In many countries this would not be an issue – the notion of “work made for hire” or its equivalent would quite naturally to the conclusion that the rights belong to the employer….

But not so in France. IP rights can only be assigned validly if they have been so in writing.

And that is not enough: must be detailed explicitly – each type of right (right of reproduction, representation, adaptation), the precise manner these rights
may be used, the geographical scope and the duration.

Anyone who has seen a French IP assignment clause knows … it can (and should) be pages long!

In this instance, the employee had never formally assigned his rights to Van Cleef & Arpels; nor did he have an employment contract. Luxury Maisons at the time were not particularly interested in formalizing “stuff”, contracts were seen as a “nice to have” … and things bumbled along quite nicely until… inevitably ….

In a classic house cleaning operation following the acquisition of Van Cleef & Arpels by Richemont, Mr. X (who has achieved fame in the luxury industry as a result of this case) was asked to sign a classic employment contract complete with the assignment of his rights on all creations thus far created and those he would be creating going forward.

He refused. Point blank.

Worse, he walked out taking with him his drawings to secure the proof of the work he had done (upon the advice of his lawyers!).

And this is how a 10-year legal battle ensued. But what argument could possibly be raised? Unquestionably, there was no written contract, no assignment of rights …. But there was perhaps something to be tried?

Under French law, there exists a very strange notion: that of the “collective work”. In no other country does it exist…. The article of the law provides that
“A collective work is initiated by a natural or legal person who provides for its circulation under its name and brings together the contributions of several authors to merge them into a single work”.

A collective work can therefore belong “ab initio” and directly to a legal entity without any rights having to be assigned by a natural person… So far so good (even if the notion boggles the mind abroad) ….

But the conditions are far from being easy to fulfill. The work must be:
1. Initiated by the legal person
2. Who provides for its circualtion and discloses it under its own name
3. The legal person must bring together and supervise the contributions of several authors
4. These contributions must be merged into a single work

The choice to act on this ground was audacious. With little to no judicial precedent, this funny ersatz of copyright law had initially been devised to facilitate the ownership of rights in encyclopedias … but rare were the applications of the collective work to be found … certainly none in the field of luxury or jewellery.

When I joined the IP Team, the case was in full swing and the work to bring the necessary evidence was colossal.

It was also a chance for me to discover the process behind a jewellery piece, visit the ateliers, speak to each person involved. Slowly, I was beginning to sense what made the world of luxury so special: more than what we see displayed in the boutiques what was going on backstage is a kind of magic – so many creative talents federated to serve a Maison as had many before them – something bigger than each of them taken individually… something enduring … something beautiful…where the anonymity of each contributor carries a certain nobleness akin to the “compagnons” who worked to build the greatest cathedrals.

And indeed, there was no doubt in our minds that the creation of a jewellery piece fit the criteria of a collective work. You need only to follow the life cycle of a jewel from conception to launch to understand how many actors contribute at every stage.

 It all begins with a brief from the marketing teams
 The brief itself will take root in the history of the Maison: the designer will be tasked with proposing sketches inspired by this or that motif from the Maisons’ past
 The designer will work on a few sketches
 The sketches will be reviewed by a collective committee, they will be commented on, revised, and approved
 The design is then passed on to the jewellery atelier who will translate the design into a technical drawing, making adjustments
 A prototype will be presented to the committee, which might still make more requests until finally the jewel is approved in its final expression.

In all, a good twenty people or more will be involved in the creation of one design signed Van Cleef & Arpels, its perfection often resulting from its apparent simplicity.

Only one issue: proof.

At the time, the creative process within many luxury Maisons of the place Vendôme was largely organic, minutes not taken systematically – at least not as detailed as one would have liked… (a state of affairs which has since been addressed with great seriousness and application)

Mr. X, of course, was arguing that his designs (all 600 of them!) had been entirely created by him and that all had resulted in the final commercialized jewel. He needed no evidence other than his drawings … and an elaboration on his inspirations to explain how they bore the imprint of his personality…. And so the conversation began:

 For each of the 600 designs at hand, Mr. X explained how he had been inspired from chance moments of his day.

My favourite: “I was walking to work one day when I saw a dead pigeon in the gutter: the red of its blood against the grey of the Parisian paved road immediately triggered the creation of a necklace combining rubies and diamonds”

 And for each of his “inspirations”, we rebutted, demonstrating trait by trait how the design found its roots in the archives of the Maison – from the shape of the leaf to the form of the flower and the combination of stones.

It was a painstaking and painful process … but the stakes were simply enormous. The whole industry was waiting to see how things would turn out … no doubt all of them had a Mr. or Ms. X somewhere in their ranks.

Finally, after ten years of legal battle, the Court of Cassation set the foundations of what has since become a rule in deciding IP ownership on jewellery – we all breathed a sigh of relief as we read (and reread just to make sure) :

“The Court having noted that Mr X… had, in his capacity as an employee, produced the drawings on which he claimed copyright, the Court of Appeal held that these drawings were merely preparatory documents for the design of the jewellery, which was a collective effort involving many people, that the companies had the power of initiative over the design and controlled the process right through to the finished product by providing the team with aesthetic guidelines and instructions to harmonise the various contributions, and that these were part of the whole for which they were designed, without it being possible to attribute to each participant a separate right in the models produced; without reversing the burden of proof, it deduced that each of the designs in question was merely Mr X.’s individual contribution to a collective work. X… to a collective work produced on the initiative and under the direction and name of Van Cleef & Arpels”

This decision is perhaps one of the most important decisions for the world of luxury in France and I think it’s fair to say that the decision itself was a collective work of legal creative authorship:

– The IP Director had the brilliance and courage to build a case on a more than uncertain ground and those that followed sustained the effort with unwavering conviction;
– The successive CEOs of Van Cleef & Arpels understood the importance of the case and had the sense to support its IP team to the end in spite of the disappointments along the way;
– Our external lawyer worked night and day to craft the arguments and identify the evidence we couldn’t do without; he pleaded with passion;
– The successive inhouse counsels and paralegals who scoured the press, delved into the archives and tirelessly retraced chronogolies and work processes necessary to evidence our case;
– The Van Cleef & Arpels marketing, design patrimony departments as well as the ateliers;
– And of course the judges who in their wisdom helped to preserve the continuity and future of French luxury Maisons….

Proof that sometimes, the law also can be a collective work of art.