French design law: what are the current issues?

Written on 8 Jun 2016

Since the implementation of the EU Design Directive (the Directive) in 2001, the French courts have made a number of decisions on design rights and a number of issues raised by the new law are therefore now quite established. One remaining and recurring question, however, is the relationship between two forms of intellectual property protection: copyright and design right.

Design rights and copyright: cumulative protection?

Before the implementation of the Directive, the French courts used to consider that shapes protected by a design right were automatically also protected by copyright. They have since taken the view that cumulative protection should be granted only if conditions of protection of design right (novelty and individual character) and copyright (originality of the work) are both fulfilled. This rule has been recently reaffirmed by a 2015 decision of the French High Court, which deemed that even if a reel had an “individual” appearance, this did not imply that such reel was automatically protected by copyright.

Even where cumulative protection does apply, infringement of the design right does not automatically result in copyright infringement, especially in case of an unregistered community design. In a 2014 decision, the Paris Court of Appeal concluded that, by marketing shoes that were similar to the copyrighted work, the defendant had infringed the copyright, but not the unregistered community design right.  This was because the copy was not slavish. There were differences between the two shoes, including three marks on the ankle instead of two, and pyramid nails instead of conical nails.  As a result, the defendant’s shoes gave a different overall impression.

Nevertheless, cumulative protection on the grounds of both copyright and unregistered community design right is still possible. In 2011, for example, the Paris Court of Appeal found that a coffee table and a couch were protectable under design right and copyright.  Unlike the 2015 High Court decision referred to above, in this case, the coffee table and couch were considered new and having an individual character, as well as being original by expressing the designer’s aesthetical choices.

Repair clause

A significant development currently being debated, which could impact on both design and copyright protections, is the potential implementation of a “repair clause” under French law, as is already the case in several Member States. Under such a clause, design right protection is limited to the manufacturing of the article and does not apply to the repair and maintenance of it. Therefore,  for example, manufacturing car spare parts would not be an infringement of the car manufacturer’s design rights.  Such a clause would apply to complex products, the design features of which must be visible to the end-user in order to be protected.

Similar principles already exist to an extent in French law. Design right protection does not apply to the appearance of products that are solely dictated by their function, and in particular to parts of products that can only be used in connection with another product.  However, this falls short of a general exemption for repair articles.

This possible approach arises from the Directive, which left the question of the protection of products used for the purpose of repairing another complex product, or restoring its initial appearance, open and subject to national regulations. The European Commission and the French Competition Authority have therefore recommended the adoption of a repair clause in order to ensure competition within the automobile market in particular.

Such a recommendation is currently criticised by some, on the basis that it might lead to a difficult relationship between copyright and design right. A product could, for instance, be protected by copyright (for example, the Criminal High Court held in 2011 that a car body and side mirrors were eligible for copyright protection), when design rights would not apply because of the exception rule. If such a repair clause is implemented, it will be interesting to see how French courts and rights owners would handle the overlap of protection under the two forms of rights.