Tag: legislation

New French law on retouching advertising images of fashion models

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Last year, France enacted a new legislation (Law no. 2016-41 on the modernisation of our health system dated January 26, 2017, which came into force on January 1st, 2017) with the aim to encourage more socially responsible ads and avoid the use of artificially thin images of fashion models, whose view may induce eating disorders amongst teenage.

Article L. 2133-2 of the French Public Health Code (FPHC), as introduced by the new law, provides that “Photographs for commercial purposes of models whose physical appearance has been altered by an image processing software in order to slim or to thicken the model’s figure shall be accompanied by the words “photographie retouchée”.


Moreover, article R. 2133-6 of the FPHC burdens the advertiser with a best-efforts obligation to verify that the commercial photographs that he buys directly or through different service providers have not been modified by image processing softwares.

Only the modifications of silhouettes that affect the model’s weight seem to be concerned by the new rule.

The modalities of implementation of this new obligation have been specified by a Decree (Decree n°2017-738 of 4 May 2017 relating to photographs for commercial use of models whose appearance has been modified), that came into force on October 1st, 2017.

The Decree states that the mention “photographie retouchée” must be 
affixed in: “an accessible, easily legible and clearly differentiated way from the advertising or promotional message. The presentation of messages shall respect the rules and use of best practices as defined by the profession, notably by the Professional Advertising Regulatory Authority (ARPP)”.

Until now, the ARPP has only provided unofficial guidance on how and where the mention “photographie retouchée” should be affixed (at the “Réunion ARPP d’échanges et de lecture commune consacrée au Décret n° 2017-738 du 4 mai 2017” as of July 4, 2017) (link).

Without any clear guideline from the Regulator, nor settled market practices or court’s ruling, there is a high degree of uncertainty among the stakeholders over the correct way to comply with the law.

It follows from the wording of the law that the mention “photographie retouchée” should be (i) of sufficient size, (ii) of a colour contrasting with those used in the background and (iii) not drowned among other mentions.

Neither the Law nor the Decree lay down clear provisions on where exactly the mention must be displayed (on the photograph itself, near the product description or as a disclaimer on the bottom of the brand’s website). Given this lack of specifications, positioning the disclaimer on the photograph itself appears to be the safest solution to comply with the Regulation, while the only use of a general notice at the bottom of the webpage might be enough only if a clear reference to the relevant photos concerned is provided thanks to an asterisk or another pictogram (except maybe in the case that all photographs are retouched).

This new obligation applies to “photographs for commercial purposes” published through all types of media (cf. article R. 2133-4 of the FPHC which provides for a non-exhaustive list of media, including press or online publications, e-commerce marketplaces, social networks’ posts, printed ads, newsletter or correspondence), except for videos and television ads.

The Regulation does not specify the territorial scope of the rule. A cautious approach would be to assume that it applies to photographs that are accessible by French consumers. Indeed, it is settled case-law that national law applies if a violation is committed through a website available in the country of reference or otherwise addressing its audience, being irrelevant the place where the servers are located or where the company is registered (CA Paris, 19 March 2010, PIBD n°920 III p.391; TGI Paris, 6 December 2012, n°10/12560; Cour de cassation, Chambre commerciale, 17 January 2012, n°10-27311).

The Decree provides that responsible for complying with the duty of disclosure is the “advertiser” (“Annonceur”). Failure to comply with the Regulation can be sanctioned by a fine up to € 37,500, the amount of which may be increased up to 30% of the advertising expenses. No definition of “advertising expenses” is provided nor the Regulation specifies if this fine applies to each non-compliant photograph. However, it may be expected that judges shall apply the sanction once only for the entire offense and not for each challenged photograph. In this way, it would appear reasonable that the “30 percent of the cost of creating the advertisement” shall be calculated on all the expenses incurred in connection with the contentious advertising campaign.

Similar provisions exist from 2012 in Israel (Weight Limitation in the Modelling Industry Act, colloquially referred to as the “Model Act” or the “Photoshop™ Act”). Such law also prohibits advertisements which display fashion models (both male and female) who are underweight in accordance with measuring formulas (namely, the Body Mass Index) provided by the law.

