News

Introduction

The Implementing Regulation (EU) 2026/138 will become applicable as from July 1^st, 2026. This text completes the modernisation of European design law initiated by the substantive reforms that came into force on May 1^st, 2025.

Whereas the previous reform addressed the substantive provisions, this new text profoundly transforms the procedural rules governing the filing of design applications before the European Union Intellectual Property Office (EUIPO). This evolution responds to a need that practitioners have identified for several years: the inadequacy of graphic representation rules to current technological realities.

A structural procedural reform brought by the new Implementing Regulation on designs

The reform of European design law unfolded in two successive stages. Regulation (EU) 2024/2822, which became applicable on May 1^st, 2025, overhauled the substantive framework by redefining several key concepts. Several concepts have been redefined. In particular, the concept of “product” has notably been broadened to encompass digital creations, including interfaces, animations and graphic elements. Rights holders have also been granted the ability to take action against counterfeit goods merely transiting through the territory of the European Union. New exceptions to the rights conferred on holders have been introduced, new deadlines and fees have been established, and a repair clause has been provided for spare parts of complex products.

For further information on this reform, we invite you to read our article on the subject.

In a second stage, the Implementing Regulation 2026/138 adapts the procedural rules of filing to these new realities. This adjustment rests on a finding made by the European Commission: the evolution of visualisation technologies and the emergence of non-physical products require representation formats more sophisticated than those allowed under the previous framework. The Regulation thus implements two structural changes that should command the attention of applicants.

Without claiming to be exhaustive, the following developments focus on three significant contributions for applicants: the removal of the seven-view limit, the acceptance of new representation formats, and the easing of the regime governing multiple applications for designs.

The end of the seven-view limit: a decisive step forward in the representation of creations

• A constraint no longer suited to complex creations

Until the entry into force of the new Regulation, any application for the registration of a community design could not contain more than seven graphic or photographic representations per design filed. This constraint, relevant at the time it was adopted, had become a real impediment for applicants confronted with complex creations.

How to represent, in seven static views, an animated user interface comprising several successive states, an articulated product adopting different positions of use, or an object whose geometry can only be apprehended through a multiplicity of angles? Applicants were regularly compelled to make difficult trade-offs, sacrificing the clarity of certain features in favour of others deemed more important.

• A new freedom, framed by the requirement of consistency between representations

Regulation 2026/138 removes the previous strict limit of seven views. Applicants will henceforth enjoy an extended freedom to illustrate all the visual features being claimed. This evolution strengthens the legal certainty of the rightholder by enabling a more precise definition of the scope of protection.

A technical reservation nonetheless remains: it is likely that the EUIPO will maintain a technical ceiling within its online filing system, similar to the UKIPO approach of capping electronic filings at ten views. The precise terms will be set out in the Office’s forthcoming guidelines.

Above all, the Regulation specifies that the subject matter of the design claimed shall be determined by the combination of all the visual features resulting from all the representations filed. Perfect consistency between all views submitted thus becomes imperative, under penalty of objection from the examiner, or even loss of rights over certain distinctive elements.

The acceptance of new representation formats: videos, animations and CAD files

• Towards a dynamic and digital representation of creations

As a logical complement to the abolition of the seven-view limit, the new Regulation enshrines the acceptance of considerably broadened representation formats. Applicants may now file:

• static representations (drawings, photographs);
• dynamic and animated representations (videos, animated sequences);
• computer-generated images;
• computer-modelling files, in particular CAD (Computer-Aided Design) formats.

This evolution constitutes a decisive step forward for designers of animated graphical user interfaces, XR/VR environments and exclusively digital products, the protection of which fitted poorly within the static representations imposed until now.

• Heightened vigilance regarding the elements excluded from protection

The question of disclaimed features, traditionally indicated by dotted lines or shaded areas in two-dimensional views, remains to be clarified in the context of video files and 3D modelling. How is one to indicate, within an animated sequence, that a given element does not form part of the protection being claimed? Operational guidelines from the EUIPO are awaited on this point.

In this respect, recent case law, in particular the CJEU judgment in Ferrari of 28 October 2021 (C-123/20), reminds us that the scope of protection conferred by a community design depends closely on the precision with which its features are identified in the application for registration. The new formats offer, in this regard, fresh opportunities, but also fresh risks.

The easing of requirements for multiple applications

The reform also modifies the regime governing multiple applications for European Union designs. Until now, several designs could be included in a single application provided that the products concerned belonged to the same class of the Locarno Classification. This requirement could limit the practical value of multiple applications, particularly where the applicant wished to protect, in a single filing, a product range, accessories or variants falling within different categories.

As from 1 July 2026, this single-class requirement will be abolished. Applicants will therefore be able to include, in a single application, designs applied to products falling within different classes, which should facilitate the management of certain complex filings. This new flexibility will nevertheless remain subject to limits: a multiple application may not contain more than fifty designs.

This added flexibility will need to be factored into filing strategies. On the one hand, it will make it possible to streamline procedures, group together related creations and simplify the administrative management of portfolios. On the other hand, it will be accompanied by a change in the fee structure, with a flat fee for each additional design. In practice, multiple applications will therefore remain a useful tool, but they will need to be assessed on a case-by-case basis, depending on the number of designs to be protected, their commercial coherence and the overall cost of the operation.

Strategic levers to activate in order to take advantage of the new framework

• Deferring or anticipating filing: a case-by-case assessment

For creations whose representation would substantially benefit from the new formats, deferral of filing until July 1^st, 2026 deserves consideration. This strategy is particularly compelling for:

• animated graphical user interfaces (GUIs);
• articulated products or products with variable geometry;
• creations intended for XR/VR environments;
• digital objects whose form evolves through interaction.

Conversely, where establishing a priority date prior to July 1^st, 2026 is strategically necessary, typically in cases of imminent risk of disclosure by a third party, or where immediate enforcement is required, an intermediate solution warrants consideration: filing an initial application in still images and then claiming the priority of that filing in a new application made after July 1^st, 2026, exploiting the new formats.

• Auditing existing portfolios and adapting internal practices

Holders of existing design portfolios should identify those creations whose initial representation, constrained by the former rules, would benefit from new filings exploiting the now-permitted formats. Such a portfolio audit constitutes an essential prerequisite to any optimisation strategy.

Adapting internal processes is equally a key issue:  the process for preparing representations, involving the various stakeholders such as designers, marketing teams or industrial property advisors must be prepared to deliver the new formats required, in strict compliance with the requirement of consistency between representations. Failing this, the very richness of the available means of representation mechanically increases the risks of inconsistency, and consequently of objections during examination.

Conclusion

No single tool, taken in isolation, secures the optimisation of a post-reform community design filing. The abolition of the seven-view limit offers an unprecedented freedom, but the acceptance of video and CAD formats imposes heightened rigour as to the consistency of representations. The strategic deferral of filings beyond July 1^st, 2026 is justified only for certain creations and remains a matter to be balanced against the urgency of the competitive context. In practice, applicants who master their strategy will combine portfolio audit, representational engineering and temporal arbitrage.

Dreyfus law firm assists its clients in the management of complex intellectual property matters, providing tailored advice and comprehensive operational support for the full protection of intellectual property assets.

Dreyfus law firm works in partnership with a global network of lawyers specialised in intellectual property.

Dreyfus law firm with the support of the entire Dreyfus team.

Q&A

1. Can already-registered Community designs be supplemented with new views after July 1^st, 2026?

No. Implementing Regulation 2026/138 does not provide for any mechanism allowing the retroactive supplementation of representations for existing registrations.

2. What are the consequences for infringement actions pending on July 1^st, 2026?

Infringement actions brought on the basis of Community designs registered under the former regime continue to be assessed by reference to the representations actually filed.

3. Does a richer representation allow for broader protection?

Not necessarily. The addition of views, animations or digital formats should not be seen as a way to artificially broaden the scope of protection. These elements primarily serve to better identify the design being claimed. The more detailed the representation, the more it may also contribute to precisely defining the protected subject matter. The key issue is therefore to select formats that enhance the clarity of the filing without creating unnecessary limitations.

4. What is the principal risk associated with the use of multiple representation formats?

The main risk lies in inconsistencies between the different representations. The Regulation specifies that the protected subject matter is determined by the combination of all visual features. Any divergence between a photographic view, a video or a CAD file may give rise to an objection from the examiner, or even to a loss of rights over certain elements. Rigorous verification of inter-representation consistency is imperative prior to any filing.

5. How should design protection and copyright protection be articulated for a digital creation?

An animated graphical user interface or a digital object may benefit from dual protection: through design law (subject to novelty and individual character) and through copyright (subject to originality). For more information on this dual protection, you may refer to the following article.

This publication is intended to provide general guidance and to highlight certain issues. It is not designed to apply to specific situations and does not constitute legal advice.

Introduction

Over the past two decades, domain names have evolved into genuine intangible assets with autonomous economic value. The gradual saturation of the primary market has given rise to a structured, professional secondary market that is, for the best-informed actors, extremely lucrative. But how does domain name monetisation actually work? Which economic models exist? And which legal risks should be anticipated to secure these transactions?

