To be protected a t-shirt design must be original and/or have individual character, recalls French court

The protection of works of applied art by intellectual property is a divisive issue. This subject has recently been the subject of some important clarifications [IPKat here, here or here]. This Kat has found a recent decision issued by the Paris Court of Appeal in a dispute over the allegedly unlawful reproduction of a t-shirt design. This ruling was an opportunity for the court to reiterate that a garment can be protected by copyright and design law.

    A Kat wearing a t-shirt

Facts

Opull'ence is a French company that designs and manufactures women's clothing. In April 2020, it launched a white t-shirt, available in two versions, with the words "ARMS ARE FOR HUGS" on the front. One version featured epaulette sleeves, while the other had short sleeves and no epaulettes. Subsequently, the company noticed that a company named Gazelle was selling a t-shirt model also bearing the words "ARMS ARE FOR HUGS". Opull'ence considered that the sale of this t-shirt constituted a slavish copy its own t-shirt. On 15 June 2020, the French company brought an action against Gazelle before the Paris Court of First Instance claiming infringement of its copyright and unregistered Community designs. In a ruling dated 20 January 2022, the Paris Court of First Instance dismissed all the plaintiff's claims. Opull’ence appealed.

Opull'ence's t-shirt

Analysis

Infringement of copyright

The Paris Court of Appeal first ruled on the copyright infringement claim by Opull'ence.

Relying explicitly on a combined reading of articles L 111-1, L 112-1 and L 112-2 10° of the French Intellectual Property Code (CPI), the Court of Appeal recalled that “the author of a work of the mind enjoys an exclusive intangible property right in that work, enforceable against all, by the sole fact of its creation”. Works of applied art can indeed be protected by copyright as long [as explicitly mentioned by article L 112-2 10° of the CPI] they are sufficiently original.

The Court also reminded that "it is up to the person claiming copyright whose existence is disputed to define and explain the contours of the originality that he or she is alleging". Such a position is not surprising, as it is in line with previous case law [IPKAT here or here].

 
Then, the Court of Appeal proceeded to assess the originality of the t-shirt. On this point, upholding the first instance judgment, the Court of Appeal held that Opull'ence had failed to demonstrate the originality of the design on which it claimed copyright. Consequently, no copyright infringement could be found. For the court, "both the slogan claimed, written in red in a banal font and layout, and the shape of the t-shirt described, are known characteristics, and their combination, which consists of affixing this slogan to a t-shirt in the fashion trend for t-shirts with a message, in no way demonstrates free and creative choices revealing the personality of their author, and the absence of prior art for any piece using this combination is irrelevant in this respect".

This position calls for several comments.

 
First of all, the possibility of protecting a work of applied art by copyright is well established in French law [IPKAT on protection of work of applied art here]. All that is required is for the garment to be sufficiently original, as must any work of the mind, whatever its nature. This opportunity for protection is also in line with the position of the CJEU [IPKAT here].

As the Court of Appeal rightly emphasised in this judgment, prior art should not play a role as such in copyright disputes, unlike in design law.

In practice, as far as disputes relating to applied art are concerned, the possibility of introducing prior art [cleverly not explicitly mentioned as such] into the debate is not negligible. This is indeed a classic defence, making it possible to demonstrate that the free and creative choices claimed by the author of the allegedly infringing creation are in fact no more than a banal reworking of what may already exist (i.e. an undue appropriation of a particular style or genre, which is not protectable). As this judgment illustrates, the defendant in an action for infringement of copyright in works of applied art will have every interest in trying to link the allegedly infringed work to a trend or numerous preexisting (or not) similar works.

Infringement of unregistered Community design rights

The Court of Appeal went on to rule on the infringement of unregistered Community design rights claimed by the plaintiff in the 2 versions of its t-shirt design.

 
Carrying out a factual analysis, the Court of Appeal pointed out that the date of first disclosure, which was not disputed, was 19 April 2020. The period of protection had therefore not expired.

Basing itself explicitly on article 4 of Regulation No 6/2002, the court recalled that such protection could only be granted to a design that is new and has an individual character. As both conditions must be met, the satisfaction of only one of the criteria would not suffice.

As regards the criterion of novelty within the meaning of Article 5(1) of the aforementioned Regulation, the Court emphasised that none of the prior art produced by the defendant, including a Redbubble t-shirt dating from 2015, was identical to Opull’ence's model. The differences that did exist between Opull’ence’s design, and the prior art were not minor. The condition of novelty was therefore validly met.

As regards the existence of individual character within the meaning of Article 6 of Regulation 6/2002, the Court of Appeal compared the Opull’ence model to the Redbubble t-shirt from 2015.

The court identified the informed user as being a consumer interested in fashion and with average attention span. Thus, it concluded that the model “did not produce an overall impression different from the previous Redbubble model, producing an impression of déjà vu”. Therefore, as the existence of an individual character was ruled out, the court ended the claim.

From a practical perspective, it shall be underlined that for a Community design court to treat an unregistered Community design as valid, the rightholder is not required to prove that it has individual character within the meaning of Article 6 of Regulation No 6/2002, but need only indicate what constitutes the individual character of that design (Karen Millen, C‑345/13, at [47]).

In short, this judgment is a reminder. There is no doubt that a work of applied art can be protected by several intellectual property rights. However, this cumulation of protection presupposes compliance with the criteria or conditions of protection specific to each branch of IP. Moreover, IP rights are not intended to protect the same thing, nor do they have the same purpose: copyright aims to protect a specific creative act, while design rights protect the appearance and aesthetics of a product. These different rights are not intended to replace each other.