Entry Into Force on May 1, 2025 of the EU “Design Package”: Modernizing the EU Designs Framework

Written by Dreyfus19/11/2024

The recent publication of Regulation (EU) 2024/2822 and Directive (EU) 2024/2823 marks a key milestone in the modernization of the European legal framework for designs. These reforms, with certain provisions taking effect from May 1, 2025, foresee a phased implementation to harmonize, simplify, and adapt the system to the digital age.

Harmonization and modernization

The term “Community design” has been updated to “European Union design” (EUD). This symbolic change modernizes the terminology while aligning it with that of European trademarks. To enhance identification, a visual symbol Ⓓ has been introduced, providing greater coherence within the system.

The reform expands definitions to incorporate technological advances. Animations, graphical interfaces, and digital twins are now included in the scope of protection, reflecting their essential role in modern industries. The concept of “product” has also been extended to non-physical forms, covering items used in video games or virtual environments such as the metaverse.

Filing procedures are now more flexible and better suited to creators’ needs. Applications can group up to 50 designs without classification constraints, and various digital formats are now accepted for design representations. Additionally, creators can defer publication for up to 30 months, offering strategic discretion to protect their designs while planning their market launch.

To promote accessibility, particularly for small and medium-sized enterprises (SMEs) and independent designers, some fees have been reduced or eliminated. Filing fees, for example, have been lowered, and the costs associated with the transfer of rights have been completely removed. However, a notable increase in renewal fees is expected. Previously, renewal fees for a 25-year period ranged from €90 to €180. Under the new framework, fees will start at €150 and rise to €700 by the fourth renewal cycle. This adjustment may disproportionately affect industries with longer product life cycles, such as automotive and industrial design, compared to industries like fashion, which are less impacted by the fee increase.

Enhanced protection of rights

The EU reform clarifies key aspects of design visibility. From now on, visibility is no longer a general requirement for protection, except for components of complex products. This revision eliminates past ambiguities and extends protection to a wider range of contemporary and diverse designs.

A major innovation is the introduction of the repair clause. This provision removes legal protection for spare parts necessary to restore the appearance of a complex product, limiting exclusive rights in this domain. The measure strikes a balance between design protection and competition in the spare parts market. However, it requires manufacturers to inform consumers about the origin of the products used for repairs, enhancing transparency and enabling informed choices.

In the realm of 3D printing, the reform introduces an exclusive right allowing rights holders to prohibit the creation, dissemination, and use of digital files capable of reproducing a protected design via 3D printing. Although this technology remains relatively uncommon in households, the provisions anticipate its potential growth, safeguarding creators’ rights in this emerging field.

Lastly, the reform extends rights holders’ protections to goods in transit within the European Union, even if their final destination is outside EU territory. This change strengthens the enforcement of intellectual property rights in a globalized context, addressing the challenges posed by counterfeit goods in international trade.

Alternative dispute resolution and legal certainty

The reform encourages EU Member States to establish administrative mechanisms for contesting the validity of national designs. Inspired by the EUIPO model for the European trademark (oppositions and cancelation actions), this approach offers a less expensive and faster alternative to traditional judicial procedures.

Additionally, the requirement for first disclosure within the EU has been abolished. Now, the initial disclosure of a design outside the EU can confer protection as an unregistered design. This change eliminates ambiguities from previous regulations, an important aspect in the post-Brexit context, where many designers chose the UK for their first presentations. This clarification further harmonizes the legal framework and reduces uncertainties for creators operating across multiple markets.

Key challenges to monitor

While the reform has integrated significant advances for the digital age, uncertainties remain regarding the protection of AI-generated designs. This rapidly growing area raises fundamental questions about the adequacy of current legal frameworks, making it essential to ensure effective protection tailored to these new forms of creation.

Additionally, the growing divergences between EU and UK regimes, exacerbated by Brexit, require close attention. Creators and businesses must exercise caution to harmonize their design protection strategies in these two now-distinct territories, minimizing legal and commercial risks associated with this fragmentation.

Timeline and future prospects

The new provisions will take effect in May 2025 for the regulation, while Member States have until December 2027 to transpose the directive into their national laws. This phased approach aims to ensure a harmonized application of the new rules across the European Union, offering creators an adjustment period.

The EU design reform represents a significant step forward in modernizing the legal framework and addressing 21st-century challenges. By clarifying key concepts, simplifying processes, and anticipating technological developments, the European Union offers a robust and inclusive system. For businesses and creators operating in Europe, adapting swiftly to these changes is essential to maximize the protection and competitiveness of their designs.