From technical identifier to tradeable asset: understanding the value of a domain name

Originally, domain names were merely technical addresses designed to direct internet users to a website. It was the scarcity of available names, combined with the explosion of e-commerce, that triggered a profound transformation: certain domain names became rare and coveted assets, akin to plots of land in a commercial district.

1.1 Scarcity as a value driver

The primary market, direct registration through a registrar accredited by ICANN, can no longer meet the demand for short, generic and memorable names. With net registration growth of only 0.5% in 2024, the stock of attractive names is nearly exhausted. This structural scarcity stems from a fundamental property of the domain name system: a domain name is by nature unique.  For example, there can be only one holder of the name « assurance.com »; this technical feature automatically lends a special value to appealing generic names. Uniqueness is the first determinant of value: a domain name built around a highly sought-after generic keyword concentrates a value that does not depend on its holder’s activity, but on its intrinsic ability to generate organic traffic and commercial visibility.

1.2 Financialisation: from use to investment

This dynamic of scarcity has led to the emergence of speculative investment practices: « domainers » build and manage portfolios in the same way as alternative-asset investors, buying at low prices, increasing value, and reselling at a profit. Landmark transactions, such as ai.com sold for USD 70 million in 2026, illustrate the phenomenon. These figures reveal the maturity of a market in which the valuation of intangible assets follows rigorous economic criteria.

Monetisation models: resale, leasing and passive exploitation

Domain name monetisation is not limited to resale. Several economic models coexist, offering strategies tailored to each holder’s profile.

2.1 Resale on the secondary market

This is the most straightforward model. The holder permanently transfers the domain name to a buyer, who becomes the new registrant. Around 144,700 transactions were recorded in 2024, for a total value exceeding USD 185 million. Resale can take place privately, through a specialised broker, or via auctions organised on dedicated platforms such as Sedo or Afternic. Pricing depends on multiple factors: extension, length, generic nature of the term, traffic history, and absence of pending disputes.

2.2 Leasing and lease-to-own

The leasing model allows the holder to collect recurring revenue without parting with the asset. The tenant obtains a limited, non-exclusive and non-transferable right of use for a fixed term, subject to the conditions set by the holder. This mechanism protects the owner while opening access to premium domain names for operators who cannot or do not wish to bear the immediate cost of acquisition.

Lease-to-own is a hybrid variant: the user pays monthly instalments credited against an agreed sale price, with legal ownership remaining with the seller until full payment. This structure, comparable to a financial lease, suits high-value assets that are difficult to finance up front.

2.3 Parking and passive monetisation of traffic

A domain name not actively exploited can still generate passive revenue through parking: the page displays contextual advertising links whose clicks produce revenue shared with the platform. The model works best when the name generates direct natural traffic, without going through a search engine. Active monitoring of the domain name remains advisable, even in this case: uncontrolled advertising use may at any time infringe a third party’s rights.

The market ecosystem: specialised platforms and intermediaries

The secondary market is structured around an intermediation ecosystem that, like financial markets, provides liquidity, price formation and transaction security.

3.1 Mass-market platforms

Actors such as Sedo, Afternic and GoDaddy Auctions form part of the secondary-market infrastructure. They combine several formats, auctions, fixed price or brokerage, and expose names to millions of potential buyers. Their compensation is based on commissions of 10% to 30% depending on the sales channel.

3.2 Specialised brokerage for high-value transactions

Above a certain threshold, transactions go through specialised brokers who appraise the asset, conduct negotiations and structure the contract. Their involvement is all the more valuable as the legal qualification of domain names remains uncertain, making contractual drafting decisive for the buyer’s security.

The legal framework: between contractual freedom and structural uncertainty

Domain name monetisation operates in a hybrid and uncertain legal environment. Neither property law, nor contract law, nor intellectual property law alone governs domain name transactions, which generates a legal insecurity that practitioners must learn to manage.

4.1 The uncertain legal qualification of domain names

Under French law, « .fr » domain names are governed by the Code des postes et des communications électroniques (CPCE), which entrusts management of the registry to AFNIC and frames registration conditions according to public-interest requirements. In this framework, registration confers a right of use, not a right of ownership. French administrative case law has nevertheless recognised a patrimonial dimension to this right of use, where it can be valued and assigned (Conseil d’État, 7 December 2016, no. 369814, Société eBay).

By contrast, « .com » domain names fall under a largely privatised system, governed by ICANN and the accreditation contracts of registrars. U.S. case law has, in some decisions, recognised domain names as intangible property subject to ownership (Kremen v. Cohen, 337 F.3d 1024, 9th Cir. 2003). This asymmetry of protection depending on the extension must be anticipated in any international monetisation strategy.

4.2 The absence of automatic legal warranties in transfers

Unlike the assignment of a registered trademark, which benefits from a precise legal regime including warranty against eviction and publicity enforceable against third parties : the transfer of a domain name does not automatically generate equivalent legal warranties. The transferee enjoys no presumption of title; it bears the entire risk linked to the anteriority of potential third-party claims, in particular those based on pre-existing trademark rights.

This is why contractual practice has developed compensatory mechanisms: representations and warranties on the quality of title (no pending litigation, no infringement of third-party rights), indemnification clauses, technical-cooperation obligations and escrow mechanisms allowing the release of funds to be conditional on the effective completion of the transfer.

4.3 Risks linked to UDRP proceedings and trademark infringement

A domain name may at any time be the subject of UDRP proceedings initiated by the holder of a prior trademark. Administered by WIPO or other providers accredited by ICANN, these proceedings can lead to the forced transfer of the name if the registrant’s bad faith is established, including after the transaction, exposing the buyer to loss of the asset. In the most serious situations, a trademark-infringement action may be brought in parallel, with significant financial and reputational consequences.

Securing a domain name transaction: essential precautions

Faced with these risks, rigorous due diligence is essential regardless of the transaction value. The following are the points of vigilance we recommend.

5.1 Verifying the quality of title before any acquisition

• Verify the registrant’s identity and its consistency with the seller.
• Search for prior trademarks on the INPI, the EUIPO and international databases (prior-art searches).
• Check the domain name’s history (Wayback Machine-type tools, spam records, parking history).
• Verify the absence of pending or recent UDRP proceedings via WIPO

5.2 Structuring the assignment contract with precision

Representations and warranties: the seller certifies that it is the legitimate registrant, that it has effective technical control of the name, and that no third-party claim is pending or foreseeable.

• Technical-cooperation obligations: provision of the EPP/Auth code, unlocking of the name with the registrar, assistance within the agreed timeframes.
• Escrow clause: funds are held by a trusted third party and released only after confirmation of the effective transfer.
• Indemnification clause: the seller undertakes to indemnify the buyer for any loss arising from infringement of a third-party right pre-existing the transaction.

Conclusion

Domain name monetisation has established itself as a structured economic reality, driven by the scarcity of available assets and the growing maturity of market actors. The central issue remains the legal security of transactions: verification of prior rights, suitable contractual structuring, escrow mechanisms, and post-acquisition monitoring. In this field, technical mastery and legal rigour are inseparable.

Dreyfus law firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus law firm works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team.

Q&A

1. What is a premium domain name and how is it valued?
A premium domain name is a short, generic and memorable term combined with a popular extension such as « .com ». Its value lies in inbound natural traffic, SEO potential and market comparables. It is advisable to have it appraised by an expert.

2. Can a domain name be seized or recorded as a balance-sheet asset?
Yes, French case law recognises the patrimonial dimension of the right of use attached to a domain name (Conseil d’État, 2016, ebay.fr), allowing it to be recorded on the balance sheet as an intangible asset (IAS 38). Its seizability remains, however, more uncertain under French law than under U.S. law, which allows in rem actions directly against the name.

3. How can a recently acquired domain name be protected from UDRP recovery?
Protection begins before acquisition: a prior-trademark search is essential. Once the name is acquired, it must be used in good faith, without risk of confusion with a third-party sign. If proceedings are commenced, the assistance of counsel specialised in domain name disputes from the cease-and-desist stage onwards is decisive.

4. What is the difference between assigning a domain name and assigning a trademark?
Assigning a trademark transfers an intellectual property right enforceable against third parties, with legal warranties. Assigning a domain name transfers only a contractual right of use, whose strength depends entirely on the contract. The two assets are complementary: a strategic domain name should always be backed by a corresponding trademark.

5. Can the parking of a domain name constitute trademark infringement?
Yes, if the name reproduces a prior trademark and the parking page displays advertisements in the same business sector. This may amount to use of the sign in the course of trade and ground an infringement action or UDRP proceedings. Prior verification of third-party rights is therefore essential before any parking.

The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.

Introduction

Is trademark law absolute? And how to protect yourself against exhaustion of rights? At first glance, trademark rights appear to grant their owner a comprehensive monopoly over the use and distribution of branded goods. However, in reality, this protection is fundamentally limited by the doctrine of exhaustion of rights, a cornerstone of intellectual property law that directly affects commercial strategies, distribution control, and international trade.

