Patent Baristas

How many times have we woken up to the smell of piping hot coffee? Flowers from the garden? The smell of mud after first rains? The smell of nature? The smell of home-cooked meals. It is small wonder then that perfumes are coveted by us. The smell of citrus, ginger, cinnamon, vanilla, exotic fruits and flowers all captured in a tiny vial that often cost heaven and earth.

Historical records indicate that the use of perfume dates back to the ancient Egyptians, Romans and the Chinese when it was used as a seduction tool, to mask odors or for other industrial functions. These days a variety of forms of fragrances can be found in the consumer market to cater to the slightest preferences. A $6 billion industry is built upon a thousand different fragrances, according to the Fragrance Foundation in New York.

The name of a perfume is usually trademarked, the packaging may be protected trade dress, the text on the box may be copyrighted, and certain synthetic olfactory elements or even the bottle could be patented. The liquid or the fragrance itself has never enjoyed any such protection and neither has the fragrance itself.

U.S. possesses the maximum number of patents in the field of perfume composition and related technology. The first U.S. patent, US patent number 1017669, was obtained in 1810 with the most recent one being granted in 2006.  A trademark for perfumes, more commonly known as smell-marks is also not inconceivable. As mentioned earlier, smell-marks have been granted to tennis balls smelling like freshly cut grass or fuel additive that smells like grape, cherry or strawberry.

The recent development in the field of intellectual property law has seen litigation for copyright protection of perfume. Netherlands Court has recently recognized copyright in perfume while French Court held that there is no skill involved in making a perfume. An uneducated statement for a $ 6 billion industry!

With respect to perfumes, is it the smell itself that is copyrighted? The smell however is intangible and according to statutes all over the world, copyright is always offered for a tangible expression. If copyright protection is sought for the composition, then we are claiming protection for naturally occurring substances, or what is essentially publici juris.

There are four points about smells that should be made. First, a smell can, in theory, be protected as a trademark. Second, as mentioned, a smell is very difficult to define in words so that people in the trade often use the proprietary names of fragrances to describe them. Third, the skin of the wearer can alter the smell of a particular perfume. Fourth, the wearers of perfumes can recognize their own favorites by the smell alone, without sight of the bottle or packaging.

In the earliest case of Bsiri-Barbir v. Haarmann & Reimer (Cour de Cassation, Paris, France [2006] E.C.D.R. 28) (where it was held that perfumes cannot be copyrighted), recourse was sought with the following provisions of the French copyright law:

Protected Work

Article L.112-1

The provisions of this Code shall protect the rights of authors in all works of the mind, whatever their kind, form of expression, merit or purpose.

Article L.112-2 of the French Copyright Act

(Act No. 94-361 of 10 May 1994 art. 2 Official Journal of 11 May 1994)

The following, in particular, shall be considered works of the mind within the meaning of this Code:

• books, pamphlets and other literary, artistic and scientific writings;
• cinematographic works and other works consisting of sequences of moving      images, with or without sound, together referred to as audiovisual works;
• works of drawing, painting, architecture, sculpture, engraving and lithography;
• graphical and typographical works;
• photographic works and works produced by techniques analogous to  photography.

The petitioner had developed some perfumes for the defendants. She approached the Court of Appeals, Versailles (Cour d’appel de Versailles) to seek copyright protection for her work of creation. The Court of Appeals dismissed her claims stating that such works did not come under the purview of copyright.  The appellant then appealed to the Supreme Court.

The Supreme Court held that a perfume does not constitute the creation of a form of expression that can be copyrighted under the heading “work of a mind”. It is mere technical know-how. This was an unprecedented decision. France is supposed to be a pioneer of perfumes and scents since time immemorial. One would have assumed that a nation with a history rich in production and use of perfume would be aware of the intellectual property in the form of copyright vested in a perfume.

In Lancôme v. Kecofa ([2005] E.C.D.R. 5), he brief facts are that Lancôme is a French company that manufactures a perfume sold under the trademark Trésor. Kecofa, a company from Netherlands, manufactures a very similar perfume under the name Female Treasure and sells it at one tenth the price. Lancôme lost the trademark infringement case.

Issues under consideration:

1. whether copyright subsists in a perfume;
2. ownership of the any such copyright;
3. which country’s national law should determine the issue of ownership; and
4. whether any such copyright had indeed been infringed.

Our concern is mainly whether perfume can be copyrighted and how does one go about proving infringement. All other issues are not crucial and relevant to the objective of this paper.

One must start by differentiating between fragrance and scent. A scent is something associated with a specific chemical combination of substances or a particular substance or in other words it is the effluvia from a substance that affect the sense of smell. A fragrance on the other hand is a sweet or delicate odour and capable of being detected using human olfactory senses.