For assistance with managing and protecting your designs, our intellectual property experts are at your service. Dreyfus Law Firm with an international network of lawyers specializing in Intellectual Property.

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Plagiarism of art by fashion: inspiration or violation of intellectual property?

Written by Dreyfus29/03/2023

In a world where the lines between different artistic disciplines are becoming increasingly blurred, fashion designers often draw inspiration from art to bring their collections to life or to promote their brands.

This issue echoes the recent dispute between the brand Zadig&Voltaire and artist Julian Charriere over a promotional video for the brand that features a flaming fountain, similar to the one captured by the artist in his “And Beneath it all Flows Liquid Fire” video in 2019.

Many fashion designers are inspired by works of art to create their collections and advertising campaigns. However, some of them cross the line and copy the work of established artists almost exactly, without giving them the credit they deserve. This practice is not only ethically questionable, but can can also be harmful to the original artists in terms of violating their intellectual property (“IP”) rights.

Legal issues of intellectual property in fashion and art

Copyrighting protects original works of the mind, whether they are literary, musical, graphic, plastic or photographic creations. Fashion designers may be tempted to take inspiration from a work of art to design a new piece or an advertising campaign, but it is essential to consider the legal issues related to IP.

Plagiarism, or mindless copying of a work, is a violation of copyright. In the case of fashion, it can mean using a work of art without permission to create prints, patterns or even the shape of a garment. If the copying is obvious, the original artist can sue for damages.

The fine line between fashion and art is even more blurred as many luxury brands have launched their own art foundations such as the Cartier Foundation or the Louis Vuitton Foundation.

However, it is important to note that copyright does not protect ideas, only their expression. Thus, taking inspiration from a work of art in order to create a fashion piece is not necessarily illegal, so long as the creation is suitably original and does not directly copy the work in question. Additionally, some artists occasionally can collaborate with fashion designers, such as Louis Vuitton, who recently worked with Japanese artist Yakoi Kusuma to produce a new collection as well as to transform the Louis Vuitton store in Paris, now decorated with a monumental silhouette of the artist.

Consequences of intellectual property infringement

IP infringement can have negative consequences for artists and the fashion industry.

Plagiarism robs original artists of recognition and fair compensation for their work. When a piece of work is copied without permission, the original artist is not credited or paid for their work. This can lead to a loss of income for artists, causing them to abandon their creative work or settle for less than their talent.

In addition, intellectual property infringement hinders innovation in the creative industry. When artists are not rewarded for their work, it can discourage innovation and the creation of new works. Companies that copy original works do not need to devote resources to research and development of new ideas, as they can simply copy those of others.

Finally, intellectual property infringement can have a negative impact on the brand image of companies that engage in this practice. Consumers are increasingly aware of the importance of ethics and corporate social responsibility. When a company is accused of plagiarism or intellectual property infringement, it can damage its brand image and consumer confidence in the company.

In summation, the phenomenon of plagiarism of art by fashion raises complex questions and considerable stakes, both artistically and legally. The line between inspiration and copying can sometimes be unclear, and the fashion industry seems to navigate these murky waters in search of creativity and innovation.

While some see this appropriation as a democratization of art and a way to enrich fashion, others see them as a threat to the value and integrity of original works. At a time when legislation is struggling to adapt to these issues, it is the responsibility of fashion designers and consumers to commit to ethical fashion that respects art and its creators.

It is critical to continue the dialogue between the different actors involved and to rethink the mechanisms of intellectual property protection to ensure a fair balance between creative freedom and respect for copyright. Creators, as well as artists, can call upon professionals such as Industrial Property Attorneys, with their networks of lawyers specialized in intellectual property, to ensure that no IP rights are infringed upon.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets. We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

This article is current as of the date of its publication and does not necessarily reflect the present state of the law or relevant regulation.

What are the benefits of IP litigation and how can you make the most of it?

Written by Dreyfus13/03/2023

Intellectual property (IP) litigation is an important tool for protecting and enforcing rights in IP assets, such as patents, trademarks, and copyrights. When an IP owner’s rights are infringed or someone else is using their IP without permission, the owner may have the right to take legal action against the offender. IP litigation can help the owner to protect their valuable IP assets, as well as their reputation and market position.

The benefits of IP litigation include:

1. Protection of IP Rights IP litigation is an effective way to protect your IP assets from infringement. It allows you to enforce your IP rights and stop unauthorized use of your IP, while also deterring future infringers. By filing a lawsuit, you can also seek damages or other relief to make up for any losses caused by the infringement.

