France: patent infringers can be ‘named and shamed’…within reason.

The French Supreme Court last month affirmed that a patentee is free to publish a decision of patent infringement on their website. In doing so, the patentee neither tarnishes the name of the defendant nor breaches any other principle of tortious liability towards the defendant.

In this case, the company, Normalu, was sued by Newmat for patent infringement following Normalu’s distribution of ceiling fixings that incorporated Newmat’s invention. Newmat  initiated legal proceedings before the Paris Tribunal (Tribunal de Grande Instance), whose judgment was subsequently affirmed by the Court of Appeal on 5 October 2008. Both the Tribunal and the Appeal Court ruled that  infringement had occurred and accordingly, ordered (1) the payment of damages; (2) the removal of the infringing products from the market; and (3) the publication of a summary of the decision in three specialist newspapers or periodicals to be chosen by Newmat.

The third measure is consistent with Article L 615-7-1 of the French Intellectual Property Code which reads:

‘The Court may order any appropriate measure of publicity of the judgment, including the publication of the decision, in full or parts, in the printed press or via online communication platforms, which the Court may designate on their own terms.’

It is also worth noting that, according to the same Article, the infringing party must bear  the costs of publication.

Following this order, Newmat  chose to publish the Court’s conclusions (verbatim) on its own website for a period of three months, instead of having the case summary published  in three specialist newspapers. Normalu took issue with the publication of the Court’s judgment on the Newmat website and sued Newmat on the ground that Newmat had not acted in accordance with the terms of the court order. Normalu claimed that, in doing so, Newmat had tarnished its business name and reputation by replacing the sanction ordered by the Court with what it argued was a harsher depiction of the case, amounting to an unlaw  publicity measure. Normalu stressed that such behaviour went beyond what Article 615-7-1 allows and, as such, rendered Newmark  liable under Article 1382 of the Civil Code (Article 1240 since the 2016 reform of the Code). 

Cat fixing

The French Supreme Court rejected Normalu’s contention in a decision dated 18 October 2017. The Court stressed that Newmat’s use of a publication platform other than that specifically prescribed in the court order was not abusive. The Supreme Court reminded Normalu that  since the patentee was the party that had suffered injury due to the infringement, pursuant to the court judgment, it was free to publish any part of the judgment resulting from such legal proceedings as it sees fit, especially since all such decisions are in any event publicly available. This Kat reads the lesson of the day to be: if you are caught for infringement in France, be prepared to be named and shamed… and pay for the costs incurred!

Decision: Court Cass, Chr. Com. 18 October 2017, No 1261 F-P+B,  available here in French.