Trademark exhaustion: a structural limit to absolute rights

Trademark rights are often perceived as absolute because they allow their owner to prevent unauthorized use of a sign in the course of trade. Yet, this perception does not withstand legal scrutiny. The principle of exhaustion, as set out in Article L713-4 of the French Intellectual Property Code, introduces a clear limitation: the right holder may control the first commercialization of a product, but not its subsequent circulation once that initial sale has been authorized.

This principle ensures a necessary balance between intellectual property protection and the free movement of goods.

oncretely, once a product bearing a trademark has been sold by the owner or with their consent, that specific item may be resold without infringing trademark rights. This applies regardless of whether the resale occurs through traditional retail channels, online marketplaces, or secondary markets.

However, exhaustion is not a blanket waiver of rights.

– It applies strictly to individual items and does not extend to unsold stock or newly manufactured goods.
– It only concerns genuine products. Counterfeit goods or unauthorized reproductions remain fully subject to enforcement actions.
– Exhaustion does not affect other prerogatives of the trademark owner, particularly those relating to brand reputation, advertising, or unfair competition.

Why trademark law is not absolute in practice?

The non-absolute nature of trademark law becomes particularly evident when analyzing the economic rationale behind exhaustion. Intellectual property law is not designed to create perpetual control over goods, but rather to incentivize innovation while ensuring market efficiency. Once the trademark owner has benefited from the first sale, the law considers that its essential economic function has been fulfilled.

Nevertheless, trademark owners are not entirely deprived of protection after exhaustion occurs. The article L713-4 of the French Intellectual Property Code, consistently recognize that certain circumstances justify the reassertion of trademark rights, even after the first sale. This is particularly the case where the condition of the product has been altered, where the packaging has been modified in a way that may damage the brand’s image, or where the use of the trademark creates a misleading impression of commercial affiliation.

Parallel imports and the strategic importance of exhaustion regimes

This legal mechanism promotes market fluidity and consumer access, but it may also expose businesses to risks such as:
• parallel imports;
• price erosion;
• loss of control over distribution channels.

The legality of parallel imports namely, the importation of genuine products without the authorization of the rights holder depends directly on the applicable exhaustion regime.

Under national exhaustion systems, rights are exhausted only within the territory where the first sale occurred. Products placed on the market abroad therefore cannot be freely imported. By contrast, international exhaustion regimes allow the free movement of products once they have been first marketed, regardless of the country in which that first commercialization took place.

The European Union operates under a regional exhaustion regime, which permits the free movement of goods within the European Economic Area (EEA), but not beyond it. Since Brexit, the United Kingdom has adopted a specific regime known as “UK+”, characterized by an asymmetrical approach: products placed on the market in the EEA may be imported into the United Kingdom, whereas the reverse is not automatically permitted.

This situation entails major strategic consequences. It reduces the ability of UK rights holders to exercise control over imports, while preserving a higher level of protection within the EEA. Companies must therefore adapt their pricing strategies and distribution networks accordingly.

Burden of proof in matters of exhaustion: guidance from European law

In trademark litigation, the allocation of the burden of proof is a decisive issue in the application of the exhaustion doctrine. The case law of the Court of Justice of the European Union establishes a clear principle: as a general rule, it is for the reseller or importer facing infringement proceedings to demonstrate that the goods at issue were placed on the market within the European Economic Area (EEA) by the trademark proprietor or with its consent.

However, this principle is subject to an important qualification in the context of selective distribution networks. In such circumstances, the burden of proof may be reversed in favor of the reseller. It then falls upon the trademark proprietor to establish that the goods were not initially marketed within the EEA.

This exception aims to prevent rights holders from using selective distribution systems to artificially partition national markets and maintain price differentials within the European Union. In practice, it requires trademark proprietors to exercise increased vigilance in the management and traceability of their distribution channels.

By way of illustration, in a Dutch decision dated 16 April 2025 (Case No. C/09/646700 / HA ZA 23-379), the District Court of The Hague confirmed that where a rights holder is able to demonstrate that the goods originate from a market located outside the EEA, the doctrine of exhaustion cannot be relied upon. In the absence of evidence from the reseller establishing a subsequent lawful placing on the market within the EEA, the resale constitutes an infringement of trademark rights.

How to protect against exhaustion of trademark rights?

Faced with these constraints, companies must adopt a proactive and structured approach to managing exhaustion risks. For trademark owners, the priority lies in regaining indirect control where direct legal control is no longer available.
This begins with a precise understanding of applicable exhaustion regimes in each target market. Without this legal mapping, enforcement strategies risk being ineffective or even counterproductive. In parallel, companies should invest in supply chain traceability systems, enabling them to identify where and when products were first placed on the market. Such evidence is often decisive in litigation involving parallel imports.

Another essential lever is the implementation of selective or exclusive distribution networks, combined with contractual mechanisms that incentivize authorized sales channels. While these arrangements cannot override exhaustion, they can significantly reduce the attractiveness of unauthorized distribution.

From an operational perspective, the use of distinctive packaging, serial numbers, or geographic markers can help differentiate products intended for specific markets. This facilitates enforcement actions where goods are diverted in violation of contractual or territorial restrictions.

For resellers and parallel importers, risk management requires an equally rigorous approach. Operators must ensure that the goods they commercialize have been lawfully placed on the market within the relevant exhaustion zone. Particular caution is required where products are modified, repackaged, or combined with additional services. In such situations, it is essential to clearly inform consumers of the nature and origin of the intervention in order to avoid any suggestion of affiliation with the trademark owner.

Conclusion

Trademark law cannot be regarded as absolute. The doctrine of exhaustion introduces a necessary limitation, ensuring that once goods have been lawfully marketed, they may circulate freely under certain conditions. However, this limitation does not deprive trademark owners of all protection. On the contrary, it requires them to adopt more sophisticated, strategic, and evidence-based approaches to safeguard their rights.

In a globalized economy marked by complex distribution chains and price disparities, mastering the rules of exhaustion is no longer optional. It is a decisive factor in maintaining brand value, controlling market positioning, and preventing unauthorized commercial practices.

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus, with the support of the entire Dreyfus team

Q&A

1. Is the exhaustion of rights doctrine universal?
No. The application of exhaustion depends on the legal regime in force within each country or region. Some jurisdictions apply national exhaustion, others regional exhaustion, while certain systems recognize international exhaustion.

2. Can modification of a product prevent the application of exhaustion?
Yes. Exhaustion may not apply where modifications affect the quality, condition, or reputation of the trademarked product, or where they are likely to damage the brand image.

3. Can a trademark owner prohibit the resale of its products on certain online marketplaces?
In principle, the exhaustion doctrine limits the trademark owner’s ability to prohibit resale. However, restrictions may be justified in specific circumstances, particularly within selective distribution networks or where necessary to preserve the prestige and reputation of the trademark, provided such restrictions comply with competition law.

4. What is the difference between parallel imports and counterfeiting?
Parallel imports concern genuine goods that were initially placed on the market in another territory with the authorization of the rights holder and subsequently imported without its consent into the relevant market. Counterfeiting, by contrast, involves unauthorized goods that unlawfully reproduce or imitate the trademark. The applicable legal regimes and potential sanctions differ significantly.

5. Can contractual provisions circumvent the exhaustion doctrine?
Contractual arrangements may regulate distribution channels and commercial relationships, but they cannot override the exhaustion doctrine itself. Moreover, such clauses must comply with competition law and must not create unjustified restrictions on trade.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice

Introduction

Contrary to a common misconception, U.S. case law on the use of artificial intelligence is not a reality reserved for Silicon Valley giants. It is a judicial laboratory whose lessons are likely to influence European practices, particularly in the areas of copyright, data confidentiality and governance of digital tools.

The dispute between The New York Times (“NYT”) and OpenAI is the pivotal case in this development. The NYT alleges that OpenAI trained its large language models (“LLMs”) on millions of protected articles without authorization.  Two discovery orders issued by U.S. Magistrate Judge Ona T. Wang have since laid down guiding principles that extend well beyond the press sector alone.

For French and European companies, the message is clear : if litigation arises tomorrow and your employees have entered sensitive data into a consumer-facing AI tool, those data may be compelled for production before a court.

What recent U.S decisions reveal about the discoverability of AI data

In this case, the NYT claims that OpenAI used its articles without authorization to train its AI models, which would also allegedly be capable of generating reproductions or near-reproductions of its content.

When AI logs resist discovery

In her first decision of September 19, 2025, Judge Wang rejected OpenAI and Microsoft’s request seeking production of the New York Times’ internal “ChatExplorer” logs, including the prompts entered by the newspaper’s employees and the responses generated. The defendants argued that these materials could demonstrate the existence of legitimate and non-infringing uses of AI models, particularly in a journalistic context.

The court nevertheless found that these logs were too remote from the core of the dispute. The fair use analysis had to focus on OpenAI’s use of the NYT’s copyrighted works to train its models, as well as on any reproductions generated by those models, and not on the internal use that the NYT itself made of an AI tool. Likewise, these logs did not genuinely make it possible to assess ChatGPT’s economic impact on the newspaper’s market : the NYT could not be considered its own competitor.