2. Strengthening of IP Rights Through the process of IP litigation, you can also strengthen your IP rights. This is because the court may issue an injunction that requires the infringing party to stop using your IP or to pay you for any profits they made from using your IP. This can help to bolster your IP rights and make it more difficult for others to infringe on them in the future.

3. Deterrence of Unlawful Use The threat of IP litigation can also act as a deterrent to others who may be considering using your IP without permission. By demonstrating that you are willing to take legal action to protect your IP rights, you can create a deterrent effect that can help to discourage others from infringing on your IP.

4. Valuable Legal Remedies IP litigation can also provide you with valuable legal remedies that can help you to recover the costs of defending your IP rights. In some cases, you may be able to recover damages or other relief to compensate you for any losses caused by the infringement.

In addition to these benefits, IP litigation can also provide you with a sense of satisfaction that you are protecting your IP rights and standing up for what is right. It can be a powerful way to make sure that your IP is respected and protected. So how can you make the most of IP litigation? Here are a few tips:

1. Understand Your IP Rights The first step to making the most of IP litigation is to understand your IP rights. You should be familiar with the different types of IP protection and what rights they provide, as well as any related laws or regulations. This will help you to identify potential infringements and determine whether or not you have the right to take legal action.

2. Seek Professional Advice It is also important to seek professional advice when it comes to IP litigation. An experienced IP lawyer can provide you with guidance on your legal rights and remedies, as well as help you to pursue a successful legal action.

3. Take Action Quickly Acting quickly is key when it comes to IP litigation. You should take action as soon as you become aware of a potential infringement, as the longer you wait, the more difficult it may be to prove your case.

4. Gather Evidence The more evidence you have to support your case, the stronger it will be. This means gathering evidence such as documents, emails, and other records that show the infringement occurred.

By following these tips, you can make the most of IP litigation and protect your valuable IP rights.

What Are The Latest Trends In IT Law And How Can You Leverage Them?

Written by Dreyfus13/03/2023

The legal landscape of the tech industry is constantly changing, making it difficult to keep up with the latest developments in IT law. Companies must stay up to date with the latest laws and regulations to ensure that their businesses remain compliant. Understanding the latest trends in IT law can help companies ensure that they are taking advantage of the latest legal opportunities and protecting their intellectual property.

One of the most important trends in IT law is the increasing focus on data privacy. As technology has advanced, companies have begun collecting and storing more information about their customers than ever before. In response, governments around the world have implemented new regulations to protect consumer data and ensure that companies are held accountable for how they store and use customer information. Companies must understand these laws and make sure that their practices are compliant. Another important trend in IT law is the emergence of cloud computing.

Cloud computing allows companies to store and access data remotely, eliminating the need for physical storage devices. However, this also creates a new set of legal issues, as companies must consider the legal implications of storing and accessing data in a cloud environment. Companies must be aware of the applicable laws and regulations in order to ensure that their use of cloud computing is compliant. Finally, IT law is also increasingly focusing on cyber security. Companies must be aware of the legal requirements for protecting their networks and data against cyber attacks. Companies must also be aware of the legal implications of any cyber security breaches that may occur. Understanding the latest trends in cyber security law can help companies ensure that they are taking the necessary steps to protect their networks and data.

So, how can companies leverage these trends in IT law? Firstly, they should ensure that they are up to date with the latest laws and regulations. Companies should also consider the legal implications of any new technologies they are using, such as cloud computing or cyber security solutions. Companies must also make sure that they are taking the necessary steps to protect their networks and data against cyber attacks. Finally, companies should consult with an experienced IT lawyer to ensure that they are taking advantage of the latest legal opportunities and protecting their intellectual property.

What strategies should you use to secure your intellectual property rights in the digital age?

Written by Dreyfus13/03/2023

As the world becomes increasingly digital, it is important to understand how to protect your intellectual property rights. Intellectual property is an asset that can be protected and controlled, but it requires the right strategies to do so. In the digital age, there are various strategies you can use to protect your intellectual property rights.

The first, and most important, strategy to secure your intellectual property rights is to register your intellectual property with the appropriate government body. Depending on the country, this may be a copyright registration, patent registration, or trademark registration. By registering your intellectual property, you are ensuring that your rights are legally binding and can be enforced in the event of infringement. Another strategy to protect your intellectual property rights is to use effective contracts.

If you are working with someone else on a project, it is important to have a contract in place that outlines each party’s rights and responsibilities in regards to the intellectual property. This will help ensure that each party is aware of and respects the other’s rights. In addition, you can also use technological tools to protect your intellectual property rights. For example, you can use digital rights management (DRM) software to help prevent unauthorized use of your intellectual property. DRM software can help protect your intellectual property from unauthorized access and copying, as well as from piracy.

