Intellectual property lawyer in Paris, patent law: Can software be patented?

Update: Nov. 2, 2022

 A lawyer specializing in patent and industrial property law informs you.

 

What inventions are not patentable?

According to L611-10 of the Intellectual Property Code: 

1. New inventions involving an inventive step and capable of industrial application shall be patentable in all fields of technology.

2. The following in particular shall not be considered as inventions within the meaning of the first paragraph of this Article

a) Discoveries and scientific theories and mathematical methods;

b) Aesthetic creations ;

c) Plans, principles and methods in the exercise of intellectual activities, in the field of gambling or in the field of economic activities, as well as computer programs;

d) Information presentations.

3. The provisions of paragraph 2 of this Article shall exclude the patentability of the elements listed in those provisions only to the extent that the patent application or patent relates to one of those elements as such.

4. Subject to the provisions of Articles L. 611-16 to L. 611-19, inventions relating to a product consisting wholly or partly of biological material, or to a process for the production, treatment or use of biological material, shall be patentable under the conditions laid down in paragraph 1.

Biological material is considered to be material that contains genetic information and can reproduce itself or be reproduced in a biological system.

 

In general, the criteria for patentability of computer inventions are the same as those for other fields of technology. However, there are specific considerations for computer inventions, notably whether an invention is considered pure software or whether there is sufficient interaction with the physical world for it to be considered a computer system or apparatus.

The following are some of the common patentability criteria for computer-related inventions:

Novelty: The invention must be new and not have been disclosed to the public before the patent application. This means that the invention must be considered completely new and original.

Inventive step: The invention must involve some inventive step beyond the mere application of well-known knowledge or techniques. The invention must involve a creative or innovative contribution to the state of the art.

Industrial application: The invention must have an industrial application, i.e. it must be capable of being used in a commercial or industrial context.

Clarity and conciseness: The patent application must be clear and concise, so that the claims of the invention are easily understood by a person skilled in the relevant technical field.

Non-obviousness: The invention must not be obvious to a person skilled in the relevant technical field.

It should be noted that software-related inventions may be more difficult to patent due to specific patentability requirements. In some countries, pure software inventions may not be patentable at all, while in others, sufficient interaction with the physical world may be required for an invention to be considered patentable.

 

Can information presentation software be patented?

Software is traditionally protected by copyright, as chosen by the legislator (law of 3 July 1985) and the European treaties.

Information presentation software does not a priori have such a technical character. It is excluded from patentability by Article L611-10, 2), c) and d) of the Intellectual Property Code.

 It is "pure" software, a bit like a word processor, a man-machine interface, with no particular technical effect, capable of solving a technical problem, of exerting a force.

On 11 Jan. 2023, the Court of Cassation issued several rulings on the subject, which may seem contradictory.

In No. 20-10.935 (rejection), the Court of Cassation is in favour of patentability and accepts the technical nature of information presentation software.

In No. 19-19.567 (cassation), the Court did not agree, and asked that the technical nature of the invention be demonstrated, again in relation to information presentation software.

 

See as well :

How to protect software?

Stone of Roquefeuil, patent attorney at Paris accompanies you to defend your interests and those of your company.

 

See as well :

Counterfeiting: how to react?

Counterfeiting: how to react: the intellectual property lawyer in Paris answers

Copyright, Trademarks, Patents, Designs and Models how to sue or defend yourself in case of suspected infringement? The intellectual property lawyer in Paris will inform and advise you.

 

Patents, copyrights, trademarks, designs and models are intellectual property rights; the list is not exhaustive.

They are registered with intellectual property offices, and it is their registration with these offices that establishes their existence, except in the case of copyright, which can be proven by any means.

Registration with the offices is not a guarantee of the validity of the title. Your title may therefore be declared invalid by a court if it does not meet the required conditions of validity.

Should civil or criminal proceedings be used to stop and punish counterfeiting?

The criminal route implies that the public prosecutor, in charge of defending public order and society in general, takes charge of the case: the prosecutor therefore no longer has control over his or her case in order to settle a dispute.

In addition, in the context of criminal proceedings, the prosecutor must prove the intention to infringe, which can be difficult to prove.

The civil route avoids these disadvantages.

On the other hand, when there is mass counterfeiting or when the counterfeiters are not immediately identifiable, the criminal route may be preferred, which makes it possible to implement means of investigation and action such as customs and judicial police.

 

Counterfeit : 

What can be asked?

If your work, productions or signs are copied, you can sue the copier for counterfeiting or unfair competition (parasitism).

It is of course advisable to call on a lawyer specialising in intellectual property law to analyse the situation and determine the conditions under which you can proceed. 

Not all copying is actionable, and the scope of what you can claim (bans, compensation) is variable.

You can also request preventive prohibition measures, seizures, measures to produce information on the extent of the infringement.

Some fifteen directives and two regulations of the European Union apply to copyright. These texts implement the international treaties that exist on the subject (WIPO, APDIC, Rome, Berne).

In France, Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the digital single market and amending Directives 96/9/EC and 2001/29/EC, ("DANUM" Directive), has been transposed 

 

  • by Order No 2021-580 of 12 May 2021 as regards Articles 13 and 17: "providers of online content sharing services" may be liable for infringing content uploaded by their users;

 

  • by Law 2019-775 as regards Article 15, by creating a neighbouring right for the benefit of press agencies and publishers

 

The principles are the same for trademarks, patents and designs.