Finally, the request was held to be disproportionate. It would have required the review of more than 80,000 entries, potentially containing sensitive information or material covered by privilege, without their evidentiary value being sufficiently demonstrated. The decision therefore recalls that data generated by AI tools is not automatically discoverable : its production requires a direct link to the dispute and a proportionate review burden.

When AI logs become discoverable

The second decision, handed down on December 2, 2025, illustrates the other side of the reasoning. This time, it was no longer OpenAI seeking the NYT’s internal logs, but the New York Times requesting production of ChatGPT output logs generated by consumer users. The aim was to demonstrate that OpenAI’s models could reproduce the newspaper’s protected articles in response to certain prompts.

Judge Wang granted that request. Unlike the ChatExplorer logs, these logs were directly connected to the core of the dispute: they could help establish whether ChatGPT outputs actually reproduced protected NYT content. They were therefore relevant not only to assessing the existence of possible infringement, but also to OpenAI’s defences, including fair use and the existence of substantial non-infringing uses.

The court also held that the request was proportionate. The requested sample covered 20 million de-identified logs, representing less than 0.05% of the total volume retained by OpenAI. The measure was also framed by confidentiality safeguards and by a de-identification process that was already largely underway. This decision therefore shows that AI data may become discoverable when it goes directly to the merits of the dispute, is useful in proving the parties’ claims and defences, and its production remains technically and legally controlled.

The Heppner case : AI without a lawyer, illusory protection

In United States v. Heppner, a decision issued on February 17, 2026, Judge Rakoff refused to protect, under attorney-client privilege or the work product doctrine, documents generated by the defendant using Claude before any effective involvement by counsel.

The decision recalls that exchanges with an AI tool cannot be equated with confidential communications with legal counsel, and that documents prepared without an attorney’s direction or request do not, in principle, benefit from the protection afforded to defense preparatory work. The reasoning is further reinforced by the tool’s terms of use, which did not provide sufficient guarantees of confidentiality for the data entered.

This case therefore illustrates the risk, for a client, of sharing information related to litigation or a defense strategy with an AI tool on their own : in the absence of attorney supervision and confidentiality safeguards, such exchanges may become discoverable.

For a more in-depth analysis, you may refer to our previous article.

What concrete risks do companies and their counsel face ?

These decisions reveal systemic risks that any organization using AI must anticipate. Beyond U.S. procedure, mechanisms for compelled production of evidence also exist under French law, including référé probatoire and court-ordered production of documents, and the underlying principles may be transposed.

• Breach of trade secrets : strategic data entered into a consumer-facing AI tool may be stored, processed and potentially disclosed to third parties in accordance with the platform’s terms and conditions.
• Loss of professional secrecy protection : a lawyer who enters sensitive client data into a public AI tool that trains on user inputs risks entirely waiving the protection attached to professional secrecy.
• Preservation and production obligations : AI prompts and outputs constitute electronically stored information and are subject to the same obligations as emails. In the event of reasonably anticipated litigation, their deletion may amount to a serious procedural violation.
• Liability for hallucinated content : submitting nonexistent case law generated by an LLM to a court may trigger disciplinary and civil liability for the lawyer or counsel relying on it.
• Risk of infringement : AI outputs reproducing protected works without a licence may expose the user to liability for copyright infringement.

Essential measures to protect your clients’ data

The first step is to audit the AI tools being used, including informally, in order to identify risks relating to terms of use, confidentiality, data retention and their potential use for training purposes.

The organisation should then formalise an internal AI governance policy, regulating the data that may be entered, the retention of logs, preservation obligations in the event of litigation, and human review of generated outputs before any official use.

Finally, this policy should be accompanied by team training. Lawyers, executives and legal officers must understand the risks associated with AI, avoid producing inaccurate materials, and ensure clear, documented and effectively implemented governance.

European law to the rescue : GDPR, the AI Act and intellectual property

European law provides a complementary and more protective framework. In particular, the General Data Protection Regulation (“GDPR”) requires that any processing of personal data pursue a specific purpose and comply with the principles of data minimization, the right to erasure, and certain security measures. The use of a consumer-facing AI tool to process clients’ personal data, without a legal basis or impact assessment, may constitute a violation subject to sanctions by the CNIL.

The AI Act also strengthens requirements relating to transparency, traceability and human oversight, particularly for high-risk AI systems used in legal or decision-making contexts.

Finally, AI-generated content may infringe pre-existing intellectual property rights, such as copyright, trademarks, designs or patents. Since ownership of copyright in an AI-generated work remains uncertain under French law, any commercial exploitation must be subject to a rigorous prior assessment.

Conclusion

The U.S. decisions of 2025–2026 have crystallized a principle that European law had already expressed in another form : data entrusted to an AI tool do not disappear. They persist, they may be discoverable, and they may be used against their author if no governance framework has been put in place upstream.

The protection of  your data in an AI environment rests on three inseparable pillars : informed choice of tools, formalization of a binding internal policy, and continuous team training.

Dreyfus assists its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support for the full protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus, with the assistance of the entire Dreyfus team.

Q&A

1. Are conversations with ChatGPT or Claude confidential ?

By default, in consumer-facing versions, no. The terms and conditions of most AI platforms provide for the possibility of collecting inputs, using them to improve models and sharing them with third parties. Enterprise versions, whether API-based or professional subscriptions, generally offer guarantees that data will not be used for training purposes, but these guarantees must be verified contractually on a case-by-case basis.

2. Can a lawyer use AI without breaching professional secrecy ?

Yes, subject to strict conditions. The tool used must contractually guarantee the confidentiality of the data entered, no client-identifying data should be shared unless necessary, and any AI output must be independently verified before official use. The Heppner case shows that unregulated AI use can destroy the benefit of professional secrecy.

3. What data should never be entered into a consumer-facing AI tool ?

Any data that may be considered confidential or strategic : clients’ personal data within the meaning of the GDPR, information protected by trade secrets, data relating to ongoing or reasonably anticipated litigation, content covered by lawyers’ professional secrecy, and any information that may identify a party to a contract or proceeding.

4. Can AI outputs be protected by copyright ?

Under French law, copyright protection requires an original work of the mind bearing the imprint of its author’s personality, a condition that purely automated outputs from an LLM generally do not satisfy. Significant human creative choices in the formulation of prompts or in the selection of outputs may, depending on the circumstances, give rise to partial protection.

5. What should be done if sensitive data have already been entered into an AI tool without precautions ?

Act without delay: check the tool’s settings, including disabling history; exercise the right to erasure with the provider where applicable ; notify the DPO ; assess whether a personal data breach within the meaning of the GDPR must be reported to the CNIL ; and immediately take preservation measures if litigation is reasonably anticipated.

This publication is intended to provide general guidance to the public and to highlight certain issues. It is not intended to apply to specific situations or to constitute legal advice.

Introduction

In a digital environment where social media platforms shape corporate communication strategies, the use of hashtags has become virtually systematic. Yet this seemingly innocuous practice may, depending on the circumstances, encroach upon the exclusive rights of third parties.

The question of whether a hashtag may constitute an act of trademark infringement has now been addressed, at least in part, by French case law. A decision rendered on February 12, 2026 by the Paris Judicial Court provides a particularly instructive illustration.

I. The hashtag: A sign at the frontier of trademark Law

A hashtag, namely the typographical sign “#” associated with a word or expression, primarily serves a classification and categorization function on digital platforms. It enables internet users to gather publications from different sources under a common thematic thread. This indexing function lies at the heart of the legal debate: can a hashtag constitute “use as a trademark” within the meaning of intellectual property law?

The origin function: cornerstone of trademark protection

Under trademark law, only the use of a sign “as a trademark” is capable of constituting infringement. This implies that the sign is used to identify the commercial origin of goods or services, namely to indicate to the public that such goods or services originate from a specific undertaking. Article L.713-3 of the French Intellectual Property Code is explicit in this regard: infringement presupposes use in the course of trade that goes beyond a mere reference to a phenomenon or event.

However, the specific nature of hashtags lies precisely in their referential dimension: they point to content, a theme, or an external event, without necessarily seeking to distinguish the goods or services of the company using them. In practice, the boundary between descriptive or illustrative use and use as a trademark is therefore extremely narrow.

A Legal framework still under construction

To date, no legislative provision expressly governs the legal status of hashtags. French and European courts are progressively developing a case-by-case body of case law by applying traditional trademark law criteria to these new digital uses. This casuistic approach makes the analysis all the more delicate, as the context of each publication plays a decisive role in the legal characterization adopted.

II. The FFT v. Printemps case: A hashtag that does not indicate origin

The facts: A live shopping operation against the backdrop of Roland-Garros

In June 2023, the French department store chain Printemps organized a “live shopping” promotional campaign during which it broadcast video excerpts from previous editions of the Roland-Garros tournament. These excerpts featured iconic elements of the sporting event, and the company’s Instagram publications included the hashtag #RG.

The French Tennis Federation (FFT), organizer of the tournament and owner of French semi-figurative trademark No. 4290616 incorporating the initials “RG” (filed on July 29, 2016, notably in Class 41), considered that the campaign infringed its exclusive rights and brought proceedings before the Paris Judicial Court on several grounds:

– infringement of sports exploitation rights,
– parasitism,
– trademark infringement.

