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Annual Review ELZABURU 2019

Annual Review ELZABURU 2019

Following a delay caused by the lockdown situation in Spain as a result of the global pandemic, but with the usual sense of pride, we present to our clients, friends and colleagues the ninth edition of ELZABURU’s Annual Review of European case-law in the field of industrial and intellectual property.

Annual Review ELZABURU 2019  

When the Annual Review was in print, our Firm was grieving the passing of its President, Alberto Elzaburu, who proudly presented the earlier editions. We wish to dedicate this edition to him, with the photograph displayed in this Annual Review.

Our regular readers will note that this edition reflects ELZABURU’s change of corporate image, which symbolises the Firm’s vocation for adapting to the new demands of a marketplace that is subject to constant technological and social change.

On this occasion, the Annual Review includes 31 articles on rulings by the Court of Justice of the European Union, the Spanish Supreme Court, the European Union Trade Mark Court in Alicante, and Spain’s Provincial Courts of Appeal. This is all made possible by the selfless and enthusiastic participation of a large number of the Firm’s professionals, to whom we would like to express our sincere gratitude.

We hope that those interested in legal developments in Europe in the field of industrial and intellectual property will enjoy this simple and impartial analysis.

 

Annual Review in PDF format

Annual Review in e-book format

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Is a folding bicycle an intellectual work protected by copyright?

Bicicleta Brompton plegada

After the Judgement by the CJEU of 11 June 2020 in the Brompton Case (C 833/18) the answer, as the song goes, is blowing in the wind. This is not surprising.

Let us recall the case. Brompton is an English company that markets a folding bicycle, sold in its current form since 1987, which had been protected as a patent due to its particular technical features: the bicycle can have three different positions (a folded position, an unfolded position and a stand-by position) enabling the bicycle to stay balanced on the ground.

 
Bicicleta Brompton abierta Bicicleta Brompton plegada
 

Once the patent rights expired, Brompton brought an action against the company Get2Get, on grounds of copyright infringement, for marketing a bicycle whose appearance is visually very similar to that of the Brompton bicycle and which may fold into the three positions mentioned in the preceding paragraph.

The question is, therefore, whether an object that is constrained by its technical characteristics, to the point that it was protected as a patent, can constitute an intellectual work. The CJEU returns the matter to the national court but highlights some important points.

For the Court it is true that the shape of the cited bicycle is necessary to achieve a particular technical effect, namely, the ability of that bicycle to fold into three positions, one of these enabling it to stay balanced on the ground. However, the national court must ascertain whether, notwithstanding this circumstance, the bicycle constitutes an original work resulting from an intellectual creation.

In this respect, the judgment warns that this is not the case where the realisation of a subject matter has been dictated by technical considerations, rules or other constraints which have left no room for creative freedom or room so limited that the idea and its expression become indissociable. Where the shape of the product is solely dictated by its technical function, that product cannot be covered by copyright protection.

In order to verify this, the national court must determine whether, through that choice of the shape of the product, its author has expressed his creative ability in an original manner by making free and creative choices and has designed the product in such a way that it reflects his personality.

At this point, the Court adds that the existence of other possible shapes which allow the same technical result to be achieved is not decisive in assessing the factors which influenced the choice made by the creator. Likewise, the intention of the alleged infringer is irrelevant in such an assessment.

As regards the existence of an earlier, now expired, patent in the case in the main proceedings and the effectiveness of the shape in achieving the same technical result, these factors should be taken into account only in so far as they make it possible to reveal what was taken into consideration in choosing the shape of the product concerned.

The Court reaches the conclusion that Articles 2 to 5 of Directive 2001/29 must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result, where that product is an original work resulting from an intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that the shape reflects his personality, this being for the national court to verify, bearing in mind all the relevant aspects of the dispute in the main proceedings.

In summary, it seems clear that the limits setting the boundaries between intellectual work and other industrial property rights (patents, designs, trademarks) remain unclear to a certain extent and that, in practice, national courts continue to have a wide scope of discretion in spite of, or thanks to, the criteria, so precise yet so ambiguous, laid down by the CJEU.

 

Author: Antonio Castán

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The complaint brought by Globomedia against Alex Pina, creator and scriptwriter of “Money Heist”, is dismissed

La casa de Papel

Globomedia, the company that has produced series such as “El Internado” or “Vis a Vis”, filed a complaint against Alex Pina and his company La Raspa Producciones S.L.U., on the grounds that he had breached the contract for the provision of services and assignment of intellectual property rights signed by both parties in creating “Money Heist” and not assigning the rights in this to Globomedia.

 

La casa de Papel

 

On 13 November 2019, Madrid Mercantile Court No. 3 acquitted Alex Pina, the creator of this series whose fourth season recently premiered on Netflix, while ordering Globomedia to pay the costs after issuing its decision in the ordinary proceedings following the complaint filed by Globomedia. In its complaint, Globomedia claimed that Alex Pina had breached the contract for the provision of services and assignment of intellectual property rights signed by both parties.

The professional relationship between both parties dates back to 1998. From this year, Mr. Pina provided services to Globomedia as a scriptwriter and, since 2007, several contracts were signed between the parties for the development and preparation of audiovisual projects, with Mr. Pina being responsible, as executive producer, for the coordination and production work with regard to these projects since 2014.