 

Counterfeiting: What are the defences?

A person suspected of infringement may defend himself by stating 

  • that he is the legitimate holder or user of the right (ownership dispute);
  • that the right being challenged is invalid, outdated or not applicable (e.g. outside the territory);
  • that it benefits from the application of an exception; 
  • (reduces the attack) that the infringement does not cause harm; 

 

Roquefeuil avocats, a law firm specialising in intellectual property law, can assist you in these matters.

See as well : Assignment of copyright

Remuneration for work and payment of royalties, the issues – the lawyer in intellectual property law answers

Patent: is software patentable?

 

Apart from intellectual property infringement, what can be sued, how to defend the intangible assets of the company? : 

 

Intellectual property can only sanction certain acts, and cannot prevent free competition.

A company may seek to protect its assets in areas other than intellectual property: 

  • action for unfair competition and parasitism ;
  • violation of trade secrets, business secrets ; 
  • breach of contract ...

 

The legal tools of marketing design

 

Brand, Appellation, Made in France, Label…

 

Protecting and promoting heritage and know-how

 

Marketing Design

 

Where and what to sell, with what brand image?

 

Logos, graphic charter, store scenography, packaging are all tools to create the image of the company, the service or the product.

 

The legal tools at the service of this image make it possible both to signify the quality of the product and to protect this image against usurpation, these are essentially trademarks, designs and models and signs of quality.

 

Marks 

 

A trademark is a registered distinctive sign designating services or products.

 

It is a name or a design, a sound… under which these products and services will be distributed.

 

One can choose as a mark any normal sign that is not already taken.

 

The mark makes it possible to certify that such a product which bears a mark comes from such a company, owner of this mark.

 

If the product or service is successful, the brand will gain in reputation, and the products sold under this brand will sell more easily.

 

The heritage brand

 

The heritage brand is a brand that obeys the classic trademark system and that refers to the heritage and history of a country. It can be cultural, architectural, territorial, artisanal and industrial heritage.

 

It is a name that has a story that inserts itself into the history of this country.

 

The heritage brand is therefore made up of a name that is both prestigious in the country in question and with which an already old story is associated. Its holder promotes it by referring to this ancient story.

 

For example, the “Michelin” brand in France.

 

Other prestigious or widespread brands do not refer to an ancient story but to other values such as the values of sport or innovation, for example the brand “Nike”.

 

Heritage brands are therefore not necessarily suitable for all types of products. 

 

They seem suitable for the luxury sector or for the wine sector (the heritage brand is not depreciable there) and food.

 

They may possibly come up against indications of source (appellations and indications of origin), but in principle their anteriority prevails.

 

The heritage brand has great value because the products that carry it will sell easier and faster.

 

Hence the interest for the holder of the mark to protect this mark and to associate it with quality products.

 

It is a type of trademark with certain characteristics but which obeys the classic and general regime of trademarks in terms of filing, ownership, validity, forfeiture. 

 

The notion of notoriety is however attached to this type of brand: advantages: 

 

The “notorious” mark can do without a trademark registration and relates to specific products or services.

 

The “reputation” mark is a registered mark but can be opposed to those who would like to use it to cover goods and services other than those designated on registration, contrary to the principle of specialty which limits the mark to products and services named in the registration.

For example, Coca Cola on sodas can defend itself against a similar mark on shoes.

 

In a recent judgment, Com. June 22, 2022, FD, n° 20-19.025, the Court of Cassation limits the effects of reputation: this cannot exclude the use of the surname (Taittinger case).

 

 

 

Slogans

 

“Because you are worth it” from L'Oréal. 

 

The slogan illustrates the brand, gives it meaning. Can it be protected as a trademark when it is a simple combination of common words? Yes, provided that the criterion of distinctiveness is respected, making it possible to avoid confusion with the signs and products of competitors, and that they can effectively designate a company, beyond the simple advertising effect.

 

See Article L. 711-1 of the Intellectual Property Code and Article 4 of Regulation No.oh 207/2009 on the community mark.

 

Non-traditional brands

 

Three-dimensional representations of the shape or packaging of products, colors, animated sequences, sounds or smells serve as original marks.

 

 the Singapore Treaty on the Law of Trademarks, which entered into force on March 16, 2009, establishes a multilateral framework for the definition of criteria relating to the reproduction of hologram, movement, color or position marks or marks consisting of signs not visible in trademark applications and registers.

 

Position marks

 

Trib. EU, 4 May 2022, Deichmann SE v. EUIPO – Munich SL, case. T-117/21:

The distinctive character of position marks in the field of sports shoes must be examined with regard to the average consumer, but in the absence of certainty, it may be presumed, in particular with regard to the existence of similar marks. Thus, unless the lack of distinctiveness is expressly demonstrated, the mark cannot be canceled.

 

Domain names

 

Trademarks are to be distinguished from domain names in that the latter serve primarily to designate a website address or internet service and not products or services.

 

The reservation of a domain name is therefore not equivalent to obtaining a trademark right.

 

The domain name can be registered as a trademark to designate certain products and services (suitable in particular with regard to the distribution of computer products or services), and one can be deprived of a domain name that would offend a trademark right.

 

designs and models 

 

Designs are used to protect a design or a model applied to a product.

They make it possible to shape a product.