Finally, you should be aware of the laws that apply to intellectual property in your jurisdiction. There are various laws and regulations that apply to intellectual property, such as copyright laws and trademark laws. By understanding these laws, you can ensure that you are taking the necessary steps to protect your intellectual property rights.

By following these strategies, you can help ensure that your intellectual property rights are protected in the digital age. It is important to understand the laws that apply to intellectual property and to use effective contracts and technological tools to protect your rights. Additionally, registering your intellectual property is essential to legally enforce your rights. By taking the necessary steps to protect your intellectual property, you can help ensure that your rights are respected and protected in the digital age.

How do you protect a trademark in the metaverse?

Written by Dreyfus01/02/2023

As a new technology of the future digital world, the metaverse has become important to society and to such an extent and rapid pace, that many companies are entering this new world and making their goods available there.

There is no official definition of what metaverse is. The vision of the Metaverse is to allow us to build a digital representation of anything in the physical world. Furthermore, this technology can be defined as a virtual world where individuals interact through the use of Avatars.

Although full of opportunities and promises, the metaverse raises some legal questions, especially when it comes to trademark law. And because the metaverse is a combination of new digital technologies , few answers are given by National or European courts.

On September 13, 2022, in the webinar “Trademarks and Designs in the metaverse: legal aspects/EUIPO practice” trademarks and designs in the metaverse was discussed.

Lots of companies and individuals have decided to take a step forward by entering the metaverse. The metaverse can be considered an extension of the physical world. Consequently, some companies decide to put their products or services into this new world.

What about trademark protection in the metaverse?

Trademark protection in the metaverse begins with the filing of a trademark. To explain this simply, it is at the actual time of filing that protection of a trademark begins.

The choice of wording is therefore essential for the protection of one’s trademark in the metaverse. In fact, the protection goes hand in hand with the list of goods and/or services covered. In this regard, article L.713-1 of the French Intellectual Property Code states that the registration of the trademark confers to its owner a property right in the trademark for the goods and services designated.

However, it can be complicated to register a trademark for the metaverse. In practice, it is indeed difficult to classify goods or services in order to provide proper protection in this new world. The EUIPO, for example, only accepts the registration of goods or services in the metaverse under certain specific classes.

The EUIPO has set out the classes in which individuals/companies can register trademarks in the metaverse. In this respect, an individual wishing to register a trademark for the metaverse will only be able to do so if the registration covers certain classes.
A few examples are outlined here:

For example: class 9 (downloadable virtual goods, i.e., computer programs presenting footwear and clothing for use online in online virtual worlds or collectibles in the form of non-fungible tokens), class 35 (providing an online environment for the exchange of virtual art and virtual tokens), class 36 (financial services including digital tokens) and class 41 (entertainment services, i.e., the provision of virtual environments in which users can interact for recreational, leisure, or entertainment purposes).

In the context of trademark licensing, it is important to ensure that use is authorized or adapted to the virtual world, or, failing that, to ensure future contracts can be adapted accordingly.

One may also wonder what territorial pAll Postsrotection is needed or required in order to protect a trademark in the metaverse. The Internet is by definition free of all borders.

Is a French trademark enough to obtain protection in the metaverse?

No answer has been given by the courts at the moment. However, it can be assumed that the criteria, for determining when a metaverse area/service is directed to a certain audience, would remain the same as for any Web 2 website, such as the proposed language (as an example).

Finally, in order to secure an optimal protection, registering the trademark among decentralized domain names, such as .ETH, has to be foreseen.

National, European and international jurisdictions have understood the importance of the metaverse. As a result, by extending classes, the jurisdictions are allowing the protection of trademarks in this new world.

♦ Afin d’offrir à nos clients une expertise unique, nécessaire à l’exploitation des actifs immatériels, nous vous tenons informés des enjeux actuels de la propriété intellectuelle et de l’économie numérique à travers les articles rédigés par l’équipe juridique du Cabinet Dreyfus & associés.

♦ This article is current as of the date of its publication and does not necessarily reflect the present state of the law or relevant regulation.

Legal Watch : A public figure’s name constitutes a right that can be the basis for UDRP proceedings

Written by Dreyfus23/12/2022

Less than a month after the 2022 presidential elections, a WIPO Arbitration and Mediation Center’s Expert rendered a decision regarding a domain name reproducing the name of the re-elected candidate Emmanuel Macron.