In Italy, although we don’t have a rule specifically requiring this kind of disclosure when a model’s general appearance is altered, Article 10 of the Italian Self-regulatory Code of Marketing Communication (link) provides that marketing communication should respect human dignity in every form and expression. Moreover, Article 12 establishes that marketing communication should not contain representations that may lead consumers to be less cautious than usual or less watchful and responsible towards their own health and safety. These provisions remind to be careful when using the body image which is likely to cause pressure to conform to an unrealistic or unhealthy body shape, or which are likely to create body confidence issues, particularly among young people (cf. decisions 121/2007 or 6/2002).

Jacopo Ciani

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The shape of the worldwide famous Vespa obtains protection in Italy under copyright law

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Piaggio, the Italian company producer of the world wide famous Vespa scooter, was recently sued by the Chinese company Zhejiang Zhongneng Industry Group (“ZZIG”) in a quite complex case.

ZZIG offered for sale three scooters named “Revival”, protected by a Community design registration no. 001783655-0002, “Cityzen” and “Ves”, the shape of which was not covered by any registered IP right in Italy or in the European Union.

Capture ZZIG

As to Piaggio, the company owns the Italian 3D trademark no.1556520 claiming priority of the Community trademark no. 011686482, filed on 7 August 2013 and registered on 29 August 2013.

Capture Vespa

When Piaggio obtained the seizure of the three above motorbike models in the context of a Fair held in Milan, the Chinese company started an ordinary proceeding on the merits before the Court of Turin against Piaggio, seeking the declaration of non-infringement of Piaggio Vespa 3D trademark by its “Revival”, “Cityzen” and “Ves” scooters. Besides, it asked a declaration of invalidity of Piaggio’s Vespa trademark, based on the fact that it was anticipated by their design and thus not novel. Also, it held that the 3D trademark was void, as it does not respect the absolute ground for refusal established by the law.

Piaggio resisted and asked the Court of Turin to reject the above claims, declare that the Vespa shape is protected under copyright law, trademark law and unfair competition law and that those rights were infringed by ZIGG three models of scooters. As a matter of fact, Vespa was offered for sale by Piaggio since 1945.

First of all, the Court of Turin declared that the Vespa trademark does not lack of novelty, as it reflects a model of Vespa marketed since 2005, before the commercialization of ZZIG first scooter, i.e. “Cityzen”. Moreover, the Court of Turin excluded the existence of any absolute ground for refusal, stating that its shape was not technical nor standard and not even substantial as the reason why consumers chose the Vespa were not merely aesthetical. Based on these findings, the Court finally affirmed that only the “Ves” scooter constitute an infringement of Piaggio trademark.

This  said, the Court of Turin further held that the Vespa shape is eligible for protection under copyright law, as it is since long time worldwide recognized as an icon of Italian design and style, shown in advertising and movies, presented plenty of times at museum and exhibitions and part of many books, articles, magazines and publications. All considered, safe and sound evidence show that the shape of Vespa is unequivocally believed to be an artistic piece of designs by the main communities of experts worldwide. Nevertheless, the Court held that, again, only Ves scooter infringed Piaggio rights vested on its scooter as it presents features similar to the ones protected both under the Vespa trademark and copyright.

The decision (full text here) is indeed interesting as it critically examines the similarities and differences between the “original” good and the ones that are claimed to be infringing products and, while asserting the eligibility for protection of the Vespa shape both under trademark and copyright law, it excludes infringement for two products through a detailed and careful examination. This narrow approach is indeed interesting because it affirms the principle that the infringement of designs protected under copyright law shall be evaluated with an analytical examination similar to those applied in cases of trademark infringement.