 

They do not in themselves guarantee any quality or origin but allow a particular style to be given to a product (clothing, car, etc.), and a company to retain this style.

 

SIQOs (signs of quality and origin)

 

Unlike trademarks, SIQOs are not signs that an operator arbitrarily assigns to itself, but can be claimed by several operators under conditions of quality and origin, and precisely to allow these operators to certify the origin. or the quality of their products to the consumer.

 

They are created through complex administrative approval procedures, and operators wishing to take advantage of them are controlled by certifying bodies under the aegis, in France, of the INAO, for the food industry, and the INPI for industrial and artisanal products.

 

These official signs benefit from the assistance of administrative authorities (in particular INAO, DGCCRF) and defense organizations for their control, at national and European level, and at international level, with no particular time limit. 

 

These organizations can in particular oppose trademarks, with an international influence and action on the basis of international agreements and reciprocity.

 

In litigation, when feasible, the legal basis is that

– unfair competition (civil liability)

– intellectual property when the designation is the subject of a collective or certification mark, 

– specific texts applicable to PDOs, PGIs, etc. (European texts, rural code)

– misleading practices (consumer law)

 

A distinction is made between European signs and national signs, for agri-food products or industrial and artisanal products.

 

For the food industry including wines:

 

We note in particular: protected/controlled designations of origin, protected indications of origin, red label, traditional specialty guaranteed (TSG), organic farming (AB).

 

European signs: IGP (Protected Geographical Indication) and AOP (Protected Designation of Origin)

 

https://roquefeuil.avocat.fr/protected-designation-of-origin/

 

PGIs make it possible to indicate that an agricultural product comes from or has links with a particular region or place, PDO designating a stronger link, and the term attached “PGI” or “PDO” (with the official logo) means that this indication has been verified. It is a label of quality and origin meeting specifications and controlled by an approved body.

 

STG (“Traditional Specialty Guaranteed”), AB (“Organic Agriculture”) and label rouge are more centered on know-how than on a territory of origin.

 

In particular STG for recipes, excluding cooking recipes.

 

Unlike a standard quality label or mark, PDOs and PGIs are subject to their own legal regime, with the support and monitoring of dedicated public administrative authorities: in particular the INAO (National Institute of Origin and Quality) and the DGCCRF (Direction Générale de la Concurrence, Consumption et de la Repression des Frauds).

 

The delimited geographical areas, or even the parceled areas for certain PDOs, can also benefit from protection against any operation of development, town planning, equipment, construction, exploitation of the soil or subsoil or establishment of any economic activity likely to harm the production area or conditions, the quality or the image of the PDO or PGI product. 

 

National signs (France): AOC and IGP (Appellation d'Origine Contrôlée, Protected Geographical Indication)

 

The national signs are the national variation of the European signs, in particular AOC for the wines of France.

 

Industrial and artisanal products: Geographical indications: the example of Marseille soap 

 

To benefit from a geographical indication, the conditions of production or processing of the product must comply with specifications approved by decision of the Director General of the INPI, according to Articles L. 721-2 and L. 721-7 of the Code. intellectual property.

 

These specifications must specify the delimitation of the geographical area or of the specific place associated with the geographical indication, to which a specific quality, reputation or other characteristics of this product can essentially be attributed. 

 

The INPI ensures in particular that the perimeter of the zone or place makes it possible to guarantee that the characteristics of the product can effectively be attributed to the geographical zone associated with the geographical indication (article L. 721-3, al. 4 of the intellectual property code).

 

Court of Cassation, ch. com., March 16, 2022, 19-25.123

Soap Association of Marseille France c. INPI

(Rejection of appeal v. CA Paris, pole 5, 2nd ch., Nov. 22, 2019, 18/15257; The specifications must show a link between the name and the claimed geographical origin. The geographical indication cannot serve to protect know-how over a wider territory than that from which it originally originated.

 

AB “Organic farming”: quality linked to the environment

 

European regulations and its “AB” label make it possible to identify products from organic farming. 

 

Accompanied by the “AB” brand, they guarantee a production method that respects the environment and animal welfare. The rules governing the organic production method are the same throughout Europe, and imported products are subject to equivalent requirements.

 

Label rouge: promoting superior quality

 

The Red Label (LR) is awarded to foodstuffs or unprocessed agricultural products that have specific characteristics. 

 

Thanks to special production or manufacturing conditions, brought together in specifications, the labeled products offer a higher level of quality. The Label Rouge is a French sign but it does not exist only in France (prawns from Madagascar, Scottish salmon…). Examples: Label Rouge free-range lamb, Label Rouge Christmas trees, etc.

 

https://roquefeuil.avocat.fr/letiquetage-des-produits-alimentaires/

 

Industrial and artisanal products: Made in France

 

Companies can indicate the French origin of their products as "Made in France" or "Made in France", in compliance with customs rules.

 

This indication is optional: no provision provides for the obligation to affix an origin marking, except for certain agricultural or food products within the framework of health regulations.

 

To bear the mention of France origin, it is necessary to comply with European rules on “non-preferential origin”: the manufacturer can indicate as the origin of the product the one where the last substantial transformation took place. 

 

 

Article 39 of the Customs Code punishes disputed statements that may lead the consumer to believe that a product of third origin is of French origin when it does not meet the rules of non-preferential origin.