The domain name in dispute, <emmanuel-macron.com>, had been registered on the 3^rd October 2015, during the time when Emmanuel Macron was still the Minister of Economy, Industry, and Digital Technology. Far from merely imitating the future president’s name, this litigious domain name would redirect to this website, which in fact, was the official website of the adverse polemist candidate during the 2022 presidential election. In this respect, we note that the domain name did not redirect to content related to Mr. Eric Zemmour before 2022 (according to an Archive.org search).

The complainant logically argues in their complaint that they must fulfill the requirements of paragraph 4(a) of the Policy, where it is specified that there are three cumulative elements necessary to claim the transfer of the disputed domain name. These are :

♦ The similarity of the domain with a right of the complainant.

♦ The lack of right or legitimate interest in the domain name on the respondent’s part.
♦ The proof of bad faith registration and use by the registrant.

The interest of this case stands within two main points : the assessment of the similarity between the disputed domain name and the complainant’s prior rights, and the characterization of the registrant’s legitimate interest.

The complainant presents his arguments based on the existence of non-registered rights to the trademark “EMMANUEL MACRON”, a concept no longer existing under French law (except for well-known trademarks). If, by the simple fact that a domain name contains a family name that is not sufficient enough to justify an interest in bringing an action, it is important to note that under the Policy, the Experts’ assessment varies depending on the use of the family name made by the complainant. Here, the domain name was reproducing both the first name and the family name of Mr. Macron.

The Expert considers that when a person’s name is used as a trademark-like identifier in commerce, a complainant may be able to establish unregistered rights from that name to succeed in the UDRP proceedings. In this case, the Expert explains and outlines that the complainant’s use of the name “Emmanuel Macron” is not limited to his political activities but also extends to a commercial use being in this case, the publication and sale of books. Therefore, from the commercial use of his name, the complainant satisfies the requirements of the Expert. The Expert in retrospect acknowledges him as holding a non-registered trademark right. Therefore, the identity of the signs in comparison is established.

As trademark specialists, we would have appreciated a more puristic demonstration. In France, trademark rights cannot be acquired through simple use without registration (except for well known trademarks). In this case, it was up to the complainant to demonstrate that he had acquired trademark rights under Common Law or that the name “EMMANUEL MACRON” was a well-known trademark for certain goods and/or services.

We assume that the case was urgent and that the Expert wanted to do the right thing in this unacceptable situation. The complainant was fortunate that the case was assigned to an Expert who wanted to achieve a fair decision at the expense of trademark laws.

The Expert then raises the question of legitimate non-commercial or fair use of the domain name, according to paragraph 4(c)(iii) of the Policy.

In this case, the disputed domain name, redirects to the website of another opposing political figure. Therefore, the use of this domain name does not seem commercial and therefore, could more likely fall into the scope being freedom of speech.

However, previous experts have ruled that the right to legitimate criticism does not necessarily extend to the registration or use of a domain name which is identical to a trademark or a right, when it could create a risk of confusion through impersonation. Therefore, the use of the name EMMANUEL MACRON to redirect to his opponent’s website, Eric Zemmour, would incur a risk of implicit affiliation with the complainant. This would also constitute, on the part of the respondent, an attempt to misleadingly divert Internet users, especially since the respondent cannot claim to be known or be recognized under the name “EMMANUEL MACRON”.

As a result, and according to paragraph 4 (c) (iii) of the Policy, the Expert has determined and decided that it cannot therefore, be considered as a legitimate non-commercial or fair use status. In conclusion, the registration and use in bad faith were also acknowledged for the same reasons. As the domain name was registered at the end of 2015, the panel observed that the complainant had already acquired significant notoriety as a public figure in France. Moreover, the redirection to the website of a political opponent was likely to mislead Internet users and disrupt the complainant’s activities.

In retrospect, this case could have been subject to much harsher and serious consequences, as the intent seemed to take the form of manipulating an electorate in the run up to the presidential election, rather than taking advantage for commercial purposes.

What are the design issues in the metaverse ?

Written by Dreyfus13/12/2022

When changing Facebook to Meta, Mark Zuckerberg tried to justify Meta as the future. The metaverse is indeed a reality for millions of online players, a place to meet, interact, and create in this new world.

There is no sole definition of what metaverse is. However, it can generally be defined as a 3D immersive world, in which individuals can interact through the use of Avatars.

Metaverse is a promising technology with a possibly bright future. In fact, as an immersive world, users can do everything they do in the real world. Since this new technology is winning over millions of users, scores of industries, and companies are beginning to enter this world where they can extend and offer their products and services.

One of the industries that has benefited the most from this new technology is the luxury industry. During the Covid 19 pandemic businesses were severely disrupted.

