Alleged copyright infringement, unfair competition, and free riding

• France

• Intellectual property - Briefing notes

03-08-2015

Cour de cassation, 1^st Civil Division, 15^th May 2015, appeal No. E/2013/28116

In the case we are dealing with here, Mr Philippe Cassegrain, a bag designer, and Longchamp, the company in charge of marketing the bag, had taken legal action against two companies, Günther Andersen and Vivadia, for alleged copyright infringement, unfair competition, and free riding. Mr Cassegrain and Longchamp were claiming that the two companies were manufacturing and selling a bag which copied the combination of features of the bag, of which they held the copyright.

In a ruling dated 13^th September 2013, the Court of Appeal in Paris admitted the originality of the bag, because of a combination of the following elements:

• its small press-stud flap, located between the two handles and covering a part of the zip fastener;
   
• the slightly round shape of this small flap, emphasised by the application of a thick overstitch;
   
• overstitching on the front of the bag, running from the flap, and reminding one of the shape of the bag’s inside pocket;
   
• the fact that the flap is affixed to the back of the bag by means of double stitching;
   
• its two handles, which end with two round triangular shapes, said handles being sewn on either side of the bag opening, by means of stitched straps;
   
• its two small round straps on either end of the zip fastener; said straps come to underline the bag’s top corners, and strip out;
   
• its trapezoid shape, when ones looks at the bag from the front;
   
• the rectangle shape of the bottom;
   
• its triangular shape, when one looks at the sides of the bag. 

However, the Court of Appeal dismissed the claimant’s claims for copyright infringement.

First of all, the Court of Appeal dismissed the claims because the allegedly infringing bag fails to copy the dominant elements, which give the bag its originality. Said dominant elements are the “specific shape of the flap, as emphasised by the application of thick overstitch, the golden button, the very visible overstitch on all of the leather parts, the alliance of overstitched brown leather with other materials and colours, and the specific proportions”.

Second, the Court of Appeal dismissed the claims because the allegedly infringing bag shows “significant differences as a result of which the bag has its own physiognomy, meaning the overall visual impression of this model excludes any likelihood of confusion”.

Also, the Court of Appeal dismissed the claims based on unfair competition and free riding, explaining that, in this regard, the claimants had based their claims on “a mere resemblance between the bags, which precludes any confusion”. Accordingly, the Court noted that “no fault, which is likely to characterise unfair competition, shall be accepted here”.

In its ruling dated 15^th May 2015, the Cour de Cassation (French Supreme Court) confirmed the appeal judgment in relation to the unfair competition aspects. The Cour de Cassation recalled that, in order for an action on the grounds of unfair competition to be accepted,  “the claim for unfair competition has to be based on acts, which are different from those punished on account of copyright infringement, as the existence of infringement does not imply the existence of unfair competition”.  

However, in relation to copyright infringement, the Cour de Cassation quashed the appeal judgement, which had not found that the bag was infringing.

The Cour de Cassation noted that “the existence of a golden button, the alliance of overstitched brown leather with other materials and colours, and the specific proportions, were not among the elements, which the Court of Appeal had taken into account to establish the originality of the bag”, and that “the existence of a likelihood of confusion is of no relevance for the purposes of establishing copyright infringement”.