The main difference between scent and perfume is that scent has a wider application because it is more neutral in connotation. The decision of the court was that scent can be copyrighted while perfume is not. The reason is that a mere fragrance is too volatile and dependant on ambient factors. It is also very subjective. A scent on the other hand, depends on a particular combination of substances and is therefore considered copyrightable. A scent is considered stable and substantial enough to be copyrightable.

This is the first time a physical chemical analysis was used. A list of all the olfactory substances used in the two products was made. It was found that 24 out of the 25 substances were identical. The 25^th substance used in Female Treasure was a substitute for the one used in Trésor. This is not a coincidence as three-quarters of the participants could not distinguish one scent from another.

Court held infringement on Trésor.

In a more recent case of L’Oreal SA v. Bellure NV ([2007] R.P.C. 14), this was a case primarily dealing with trademarks, imitation perfumes, trade-dress infringement. However a major issue addressed was the concept of “smell – alikes”. L’Oreal and its three brands- L’Oreal, Garnier and Lancôme, brought an infringement suit against a Belgian company for making imitation perfumes. These perfumes were sold for a very low price and this affected L’Oreal’s clientele.

A perfume that mimics the smell of a well-known perfume is a smell-alike. In theory copying a smell that is not protected under either trademark or copyright would be considered passing off, or if protected then it would constitute as infringement. However until the Lancôme case, smells or fragrances were not considered copyrightable. Therefore the question of infringement on copyright on perfume did not arise. In L’Oreal v. Bellure it was held that the look-alikes constituted trademark infringement. However smell-alikes did not have any protection. It was L’Oreal’s trademark protection that was recognized in the Bellure infringement case. In various instances the Court compared the packaging and the advertising technique that lured and deceived the customers. This case essentially means that perfume manufacturers cannot rely on their unique creations being protected but must depend upon the packaging and trademark to distinguish their products.

The quandary therefore is whether a smell should be construed as an idea or expression.

In a perfumer’s parlance, one talks about the top, middle and bottom (or dry down) notes. The top note of a fragrance is the first olfactory impression a fragrance has on a consumer. It is what the user will remember of the fragrance; and is often the only smell that they will experience. It lasts for between fifteen minutes and an hour. The middle note will last for between one and three hours. It is what other people will smell. The bottom note will last for between six and eight hours. A consumer will be particularly sensitive to changes in the top note. The differences in the longevity of the top, middle and bottom notes mean that any comparison between fragrances must include examination of the fragrance at intervals.

With such varying degrees of fragrances and the time for which they last, it would be a Herculean task to award copyright to fragrances. Added to this is the fact that perfumes derive their smell from things that already exist- thus defying the originality and creativity mandate. This was the Cours de Cassation’s rationale.

However the Dutch court’s rationale essentially discards the idea-expression dichotomy and grants protection to the originality factor in the creation. The downside of the Dutch Court’s judgment is that it awards copyright protection to a scent, not fragrance. The scent is essentially the composition of the fragrance. The Dutch court has awarded protection for the materials used in a particular combination stating that such a composition is stable and easily discernible. However a fragrance is too fleeting and ethereal to be protected. The ration behind the decision is not accurate as a fragrance is just as discernible as a scent.

The Dutch court’s decision is akin to saying a painting may not be copyrighted merely because it could possibly be viewed by a colour blind person, or as the lighting and angle of viewing changes the perception changes and therefore it is fleeting in nature.

The Cours de Cassation termed the concept of fragrance as a mere intangible idea and did not consider the creator’s (perfumer) work as original or worthy of granting protection.  The world is in need of stricter codification of laws. With the advent of technology, new concepts are seeing the light of day each day. All of these concepts taking a tangible form cannot be ignored or sidelined by invoking idea-expression dichotomy.

While it is true that each scenario, each infringement is unique and must be judged on a case-to-case basis, laws must be codified to avoid an infringer benefiting from the lack of laws. More importantly, once there is creative input, that creativity and originality must be protected.

In making a perfume, no doubt the smell is not a product of the creator’s mind. However, the fact that he identified the ability of a substance to emit a certain fragrance and the fact that the fragrance can be commercially exploited, the fact that the creator brought together a number of substances to give a particular smell must be recognized. The smell of lilies for example, or a smell resembling an older perfume cannot claim copyright. However what must be protected is the twist of originality given by the creator. Creation of a perfume is after all no lesser an art than say writing a book or painting a picture.

Today’s post is by Guest Barista Shalini Menezes of ::O.bi:t.er: D:ic.t:um.