Distinguishing copyright and design rights in the fashion industry

In a recent decision of 12 January 2024, the Paris Appeal Court recalled some interesting principles to distinguish copyright and design rights in works of applied art, like fashion items or furniture design. The particular case concerned a white t-shirt, launched by the French fashion company Opull’ence with the words “ARMS ARE FOR HUGS” on the front. The t-shirt was marketed in two versions, one with and one without epaulette sleeves.

Subsequently, Opull'ence noticed a company named Gazelle selling a t-shirt model with the same phrase. Opull'ence considered this to be a copy of their design and brought an action against Gazelle before the Paris Court of First Instance in June 2020, claiming copyright and unregistered Community design infringement. The Court of First Instance dismissed Opull’ence’s claims, leading to an appeal.

Copyright infringement?

In line with European (Cofemel, C-683/17) and French case law on the subject, the Paris Appeal Court recalled that an author of a work of applied art can be protected by copyright as long as they are sufficiently original and display free and creative choices. It is up to the party claiming copyright protection to define and explain the contours of the originality claimed.

Nevertheless, the court found that Opull'ence failed to demonstrate the originality of the design, particularly noting the banal font and layout of the slogan and the generic shape of the t-shirt. The court explicitly rejected the relevance of prior art in the assessment of copyright validity.

Design right infringement?

Regarding the infringement of the claimed unregistered Community design rights, the court assessed the novelty and individual character of Opull'ence’s t-shirt design. Pursuant to Article 5(1) of Regulation 6/2002, the court analysed the prior art produced by the defendant. None of the t-shirts disclosed before the date of first disclosure of the litigious t-shirt was identical to Opull’ence’s model. The design therefore met the novelty criterion.

As regards the existence of individual character within the meaning of Article 6 of Regulation 6/2002, a comparison to a similar t-shirt of 2015 did not produce a different overall impression. Therefore, the court ruled that no individual character existed and rejected the claim.

In this regard, the European design right principles should be recalled: according the case law of the European Court, the individual character should be proven by the right holder by indicating what element(s) of the design give(s) it its individual character (Karen Millen, C-345/13).

Conclusion

In short, like in Belgian law, also the French court recalls that a work of applied art, like a t-shirt, can be protected by copyright as well as a Community (un)registered design right. Nevertheless, the specific requirements for protection by the claimed intellectual property right should be fulfilled. For copyright, this means that free and creative choices should be demonstrated in order to protect the act of creation. Design rights on the other hand are industrial rights and aimed at protecting the appearance of products. Valid protection shall only be granted to the novel appearance of a product that has individual character.