202103.08

France: infringement of copyright (bracelets and photographs), design rights, personality rights, unfair competition and free riding

Ms. X (1), a creator, sued FQP Network before the Lyon court of the first instance for infringement of designs, infringement of copyright (for the reproduction of bracelets and photographs), infringement of personality rights, unfair competition, and free riding. The defendant had reproduced Ms. X’s bracelets and the photographs on the defendant’s website, namely bluepearls.fr, and on rueducommerce.fr, one of France’s most popular marketplaces.

In terms of procedural aspects, the court recalled that the absence of an amicable process does not make a claim inadmissible.

On the merits, the court granted almost all of Mrs. X’s claims.

The court upheld the infringement for some of the models and, consequently, pronounced remedial measures based on Article L. 521-7 of the French Intellectual Property Code. In the present case, Mrs. X. sought lump-sum compensation for the damage caused. The defendant hoped that the lump sum would be based on the number of sales made. On the contrary, the plaintiff wanted the court to rule on the amount of royalty the parties could have agreed on if they had entered into a licensing agreement. The court followed Mrs. X’s method of calculation: “Mrs. X does not justify the amount of the negotiated royalties to which she could have claimed, in particular concerning the practices observed in her field of activity for comparable objects; however, she undoubtedly could have monetized the use of its models. Since counterfeiting has deprived her of such an opportunity, the economic damage is real. The sum of 10,000 euros will therefore be awarded to her as compensation for her financial loss”. Besides, the court ordered the defendant to pay the plaintiff an additional 2,000 euros in respect of non-pecuniary damage. On the other hand, the court rejected her request to repair the devaluation of the value of intellectual property rights on the grounds that she had “chosen to rely on the second paragraph of Article L. 521-7 of the Intellectual Property Code”.

As for copyright infringement, on the one hand, the claim relating to the bracelets was rejected for failure to demonstrate the work’s original characteristics. On the other hand, the claim related to the infringement of the photographs was admitted. In this regard, the defendant offered the court the opportunity to recall that the infringer’s good faith is inoperative. The plaintiff argued that she “would have set the price [of] copyright-licenses at the sum of 435 euros per month for the two bracelets and the photographs”. However, for the court, “there is no reason to consider that Mrs. X. would have required such an amount. The sum of 10 euros per photograph and per month will therefore be granted”, i.e., 460 euros, to which the court added 500 euros for moral damage. Also, the court granted the publication of part of the decision on the bluepearls.fr website.

Mrs. X also wanted to obtain compensation for the infringement of her personality rights. Indeed, it appears that her face, hands, and forearms were disclosed on the bluepearls.fr website without her consent. On this ground, the court considered that the damage suffered should be repaired up to 1,500 euros.

Concerning the claim relating to unfair competition, the court recalled that “in the presence of condemnation for intellectual property infringement, the cl for unfair competition made by the person for whose benefit such a judgment has been pronounced shall be accepted only on condition of relying on facts distinct from those qualified as intellectual property infringement. Conversely, when the claims for intellectual property infringement and unfair competition are not concentrated in the hands of the same person or when the claim for intellectual property infringement has not been granted, there is no need to demonstrate distinct facts”. In the present case, on the one hand, the court rejected the argument that lower prices would constitute an act of unfair competition. On the other hand, the court ruled that “the use of photographs belonging to the claimant to promote identical products creates a risk of confusion with the customers” and added that the defendant had unfairly benefited from the investments of Mrs. X. The court evaluated the damages for unfair competition at 3000 euros.


(1) Under French law, judicial decisions involving natural persons must be anonymized.


Source: TGI Lyon, 3e ch., 2 Feb. 2021 (Legalis.net)

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