The use of a third party’s product in an advertisement: the Courts’ assessment of the incidental character.
Advertisers frequently use third-party products in their ads that are copyrighted creations and do not request the necessary authorizations. The article L.122-4 of the Code of the intellectual property indeed states that “any representation or reproduction in whole or in part made without the consent of the author or his successors or assigns is illicit (…)”.
The exclusive rights of the author on his work have however been limited by the jurisprudence through the theory of the accessory allowing to distinguish what enters the field of protection of the work (which remains prohibited without prior authorization of the author or his successors in title), and what is abstracted from it (which is thus authorized in the absence of prior agreement of the owner of the protected work)
Protected works in the public space
This theory was first established in the area of works on the public highway.
The ‘Cour d’appel de Paris’, followed by the ‘Cour de cassation’, thus ruled out infringement in a dispute involving Automobiles Peugeot, which, for its advertising campaign, had taken a photograph of one of its car models in a public place located in La Défense, and on which appeared a part of a fountain (work protected by the copyright) without prior authorization from the owner of the rights.
The judges hold that the elements appearing on the litigious advertising posters do not communicate to the public the original characteristic features of the fountain, so that even a partial reproduction of the work could not be characterized (CA Paris, May 30, 1985; Cass. 1re civ., July 16, 1987, n°85-15.128).
The jurisprudence considers that when the subject that gives the work its main attractive character is not the allegedly infringing work, its reproduction and representation are not subject to the author’s monopoly on his work.
Indeed, “the representation of a work located in a public place is only lawful when it is accessory to the main subject represented or treated” (Cass. 1st civ., July 4, 1995, n°93-10.555).
In this sense, the ‘Cour d’appel de Paris’, in a 2005 decision, rightly notes, according to the ‘Cour de cassation’, that the reproduction of the layout of a public square on postcards does not constitute an infringement as long as this layout, which blends into the architectural ensemble of the public square, is accessory to the subject treated by the authors of the postcards, which is the representation of a square (Cass. 1re civ., March 15, 2005 n°03.14.820)
In particular, this prevents an author from abusing his exclusive rights on his work even though it is by chance on the public highway and is not the main subject exploited by the third party.
This case law could have been weakened following the entry into force of the law of August 1, 2006 (Law n° 2006-961 of August 1, 2006 on copyright and related rights) related rights in the Information Society) partially transposing the European Directive of May 22, 2001 (Directive 2001/29/EC of the European Parliament and of the Council of May 22, 2001 on the harmonization of certain aspects of the Internal Market). copyright and neighbouring rights in the information society).
Indeed, the legislator did not transpose the exceptions provided for in articles 5.3 h) and 5.3 (i) the Directive, which exclude the author’s monopoly “when it concerns the use of works, such as architectural works or sculptures, made to be permanently placed in public placesor “when it involves the incidental inclusion of a work or other protected subject matter in another product.
Regarding the reproduction of works present on the public highway, the legislator aligned itself with the case law with the law “For a Digital Republic” of 2016 (Law n°2016-925 of July 7, 2016 and Law n°2016-1321 of October 7, 2016), which introduced a panorama exception in French law, equivalent to that provided for in the European directive of 2001.
Article L122-5, 11° to the Intellectual Property Code as amended by Article 39 of this law provides that: “reproductions and representations of architectural works and sculptures, permanently placed on the public highway, made by natural persons, excluding any commercial use are allowed.
”Protected works in private space
The criterion of incidental inclusion, the second exception provided for in the 2001 directive, has not been taken up by the legislator.
However, this omission has not prevented the French courts from applying it to characterize the infringement, or on the contrary, from rejecting it if the representation of the object protected by the copyright is only accessory.
Indeed, in 2011, the ‘Cour de cassation’ relied on the preparatory work for the transposition of the Directive, which provided for the above-mentioned exception, to establish that “The presentation of a work in a film must be considered as a fortuitous inclusion of this work, constituting a limitation to the author’s monopoly, since it is accessory to the subject matter. (Cass, 1ere civ, 12 May 2011, 08-20.651, Published in the bulletin).
While the basis of this case law is debatable, the spirit of the directive has been preserved.
The ‘Cour d’appel de Paris’ was able to qualify as infringement photographs that reproduced in close-up, over an entire section of the photograph, a lamp post protected by the copyright when its presence participating in “the visual identity of the hotel”.and could not be considered as “incidental inclusion” of a work (CA Paris, Pôle 5 – chamber 2, December 2, 2011, n° 10/15306).
The use of the expression “incidental inclusion” attests to the judge’s intention to refer to the exception contained in article 5-3 (i) of the Directive of May 22, 2001 (Directive 2001/29/EC of the European Parliament and of the Council of May 22, 2001 on the Harmonization of Certain Aspects of Copyright and Related Rights in the Information Society), even though it has not been transposed into French law.
In another case, the Court of Appeal ruled that the use of a table runner was incidental because the characteristic elements of the work, giving it an original character, were “immediately detectable and discernible” especially because of its visibility “in attack sequence” as well as its “decisive place” in advertising (CA Paris, Pôle 5 – chamber 1, April 7, 2010, n°09/03186).
The counterfeiting of bracelets used in an advertisement for a duty free shop was also retained on the grounds that “ if the eye of the spectator is focused on the bag carried by the mannequin or placed at his feet, he is led to stop especially on the clothes, ornaments and jewelry that the consumer can consider to have been acquired in the said stores and contained in the bags “.
The Court of Appeal thus considered that the presence of the two models of bracelets, presented in a very visible way “participated in the axis of attraction of the advertising directed towards duty free stores” (CA Paris, Pôle 5,2nd chamber, February 10, 2012, n°10/21952).
The use of a work protected by the copyright is therefore likely to be qualified as an infringement as soon as the work appears in a very visible way in the advertisement and indirectly reflects the interest of the observer on the products which are the object of the advertisement (CA Paris, Pôle 5, chamber 1, March 23, 2011, n°09/01831, )
Thus, the reproduction in an advertisement of a Le Corbusier armchair, a famous architect and decorator, was qualified as an infringement by the ‘Cour d’appel de Paris’ because the work appeared “close-up centered” of the advertising campaign, “immediately identifiable”and that it “was an attractive element of the visual” (CA Paris, Pôle 5, chamber 1, March 13, 2013, n°11/13375).
In a case between Louis Vuitton Malletier and H&M, the ‘Cour d’appel de Paris’ granted the Malletier’s request, qualifying the use of one of its shoe models in an H&M advertising campaign as an infringement, since they were intended to highlight the dress that was the subject of the advertisement (Cass, com, May 6, 2014, No. 11-22.108).
The theory of accessory being a praetorian exception, is far from being applied in an identical and systematic manner.
The assessment of infringement on the criterion of incidental inclusion is subtle and is done on a case-by-case basis for each photograph or film, which requires a specific analysis of the place occupied by the copyrighted object within the advertisement.
As a result, this praetorian exception must be interpreted with great caution.
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