Globomedia sought compensation for damages amounting to 871,641.76 euros as it deemed that the contract concluded in 2016, for the “provision of services in relation to the creation, design, writing, content management, development and execution production of audiovisual projects in the field of television, films or other fields, and for the assignment of intellectual property rights in the works and creations resulting from the provision of such services”, had been breached by the scriptwriter since, according to the plaintiff, this contract established a “priority or preference regime” había sido incumplido por parte del guionista, pues según el accionante, en el mismo se establecía un “régimen de prioridad o preferencia” in favour of Globomedia over all Mr. Pina’s creations, yet Mr. Pina created the script of “Money Heist” without the plaintiff’s knowledge during the life of the contract.

It should be highlighted that, unlike other previous contracts, this contract signed on 21 April 2016 did not include Mr. Pina’s undertaking to personally perform the coordination and production tasks, but allowed La Raspa Producciones, S.L.U. to outsource the provision of the services to any person as it deemed necessary. As stated in the decision, the actual contract “likewise allows the service provider to provide its services simultaneously to other clients precisely in the field of television”.

For their part, the defendants denied having created the script for “La Casa de Papel” behind Globomedia’s back, arguing that the contract was concluded between GLOBOMEDIA and LA RASPA PRODUCCIONES, S.L.U. and, thus, alluding to the scriptwriter’s lack of standing to be sued. Furthermore, they claimed there was no exclusivity agreement in favour of the plaintiff.

Therefore, the judge dismissed Globomedia’s claims, concluding from the literal and systematic interpretation of the contract that Mr. Pina “[…] had no obligation to submit to Globomedia the possibility for this to take any project he may devise or create within the field of television for the duration of the contract concluded on 21 April 2016, thus being entitled to submit these to third party clients, independently from whether they were created by the scriptwriter or by third parties […]”.

 

Author: Inés de Casas

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Why is it important whether a work is in the public domain?

A new calendar year normally brings with it reports in the press on the authors and creators whose rights will pass into the public domain in the year in question. This year, for example, it will be the turn of Antonio Machado. But what does it mean, exactly, when a work passes into the public domain?


Qué significa exactamente que una obra pase a ser de dominio público

Intellectual property rights are unique and while, as proprietary rights, they give absolute control over the protected creation (as would be the case with proprietary rights in real estate, for example), they are limited in terms of duration. Once the corresponding time period has lapsed, the right ceases to have full effect and the formerly protected creation may be used by anyone without the need to request a license.

Thus, the relevant legislation seeks, through this mechanism, to strike a balance between the creator being able to take advantage of the benefits of his work and permitting indefinite access to the work by society as a whole from a specific moment in time, as an expression of its own culture.

Pursuant to the Spanish legislation currently in force, exploitation rights in a work subsist for 70 years after the author’s death and that period is calculated from 1 January of the year following the author’s actual death or declared death.

If there are several authors, said period is calculated from the actual death or declared death of the last surviving co-author.

However, there have been earlier laws in Spain in this area which established other, longer protection periods. Thus, lawmakers established a longer term of protection for authors deceased prior to 7 December 1987. In that case, the term of protection is 80 years rather than 70.

It is also important to consider that the right to intellectual property is a national right and, therefore, each country has the freedom to establish its own criteria in this area.

Thus, there are countries, such as Mexico, which have a longer term of protection than that applicable in Spain, and other countries, such as Canada, which have a shorter term of protection. Moreover, as is the case in Spain, the term of protection can change over time.

There are even special cases, such as the rights in the play “Peter Pan” by James Barrie in the United Kingdom, which were extended in perpetuity by the Queen, after the author bequeathed them to a children’s hospital following his death.

In short, as we can see, the passing of creations into the public domain can give rise to a range of interesting situations with regard to personal enjoyment of creations and even regarding commercial use. Nevertheless, it is very important not to lose sight of the territorial nature of intellectual property rights and the implications thereof, which can lead to a work being in the public domain in one territory but not in another, in the latter case calling for the appropriate license to be sought.

Author: Mabel Klimt

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ELZABURU, leader in the protection of intangible assets, has renewed its corporate image

ELZABURU

Elzaburu, a firm specialising in managing intangible assets, has renewed its corporate image. The new image has been designed by the Manuel Estrada design studio and symbolises the firm’s vocation for adapting to the new demands of a marketplace that is subject to constant technological and social change. Elzaburu’s new branding includes a modern typeface together with a symbol projecting upwards, representing the firm’s commitment to supporting the innovations and progress of its clients.




Elzaburu, founded 155 years ago, was Spain’s first specialised IP firm. Throughout the firm’s history, it has witnessed such milestones as the patents for the inventions of Thomas Edison, Alexander Graham Bell or Juan de la Cierva, inventor of the ‘autogyro’, as well as the registration and protection of some of the most important trademarks of multinationals from all over the world.

The firm protects and defends the IP interests of 30% of the companies in the IBEX 35, Spain’s stock market index, together with 36% of the top Fortune 500 companies. Recently, a group of Elzaburu lawyers were selected to provide advice on IP-related matters to the Chinese government, a country where the firm has an office.

Over the years, Elzaburu has evolved from its initial activities centring on the registration of patents and trademarks, becoming a firm specialised in protecting and maximising the value of all kinds of creations and intangible assets in all economic sectors, particularly in the fields of new technologies, e-commerce, entertainment, cybersecurity, data protection, domain names and trade secrets, among others.

Today the firm has a staff of 165 people, with lawyers and experts in a wide range of areas, who handle the legal defence of more than 70,000 ongoing cases for more than 3,000 clients throughout the world.



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