The metaverse began to appear as a very attractive alternative for companies to continue to exist and have a presence in the marketplace. Many luxury houses have adopted a presence and entered the metaverse where they are able to offer a full immersion of styles, clothes, accessories and peripherals to Avatars. The industry has even started to conduct fashion shows with this new environment. A Metaverse Fashion Week was even created. Besides, the perk of digital fashion is that it allows to create designs which could not exist in the real world, due to technical constraints.

These digital clothes can be sold as NFTs and they can broaden the public of a luxury house, which until now could only touch the masses through more affordable goods such as perfumes and cosmetics. These houses are able – from now on – to attract them with virtual clothes.

With this change, and with the potential in this new world, there are legal issues arising. In fact, we can confirm that there is most definitely a grey area when it comes to this virtual world, especially due to the fact that rules and legal frameworks have not yet been fully developed and adapted to this world. One could even wonder whether specific legal rules should apply to the metaverse.

These questions are all the more relevant for companies to consider seriously considering that Offices have not yet brought clear and precise responses. The metaverse therefore, remains a grey legal world, where enforcing intellectual property rights is an uphill struggle.

Here, we will focus on the questions connected to protection of designs in the metaverse.

The European Intellectual Property Office (EUIPO) has been looking at the metaverse and the issues it raises. In its webinar of September 13, 2022 “Trademarks and Designs in the metaverse”, the EUIPO raises some legal issues that trademarks and designs are facing in the midst of the metaverse.

1. The use of designs in the metaverse

Registering the feature of a product is all the more important for some individuals or companies. When an individual or company is granted design protection, it obtains a monopoly on the exploitation of the design.

This is explained in Article 19 of the Council Regulation (EC) on Community designs which concludes “a registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes”.

The EUIPO noted that the term “use” is understood in a broad sense. Therefore, it can include the use of a product on the Internet and thus, in the metaverse. This makes sense since the metaverse is a new “market” for business.

2. The availability of unregistered designs in the metaverse

For a design to be protected, it is essential that it meets the condition of novelty.

Under both European and French law, a design is considered to be new if, at the date of filing of the application for registration or at the date of ownership claimed, no design has been disclosed. According to article 11 (2) of the Council Regulation (EC) on Community designs “a design shall be deemed to have been made available to the public within the Community if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialized in the sector concerned, operating within the Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality”.

When a luxury house suggests new designs on the metaverse, is it disclosure ?

From a certain perspective, metaverse is a world without any borders where individuals can have access to a bunch of different goods or services.

Consequently, when a company or an individual publishes or exposes a design in the metaverse, the notion of novelty is undermined. So far, there has been no clear answer concerning this question. This question also induces another one: does the uploading of new creations in the metaverse give rise to unregistered design rights in certain territories, such as the United Kingdom?

3. Protection of designs in the virtual world

The last issue raised by the EUIPO concerns the protection of designs in the virtual world.

In fact, one of issues that may be considered is whether products in the metaverse meet the same definition as a product in the real world.

Article 3 of the Council Regulation (EC) on Community designs enounces that a “product means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs”.

A handicraft item is a product made in one-off pieces or in a small series of pieces. It requires the knowledge and skill of one or more craftsmen.

Therefore, some will argue that a product in the metaverse cannot be considered as a handicraft or industrial product.

The EUIPO’s response on this issue does not provide any clear answer due to the lack of case law on the matter. As a matter of fact, it is difficult to say that digital designs are industrial or handicraft items. Nonetheless, the EUIPO accepts digital designs, which are generally classified in class 14-04 of the Locarno classification (such as “icons (for computers)”). Hence, we could completely envision the extension of this class or alternatively, the possibility to add the virtual version of goods in their traditional class (such as class 2 for clothing).

The metaverse is the technology of the moment. However, it raises numerous questions, particularly in relation to designs as to the use of products, their availability and protection within the metaverse. Although the EUIPO gave us some answers as to the use of a product within the metaverse, most of the answers will come with case law.

How to protect Building information modelling (BIM)?

Written by Dreyfus08/12/2022

Over the past decade, the architecture, engineering, construction and Operations (AECO) industry has undergone several developments, particularly in the area of information technology. Building Information Modelling (BIM) is now globally considered a better solution to enormous building problems, which made a huge effect on the building and construction industry. The industry is facing a practical challenge in protecting design when conflict arises between owner’s and architect’s proprietary rights.

