Actions based simultaneously on infringement of copyright and unfair competition

Cour de cassation, Commercial Chamber, 12 June 2007, n° 05-17.349

Under French law, unfair competition, which is based on tort law, offers much wider protection than that afforded by intellectual property. Therefore, where the outcome of the case on the grounds of intellectual property is uncertain, it is advisable to take action simultaneously on the grounds of infringement of intellectual property and unfair competition.

In the present case, the plaintiffs (the companies Bollé Protection and Bushnell Performance Optics Europe) took legal action against the company Euro Protection for the infringement of ten or so models of sunglasses. They based their action on the grounds of copyright infringement, as well as unfair competition.

The Court of Appeal of Paris dismissed the action based on copyright infringement, ruling that the models were not original in the meaning of copyright law. The Court also dismissed the action based on unfair competition, holding that the action was founded on the same facts as those put forward to claim the infringement of copyright, which was dismissed for lack of originality of the products.

The Cour de Cassation (French Supreme Court for civil and criminal matters) approved the Court of Appeal for ruling that the products were not original, but reversed the ruling of the Court in that it rejected the action based on unfair competition. The Supreme Court held that where an action is not successful on the grounds of an intellectual property right, the claimant is still entitled to base its action on the grounds of unfair competition.

Therefore, a plaintiff may claim at the same time that an act constitutes an infringement of an intellectual property right and unfair competition: if the judges rule that the plaintiff’s action is inadmissible on the basis of the intellectual property right, they will have to determine whether unfair competition is established by assessing all the facts stated, including the resemblance between the products.

BRAD SPITZ
www.bradspitz.com