The Paris Judicial Court decision of February 12, 2026

The Paris Judicial Court decision of February 12, 2026 upheld two of the three claims asserted by the FFT. It recognized an infringement of the exclusive exploitation rights attached to the tournament and sanctioned Printemps for parasitic conduct, finding that the latter had improperly appropriated the notoriety and investments of the FFT for its own commercial benefit.
However, with respect to trademark infringement, the Court adopted a more nuanced approach. According to the wording of the judgment itself, the disputed publications “in no way refer to the purchase or promotion of a specific product, but rather to an atmospheric visual whose hashtag is not intended to indicate origin but to identify the tournament organized by the claimant.”

In other words, the Court held that #RG functioned as a tool for identifying and referencing an event, rather than as a distinctive sign designating the commercial origin of the products marketed by Printemps. In the absence of use “as a trademark,” trademark infringement could not be established.

A Solution consistent with prior case Law

This decision is consistent with an emerging line of French and European case law. In its judgment , in L’Oréal v. Bellure, of June 18, 2009 Case C-487/07, the Court of Justice of the European Union established that the use of a sign similar to a reputed trademark does not necessarily constitute infringement where it does not adversely affect the essential functions of the trademark, foremost among them the origin function.

III. When can the use of a hashtag amount to trademark infringement?

Although the FFT v. Printemps judgment excludes infringement under the specific circumstances of the case, it would be incorrect to conclude that a hashtag can never infringe trademark rights. The legal characterization depends on a rigorous contextual analysis, notably involving the following factors.

Criteria for recharacterization as trademark use

• Direct promotion of goods or services: where the hashtag accompanies a publication primarily intended to market or commercially promote a specific offer, the risk of recharacterization significantly increases.
• Reproduction of a reputed trademark: the use of a hashtag reproducing identically or almost identically a well-known trademark in a commercial context may constitute unfair exploitation of the reputation of that trademark (Article L.713-3, paragraph 2 of the French Intellectual Property Code).
• Likelihood of confusion: where the public may believe that the goods or services promoted under the hashtag originate from the trademark owner or from an economically linked entity, infringement may be established.
• Overall context of the publication: the juxtaposition of the hashtag with other trademark elements (logos, colors, registered visuals) or its inclusion within a large-scale communication campaign may constitute aggravating factors.

Conclusion

The FFT v. Printemps case confirms that trademark law, when applied to digital uses, requires a refined and rigorous contextual analysis. A hashtag is not, by nature, use “as a trademark.” Its characterization depends on the role it concretely plays within the company’s communication strategy: whether it serves merely as a thematic referencing tool or as a distinctive sign identifying the commercial offer. Intellectual property in the age of social media calls for a proactive legal approach, whether to structure an effective protection strategy or to secure online commercial practices.

Dreyfus law firm assists its clients in securing creations arising from employment relationships, combining contractual engineering and litigation expertise to build frameworks tailored to each industry.

Dreyfus law firm works in partnership with a global network of lawyers specialized in intellectual property.

Nathalie Dreyfus, with the support of the entire Dreyfus team.

Q&A

Can a hashtag be registered as a trademark?
Yes. A hashtag composed of a distinctive sign may be registered as a trademark. The “#” symbol itself is considered non-distinctive, but the overall combination formed by the symbol and the accompanying term may be registered if the term is sufficiently distinctive to identify the goods or services of a particular undertaking.

Can trademark infringement be established without a likelihood of confusion?
Yes, in the case of reputed trademarks. Article L.713-3 paragraph 2 of the French Intellectual Property Code protects trademarks with a reputation even in the absence of a likelihood of confusion, where the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the trademark.

What risks does a company incur when using, without authorization, the hashtag of a registered trademark?
The sanctions may be substantial: compensation for the damage suffered by the trademark owner, removal of the infringing publications, prohibition against further use of the sign, and, in the most serious cases, criminal penalties for trademark infringement (up to four years’ imprisonment and a fine of €400,000 for natural persons under French law). Acts of parasitism may also give rise to additional damages.

How can businesses protect themselves against disputes relating to hashtag use?
Protection involves systematic trademark clearance searches prior to any communication campaign, the implementation of internal legal validation procedures for digital content, and — for trademark owners — the registration of hashtags associated with their brand identity. Assistance from a specialized intellectual property law firm makes it possible to identify risks upstream and react swiftly in the event of infringement.

Can parasitism and trademark infringement be claimed cumulatively?
Yes, under certain conditions. French case law permits cumulative claims where the legal grounds are distinct and the alleged harm does not overlap. As illustrated by the FFT v. Printemps case, a single commercial operation may constitute parasitic conduct without necessarily amounting to trademark infringement, since these two legal characterizations are subject to different requirements.

This publication is intended to provide general guidance and highlight certain legal issues. It is not intended to apply to specific situations or to constitute legal advice.

Introduction

Digital evidence has become a major strategic issue in intellectual property litigation. Given the volatility of online content, the Wayback Machine has emerged as an essential tool for demonstrating the past existence of a web page. However, its legal value remains framed and conditional, requiring a rigorous assessment of its use.

Admissibility in principle but framed in practice

The Wayback Machine, an archiving service developed by Internet Archive, enables users to access previous versions of web pages. In practice, this tool is frequently used to establish the existence of content at a given date, particularly where such content has been modified or removed.

French and European courts accept its use as a means of evidence. However, such admissibility does not automatically confer probative value.

This approach is rooted in the principle of freedom of evidence in civil matters. It implies that evidence derived from online archiving must be assessed in light of its reliability, consistency, and the circumstances in which it was produced.

For further insights into the evolution of the admissibility of evidence derived from the Internet Archive service, we invite you to consult our previously published article on this topic.

Evidentiary value requiring proper securing of evidence

Although the Wayback Machine is recognized as a reliable tool, it does not benefit from any presumption of authenticity comparable to that attached to certain official documents. Its evidentiary value is necessarily limited. Courts regularly observe that the tool relies on automated capture processes, the precise functioning of which is not entirely within the control of the parties, thereby calling for caution as to the integrity and completeness of the data. In practice, a capture from the archiving tool will rarely be sufficient on its own to satisfy the burden of proof.

The effectiveness of this tool depends on how the evidence is collected, particulary when it is secured by a bailiff’s report allowing its traceability to be ensured and disputes to be limited.

More broadly, the archive must form part of an overall evidentiary strategy, consistent with other materials such as catalogues, commercial materials, or professional correspondence.

The decisive contribution in design law through the decision Axon Enterprise v. Shen Zhen Min Dun

The decision rendered on February 27, 2026 by the EUIPO in the case Axon Enterprise v. Shen Zhen Min Dun (No 000127915) provides particularly valuable guidance on the interplay between digital evidence and the assessment of design validity.

1. Facts and Procedure

In this case, Axon Enterprise filed an application for a declaration of invalidity against a European Union design relating to an electric impulse weapon. In support of its claim, the applicant relied on prior disclosure attributable to the holder itself, resulting from the publication of a commercial catalogue dating from 2020, made available online by a commercial partner.

To establish this disclosure, Axon submitted both a copy of the catalogue and an extract from the archive demonstrating that the document had been accessible online prior to the filing date of the contested design. The holder challenged this analysis, arguing that the catalogue had not been effectively disseminated, that the website was no longer accessible, and that the product was not known to the relevant specialized circles.

2. The Decision

The EUIPO carried out an overall assessment of the evidence. It noted that the catalogue originated from the holder itself and bore the characteristics of a commercial document intended to be distributed to customers or partners. The fact that an independent operator in the sector had obtained a copy constituted a strong indication that it had been made available beyond the internal sphere of the company.

The Wayback Machine extract reinforced this conclusion by demonstrating that the catalogue had been accessible online at a given date. The Office acknowledged the evidentiary value of this tool insofar as it makes it possible to reproduce the state of a web page at a specific point in time. It nevertheless emphasized that such evidence must be assessed in its context and in conjunction with other elements.

The decision also provides important clarification regarding disclosure. The EUIPO held that making content available on a freely accessible website is, in principle, sufficient to constitute disclosure to the public, unless restricted access or confidentiality can be demonstrated. It further stated that the subsequent deactivation of the website is irrelevant, as disclosure must be assessed at the time it occurred.

On the merits, the Office compared the designs by focusing on their essential characteristics. Despite certain minor differences, it found a strong similarity in the overall configuration, proportions, and structure of the products. As these differences did not alter the overall impression produced on the informed user, the contested design was found to lack individual character, resulting in its invalidity.

3. Scope of the Decision

This decision has significant implications for right holders. It confirms that any online disclosure, even indirect and carried out by a commercial partner, may constitute disclosure capable of being relied upon. It also highlights a shift in the burden of proof, requiring the right holder to demonstrate that the alleged disclosure was not accessible to the relevant specialized circles.

More broadly, it underscores the risks associated with insufficiently controlled commercial communications. The dissemination of promotional materials, including abroad or through third parties, may be characterized as self-disclosure and may jeopardize the validity of a right.

