Parody Defense And IP Enforcement In France

• Published date: 03 April 2021
• Subject Matter: Intellectual Property, Copyright, Trademark
• Law Firm: Hughes Hubbard & Reed LLP
• Author: Mr Stefan Naumann, Patrice Jean and Elsa Malaty

Infringing Trademarks and Copyrights in France: No Parody Defense, No Kidding!

Trademark and copyright owners, notably in the media and entertainment sectors, may be pleased to read that where unauthorized third parties, commonly referred to as alleged infringers, use the owner's trademarks or copyrights on physical goods, a parody defense against a trademark or copyright infringement claims continues to face substantial hurdles in France.

A February 25 judgement of the Paris Judicial Court nicely confirms the long-standing approach French courts take with respect to a parody defense in trademark and copyright infringement lawsuits in cases where the alleged infringer used a trademark or copyrighted work on physical goods in the course of trade.¹

While it may still be appealed, the judgement is a timely reminder that with respect to physical goods, a parody defense is significantly less likely to carry the day in France than for example in the US, where trademark parodies on physical goods appear to have bloomed into a cottage industry.

The case is of practical relevance for customs enforcement and when deciding where and whether to sue when an alleged parody is used for physical goods marketed in Europe.

The Paris Judicial Court Judgement of February 25, 2021

The facts of the case are refreshingly straightforward.

A French company imported from China 1000 embroidered patches reproducing the famous Rolling Stones lips and tongue logo, with the lips featuring the black and white flag of Brittany in a trompe l'oeil style. The French customs withheld the merchandise, the trademark and copyright owner had an infringement seizure carried out and sued the importer. Unsurprisingly the defendant argued that it diverted the meaning of the lips and tongue logo in a humorous manner by associating the logo with the flag of Brittany and with the culture of Brittany. According to the defendant, applying the flag of Brittany to the lips and using the image not only for the disputed patches but also on other media with a humorous message ("Keep your soft rock, Here we want salted butter") precluded any risk of confusion with the trademarks, and constituted a parody of the lips and tongue logo under copyright law.

The Paris court made short shrift of these arguments.

As regards the parody defense against the trademark infringement claim, it found that "the disputed patches do not reproduce any text, [that] from a conceptual point of view, for an average consumer the signs...