Filling Pieces / De Schoenenfabriek: concerning the transfer of IP rights

Shoe designer Guillaume Philibert has designed and sold shoes (called Low Tops) for quite some time. See for example the Low Top Python on the left. At first he started his business as an independent trader and from 2014 in the form of a Limited Liability Company (Filling Pieces BV). In 2015, a competing shoe store, De Schoenenfabriek, launched de Sneaker Snake, pictured to the right. Both models look remarkably similar to one another. A clear infringement of copyright and model rights, one would think. Nevertheless, Filling Pieces BV was almost unable to enforce its IP rights against De Schoenenfabriek; it was not clear whether the copyright and model rights to the Low Top Python have been legally transferred to the enforcing entity: De Schoenenfabriek BV. In the deed of incorporation the following article was included . “The independent trader transfers all other goods belonging to its property to Filling Pieces BV, the transfer of which is accepted by Filling Pieces BV”. Such a general provision usually is not sufficient to actually transfer IP rights; any doubt regarding which rights have been transferred to whom are unacceptable. That was also the case in this matter. Therefore, Filling Pieces BV could not rely on its copyright and model rights in this matter against De Schoenenfabriek . During the court hearing, Filling Pieces BV argued that Philibert had provided Filling Pieces BV an oral licence. As regards the copyrights, this is not relevant; such an operational licence must be in writing under the Copyright Contract Law Act. Yet this does not apply to licences regarding design rights, which can be agreed upon orally. This ultimately saved Filling Pieces in this procedure. With the oral agreement, the licensee can also enforce the design rights itself. The only requirement is that the design right holder agrees to this – and this was obviously the case. So the court held that the Low Top Python had its own character, resulting in protection of the unregistered design. The Sneaker Snake does not generate any other general impression and is therefore prohibited. Learning moment: always ensure that the transfer of intellectual property rights has been done properly in order to rely on such rights in enforcement matters!

Daan van Eek