A doubt might remain about the overlapping of trademark and copyright protection. Since the former never expires as long as the product is on the market (plus the subsequent five years, according to Italian law), one might ask what advantage for the right holder might subsist by ‘adding’ a protection limited in time, such as copyright’s. The answer might be: the dual protection functions as a ‘parachute’ for the case that one of the two, in a subsequent Judgement (Appeal or High Court: Cassazione in Italy) should be successfully challenged by a competitor.

Maria Luigia Franceschelli

Court of Turin, case No. 13811/2014, 6 April 2017, Zhejiang Zhongneng Industry Group, Taizhou Zhongneng Import And Export Co. vs Piaggio & c. S.p.a..

Design’s artistic value: no univocal definition according to the Italian Supreme Court

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With the decision at stake (dated November 13, 2015, full decision here) on the possible copyright protection of an out-door seat, the Supreme Court interestingly expressed a subtle (but crucial) critic on the current approach adopted by some Italian decisions that seem to ‘generously’ recognize the existence of artistic value for design objects, leaning on apparently weak – or lonely – evidence. This appears to be, for example, the case of the recent decision of the Supreme Court affirming that Moon Boots were artistic, as allegedly proved by the fact that the boots were exposed in an exhibition of industrial design works at the Louvre Museum (see full decision here).

A more severe approach seems to be adopted by the decision in comment, concerning the design of a line of outdoor seats called “Libre”, created by the plaintiff and claimed to be eligible for protection under copyright law. The Court of first instance and the Court of Appeal of Venice excluded the existence of an artistic value and thus excluded any copyright infringement by a line of similar outdoors seat created by a competitor. So, the plaintiff asked the Supreme Court to interpret such notion.

Capture Libre

The Italian Supreme Court, after having made a useful recognition of the current trends adopted by Italian Courts in the interpretation of such requirement, affirmed that the concept of artistic value cannot be confined in one, unique and exhaustive definition. The cases being too various, it is more useful defining a number of parameters that Judges can apply on a case-by-case basis, considering in depth the concrete facts occurred. Those parameters, continues the Court, have both subjective and objective aspects.

As to the former, they consist in the capability of the object to stir aesthetic emotions, in the greater creativity or originality of the shape – compared the others normally found in similar products on the market – transcending the practical functionality of the good: aesthetic have its own independent and distinct relevance. These emotions, admits the Supreme Court, are inevitably subject to the personal experience, culture, feeling and taste of the individual doing the evaluation. The result of the assessment on the existence of artistic value may thus change depending on who looks at the piece of design. So, it is necessary to indicate more objective parameters.

It is therefore to be considered the recognition that the piece of design has received within the cultural and institutional circles with respect to its artistic and aesthetic features. This witnesses that the aesthetic appearance is considered capable of giving to the object a value and a meaning independent from its strict functionality. In concrete, this is shown by the presence of the object at museum or exhibitions, mentions in specialized newspapers and journals (not having a commercial scope), the critics, awards, prices and similar. On top of that, crucial appears the circumstance that the object has gained an autonomous value on the market of pieces of art, parallel to the commercial one or, more commonly, that it has reached a high economic value showing that the public appreciates and recognizes (and is ready to pay) its artistic merits. All the above elements are inevitably influenced by time: if a product is new it would have had no time to receive such prices, honors and awards from third parties. Even this parameter shall thus not be considered as absolute, but still connected to a case by case analysis.

With the above, wide and flexible interpretation of the concept of artistic value, the Supreme Court appears to distance itself from a jurisprudence that focused the existence of  even just one of the above circumstances.  In particular, it seems to downplay the current trend, more and more popular in the merit Courts,  whereby the presence of the piece of design in museums and exhibitions constitutes per se a sufficient evidence of the artistic merits of an object. The decision in comment seems to ask the lower Courts to be more selective and in ascertaining the existence of an artistic merit in the design object. And to do this on a case-by-case analysis, excluding any “a priori” single-criterion-based assessment.

By this decision the Supreme Court gives objectively rules in favor of small or new designers and firms, whose products could achieve protection on the basis of a concrete analysis of the single object’s potentialities, independently from its long-lasting presence on the market, huge marketing efforts, or the capability to  exhibit  the object in a museum. The current approach, criticized by the Supreme Court, seems indeed to privilege ( moreover, in an era of crisis) companies that are already solidly established and powerful on the market. This decision is good news for competition.