 

“1. Are prohibited on entry, excluded from the warehouse, transit and circulation, all foreign products, natural or manufactured, bearing either on themselves or on packaging, boxes, bales, envelopes, bands or labels, etc., a brand of products or services, a name, a sign or any indication likely to lead people to believe that they were made in France or that they are of French origin.

  1. This provision also applies to foreign products, manufactured or natural, obtained in a locality with the same name as a French locality, which do not bear, at the same time as the name of this locality, the name of the country of origin and the mention “Imported”, in clearly visible characters”

 

This notion of the origin of the goods is to be distinguished from the “Origine France Garantie” label, which is awarded by an independent organization and obeys specific specifications. 

 

Obtaining this label allows companies that choose to do so to promote their national production.

 

In concrete terms, to obtain this label, the manufactured product must meet the following two criteria:

  • the place where the product takes on its essential characteristics is located in France
  • 50% at least of the unit cost price is acquired in France

 

Grading systems

 

Downloadable product rating applications on smartphones are developing. They provide the consumer with quick and practical insight into the product, before the act of purchase. 

 

However, they regularly raise questions of unfair competition, deceptive practices with regard to consumers (articles L. 121-1 et seq. of the Consumer Code) and denigration of companies that are victims of poor ratings.

 

Thus the Yuka company, for its eponymous application, was condemned for having mentioned that nitrates are carcinogenic (T. com. Paris, May 25, 2021, No. 2021001119, Fed. of charcuterie manufacturers c/ YukaT. com Aix-en-Provence, September 13, 2021, No. 2021F004507)

 

The difficulty is that this type of application can have a real denigrating effect for such and such a company whose products nevertheless comply with the regulations.

Beyond the denigrating effect, the application can generate a panic effect among populations and generate out of proportion behavior.

Counterfeiting: how to react?

 

Platform workers

General conditions

Influencer and brand contract

Marketplaces and brands

Be accompanied by a trademark lawyer

How to protect cooking recipes?

The cooking recipe is used by each individual, whether in the family and private setting, or in the professional setting. Images and photographs of gastronomic content invade our daily lives, on television, in the media, in the street. Impossible not to see a book of traditional recipes or chef's recipes in a bookstore.

Cooking recipes are now within everyone's reach. Any person could voluntarily or involuntarily want to appropriate a recipe or copy a recipe that they did not create themselves. The question of the protection of culinary works and cooking recipes is more than ever a topical subject to which it is not easy to find an answer.

Since 2010, the "gastronomic meal of the French" has been listed as an Intangible Cultural Heritage of Humanity by UNESCO. If this is a real recognition of the French gastronomic heritage, it would seem that from a legislative point of view, this is not yet the case.

If under French law, a creation can be protected by copyright if it is original, the case law considers that cooking recipes cannot benefit from this protection. Indeed, it is accepted that even if the recipe is written in an original way, the author will be able to benefit from protection on the writing but not on the content itself.

Great chefs are often associated with a work that, over time, becomes their signature. It can be frustrating, after a few months or years of work, to see your work reproduced publicly without mentioning your own identity and without having given the agreement. With the evolution of digital, the web and social networks have taken advantage of this scourge for the sharing and dissemination of cooking recipes and gastronomic content.

So how can you protect your cooking recipe? What are the remedies for a cook who would see his cooking recipe used by someone other than himself? Pierre de Roquefeuil, lawyer specializing in intellectual property law in Paris, gives you all the information.

The protection of cooking recipes: not provided for by French law? the intellectual property lawyer answers you

The Intellectual Property Code provides three characteristics to apply to the protection of a work: the work must be a work of the mind, it must have a material reality and must bear the imprint of the personality of its author. Thus, this allows him to recognize a character of originality specific to his creator.

Jurisprudence has long considered that cooking recipes cannot benefit from copyright protection. In fact, in 1997, the Tribunal de Grande Instance of Paris also considered that “although cooking recipes can be protected in their literary expression, they do not in themselves constitute a work of the mind”.

Article L. 611-10 of the Intellectual Property Code withdraws the possibility of patenting for the sole benefit of aesthetics and defines patentability by proof of a novel character and an inventive step. As a result, the patent could only be granted if it is proved that the technical invention leads to a resolution of a solution to a technical problem. In the context of a cooking recipe, this is not the case.

Consequently, a recipe written in an original way, allows its author to be able to benefit from protection on the writing. As a result, the author of the recipe may oppose the publication of his recipe word for word without having given his agreement or without mentioning his own creation. However, the creator of the cooking recipe will not be able to benefit from the same protection on the content of his recipe.

At present, it is therefore very difficult to set up protections for cooking recipes or culinary creations. The Intellectual Property Code does not provide specific protections for a culinary creation.

Nevertheless, some actions can be considered for the protection of its cooking recipes. Pierre de Roquefeuil, a lawyer specializing in intellectual property law in Paris, reveals some advice to put in place to protect your cooking recipes or your culinary works in your own way.

Protecting your cooking recipe: the lawyer specializing in intellectual property gives you some advice

The most effective solution to keep a cooking recipe is to keep it secret, as for a know-how. By keeping his recipe secret and not distributing it in a book or on a blog, it will have little chance of being reproduced.

If the recipe is published, it may only be partial, and the subtleties of the know-how, the ingredients, remain secret… a question of commercial strategy. Also, it is strongly recommended that a cooking recipe creator note certain mentions such as "All rights reserved" or "Prohibited from publication". These mentions can make it possible to dissuade the reproduction of its own receipts.

