Preventive practice: Pack it and transfer it!

A recent case highlights the problem of ownership of rights on packaging designed by advertising agencies (Paris Court of Appeal, April 14, 2023, no. 21-09.779).

Following the end of their business relationship, a pharmaceutical company registered as a three-dimensional trademark the drug packaging it had ordered from a communications agency some ten years earlier.

(European Union trademark filed on September 1st, 2005, No. 0855857)

The communications agency then brought an infringement action, arguing that its copyright on the creation, i.e. the drug’s packaging, had been violated.

However, the agency’s claim was rejected, as the originality of the packaging was ruled out and did not confer any exclusive rights, and the registration of the three-dimensional trademark was therefore not qualified as fraudulent. If originality had been established, the pharmaceutical company would have effectively infringed the rights of the advertising agency and could have been convicted of copyright infringement.

This situation, in which the commissioning company came off rather well, underlines the importance of taking precautions when calling on a third party to create a product, visual identity or logo.

Indeed, communications agencies or freelance designers produce various creations, such as packaging, logos, texts and advertisements, which may be protected by copyright, provided they are original, as the Paris Court of Appeal ruling reminds us.

If this condition of originality is met, the service provider will legitimately and legally own the copyright to the creation produced, even if it was expressly created on behalf of a third party under an commission contract, and even if the commissioning party is the one who disclosed the creation through its commercial exploitation.

Thus, when a communications agency creates copyright-protected content as part of a commission, it is essential for the client to ensure that copyright has been assigned to him. Indeed, the purchase of a work, or the mere payment for a creative service, does not automatically transfer the economic rights to reproduce, represent and distribute the work, or simply to exploit it commercially.

It is therefore essential to stipulate in the commission contract, or in an amendment thereto, that the copyright in the creative work covered by the contract is expressly and fully assigned to the client. In addition, this assignment must comply with the formalities laid down in the French Intellectual Property Code, i.e. the economic rights assigned must be listed in a sufficiently clear, complete and detailed manner, and the price of the assignment of rights must be clearly distinguished from the price of the creative work as such.

This vigilance and these preventive actions will enable you to avoid any future disputes concerning an object or creation that you have been exploiting and marketing for a long time.

– Cloé DESSEMON, legal intern at MARK & LAW