Bidermann vs. Massimo Dutti case: Is the family name the riskiest contract clause for designers?

The story of Aurélie Bidermann, a renowned jewellery designer, is a textbook case in intellectual property law, particularly regarding the value and assignment of a designer's family name.

The case is pitting the designer against AMS Design, the company holding her brand assets following judicial reorganisation, and indirectly against retailer Massimo Dutti. It reveals a grey area for entrepreneurs in the creative sector and illustrates the power of trademark law versus the use of a name as a simple signature, raising questions about the limits of rights assignment.

Fatal assignment of a name

The dispute originated during a difficult period for Bidermann's company, leading to the opening of judicial reorganisation proceedings in July 2016. Following this, intangible assets of the eponymous brand, including intellectual property, were purchased by AMS Design.

The central and most problematic element of this case lies in a separate deed signed by the designer. Alongside the assignment of her company's trademarks, Bidermann also assigned patrimonial rights to her family name.

This clause raises a fundamental legal question: how far can one go in prohibiting the use of one's own name to practice one's trade and enjoy one's own reputation? The contract, exact terms of which are not public knowledge, contained a particularly broad clause committing her “not to exploit her name alone or associated within the framework of her professional activity”.

For Agathe Zajdela, an expert lawyer interviewed, accepting such a ban was likely the price paid for an important aspect. Presumably, it involved financial considerations. However, “the contract loses all value if she can monetise her name on one hand and take it back on the other”.

This resulted in the particularly complex situation where a recognised designer found herself forced into an assignment aimed at stripping the name of any commercial value for her, jeopardising the very essence of her future professional activity.

Massimo Dutti and the misused “signature”

This is evidenced by the dispute brought before the courts concerning a capsule collection created by Bidermann a few years later in collaboration with ready-to-wear retailer Massimo Dutti.

Within this collaboration, the designer's name was significantly highlighted. It appeared prominently on products, labels, packaging and communication under the mention “by Mademoiselle Aurélie Bidermann” — on the same level as the Massimo Dutti brand itself.

This ostentatious promotion constituted the object of AMS Design's attack. The company argued that the usage made by Massimo Dutti, via the collaboration with the designer, exceeded simple “signature” usage or author credit.

The court's analysis was extremely pragmatic, focusing on commercial facts: exploitation of the name was clearly done “as a trademark”, since it aimed to confer a distinctive sign and commercial origin upon the products. “They have truly made trademark use, rather than choosing to use it as a ‘credit’ or signature,” clarifies the expert.

This decision highlights the perilous grey area in which designers and brands operate. While an artist always retains the moral right to sign their work – which is inalienable – commercial use of an assigned name must remain subsidiary and never compete with the brand acquired by the buyer.

Consequences for designers: a paralysing precedent

For Bidermann, the consequences of this decision are considerable. Although the court does not formally forbid using her name, it establishes a precedent whereby the commercial use she made of it is litigious.

For Zajdela the finding is severe: “We end up with a decision where Aurélie Bidermann no longer really knows how she can use her name, which remains her name nonetheless.” This uncertainty highlights the danger of a clause which, while technically appearing sound, paralyses the very essence of professional activity.

“This will still have an impact on the rest of her career,” notes the expert. “What she knows to do is create jewellery. That is being a designer. So, how will she manage now, in the future, if she wants to continue creating jewellery? She no longer has the right to use her family name to sign her creations [within a commercial context].”

The decision strengthened AMS Design's position, leaving Bidermann in a grey area for the rest of her career.

Designers and entrepreneurs should be vigilant

The Bidermann case is a major warning for all designers, whether up and coming or established, particularly in cases of financial difficulties leading to the sale of their company.

How can pitfalls during negotiations with large conglomerates be avoided? Often, the designer yields under pressure from the opposing group and its army of lawyers and specialists who know how to press weak points and lead a negotiation. Faced with this, knowing one's rights and having the right approach to avoid sometimes irreparable pitfalls is paramount.

Never assign your family name

The strongest advice emerging from this analysis is to avoid assigning one's own name. “I would not recommend making a contract on the assignment of one's family name. Honestly, I find it excessive. I think one must limit oneself to trademark assignment,” warns the lawyer.

Assigning one's brand is one thing; prohibiting oneself from using one's name in any professional activity is a clause that may appear excessive and potentially contestable under French law. If unavoidable, negotiating very strict usage limitations for the buyer and explicitly reserving the right to use one's name as a signature is crucial.

Principle of proportional remuneration

French law also offers a fundamental safety net for designers: the principle of proportional remuneration.

Regarding copyright and creation, this principle is formal: the author must benefit from remuneration proportional to revenue derived from the exploitation of their work. This mechanism aims to protect the creator against derisory lump-sum assignments, particularly when the work experiences unexpected success. Although exceptions exist, the basic rule must be proportional remuneration (a percentage on public sales) to guarantee the validity of the assignment and fair payment for work.

Vigilance in co-branding and due diligence

Beyond remuneration and individual risks, the Bidermann case recalls the legal complexity of co-branding. In any collaboration agreement, legal liability is often shared. Ensuring ownership of the trademarks used is essential.

For brands wishing to collaborate with a designer whose name is an assigned asset, exercising due diligence is vital. One must ensure that the use made of the name is strictly limited to author credit and cannot be interpreted as an attempt to bypass the trademark held by a third party.

Necessity of specialised support

It is not known if the Bidermann case was adequately supervised by jurists and lawyers at the time of signing. However, it highlights the complexity of financial stakes such as judicial reorganisation that can force assignments deemed excessive.

The main lesson of this case is that, despite a tense financial context, negotiating the survival of one's professional identity is vital. Consulting a lawyer specialising in intellectual property to clearly delimit the boundaries of the ban is necessary, thus ensuring the longevity of creative activity beyond the initial brand.