Would you like to be guided in the protection of your cooking recipes? Do you suspect an individual of having taken over your cooking recipe by distributing it in his name? The Roquefeuil firm specializing in intellectual property law in Paris, advises you and supports you in defending your interests.

Register a trademark to protect your cooking recipe

Transforming your cooking recipe into a registered trademark allows you to obtain protection. While the recipe itself may not be exclusive, the name you choose for it may be. The brand name helps consumers to be able to recognize a company or a model. The filing of a trademark thus constitutes a commercial advantage and security for the company.

By associating a title with your cooking recipe and filing a trademark with the INPI (National Institute of Intellectual Property), you will have a monopoly on the name of the recipe. This is particularly the case of a famous yogurt drink or a famous chocolate egg for children. Their recipes still remain a mystery today. This is called “business secrecy”. Nevertheless, it should be remembered that the recipe could be reproduced and used under another name, since this protection only applies to the trade name.

In the same order of ideas, we can endeavor to resort to the right of designations of origin and protected indications.

Protect your cooking recipe with a clause in the employment contract

There is also another protection for a chef: the non-competition clause in the employment contract of his employees. In the context of a company where employees have access to cooking recipes, these must, before being disclosed, be protected in the employment contract. The insertion of a non-competition clause will prohibit an employee from reproducing this recipe in a competing company. However, this non-competition clause is valid only by providing financial compensation to the employee, and a proportionate limitation in duration and space.

The employer can also insert a confidentiality clause in an employment contract. This will prohibit the employee from disclosing information such as ingredients, quantity, proportions, etc.).

Cooking recipe: protect it in its appearance

For a cook or a pastry chef, a cooking recipe can be protected through the appearance of the resulting dish. Indeed, although the content cannot be protected as a whole, the design of a culinary creation or even the way of arriving at a precise dressing can be protected in the same way as a work.

However, it should be specified that the law on designs and models allows protection under these conditions "the appearance of a product, or part of a product, characterized in particular by its lines, its contours, its colors, its shape, texture or materials. These characteristics may be those of the product itself or of its ornamentation. Is regarded as a product any industrial or artisanal object, in particular the parts designed to be assembled in a complex product, the packagings, the presentations, the graphic symbols and the typographical characters, with the exclusion however of the computer programs”.

The starred chef Alain Passard, for example, has registered his “bouquet of roses” pie and its different variations as a model. This work being original and unique to himself, this model deposit therefore protects the reproduction of his “bouquet of roses” pie.

On the other hand, in the event of a conflict between the creator of the model and the alleged infringer, the creator must be able to provide proof that his model fulfills the conditions specific to protection by design law.

Publishing a cooking recipe: copyright protection

A recipe published on a blog, a website or in a book, gives its creator copyright over the writing of it. However, the writing of the recipe must be original and must be able to stand out for a specific literary style.

Would you like advice on how to protect your culinary creations? Do you want to sue a counterfeiter? The Roquefeuil firm specializing in intellectual property law in Paris, helps you see things more clearly and accompanies you throughout the procedure https://roquefeuil.avocat.fr/avocat-specialise-propriete-intellectuelle-paris/

Remuneration for work and payment of royalties, the issues – the lawyer in intellectual property law answers

What is copyright?

See as well : Assignment of copyright

Copyright applies to any work, so it is extremely broad. Copyright may relate to the work of a writer through a book, the work of a music group or a musician through a musical composition, the work of a photographer through a photograph, etc. work must be able to present an original character and thus express the personality of its author.

The Intellectual Property Code (CPI) defines copyright, in the context of literary and artistic property. The copyright on a work confers on its author moral and patrimonial rights. The Intellectual Property Code (IPC) therefore provides in its articles L. 121-1 and L. 121-2, the right of its holder to control the disclosure of the work, a right to paternity of the work, as well as a right to respect for the work and the right of withdrawal.

Governed by the law of March 11, 1957, copyright is applied automatically from the moment the work has been produced and without any particular formality. On the other hand, the author must be able to provide proof of the originality of his work but also of the fact that he is the owner of his work. Proof can be provided by any means, it must however be dated.

The existence of a deposit or a recording of the work makes it possible, in particular in the context of litigation, to facilitate proof of the paternity and the date of creation of the work. Thus, the author can identify himself as the creator of a work with:
– A bailiff or a notary,
– From the National Institute of Intellectual Property (INPI),
– A company collecting and distributing royalties.

See also: on copyright:

https://roquefeuil.avocat.fr/cession-des-droits-dauteur-avocat-propriete-intellectuelle-paris/

https://roquefeuil.avocat.fr/droit-dauteur-titre-de-livre-de-groupe-de-musique-protegeable-lavocat-en-propriete-intellectuelle-paris/    

Copyright: remuneration

The remuneration in copyright is paid in return for the exploitation of the economic rights of the latter on the immaterial property of his works. This concerns the creation of a work, not the coordination of it.
Copyrights will, for example, remunerate the marketing of an application, the design of web designs, or any other artistic work.

Copyright offers a rather advantageous form of remuneration for its beneficiaries. Indeed, copyright is not affected by social security contributions.

