The family name as the riskiest contractual clause for designers?

The story of renowned jewelry designer Aurélie Bidermann is a textbook example of intellectual property law. It is particularly about the value and transfer of the family name of creative people.

The case pits the designer against AMS Design. This company holds the assets of their brand after a restructuring process. The Spanish fashion brand Massimo Dutti is also indirectly affected. The case reveals a gray area for entrepreneurs in the creative sector and illustrates the power of trademark law over the use of the name as a mere signature. This raises the question of the limits of an assignment of rights.

Fatal surrender of one’s own name

The origin of the legal dispute lies in a difficult phase for Aurélie Bidermann’s company. This led to the opening of judicial restructuring proceedings in July 2016. After the restructuring process, the intangible assets of the brand of the same name were purchased by the company AMS Design. This included intellectual property.

The central and most problematic element of this case lies in a separate deed signed by the designer. As part of the assignment of her company’s brands, Aurélie Bidermann also assigned the property rights to her own name.

This clause raises some fundamental legal questions: How far can the ban on using one’s own name to practice one’s profession go? And to what extent can the use of one’s own fame be restricted? The contract contained a particularly far-reaching clause, the exact terms of which were not published. She obliged Bidermann “not to use her name alone or in connection with her professional activity”.

For the interviewed expert and lawyer Agathe Zajdela, the acceptance of such a ban was probably in return for an important aspect. It was probably about financial matters. But: “The contract loses its entire value if, on the one hand, she can monetize her name and, on the other hand, take it back again.”

This results in a particularly complex situation. A recognized designer was forced to make a transfer. The goal was to empty the name of any commercial value for them. This jeopardized the core of her future professional activity.

Massimo Dutti and the abusive “signature”

This is demonstrated by the dispute brought to court over a capsule collection that was realized a few years later by Aurélie Bidermann. It is a collaboration with the Massimo Dutti brand, which belongs to the Spanish fashion group Inditex.

As part of this collaboration, the designer’s name was significantly highlighted and appeared clearly on the products, labels, packaging and in communication. It ran under the name “by Mademoiselle Aurélie Bidermann” and on the same level as the Massimo Dutti brand itself.

This ostentatious emphasis was the subject of AMS Design’s attack. The company argued against the use by Massimo Dutti as part of the collaboration with the designer. This goes beyond the use as a mere “signature” or naming of the author.

The court’s analysis was extremely pragmatic and focused on the commercial facts: the exploitation of the name was clearly “branded” and aimed at giving the products a distinctive feature and a commercial origin. “They really used it as a brand instead of choosing to use it as a ‘credit’ or signature,” the expert explains.

This decision highlights the dangerous gray area in which designers and brands operate. Artists always retain the inalienable personal right as authors to sign a work. However, the commercial use of an assigned name must remain subsidiary and must never compete with the brand acquired by the transferee.

Consequences for designers: A crippling precedent

For Aurélie Bidermann, the consequences of this decision are considerable. The court does not formally prohibit her from using her name. However, it sets a precedent. Accordingly, the commercial use it made is controversial.

For lawyer Zajdela, the statement is harsh: “We are in a situation with a decision in which Aurélie Bidermann no longer knows exactly how she can use her name. It still remains her name.” This uncertainty highlights the danger of a clause. It may seem technical, but it paralyzes the core of the professional activity.

“This will still have an impact on the further course of her career,” states the expert. “What she can do is design jewelry. It’s her job to be a designer. So what should she do now in the future if she wants to continue designing jewelry? She no longer has the right to use her name to promote her creations [im Rahmen einer kommerziellen Nutzung] to sign.”

The decision has strengthened AMS Design’s position and leaves Bidermann in a gray area for the rest of her career.

Designers and entrepreneurs should pay attention to this

The Bidermann case is an important warning for all creative people. This applies to young as well as established talent. This is particularly relevant in the event of financial difficulties that lead to the transfer of your company.

How can you avoid the pitfalls when negotiating with large industrial groups? Designers often give in under pressure from the other side. It has an armada of lawyers and specialists who know how to exploit weak points and conduct negotiations. Given this, it is essential to know your rights. You need the right approach to avoid sometimes irreparable mistakes.

Don’t give up your family name

The most important advice from this analysis is to avoid assigning the family name. “I would not recommend concluding a contract for the assignment of the family name. To be honest, I think it is excessive. I think you should limit yourself to the assignment of the brand,” warns Zajdela.

Giving away your own brand is one thing, but prohibiting yourself from using your own name in any professional activity is another. Such a clause may appear excessive and is potentially challengeable under French law. If it is unavoidable, it is crucial to negotiate very strict usage restrictions for those purchasing it. You should also explicitly reserve the right to use the name as a signature.

The principle of fair remuneration

French law also offers creatives a fundamental safety net: the principle of fair remuneration.

This principle is formal in copyright and creation law. The author must receive compensation that is proportional to the income from the exploitation of the work. This mechanism is intended to protect creative people from disproportionately low flat-rate assignments. This is especially true if the work achieves unexpected success. While there are exceptions, the basic rule must be proportional compensation (a percentage of public sales). This is the only way to guarantee the validity of the assignment and fair remuneration for the work.

Vigilance in co-branding and due diligence

Beyond compensation and individual risks, the Bidermann case reminds us of the legal complexity of co-branding. In any cooperation agreement, legal liability is often shared. It is essential to ensure the ownership of the brands used.

Brands often want to work with designers whose name is a ceded asset. For them, due diligence is very important. You must ensure that use of the name is strictly limited to the copyright attribution. It must not be interpreted as an attempt to circumvent the trademark held by third parties.

The need for specialized support

In the Bidermann case, it is unclear whether he was well looked after by lawyers at the time of signing. The case highlights the complexity of financial matters such as restructuring procedures. These can force assignments that are considered excessive.

The most important lesson from this case is clear: despite a tense financial context, it is essential to negotiate the survival of one’s professional identity. You should consult an attorney who specializes in intellectual property. This allows the boundaries of the ban to be clearly defined and ensures the continued existence of creative activity beyond the original brand.