Finally, this decision illustrates the central role of digital evidence in contemporary litigation. While the Wayback Machine does not constitute conclusive evidence, it forms part of a particularly effective body of evidence capable of establishing the past accessibility of online content, even where such content has subsequently disappeared.

Conclusion

The Internet Archive service has become an essential tool for reconstructing the history of online content and demonstrating its existence at a given date. While its admissibility before courts is now well established, its evidentiary value depends closely on how it is framed and supported. When used in isolation, it remains fragile ; when integrated into a structured evidentiary strategy, it becomes effective.

Dreyfus & Associés assists its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support for the full protection of intellectual property rights.

Dreyfus & Associés works in partnership with a global network of specialized intellectual property lawyers.

Nathalie Dreyfus with the support of the entire Dreyfus team.

Q&A

1. Can the Wayback Machine establish the exact date of online publication ?
It provides an archiving date, which constitutes a strong indication of online presence at that time. However, it does not necessarily reflect the initial publication date of the content.

2. Can the Wayback Machine be used in all types of disputes ?
Yes, it is commonly used in trademark law, domain name and unfair competition disputes whenever the timing of online content must be established.

3. Are Wayback Machine captures enforceable internationally ?
They may be relied upon in international proceedings, including before bodies such as the EUIPO, provided their reliability is not seriously challenged.

4. Are there alternatives to the Wayback Machine for preserving online evidence ?
Yes, other tools exist, but reports established by trusted third parties, such as judicial officers, remain the most legally secure method.

5. Must an archived page be complete to be admissible ?
No, a partial archive may suffice, provided it clearly identifies the relevant content and its context of dissemination.

This publication is intended to provide general guidance and highlight certain legal issues. It is not intended to apply to specific situations or to constitute legal advice.

Introduction

The issue of legal protection for the title of a work is one of the most delicate in intellectual property law. Between copyright, trademark law, and unfair competition, the systems of protection overlap, interact, and sometimes conflict.
Understanding their conditions of application is essential for any creator wishing to secure their work whether a novel, film, song, or software against the risks of unauthorized reproduction or commercial misappropriation.

Is the title of a work protected by copyright?

For a title to benefit from copyright protection, it must stand out through its creativity. For example, a title composed of an unexpected combination of words or a subtle play on words may be considered original. However, protection is more complex when it comes to common titles or terms already widely used in the public domain. The Paris Judicial Court in the decision of November 20, 2024, No. 21/11803 specified that the originality of a title lies in “the arbitrary choices of its author” and that it must reflect the author’s personal imprint

What makes a title original?

Courts conduct a case-by-case analysis. Several criteria guide their assessment:
• An unusual combination of terms: two ordinary words, when combined unexpectedly, may create an original whole.
• A generic or descriptive title receives no protection: “The Detective Novel” or “My Autobiography” remain within the public domain of ideas.
• The notoriety of the work may reinforce public association with the title, without replacing the requirement of originality.

What are the legal consequences of this protection?

When originality is established, the title benefits from the prerogatives attached to copyright. Under Article L.122-4 of the French Intellectual Property Code, any unauthorized reproduction or representation of the title constitutes counterfeiting. Protection extends to commercial exploitation, reproduction in press titles, on digital media, or in derivative works.

The title of a work and trademark law: cumulative protection

Trademark law offers protection that is distinct from and complementary to copyright. A work’s title may be registered as a word trademark with the INPI (French National Institute of Industrial Property), provided it meets the conditions set out in the Intellectual Property Code and the EU Trademark Regulation.
To be registrable, the title must:

• Be distinctive, meaning capable of distinguishing the goods or services of one undertaking from those of competitors;
• Not be purely descriptive or generic for the designated goods or services;
• Not be contrary to public policy or morality;
• Not be identical or similar to a prior right within the meaning of Article L711-3 of the French Intellectual Property Code (CPI), such as a trademark registered for identical or similar goods or services, a company name, a domain name, etc.

Trademark protection: an autonomous and broader regime

Copyright protection for a work extends throughout the author’s lifetime and for up to 70 years after the author’s death (Article L.123-1 of the French Intellectual Property Code), after which the work falls into the public domain.

Unlike copyright, trademark protection can, in principle, be perpetual, provided the registration is renewed every ten years. It grants the owner an exclusive right to use the mark in the designated classes of goods and services, and allows the owner to take action against any third party for infringement regarding identical or similar products that create a likelihood of confusion in the minds of the public.

This system offers a major strategic advantage for publishers, producers, and rights holders: it allows them to maintain commercial exclusivity over the title, even after the copyright has expired.

What are the risks of conflict between copyright and trademark law?

The interplay between trademark law and copyright law may give rise to certain tensions. The registration of a work’s title as a trademark may be challenged where it results in an excessive appropriation of a sign belonging to the cultural heritage or where it infringes upon the author’s moral rights.

Indeed, unlike economic rights, moral rights are perpetual, inalienable, and imprescriptible. Accordingly, heirs may oppose any exploitation including trademark registration that distorts the work or undermines the memory of its author.

Consequently, the entry of a work into the public domain does not confer an absolute right to commercially appropriate it in the form of a trademark.

In several cases, courts have had to address the question of whether the title of a film or a book could coexist with a registered trademark bearing the same name.

– Thus, in the Angélique novels case, the French Court of Cassation held that the title of a literary work could be registered and protected as a trademark, while at the same time sanctioning the use of the same title for an erotic film on the grounds that such use sought to benefit from the reputation of the original work and created a likelihood of confusion through the reproduction of both the title and the graphic universe associated with the novels (Cass. 1st Civ. Div., 4 Apr. 2006, No. 01-03.328).

– Conversely, in the elles ont posé pour lui case, the use of the word “lui” in the title of a photography book was not considered use as a trademark. The French Court of Cassation emphasized the absence of any infringement of the distinctive function of the press trademark “Lui” and upheld the publisher’s freedom of expression (Cass. Com., 12 July 2011, No. 10-22.739).

Courts will generally assess criteria such as the reputation of the trademark and the impact on the original work in order to resolve such conflicts. Where a work enjoys substantial notoriety, moral rights tend to offer stronger protection, since they safeguard not only the integrity of the work but also the public recognition of its creator. Conversely, where the trademark has acquired a strong reputation on the market, courts may place greater emphasis on the commercial use of the trademark (see Desperados, Cass. Com., 20 Feb. 2007, No. 05-10.462).

Conclusion

The protection of a work’s title perfectly illustrates the complexity of the challenges faced by creators, producers, and their rights holders. Identifying the most appropriate legal basis copyright, trademark law, or unfair competition and anticipating potential conflicts is an essential step in securing the long-term value of a creation.

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

The Dreyfus Law Firm works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

Can a one-word title be protected by copyright?

Yes, provided that it is original in nature, meaning that it reflects the personality of its author through arbitrary creative choices. A generic or purely descriptive title, even a lengthy one, will not benefit from copyright protection.

Can the title of a film or a novel be registered as a trademark?

Yes, provided that the title is distinctive in relation to the designated goods or services and is not excluded from registration (lack of distinctiveness, deceptive sign, etc.). Such registration grants autonomous protection, complementary to copyright protection, and renewable every ten years.

Can the title of a work registered as a trademark be exploited independently from the work itself?

Yes. Once a title is registered as a trademark, it becomes an autonomous industrial property asset. As such, it may be assigned, licensed, or commercially exploited independently from the work itself, particularly in connection with derivative products, adaptations, or merchandising activities.

What is the difference between copyright infringement and parasitism in the context of the use of a work’s title?

Copyright or trademark infringement involves the unauthorized reproduction or imitation of a protected title. Parasitism, by contrast, does not require any likelihood of confusion: it sanctions the act of unfairly taking advantage of another party’s reputation or investments, on the basis of Article 1240 of the French Civil Code.

Can an heir oppose the commercial use of the title of a work that has entered the public domain?

An heir can no longer oppose the commercial exploitation as such, since the economic rights have expired. However, moral rights remain enforceable, and the heir may take action if the contested use infringes the integrity or reputation of the work, or denies the authorship of the creator.
This publication is intended to provide general guidance to the public and to highlight certain legal issues. It is not intended to apply to specific situations nor to constitute legal advice.

This publication is intended to provide general guidance and highlight certain issues. It is not intended to apply to specific situations or to constitute legal advice.

Introduction

Creative content generated by employees (texts, marketing materials, visuals, training content, designs, photographs, scripts) constitutes a substantial portion of a company’s intangible assets. Under French law, however, an employment contract does not, of itself, automatically transfer copyright to the employer: the work vests in the employee upon creation, and only an express contractual arrangement may operate as an effective assignment.

This author-centric approach (the so-called personalist tradition of French copyright law) sits uneasily with the economic logic of a business which finances, organizes and intends to freely exploit its creative output.

A structural legal risk, underestimated by businesses

Many businesses mistakenly assume that a general clause in the employment contract is sufficient to vest in them ownership of the works created by their employees. Article L.111-1 of the French Intellectual Property Code lays down an unambiguous principle: authorship vests in the natural person who creates the work, and the existence of an employment contract does not derogate from that rule.

