuccessful addressed a cease-and-desist letter to L'Oréal.
Subsequently, on 31 December 2019, Ms Y brought an action against L'Oréal Paris a for copyright infringement before the Paris Court of First Instance. In a judgement dated 6 July 2021, the Court dismissed the photographer's claim and declared several of her photos to be unprotectable under copyright law. Ms Y then appealed.

A Kérastase product

Analysis

In order to reach its decision, the Court of Appeal divided its reasoning into several steps. After ruling out L'Oréal's contractual liability, the court addressed the infringement of the photographer's copyright.

Limitation period

Based on article 2224 of the French Civil Code, the court recalled that "actions for payment of claims arising from infringements of the shareholder's copyright are subject to the statute of limitations under ordinary law, i.e. 5 years from the day on which the holder of a right knew or should have known of the facts enabling him to exercise it”. In this case, the court declared that the photographer's claims were not time-barred, as the time limit did not run from the first publication of the images concerned, but from the complaints sent to L'Oréal in 2019, in particular the cease-and-desist letter of 2019. The disputed uses extending from 2015 to 2018 had been regularised.

Such position is not surprising. The assessment of the starting point of the limitation period for such an action is factual. This ruling is clearly in line with the clarification provided by recent case law [IPKat here].

Originality

In order to rule on the originality of the photographs taken by Ms Y, the Court of Appeal, explicitly relying on a combined reading of articles L. 111-1, L. 112-1 and L. 112-2 9° of the French Intellectual Property Code, recalled that "the author of a work of the mind enjoys an exclusive and enforceable intangible property right in that work by the sole fact of its creation". Such is the case for photographs as this type of work is explicitly mentioned in the open-ended list of works eligible for such protection. It then added that ‘the principle of protecting a work without formality and solely by virtue of the creation of an original form in the sense that it bears the imprint of its author's personality and is not a banal rehash of a common pool that cannot be appropriated’.

There is nothing new in this respect, as the court relied on well-established principles. The protection of photographic works by copyright is, moreover, a subject widely illustrated by case law both on the national and CJEU level [IPKat here, here, here or here]. Once again, it should be noted that the French court refused to use the exact language derived from CJEU case law on originality (i.e. Funke Medien, C-469/17 (at [23]) still relying heavily on the notion of personal imprint.

The court also pointed out that who consider themselves a victim of copyright infringement must specify the outline of the free and creative choices that make the work their own intellectual creation. This point is in line with the preexisting case law [IPKAT here].

Once these principles had been set out, the Court of Appeal had to verify whether each photograph was sufficiently original to qualify for copyright protection. As far as packshots are concerned, the Court held that Mrs. Y merely made technical choices, such as “sharpening the contrasts to shape the pack”, "making the name of the product stand out" or "focusing the light on the lower 2nd half of the pack where the writing is". Indeed, the choices and approach taken in the case of packshots were not such as to reveal a personal creative approach. In the end, only 16 other photos of Mrs Y were considered original, out of all the photographs.

From a practical point of view, the one willing to demonstrate the originality of their work should pay great attention to the characterisation of his free and creative choices. Sole technical choices are not enough to grant originality to a work.

Copyright infringement assessment

To reach its decision, the Court of Appeal carried out a factual analysis of the 16 remaining allegedly infringed photographs. The Court found that these photographs had been put online between 2013 and 2016. The copyright assignments, which had been declared valid, had been concluded for a period ranging from 12 to 18 months. Consequently, by noting that some of these photos were still visible in 2019, in application of article L. 122-4 of the CPI, the Court logically held that L'Oréal had committed acts of reproduction and representation infringing Mrs Y's copyright.

By respecting strictly the terms of the litigious assignments, L'Oréal should not have continued to use the photographs on its social networks after the periods provided for. The beauty company should also have withdrawn the photographs completely

In the end, the infringement of the right of adaptation of Mrs. Y was rejected. The court held that "the copyright assignments granted to L'OREAL included such adaptations, namely digital and offline promotional communication and press kits, which cannot therefore be analysed as acts of infringement". Therefore, Mrs. Y could not validly contest acts to which she had consented.

From a practical point of view, such a decision is not without interest. It is up to the beneficiary of an assignment of copyright to ensure that it is strictly complied with, both in terms of the possible acts and the duration of the assignment. It is also advisable to pay attention to the wording of the scope of the assignment of copyright.