“We shape our buildings ; thereafter they shape us.” – Winston Churchill

There was a time when pencil, paper and complex drawing were the base of construction planning, creating a tiring process with lots of loopholes. However, things have changed. It is now all about Building Information Modelling (BIM) which has been part of the construction industry for some time now. It connects the AECO professionals to design, build and operate infrastructure more efficiently. It is more than just 2D or 3D modelling. It is the process of designing a building collaboratively using one cohort system of computer models rather than as a separate set of drawings.

So, what does make BIM so exciting?

It provides insights into design constructability, reduces errors, and improves the efficiency and effectiveness of the construction phase. It can help owners in predictive maintenance, asset tracking and facilities management for future changes and renovation work. It does not solely refer to buildings, but to all sectors that have to do with construction, including roads, railways, utilities, bridges, tunnels, structures, architecture, topography, etc. BIM can be classified into different levels.

Where does intellectual property come into this conversation?

Let’s take a situation- an architect draws a design plan for the construction of a cafeteria. The contractor executes the work as per plan. However, the owner decides to reuse the design with some small changes for a second cafeteria. In such a case, apart from monetary consideration for services of design, does the architect have any other rights? Can he stop the owner from making changes to the design suggested by him? The answer to all such questions lies in Copyright and Design Law.

BIM models created in the tendering process before the award of the contract will not usually be registered. Therefore, BIM models cannot be protected by Design Law. Article 10 of Directive 98/71/EC, provides that the protection of designs is subject to their registration. However, unregistered designs can be covered by copyright under the concept of artistic work although EU Member States differ in how national copyright law protects unregistered designs. For instance, the French Intellectual Property Code (Code de la propriété intellectuelle) article L112-2.7, and the Danish Consolidated Act on Copyright 2014, Consolidated Act No 1144 of 23 October 2014 (Bekendtgørelse af lov om ophavsret (LBK nr 1144 of 23/10/2014)) in section 1.1, all list works of architecture under copyright law.

Determining the ownership of IP rights over the BIM model and its elements is necessary to determine the lawful exercise of ownership. Generally, an owner of a model is granted exclusive right regarding the use of Intellectual Property, and consequently to copy and disclose it as it wishes. In BIM Level 3, however, the authors of the model are regularly indistinguishable. However, if the contracting authorities are services of design, does the architect have any other rights ? Can he stop the owner from making changes to the design suggested by him ? The answer to all such questions lies in Copyright and Design Law.

Determining the ownership of IP rights over the BIM model and its elements is necessary to determine the lawful exercise of ownership. Generally, an owner of a model is granted exclusive right regarding the use of Intellectual Property, and consequently to copy and disclose it as it wishes. In BIM Level 3, however, the authors of the model are regularly indistinguishable. However, if the contracting authorities are to be granted ownership of a BIM model jointly with a tenderer or winner, exercising their right by disclosing it to a third party would be contrary to the interest of the other joint owner. Therefore, the French, German and Danish legislatures grant joint ownership of jointly developed BIM models and regulate in their copyright laws the right of the owners in exercising ownership rights.

In this regard, the French Intellectual Property Code Article L.113-3 provides:

‘The collaborative work is the common property of the co-authors. The co-authors must exercise their rights by an agreement. In the event of disagreement, it is for the civil jurisdiction to rule.’

The developers of a BIM model in a tendering process will be the joint owners of the model and the exercise of their rights is governed by the copyright law of the relevant EU Member State. Since the exercise of its ownership rights by each owner can potentially conflict with the interests of another owner, such exercise would generally only be permitted with the consent of the other owner(s). Therefore, the contracting authorities would not have the right to disclose the BIM model to third parties without the prior consent of the tenderer with whom they developed the BIM model.

The possibilities of BIM are endless, the trend in the construction industry is, and when there is something new, people immediately want to assign more risk to it. Thus, companies/individuals have Thus, companies/individuals have started getting the intellectual property right registered during the initial stage of a project.

Science and technology are developing faster than intellectual property legislation. As a result, previously unknown products of intellectual activity are regulated by general rules. While working and exchanging digital data on a collaborative platform can cause problems related to intellectual property such as if a copyright violation of models and intellectual property enters the court process, it poses a great financial risk and can cause project delays that will result in its loss. Before a project is implemented, there needs to be a clear understanding not only of who owns the model but also of who is responsible for the model. Then, we must consider which actors have the potential to retain the collaborative product for its sustainability. Therefore, it is necessary to conduct a review and synthesis of the related studies to identify the model ownership and intellectual property rights.

What are the new provisions of the April 17, 2019 European Directive on copyright?

