Copyright in the Courts: Perfume as Artistic Expression?

By Professor Kamiel Koelman

In a landmark case in June, the Dutch High Court ruled that the smell of a perfume may, in principle, be copyrightable.  The following account of the case and its possible implications was written for WIPO Magazine by Kamiel Koelman, associate professor at the Vrije Universiteit in Amsterdam, Holland. Professor Koelman, an expert in the intersection between technology and IP law, sits on the board of editors of the main Dutch law journals on copyright and computer law.

Disputed treasures

The French cosmetics company, Lancôme, sells an exclusive perfume under the name Trésor (Treasure). Kecofa, a small Dutch firm, sells its Female Treasure perfume at a tenth of the price.  Lancôme had previously tried to stop Kecofa by invoking its trademark right to the word Trésor, but failed, because the courts found that consumers were unlikely to confuse the  brands. In 2000, after the Dutch Trademark act was updated, Lancôme tried again, but this time also claimed infringement of its copyright in the perfume. The trademark claim failed once more, but – probably to Lancôme’s surprise – the copyright claim succeeded and was further sanctioned by the Dutch High Court.¹

Coincidentally, just three days before, the French Supreme Court had ruled that a perfume – Dior’s Dune – was not copyrightable. The French court likened parfumeurs to mere craftsmen, like carpenters or plumbers, rather than artists, and as such found their works not eligible for copyright protection.²

License to smell

The Dutch Copyright Act does not contain an exhaustive list of subject matter that can be protected. Basically, anything can qualify for protection as long as it is perceptible and original. The High Court ruled that the smell of a perfume may fulfil these requirements, even if only perceptible through the nose. The Court distinguished the scent of a perfume from its recipe or the liquid containing it, comparing the latter to the paper of a book, which is not subject matter of copyright, whereas the content of the book is. This distinction implies that a perfume that contains completely different ingredients but smells the same may be infringing, while a perfume with a similar formula but a different scent would not be.

The High Court acknowledged that the protection of smells could have some awkward consequences. For one thing, copyright permits the rights-holder to prevent the unauthorized "making available to the public of his work. This could mean that anyone wearing a perfume in public – for instance, in a theatre or to work – would need a license in order to avoid performing an infringing act. But the High Court added that, even if this were true, a user could not be denied the ordinary usage of a perfume. The Advocate General, who advises the High Court, suggested that some exceptions should be added to the Dutch Copyright Act to address such problems if the Court were to consider scents copyrightable.

The fact that smells hardly fit in the copyright system, and that the legislature clearly did not think of odors when it drew up copyright law, was not sufficient for the High Court to refuse to confer protection. The Court simply focussed on the open-ended requirements for protection: like any other perceptible expression, if a smell is original it could in principle be copyrightable. The originality requirement means that a perfume that exactly replicates, say, the smell of roses, cannot be protected – just as an accurate 3D scale model of the Matterhorn mountain would be denied protection. Similarly, a scent that resembles some classic perfume may not fulfil the requirement. But if a parfumeur gives his own twist to a smell, it may qualify for protection.

Impact

One worrying aspect of the protection of perfumes is the risk that it could lead to undue monopolies. Most humans do not have a highly developed sense of smell and can only distinguish a limited palette of scents. Thus, different perfumes may readily be held to be alike, and infringements quickly found. As such, the protection of perfumes could undermine competition to an undesirable extent, allowing only a few perfumes to exist lawfully side-by-side.

That said, just as similarity could easily be found between a claimant’s and an allegedly infringing smell, so too could similarity between a claimant’s and pre-existing scents. This in fact could render the protection of smells meaningless in practice, as most manufactured scents would be deemed not original anyway. In this context, it should be noted that the High Court did not hold that Trésor is copyrightable – the Dutch High Court does not decide as to the facts of a case – rather, it stated that smells could, in principle and in general, be considered protected subject matter.

Proving originality

Kecofa sought to challenge the originality of Trésor, as merely built upon a long tradition of perfumes, and thus similar to some pre-existing perfumes. In response, the High Court specified that the originality requirement does not mean that a product has to be absolutely new, but, instead, that the maker must have put some of his own creativity into it. As Lancôme had provided voluminous reports of the development track of Trésor, it was up to Kecofa to demonstrate that Lancôme had actually copied an existing product, and that its perfume therefore lacked originality.

The defendant has an additional procedural disadvantage. Dutch copyright law protects only against direct imitation. But if there is a high degree of similarity, the alleged infringer is assumed to have copied the original, and has the burden of proving that he created his product independently. Thus, if the defendant’s product resembles the plaintiff’s the presumption of imitation kicks in; whereas it does not if there is similarity between the plaintiff’s and pre-existing products. This factor could tip the balance towards the emergence of broad monopolies.

A word of advice

Lastly, some free advice: document the development of your perfume extensively, just in case it happens to smell like a fragrance that is already on the market. The documentation may help prove that the similarity is coincidental. And if you stand on the other side and sue someone else for infringement, it ensures that he has the burden of trying to prove that you copied a pre-existing scent. The same applies if you produce wines or run a restaurant. Be prepared for a competitor claiming that you infringed his rights to the bouquet of his Grand Cru, or to the exquisite smells of his culinary creations. Of course, for now this is necessary only in Holland.