Remuneration for work and payment of copyright, the stakes are important for the tax services. Indeed, the latter are responsible for monitoring compliance with the legislation in force. In the event that the tax services become aware of an abuse or non-compliance with the rules applicable in this area, they may be led to reclassify the royalties as work income. Consequently, the income would be taxable in the same way as a salary.

For income to be considered as royalties, it is necessary that these constitute only a simple additional income.

The Labor Code provides for the accumulation of remuneration for salaried activity and copyright remuneration for the exploitation of a work.

Indeed, the payment of a counterpart of copyright is not subject to the payment of social security contributions unlike the payment of remuneration for work.

The Court of Cassation also specified in a decision of December 20, 2019 that "in the context of such a dispute, the employer must justify the fact that the sum which he qualifies as copyright is not salary. In this case, a program production company paid royalties to one of its employees who participated in its conceptualization. Thus, the Court considered that “the employer failed to demonstrate that the concept of the program constituted an original work eligible for copyright protection. Therefore, the remuneration paid to his employee could not be qualified as copyright but corresponded to a salary subject to the payment of social security contributions”.

In conclusion, an employee can combine remuneration due to a salary and remuneration in the form of royalties. However, the two remunerations must be distinguished. An author's note must be able to formalize the remuneration of copyright.

An employment contract signed between the employer and the employee makes it possible to formalize the two different remunerations, thanks to a copyright transfer clause. This clause must be precise and fair. Indeed, the clause must clearly mention remuneration in exchange for copyright. This clause is reassuring for both the employer and the employee. In the event that the employer exploits the works that have not been transferred, the author may sue his employer for an infringement action.

Collecting royalties requires drafting agreements and determining a percentage. In addition, precise accounting monitoring must be put in place.

Remuneration under the employment contract and remuneration under copyright

What comes under the employment contract, the relationship of subordination, is the remuneration for the number of hours worked. Copyright does not remunerate these hours, but rewards the success of the work, as evidenced by its marketing or other criteria.

The author is the creator and therefore the first owner of the rights. The rule is laid down by the legislator: "the existence or the conclusion of a work or service contract by the author of a work of the mind does not entail a derogation from the enjoyment of the recognized right by the first paragraph, subject to the exceptions provided for in this code” (Int. Prop. C., art. L. 111-1, al. 3). 

The employer must in principle conclude a copyright assignment contract to acquire and exploit these rights, unless there is a legal exception.

Indeed, the law provides for cases of automatic transfer or presumptions of transfer.

Article L. 113-5 of the Intellectual Property Code also provides for ownership of copyright ab-initio for the benefit of the instigator of the work ("The collective work is, unless proven otherwise, the property of the natural or legal person under whose name it is disclosed") (Judgment Aero Cass. civ. 1, March 24, 1993, No. 91-16.543) (CA Paris, Pôle 5, 1st ch., January 15, 2014, No. 11/21191).

The copyright assignment contract

An employer who recruits an employee to create an original work may be unaware that he does not own the copyright in the work. It is incorrect to think that when the mission of the employment contract is creation, assignment is implicit, as in copyright.

When an employment contract is concluded, a copyright assignment clause must be provided, according to which the author employee agrees to assign, as his work is developed, the rights to the creations against remuneration. This type of clause secures the relationship between the two parties. Failure to comply with the clause may have an impact on the employment relationship. It does not organize the global transfer of future works, but constitutes a commitment to make, to grant a transfer of copyright once the work has been completed. This clause may be the subject of collective agreements.

The employer must therefore regularly ask his employee to have him sign agreements for the transfer of rights. 

Counterfeiting: how to react?

Assignment of copyright, reminder of the principle

 

Update February 2022 – initial publication September 20, 2018 at 4:19 p.m.

 

The challenge :

 

Is it possible for the purchaser of a creation, work, a work of the mind (cinema, photography, music, montages, video clips, cultural painting, graphics, texts, computer developments, etc.), to protect itself effectively against claims based on non-respect of copyright?

 

A contractor who orders intellectual services will often seek to have extensive copyright on these services, precisely in order to protect himself against claims from his service provider or from third parties who have not intervened in the contract.

 

Beyond case law or international texts, the intellectual property code recalls the applicable principles.

 

The principles : 

 

The prohibition of the global transfer of future works

 

A first principle according to which the global transfer of future works is null, will prohibit him from arrogating to himself the whole of the future production of a service provider or a creator.

 

Article L131-1 of the Intellectual Property Code:

“The aggregate assignment of future works is void.”

 

In his work order, or in the employment contract with the person whose creation he intends to exploit, he must therefore be as precise as possible in what he is ordering and provide for an assignment of rights once the work has been created, delivery or during payment, for example.

 

Other rules will encourage him to describe precisely the rights he intends to acquire, determining their territorial scope, their duration, the uses of the work that are planned, on what media, for what audience. 

 

Article L131-2 

The performance, publishing and audiovisual production contracts defined in this title must be recorded in writing. The same applies to free execution authorizations.

Contracts by which copyright is transferred must be evidenced in writing.

In all other cases, the provisions of Articles 1359 to 1362 of the Civil Code are applicable.

 

Article L131-3

The transfer of the copyright is subject to the condition that each of the rights transferred is the subject of a separate mention in the deed of transfer and that the field of exploitation of the rights transferred is delimited as to its extent and to its destination, as to place and as to duration.