This principle has very practical implications for the transfer of rights. In practice, French copyright law strictly regulates the mechanisms by which an employer may obtain the right to exploit works created by an employee. Three key limitations thus prevent any automatic or blanket appropriation of works produced within the context of the employment relationship.

The first safeguard is the prohibition on the global assignment of future works (Article L.131-1). A clause whereby the employee would assign, as a block and in advance, the entirety of the economic rights in any works he or she might create during the term of the contract is null and void. The text proscribes precisely what the business would need: a general and anticipatory transfer.

The second is the strict formal requirements for assignments (Article L.131-3). Any deed of assignment must specify each of the rights assigned and define the scope of exploitation as to its extent, purpose, place and duration.

The third is the requirement of proportional remuneration calculated on the receipts of exploitation (Article L.131-4), as the lump-sum remuneration is limited.

Workaround mechanisms: genuine usefulness, acknowledged limitations

➤ The collective work: a powerful tool, conditional

Qualifying certain creations as collective works within the meaning of Articles L.113-2 and L.113-5 IPC enables the employer to be vested as the original rightholder: the rights arise ab initio in the person (often a legal entity) who took the initiative for the work and under whose name it is disclosed.

Three cumulative conditions must be satisfied: an initiative and editorial direction by the company, a plurality of contributors, and the merger of the contributions into an inseparable whole. General clauses purporting that “all works produced by employees are collective works” are ineffective.

The robustness of this strategy must moreover be assessed in light of European case law. In this respect, the CJEU stated, in Soulier and Doke (November 16, 2016, C‑301/15) and ONB (March 6, 2025, C‑575/23), held that any exception to the author’s individual consent must be strictly construed.

In Soulier and Doke, the Court struck down a French mechanism allowing the digital exploitation of out-of-print works without the authors’ prior express authorization, emphasizing that an author’s consent to the exploitation of his or her work cannot be presumed except under particularly stringent conditions.

The ONB judgment extends this reasoning by reaffirming that collective management or exploitation mechanisms cannot undermine the fundamental principle that authors must retain control over the use of their works, save where a derogation is clearly provided for and narrowly construed.

For more information on the ONB ruling, please see our previous article.

➤ The right of preference clause: a theoretical alternative

The right of preference clause, provided for in Article L.132-4 within the framework of publishing contracts, allows a publisher to reserve, in advance, a right of preference over the author’s future works. It is one of the rare doors opened by the legislator to a forward-looking grasp of works yet to be created.

Its transposition to the employment context, however, remains problematic. The provision is designed for the publishing industry; the conditions are strict (a clearly defined genre, a cap of five works or five years from the initial contract); and the case-law interpretation is restrictive, the clause being treated as a derogation from the prohibition under L.131-1. The exercise of the preference work-by-work also makes the instrument unwieldy for continuous creative production. More frequently cited in scholarship than implemented in practice, the right of preference clause does not constitute an operational solution for the broader need to secure rights.

➤ The collective bargaining agreement: a framework, not a substitute for individual consent

Another avenue consists in organizing the assignment by way of a collective bargaining agreement. The legislator has provided for this in respect of professional journalists (Article L.132-40).

Several obstacles, however, stand in the way of extending this logic: the prohibition under Article L.131-1 remains, even where a collective bargaining agreement is in place; the agreement itself is open to challenge, by non-signatory unions or through proceedings against a ministerial extension order; and, above all, European case law (Soulier and Doke, ONB) requires individual, free and informed consent of the author. A collective bargaining agreement may therefore frame the terms of the assignment (scope, remuneration, procedures), but does not dispense with the requirement to obtain the individual written consent of each author employee: it complements the individual framework, it does not replace it.

Individual assignment: the central avenue, provided it is properly drafted

Absent any fully satisfactory alternative mechanism, the contractual assignment remains the principal route, provided it is drafted with rigor.

➤ Defining the subject matter of the assignment with precision

The first requirement is to confine the assignment to the works created in the performance of an express creative mission, as defined by the job description, the employment contract or successive mission letters. The clause thereby targets only those works falling within that mission, rather than “all creations” of the employee.

➤ Coupling the assignment with a periodic confirmation mechanism

The second architecture, complementary to the first, consists in stipulating in the employment contract an assignment clause covering the works produced in the performance of duties, supplemented by the periodic signing of a recapitulative document identifying the works created and confirming the assignment.

Remuneration: the linchpin of the entire framework

Litigation experience shows that the strength of an assignment turns largely on remuneration. Article L.131-4 lays down the principle of remuneration calculated proportionally to the receipts of exploitation, lump-sum remuneration being admitted only in narrowly defined exceptional cases which do not expressly cover assignments made within the framework of an employment contract.

In practice, it is preferable to provide for two-tier remuneration (a fixed component plus a variable component proportional to receipts) or, failing that, to identify in the contract the portion of salary corresponding to the assignment, including in respect of exploitations occurring after the termination of the employment relationship. Often reduced to a question of formal compliance, the financial dimension is in fact the surest lever for stabilizing the framework: a properly remunerated assignment is less likely to be challenged and is more easily defended.

Conclusion

In matters relating to employee-created works, French copyright law remains shaped by a strong author-centric approach, which sits uneasily with companies’ need for continuous and large-scale exploitation of creative outputs. Neither the collective work doctrine, nor rights of first refusal, nor collective bargaining agreements currently make it possible to dispense entirely with the requirement for the author’s individual consent, specifically defined and properly framed.

In this context, the effective securitization of rights rests primarily on a robust contractual strategy: narrowly tailored assignments, regularly renewed or confirmed, and supported by clearly identifiable and credible remuneration provisions.

Dreyfus law firm assists its clients in securing creations arising from employment relationships, combining contractual engineering and litigation expertise to build frameworks tailored to each industry.

Dreyfus law firm works in partnership with a global network of lawyers specialized in intellectual property.

Nathalie Dreyfus, with the support of the entire Dreyfus team.

FAQ

1. May the qualification of a work as a collective work be stipulated in the employment contract?
It may, but it will not be binding on the court: the qualification is a matter to be ascertained, not declared. It presupposes an initiative by the company, a plurality of contributors and a merger of contributions, elements which a mere declaratory clause cannot supply.

2. May the employer freely modify a work created by an employee?
Even after the assignment of economic rights, the employee retains his or her moral rights, including the right to respect for the integrity of the work. Significant alterations (rewriting, visual modification, change in the context of exploitation) may therefore be challenged where they prejudice the spirit or integrity of the creation.

3. May an employee still claim authorship even where the work is exploited under the company’s name?
The fact that a work is disclosed or exploited under the employer’s brand, logo or trade name does not automatically deprive the employee of authorship status. In the event of a dispute, courts will examine who actually made the original creative choices giving rise to the work. This issue is particularly sensitive in relation to marketing content, communication materials and collaborative creations.

4. What happens to works exploited after termination of the employment contract?
The assignment may continue to take effect beyond termination, but only where an express stipulation provides for this. Failing that, the departing employee may claim additional remuneration in respect of subsequent exploitations, particularly where the original assignment was lump-sum and was justified, in part, by the duration of the employment.

5. May a collective bargaining agreement impose the assignment of authors’ rights of employees?
No, not within a logic of global and anticipatory assignment. It may frame the terms (rhythm, scope, remuneration), but does not dispense with obtaining the individual consent of each author employee.

This publication is intended to provide general guidance and to highlight certain issues. It is not designed to apply to specific situations and does not constitute legal advice.

Introduction

Obtaining a Plant Variety Right (PVR) in the European Union from material originating in a third country is not a mere paperwork exercise. For a non-EU breeder or seed company, the principal risk is not that the variety itself proves “unfit”, but that the project fails before the PVR examination even begins, for want of regulatory anticipation.

In the majority of unsuccessful cases, the same root cause is at work: applicants begin by filing a PVR application in the belief that the rest will follow, whereas, in respect of material originating outside the EU, the filing is merely the culmination of a far broader process.

That process presupposes a number of prerequisites, such as authorization to enter the EU, the traceability of the material’s origin, and compliance with phytosanitary requirements.

This article examines, step by step, the preliminary stages preceding a PVR application where the material in question originates from countries outside the European Union.

Rules governing the introduction of plant material from non-EU jurisdiction into the European territory

Before contemplating a “Plant Variety Right”, one simple question must be addressed: is it lawful to introduce the plant material into the European Union, and on what terms?

• Factors governing the entry of material into the EU

The analysis turns on several cumulative factors, derived in particular from the lists and requirements set out in Commission Implementing Regulation (EU) 2019/2072:

• Species (apple, rose, cereals, vine, etc.): not all species present the same level of risk. Certain plants are particularly susceptible to, or vectors of, regulated diseases.
• Country of origin: certain countries are deemed to present a high phytosanitary risk owing to the presence of harmful organisms therein which are absent from European territory.
• Type of material: the nature of the material plays a decisive role, since it influences the likelihood of disease transmission. Seeds, for instance, present a lower risk than a whole plant.
• Risk profile: the analysis also takes into account the harmful organisms regulated by the European Union. These include parasites, viruses, bacteria and fungi liable to cause serious damage to European crops.

