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The Court of Cassation establishes the principle of a…

Vanessa Bouchara

Updated on May 4, 2021

The “Cour de cassation” establishes the principle of a double compensation on the basis of copyright and designs

By virtue of the principle of the unity of art, enshrined in French law by articles L.111-1 and following of the Code of Intellectual Property, allows to grant protection to all works of the mind by the sole fact of their creation, “whatever the genre, the form of expression” (Article L.112-1 of the Code of the intellectual property), and without any formality being carried out.

In fact, a design or model can be protected by both the copyright. The company is governed by the French Intellectual Property Code, based on articles L.111-1 et seq. of the Code de la propriété intellectuelle, and by the right to designs and models, based on articles L.511-1 et seq. of the same Code.

Thus, a design can benefit, in France, from a double protection provided by both copyright and design law.

However, the owner of a design benefiting from dual protection under copyright and design law will not systematically be able to obtain double compensation on these two grounds in the context of an infringement action.

Law n°2014-315 of March 11, 2014, reinforcing the fight against counterfeiting, specified the criteria taken into account by the judge to set the damages in the context of an action for copyright and design infringement.

Thus, according to articles L.331-1-3 and L.521-7 of the Intellectual Property Code, the following are taken into account separately in the determination of damages

  • The negative economic consequences of the infringement, including lost profits and losses suffered by the injured party;
  • The moral damage caused to the latter ;
  • And the profits made by the infringer or counterfeiter, including the savings in intellectual, material and promotional investments that the infringer or counterfeiter has made as a result of the infringement.

The last paragraph of articles L.331-1-3 and L.521-7 of the Intellectual Property Code provides that in case of award of a lump sum for damages by the judge, the sum awarded must be higher than the amount of royalties or fees that would have been due if the infringer or the author of the infringement had requested the authorization to use the right.

Although provided for in two separate articles, the award of double compensation is rarely retained by judges.

In fact, the case law on the subject is quite fluctuating.

Depending on the case, the Courts will proceed to a global appreciation of the prejudice by granting only one compensation in case of infringement of the author’s rights or, on the contrary, granting a double distinct compensation for each work and for each claimed right.

In a decision dated September 16, 2014, the Court of Cassation validated for the first time the principle of double compensation on the basis of copyright and design law (Cass., Com., September 16, 2014, 13-20.589).

In this case, the SAM company, operating under the GIORGIO brand, had created three coats referenced “Shana”, “Fellini” and “Eugenie “.

It summoned the company GIOVANNI on the basis of copyright and designs, the company SAM having registered on March 11, 2009, two of these models with the National Institute of Industrial Property.

The Paris Court of Appeal by decision of April 26, 2013 issued separate sentences on the basis of copyright and designs (CA Paris, April 26, 2013, 2011/18809).

The Court of Cassation confirmed the decision of the Court of Appeal and considered that the Court was right to make a separate assessment of each of the damages caused by acts of infringement to the company SAM operating under the GIORGIO name.

In a decision issued on March 30, 2017, the judges clarified that ” while the methods of calculating compensation are identical in copyright and design law, its basis and quantum vary concretely in consideration of the right infringed. ” (TGI Paris,3rd ch., sect. 1, March 30, 2017,no. 2015/05884).

On appeal from this decision, Chanel obtained separate and specific compensation for each work, for copyright and design infringement (Paris Court of Appeal, Pôle 5 – Chamber 1, January 29, 2019, No. 17/11182).

According to this logic, each act of infringement results in an infringement specific to each claimed title and thus generates a specific prejudice for each design and each original work that is infringed.

However, judges will not systematically adopt this reasoning when a party requests the granting of a separate compensation for its damages on the basis of copyright and on the basis of designs.

As an example, in a decision rendered on September 29, 2016, the company BA&SH had sought separate compensation for its damages on the basis of copyright and on the basis of Community designs (TGI, Paris,3rd chamber,1st section, September 29, 2016, n°14/18124).

However, the judges considered that, according to the principle of full compensation, a single loss cannot result in double compensation. The judges then stated that ” the cumulation of protection to which the Ikie coat is entitled is not such as to give rise to a right to double compensation, since the commercial loss, like the damage to the image suffered as a result of the marketing of the coat referenced W8611 by the defendant companies, is unique, whatever the basis envisaged. ” (TGI, Paris,3rd chamber,1st section, September 29, 2016, n°14/18124).

The decisions of September 16, 2014 (Cass., Com., September 16, 2014, 13-20.589) and of January 29, 2019 (CA Paris, Pôle 5 – chamber 1, January 29, 2019, n°17/11182) The aforementioned laws only reinforce the French legal arsenal implemented to protect the rights of artists over their creations, the infringer can be condemned to pay separate indemnities both on the basis of copyright and on the basis of designs and models for a single infringement of his rights. However, this is not consistent case law in this area as double compensation is not automatically awarded by judges.

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