When special circumstances so require, the contract may be validly concluded by exchange of telegrams, provided that the field of exploitation of the rights transferred is delimited in accordance with the terms of the first paragraph of this article.

Assignments relating to audiovisual adaptation rights must be the subject of a written contract in a document separate from the contract relating to the actual edition of the printed work.

The beneficiary of the transfer undertakes by this contract to seek an exploitation of the transferred right in accordance with the practices of the profession and to pay the author, in the event of adaptation, a remuneration proportional to the receipts collected.

 

Will he be safe from claims regarding these rights? 

Contact a lawyer specializing in intellectual property law in Paris

 

The inalienable right of the author to claim authorship of his work

The author is (always) a natural person and differs from the “copyright holder”, in that the latter can be someone other than the author, be a natural or legal person, and be invested with the economic rights of the author, that is to say the rights of exploitation of the work, by acquisition of these rights.

 

But the author nevertheless remains the author and as such has inalienable prerogatives (the “moral right” of the author), which he can assert in principle. 

 

In practice, the defense of this principle can be arduous and limited to ultimately quite exceptional cases when the author considers that he is the victim of abuse by the purchaser of the exploitation rights.

 

This is the meaning of the following provisions:

 

Article L111-1 of the Intellectual Property Code:

The author of a work of the mind enjoys on this work, by the mere fact of its creation, an exclusive intangible property right and enforceable against all.

This right includes intellectual and moral attributes as well as patrimonial attributes, which are determined by books I and III of this code.

The existence or conclusion of a work or service contract by the author of an intellectual work does not derogate from the enjoyment of the right recognized by the first paragraph, subject to the exceptions provided for in this code. Subject to the same reservations, there is also no derogation from the enjoyment of this same right when the author of the intellectual work is an agent of the State, of a local authority, of an establishment of an administrative nature, an independent administrative authority endowed with legal personality or the Banque de France.

The provisions of Articles L. 121-7-1 and L. 131-3-1 to L. 131-3-3 do not apply to agents who are authors of works whose disclosure is not subject, by virtue of their statute or the rules which govern their functions, with no prior control of the hierarchical authority.

 

Article L121-1 of the Intellectual Property Code:

The author enjoys the right to respect for his name, his capacity and his work.

This right is attached to his person.

It is perpetual, inalienable and imprescriptible.

It is transmissible mortis causa to the heirs of the author.

The exercise may be conferred on a third party by virtue of testamentary dispositions.

 

The author may assign some of his rights by contract, he may even renounce seeing his name appear and refrain from any public disclosure, for the benefit of another person, natural or legal, in the context of a so-called work. “collective” to which several authors have contributed voluntarily. 

 

The work will then be the property of the person under whose name it will be disclosed: for example the name of the entrepreneur instigator of the project, who will be qualified not as “author” but as “holder of copyright ” and “owner”.

 

Article L113-2 of the Intellectual Property Code, paragraph 3:

Is said to be collective the work created on the initiative of a natural or legal person who publishes it, publishes it and divulges it under his direction and his name and in which the personal contribution of the various authors participating in its elaboration is based on the whole for which it was designed, without it being possible to attribute to each of them a separate right to the whole produced.

 

Article L113-5 of the Intellectual Property Code:

The collective work is, unless proven otherwise, the property of the natural or legal person under whose name it is disclosed.

This person is vested with the rights of the author.

 

The author will therefore be able, by proving the predominance of his creation in a work that is nevertheless “collective”, to claim ownership of his contribution and specific profits.

 

The right for the author to withdraw his work

 

The author can even withdraw his work from the market and from circulation, despite the transfer of the exploitation right, with the notable exception of the author of software. However, this is an exceptional case and takes place against compensation. This may usefully be provided for in the contract.

 

 This is the meaning of article L121-4 of the intellectual property code.

 

Article L121-4 of the Intellectual Property Code:

Notwithstanding the assignment of his exploitation right, the author, even after the publication of his work, enjoys a right of reconsideration or withdrawal vis-à-vis the assignee. However, he can only exercise this right on condition of compensating the assignee beforehand for the damage that this repentance or withdrawal may cause him. When, after exercising his right of reconsideration or withdrawal, the author decides to have his work published, he is bound to offer his exploitation rights as a matter of priority to the assignee he had originally chosen and under the conditions originally determined.

 

The right of the author to proportional remuneration

 

The principle of proportional remuneration gives the author the possibility of contesting the price he receives.

 

It allows him to impose a proportional remuneration in a contract which would abusively limit his remuneration in spite of the resounding success of his work, or in the case of exploitations which would not have been really envisaged in the contract.

 

Article L131-4 of the Intellectual Property Code:

The assignment by the author of his rights to his work may be total or partial. It must include, for the benefit of the author, a proportional participation in the receipts from the sale or exploitation.

However, the author's remuneration may be assessed on a flat-rate basis in the following cases:

1° The basis for calculating the proportional participation cannot be practically determined;

2° The means of controlling the application of participation are lacking;

3° The cost of the calculation and control operations would be out of proportion to the results to be achieved;

4° The nature or the conditions of the exploitation make it impossible to apply the rule of proportional remuneration, either that the contribution of the author does not constitute one of the essential elements of the intellectual creation of the work, either that the use of the work is only of an incidental nature in relation to the object exploited;

5° In the event of transfer of rights relating to software;

6° In the other cases provided for in this code.