Written by Dreyfus03/09/2021

Aside from including related rights for press publishers and press agencies, and rebalancing relations between rights holders and content sharing platforms, the April 17, 2019 Directive strengthens the position of authors vis-à-vis assignees. These last provisions about copyright have just been transposed into French law.

The transposition marks a significant step forward in protecting creators and cultural organizations in the digital age. While cultural pieces of work are becoming more and more accessible online, this provision reaffirms the importance of copyright.

Copyright begets fair remuneration of artists and creative enterprises in the member states of the European Union. The Directive’s purpose is to establish a global framework, where intellectual creators, authors, content editors, service providers and users will all be able to benefit from clearer, modernized and adapted rules of the digital era. As such, the Directive aims to ensure that online press publishers and authors/artists receive better renumeration – especially when leading platforms such as Google News or Youtube use their work. The adoption of this Directive is the result of negotiations that lasted more than two years.

What are the new provisions of the Directive?

The Directive aims at modernizing the European Union copyright law, taking into account the increase in digital and cross-border uses of protected content. This directive mainly provides:

1) measures to adapt certain exceptions and limitations to the digital and cross-border environment, among which are exceptions concerning:

– text and data mining (TDM exception),

– the use of works in digital and cross-border teaching activities, in particular the accessibility needs of people with disabilities, and

– conservation of cultural heritage;

2) measures to improve licensing practices and ensure more extensive access to content, which consist of harmonized rules facilitating:

– the exploitation of works that are not commercially available,

– the extension of collective licensing contracts by collective management organizations to rightsholders who have neither authorized nor excluded the application of these mechanisms to their works,

– the negotiation of agreements to make works available on video-on-demand platforms (VoD platforms), and

– entry into the public domain reproduction of works of visual art at the end of the initial term of protection; and

3) measures to ensure fair market practices with respect to copyright, liability of content sharing platforms, and contracts for the remuneration of authors and performers.

Similarly, Article 15 of the said Directive creates a new neighbouring right for press publishers. Remember, neighbouring rights are exclusive rights, more recent than copyright, and are exercised independently of the latter. They were born from the need to make the auxiliaries of creation benefit from making their works available to the public. Finally, article 17 (ex-article 13) created a liability regime adapted for internet content sharing platforms, while establishing a new exception for the monopoly of rightsholders.

What are the new obligations of content-sharing platforms?

The targeted main players (Title IV of the Directive) are platforms for mass sharing of copyright and related rights protected content – such as such as Google, YouTube, Dailymotion, or Facebook. The Directive more precisely defines it as:

“The provider of an information-focused service, whose main objective or one of its main objectives is to store and give the public access to a significant quantity of copyrighted works or other protected subject matter that has been uploaded by its users, which it organizes and promotes for profit.”

There are cumulative criteria that determine their obligations. Platforms that have been active for less than three years and have an annual turnover of fewer than 10 million euros will be subject to reduced obligations. On the other hand, platforms exceeding this limit will be subject to a proactive obligation provided for by the Directive regarding works distributed without authorization. The Directive excludes from the liability regime non-profit online encyclopedias such as Wikipedia, non-profit educational and scientific directories, open-source software platforms, online marketplaces like Amazon, Cdiscount or eBay, and individual cloud storage services with no direct access to the public. With regard to the regime applicable to content sharing platforms falling within the above-mentioned scope, the most important thing is to have the rightsholders’ authorization, which allows copyrighted work to be available to the public through, for example, a license agreement.

Can platforms be exonerated from liability?

Platforms may be exonerated from liability if it meets the following three cumulative conditions:

– That it has “made its best efforts” to obtain permission from the rightsholder to release the work to the public,

– That it has “made its best efforts” “in accordance with high industry standards of professional diligence” to ensure the unavailability of the copyrighted work once the unauthorized communication of it has been reported by the rightsholder by means of “relevant and necessary information,“

– That it acted promptly to withdraw or block access to the work upon receipt of “sufficiently motivated” notification from the rightsholder.

Finally, the platforms must be transparent towards rightsholders about the measures taken within their area of responsibility. This Directive gives certain platforms greater responsibility for the content they publish. Meanwhile, the liability system for online selling platforms, where counterfeits abound, will not change. Their status as host or publisher will always determine their liability regime.

In France, in addition to the debates surrounding compliance with the Intellectual Property Code, it will be interesting to see to the court’s decisions in the months to come.

We are a law firm with a unique expertise in the exploitation of intangible assets. We keep you updated on issues related to intellectual property and the digital economy through articles written by the Dreyfus legal team.

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♦ Webinar – Maîtrisez vos marques, noms de domaine, droits d’auteur, logiciels

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