In the case of judicial recovery or of liquidation, a total or partial disposal plan is often adopted to settle the company’s debts.
Intellectual property assets (trademarks, designs, patents, copyrights, etc.) are part of the company’s assets and can, of course, be included in a disposal plan.
In this respect, once the court has authorized the inclusion of these intangible assets in the disposal plan, it is necessary to determine the scope of the takeover offer, which will then be subject to the deeds of transfer.
The definition of this scope may be decisive, particularly if the assignee (buyer) of the intellectual property assets thereafter wishes to bring an infringement action using one of the acquired assets and is confronted by the defendant with the fact that he is not the real owner.
No filing is required to benefit from copyright protection. As a result, it may be more difficult to precisely establish the list of copyrights affected by the takeover offer, compared with other assets such as trademarks or patents.
In a recent ruling[1], the Paris Court of Appeal gave an interesting solution concerning the assignment of copyright in a takeover offer.
The takeover offer concerned trademarks and domain names. The transferee initiated an infringement action against a third party on the grounds of copyright.
The defendant responded by arguing that the copyright was not assigned to the assignee at the time of the takeover.
This case gave rise, at the request of the liquidator, to an interpretation order by the court, specifying that: “it was clear from the common intention of the parties and the takeover offer […] that the parties intended to transfer all intellectual, industrial and commercial property rights, including copyrights”.
It seems from this decision that the scope of the assignment may be broader, according to the judge’s interpretation, than just the elements included in the takeover offer, it being specified that this position is valid as long as the judicial liquidation has not been terminated.
In a similar case, the French Supreme Court[2] (Cour de cassation) issued a different solution. The reasons for this different approach may be due, on the one hand, to the different nature of the assets concerned and, on the other hand, to the stage of the proceedings (i.e. after the closure of the collective proceedings).
Indeed, a patent is an industrial property asset requiring filing with a patent office in order to be protected. It may therefore be simpler to list them exhaustively in a takeover offer.
In this case, in the context of the judicial liquidation of a company, a takeover offer was drawn up and accepted by the court. By order, the judge authorized the transfer of intangible assets. An assignment deed for these assets was signed.
After the closure of the proceedings, an amendment confirming the assignment of a patent (which was not one of the assets listed in the order) was signed between the ad hoc trustee and the buyer. The buyer then sued a third party for infringement on the basis of this patent.
The defendant responded by arguing that the assignee (buyer) of the asset is not the owner of the patent in dispute, since the patent was not specifically mentioned in either the takeover offer or the patent assignment deed.
In such a case, the judges noted that “… the patent in dispute did not fall within the scope of the assignment authorized by the court”. According to the judges, the confirmatory deed was issued in violation of the requirement of the French Commercial Code and therefore had no effect on the ownership of the patent.
The transferee (buyer) is therefore declared unable to bring an infringement action.
Consequently, if a patent is missing from the takeover offer sent to the liquidator and/or from the corresponding deed of assignment, the judges consider that the collective proceedings have had no effect on the ownership of the patent.
In view of the value that intellectual property assets can have for a company, and the risks that a lack of ownership of these assets entails, particular attention must be paid to identifying rights as early as possible, when bankruptcy proceedings are opened, whether in the form of judicial recovery or liquidation.
For this reason, it is essential to pay close attention to the content of documents during the procedure and up until its closure (takeover offer, order of the court-appointed official receiver, assignment deed, etc.) and to consult specialist advisors where necessary.
Regimbeau has a competent and experienced Contracts, IP Valuation & Data Department and is at your disposal to discuss this matter.
[1] Paris Court of Appeal ruling Pole 5, Chamber 8, March 14, 2023, n°22/05157
[2] Ruling of the commercial chamber of the Court of Cassation of June 14, 2017, n°16-10.827