The conversion between the parties, at the request of the author, of the rights resulting from the contracts in force into fixed annuities for durations to be determined between the parties is also lawful.

 

Article L131-6 of the Intellectual Property Code:

The clause of an assignment which tends to confer the right to exploit the work in a form that is not foreseeable or not foreseen at the date of the contract must be express and stipulate a correlative participation in the profits of exploitation.

Update of 10 Dec. 2022: copyright and platforms, what remuneration?

Content uploaded then downloaded or streamed, via engine or platform, is financed by advertising or data, danum directive 2019 790, article 17
Unlawful source…no private copy exception
ISP l336-2 CPI
Host Engines, art 14 dir e-commerce, com to the public … very favorable jurisp
Advertisers ordered to avoid pirate sites
Contributory platform …dir e-commerce and dir dt of author…host! No lasting deletion, ... denunciation and protest of the authors ... commissioned cspla ...
Art 17 dir 790, in 2019, transposition Fra …l137-1…CPI ..def of platforms…
Regime.. return of responsibility, qd active role, dt conclude licenses, which licit the initial upload, and the download, with exemption: made best efforts, …and dt prevent reappearance! Non-beneficiary Pirate Sites.
Small platforms…resp lightened…
Implementation of automatic filters…PB of freedom of expression. … guidance, recourse Poland…

The tech...
-Numerical hash.. file number
-Watermarking… watermarking, detection tool PB alteration (photo
-Fingerprinting, above all…digital fingerprint of the file, simplified representations of the video, match database of fingerprints and uploading…refusal or acceptance…cf market solutions, we can delegate;
- File metadata, often overwritten by habit of cleaning memory (photo)

CE 15 Nov. 2022, n° 454477:

The Council of State annuls the ordinance transposing the danum directive insofar as it does not impose an appropriate remuneration for authors, beyond a proportional remuneration.

 

Adaptations specific to certain contracts

 

Adaptations are made by law depending on the type of contract envisaged.

 

Thus the author of software used for these purposes sees his rights ceded by law to the employer (art.L113-9). The law deprives the software author of the right of withdrawal (L121-7).

 

The Intellectual Property Code provides for provisions specific to the publishing contract, the representation contract, the audiovisual production contract and the commissioning contract for advertising (with a legal assignment of certain exclusive rights), the Pledge Contract of the right to use software, works by journalists, research and referencing of plastic, graphic or photographic works of art, performers, producers, audiovisual communication companies, satellite broadcasting and cable retransmission, to database producers.

 

The right of the author to the integrity of his work

 

The so-called “composite” work is provided for by article L113-2 of the intellectual property code in its paragraph 2 according to which “Is said to be composite the new work in which a pre-existing work is incorporated without the collaboration of the author. of the latter.”, and L113-4 according to which “The composite work is the property of the author who produced it, subject to the rights of the author of the pre-existing work.”.

 

The purchaser of a commissioned work asks his assignor for the transfer of rights to the commissioned work, but also, logically, the transfer of rights to the pre-existing works incorporated therein, in order to be able to exploit the commissioned work without difficulty.

 

The purchaser, however, by retaining the rights of adaptation and arrangement, and under cover of these rights, may be tempted to use the pre-existing works as they are and to manipulate them in his own way, not in the manner of its assignor.

 

If one conceives that the purchaser spares, on the work delivered, rights of adaptation, translation, transformation, arrangement or reproduction, quoted by the article L122-4 of the code of the intellectual property – and in particular within the framework of a collective work – one cannot however admit that these rights allow him an autonomous exploitation of a preexisting work incorporated in the delivered work, by a kind of reverse engineering.

 

It is the respect of the right to the integrity of the delivered work which requires it (article L121-1 of the code of the aforementioned intellectual property).

 

To what extent can the purchaser protect himself against claims by third parties who have not intervened in the contract, and relating to copyright?

 

Can the acquirer of rights protect himself against these claims by, for example, imposing on his transferor the burden of compensating him, or redoing the work, or taking the necessary steps for a peaceful use of the work?

 

The search for compensation may be illusory if, at the time of the claim, the said assignor has disappeared, or if he is not solvent.

 

Against the purchaser, the third party may claim damages for infringement and require a cessation of operation.

 

The purchaser, in order to defend himself, will be tempted to invoke his good faith and to accuse his negligent transferor who would therefore have granted him more rights than he himself had on the pre-existing work.

 

But in terms of civil liability for infringement the argument of good faith is inoperative, which otherwise would encourage many collusions, and a rather easy purge of rights. The principle is recalled, for example, in the judgment of the Court of Cassation of July 10, 2013, appeal 12-19170 “Whereas the Court of Appeal which rightly said that good or bad faith was indifferent to the characterization, before the civil jurisdiction, of the counterfeit,”

 

In order to attempt to reduce the effects of these risks, the purchaser will therefore take care to provide, in his contract, for liability on the part of the assignor, and will also try to ensure that the assignor has an effective liability insurance policy.

 

It will also be necessary to provide for a judicial cooperation clause, in order to try to involve the transferor as well as possible in the defense of the interests of the purchaser in the event of legal threat from a third party, and to avoid disputes of the said yielding on how to defend the cause.

Counterfeiting: how to react?

Remuneration for work and payment of royalties, the issues

Judicial reversal on the rights of performers of musical works

The rights of the photographer: the intellectual property lawyer responds

NFTs and copyright

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