Nemo swims away from injunction threat

In Le Calvez v The Walt Disney Company, the Paris Court of First Instance has refused to grant the owner of a trademark that includes the design of a clown fish a temporary injunction banning the sale in France of products featuring Nemo, the clown fish main character of Disney's animation film Finding Nemo (Case RG 04/52695).

Franck Le Calvez is the author of a children's book whose main character is a clown fish called Pierrot. He registered the design of Pierrot as part of his PIERROT LE POISSON CLOWN mark. Le Calvez filed a complaint with the Paris Court of First Instance, claiming that Disney's 'Nemo' design infringed his PIERROT mark. Le Calvez requested a temporary injunction to (i) restrain Disney from using the Nemo design on books or any other derivative products, and (ii) remove these products from the market.

The court rejected Le Calvez's request for a temporary injunction. Basing its reasoning on trademark and competition law, the court held that the design and mark were only tenuously similar, both conceptually and visually: the face of the fish in the Nemo design was more human-like than that of the fish in the PIERROT mark. Their bodies were also different. In addition, the court found that the relevant public - children - is "wise and attentive" and will not confuse them.

Further, the court held that, even if it had found the design and mark similar, Disney may successfully argue at trial that it has a valid claim to use its Nemo design on the basis of its registered copyright, which it had registered with the US Copyright Office before Le Calvez registered his PIERROT mark in France. The court did not, at this stage, make a decision on the validity of Le Calvez's mark. In particular, it left open the question of whether Disney's prior copyright registration in the United States could invalidate the PIERROT mark pursuant to the Berne Convention for the Protection of Literary and Artistic Works, which affords the same protection to foreign copyrights as to national copyrights.

This decision is not final and should be read taking into account the limits of the power of the court in summary proceedings. An appeal of this decision will be heard in June. Unless settled, the case will be heard on the merits at first instance at a date yet to be determined. The conflicting issues between copyright and trademark, and economics and law raised by this case may start a new trend in French court cases. Thus, it should be discussed seriously on the merits.

Richard Milchior, Milchior-Smilevitch, Paris