Maria Luigia Franceschelli

Italian Supreme Court, case No. 23292/2015, 13 November 2015, Metalco S.p.A. vs City Design S.r.l. and City Design S.p.A..

The EU trademark reform has reached the final steps

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The reform of the European trademark system may become a reality before the end of 2015.

In addition to the Commission Regulation no. 2869/1995 on the fees payable to the Office for Harmonization in the Internal Market, the reform package presented by the Commission on March 2013 focuses, as known, the Trademarks Directive 2008/95/EC and the Community Trademark Regulation 2009/207/EC.

The Commission’s “Proposals” are based on the “Study on the Overall Functioning of the European Trade Mark System” (available here), realized by the Max-Planck Institut of Munich upon request of the same Commission and published on February 2011. The Proposals  aim at  modernizing and  harmonizing the community and national trademark’s systems (by simplifying the registration procedure and intervening on the substantive law) as well as at strengthening the enforcement of  counterfeiting.

On June 10th 2015, the Council’s Permanent Representatives Committee has approved the final compromise texts of the trademark reform package, and on June 16th 2015 the compromise agreement has been voted by the Parliament’s Legal Affairs Committee.

The final text of the Regulation can be found here, while the final text of the Directive is here.

The approved texts are actually not yet absolutely “final” as they still need to go through the legal-linguistic revision before the final endorsement by the Council and by the European Parliament. So, unless there are further delays, while most of the provisions of the Regulation will come into effect in early 2016, the Member States will have three years to transpose the Directive into national law.

The new features introduced by the reform range from formal ones, such as the adoption of the names “european trademark” instead of “community trademark” and “European Intellectual Property Office” instead of “Office for Harmonization in the Internal Market” and the reducing of registration fees, to substantive ones, such as the rejection of the requirement of the graphic representability, the extension of the absolute grounds of refusal or invalidity of the registration provided for signs constituted by a shape to signs constituted by “another characteristic”, the addition to the provision concerning the rights conferred by the registered trademark of the specification that the owner of the trademark may also prohibit the use of the sign in comparative advertising if made in a way which is contrary to the Directive 2006/114/EC and the introduction of provisions on the goods in transit in the EU.

Even if the reform presents some positives, it is not exempt from criticism.

Inter alia, by reducing registration fees of community trademarks it maintains the community and the national trademarks systems in competition.

Also, by extending the provisions on the shape trademarks to sign constituted by other characteristics, the revision makes non-traditional trademarks harder to register. This kind of trademarks will indeed not be registrable if they exclusively consist of a characteristic (such as, for example, a sound or a smell) which can be considered imposed by the nature of the product, or necessary to obtain a technical result or giving substantial value to the product.

But the most discussed and criticized provision is the one providing that the trademark owner is entitled to prevent third parties from bringing fake goods, in the course of trade, into the Member State where the trademark is registered. First of all, because the text has udergone many changes and, secondly, because its last version provides that the entitlement of the owner shall lapse if during the proceedings to determine whether the registered trade mark has been infringed, evidence is provided by the declarant or the holder of the goods that the proprietor of the registered trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination. This clearly gives trademark owners great power to prevent fake goods transiting through the Community as it will be very difficult for the holder to prove a negative.

In the end, the reform doesn’t take advantage of the occasion to codify consolidated principles affirmed by the EU Court of Justice such as those expressed in the General Motors case (C-375/97), in which the famous trademarks have been defined as registered trademarks known by a significant part of the consumers of the products or services which said marks cover in a substantial part of the EU territory. The provisions on famous trademarks contained in the current Directive and  Regulation do not express such a definition of reputation and this lacuna could have been filled by the reform as the principles expressed in the said case are unanimously shared.

Sara Caselli

* due to a technical error, “steps” was erroneously reported as “jokes” in the title. We apologize.