When these parameters are combined, three typical situations emerge:

• Importation is authorized, subject to compliance with general rules (phytosanitary certificate, notification through TRACES NT, and clearance through a Border Control Post).
• Importation is authorized subject to enhanced conditions (additional declarations on the phytosanitary certificate, specific treatments such as disinfection, or mandatory pre-shipment analyses).
• Importation is directly prohibited.

• Common conditions applicable to any introduction of non-EU plant material into the EU

Although several import scenarios exist (authorized, conditional, direct refusal), all must satisfy certain regulatory requirements. Regulation (EU) 2016/2031 establishes the framework for protective measures against pests of plants and makes the entry of plants conditional upon:

• An official phytosanitary certificate issued by the National Plant Protection Organization (NPPO) of the country of origin (in France, the Organisation nationale de la protection des végétaux), recognized in accordance with international standards (IPPC), certifying that the plant material complies with EU phytosanitary requirements.
• A notification through the European TRACES NT platform, which enables sensitive consignments such as plants and plant materials to be notified and traced.
• Mandatory clearance through a Border Control Post (BCP).

• The phytosanitary certificate

Securing a phytosanitary certificate is no mere administrative formality: it presupposes compliance with stringent upstream conditions, controlled by the competent authority of the country of origin.

In practice, several cumulative requirements must be met:

• Official inspection of the material: the plant material must be inspected by the National Plant Protection Organization in order to verify the absence of regulated harmful organisms.
• Traceability of origin: the origin of the material must be clearly identified and documented (production site, growing conditions, treatment history).
• Compliance with EU-specific requirements: certain species or origins call for additional declarations on the certificate (for example, freedom from a specified pest, or compliance with particular cultivation conditions).
• Performance of pre-shipment tests or treatments: depending on the case, laboratory analyses, phytosanitary treatments or specific procedures may be required prior to export.
• Documentary consistency: the information appearing on the certificate (species, quantity, origin, type of material) must correspond strictly to the consignment shipped.

In practice, the phytosanitary certificate is therefore the outcome of an upstream control process, and not a mere declaratory document.

Any non-conformity — whether an incomplete certificate, a missing entry, or an inconsistency between the documents and the material itself — may give rise to immediate consequences upon entry into EU territory, including refusal of entry, detention or quarantine, or even the destruction of the material in accordance with the provisions of Regulation (EU) 2017/625.

• The customs dimension

The introduction of plant material into the European Union is governed by the general regulatory framework laid down in the Union Customs Code (Regulation (EU) No 952/2013). In practical terms, the operator must:

• Lodge a customs declaration in compliance with the Union Customs Code, selecting the appropriate procedure (release for free circulation, temporary admission, etc.) according to the project (trials, quarantine, subsequent commercial exploitation);
• Determine the appropriate tariff code (TARIC) for the type of material concerned (seeds, plants, in vitro cultures, etc.);
• Calculate the customs duties and import VAT.

In practice, the phytosanitary and customs aspects operate as two parallel filters: a consignment may be compliant on the phytosanitary front but blocked at customs (and vice versa). For a non-EU operator, it is therefore essential to prepare a coherent file in which the phytosanitary and customs information dovetail without contradiction.

The case of imports into the EU subject to enhanced conditions

In this scenario, the material remains admissible into the territory of the Union, but its introduction is subject to compliance with specific requirements set out in Annex VII of Commission Implementing Regulation (EU) 2019/2072, which vary according to the species, the origin and the phytosanitary risk profile. These requirements fall, principally, into three categories.

They take the form, in the first place, of additional declarations to be entered on the phytosanitary certificate, by which the NPPO of the country of origin attests that a specific phytosanitary condition is satisfied. By way of illustration, plants for planting figuring among the hosts of Xylella fastidiosa may enter the Union only where the certificate attests, in accordance with the options provided for, that the area or the production site is recognized as free from the organism, that the site is physically protected against the introduction of vectors, or that the plants have been subjected there to regular official inspections coupled with analyses.

They may also take the form of pre-shipment treatments. In such cases, admissibility is conditional upon the application, prior to dispatch, of technical measures laid down by the regulation, such as cold treatment under a specified temperature and duration regime for fruits of Citrus sinensis Pers. The treatment applied must be expressly stated on the phytosanitary certificate, in the section reserved for disinfestation or disinfection.

They may, lastly, consist of pre-shipment laboratory analyses, where Annex VII requires official sampling and diagnosis prior to dispatch in order to confirm the absence of a specified organism in the lot concerned. The results must be contemporaneous with the consignment and traceable to the lot dispatched, failing which documentary non-conformity will arise.

These requirements are implemented upstream, in the country of origin, under the responsibility of the NPPO, and are verified upon clearance through the Border Control Post on the basis of the phytosanitary certificate together with documentary, identity and physical checks.

The hypothesis of an importation prohibited within the territory of the European Union

Where direct importation is impossible, quarantine may become the gateway to the European Union.

• What is plant quarantine?

Quarantine is the holding of plant material in an approved facility, under the supervision of the competent authorities, in order to verify the absence of regulated pests and diseases, where the material is introduced for scientific, trial or breeding purposes, prior to any subsequent movement within the European Union.

In practice, the process unfolds in several stages:

• Prior reservation of a place at a quarantine station.
• Reception of the material and, where applicable, performance of technical operations (grafting, multiplication, etc.).
• A series of phytosanitary analyses and inspections.
• Isolation and surveillance for a period generally ranging between one and two years.
• Release from quarantine, where everything is compliant, allowing transfer of the material to a DUS (Distinctness, Uniformity, Stability) trial site within the EU.
• The need for an LOA.

In schemes involving quarantine in France, the central instrument is, in most cases, the Letter of Authorization (LOA) issued by the competent authority. It is an official document evidencing the agreement of the phytosanitary authorities to the introduction, within a strictly controlled framework, of plant material regarded as sensitive.

Securing such an official document presupposes:

• The reservation of quarantine places at the approved station.
• The compilation of a technical file detailing the species, type of material, origin, known phytosanitary status, intended use, and so forth.
• Discussions with the phytosanitary authorities to ensure that the conditions of containment and monitoring are deemed sufficient.

The LOA authorizes the importation of the material to the designated quarantine station and governs the conditions of its subsequent movement within the EU once the controls have been lifted (notably to DUS trial sites). Commission Delegated Regulation (EU) 2019/829 specifies the conditions for the derogation and for movements of plants for scientific, trial or breeding purposes provided for in Regulation (EU) 2016/2031, and provides the legal basis for obtaining such a Letter of Authorisation.

It bears emphasizing, however, that the LOA is not to be conflated with an import authorization in the strict sense: it constitutes a circumscribed derogation enabling introduction into quarantine, without prejudice to compliance with the other applicable regulatory requirements, in particular as regards phytosanitary certification and controls at points of entry.

• Practical implications for the PVR

Quarantine is a key regulatory step governing the introduction of plant material, principally for scientific, trial or breeding purposes, and not for direct placing on the market in the European Union. It is intended to prevent the introduction of harmful organisms and to verify the phytosanitary status of the material before any subsequent movement.

• It may, in certain cases, allow the introduction of material that would otherwise be prohibited from direct importation.
• It significantly extends timelines, often by at least one growing cycle.
• It may call for additional material (rootstocks, controls), which is itself subject to the phytosanitary requirements.
• It carries an element of uncertainty, since the material may be refused if regulated organisms are detected.

Within a PVR project involving material of non-EU origin, integrating quarantine into the planning phase from the outset is decisive: this is, in many cases, what makes the difference between a theoretical filing and a right that is genuinely capable of exploitation.

Conclusion

Securing plant variety protection in Europe from material originating outside the EU is, first and foremost, not a question of paperwork but of regulatory preparation. Anticipating territorial access, securing the lawfulness of the origin, and organizing robust traceability now lie at the heart of the strategy underlying any PVR application.

A successful project is one in which the timetable of DUS trials is aligned with these constraints, and in which each stage of the introduction of the material can be evidenced. On that condition, the certificate obtained will not merely be valid, but truly enforceable in practice.

Dreyfus law firm assists clients in the management of complex intellectual property matters, providing tailored advice and comprehensive operational support for the integral protection of intellectual property rights.

Dreyfus law firm works in partnership with a global network of lawyers specialized in intellectual property.

Nathalie Dreyfus with the support of the entire Dreyfus team.

FAQ

1. Can DUS trials be undertaken before quarantine is lifted?
So long as quarantine has not been lifted, the material remains confined and is legally unavailable for the trials.

2. Can an error in the LOA stall a project?
Yes, an inconsistency (species, quantity, origin, intended use) may result in refusal of entry, detention of the material, or even its destruction.

3. Does the LOA cover the technical operations carried out in quarantine (grafting, multiplication)?
Not directly: it authorizes the introduction, but the technical operations must be set out in the protocol approved with the station and the authorities.

4. Can a PVR project be secured before the material to be introduced has been precisely identified?
Only with great difficulty. The requirements (phytosanitary, LOA, quarantine) depend heavily on the precise type of material, which makes any approximate planning hazardous.

This publication is intended to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations and does not constitute legal advice.