ELZABURU Blog - Industrial and Intellectual Property

Tag Archives: Intellectual property

Has Banksy really lost his copyright?

¿De verdad ha perdido Banksy sus derechos de autor?

Traditionally, press articles seek to attract the attention of readers with sensationalist headlines which do not always reflect the reality of the news story in question. Recently, many media outlets have reported on the supposed “unsuccessful legal battle” of the famous street artist Banksy in trying to “preserve his copyright” in the iconic “Flower Thrower” graffiti.

It has been reported that a “court” issued a “judgment” in which the artist’s copyright was “rejected” by “judges” in “a lawsuit” against a company that sells postcards, all because Banksy has chosen to remain anonymous. Perhaps it is worth trying to put things into their proper context.

Flower Thrower by Banksy

The “judgment” is in fact a decision dated 14 September 2020 by the EUIPO’s Cancellation Division, that is, by the European Union trademark and design registration authority; the “lawsuit” is in reality an “administrative” action for invalidity of a trademark lodged against a registration for a figurative trademark, covering different goods in the International Classification, that reproduces the image from Banksy’s work.

The trademark is owned by the company Pest Control Office Limited, whose connection with Banksy was accepted by the EUIPO without entering into too much detail, and the applicant for the declaration of invalidity is the company Full Colour Black Limited, which was seeking the cancellation of the registration in order to be able to sell postcards with the image of the famous graffiti.

The invalidity action is based on the bar to registration laid down in the European Union Trade Mark Regulation, with respect to signs applied for “in bad faith”. In the case of the trademark contested in the action, bad faith is justified in that the owner of the trademark, the company Pest Control Office Limited, never intended to use the trademark to sell goods in the marketplace. Rather, it was filed in order to prevent others from being able to do so. Such intentions are contrary to the essential function of a trademark.

It is true that this conclusion was reached in the EUIPO’s decision following an analysis of the choice of the artist Banksy to remain anonymous and of the practice of the owner of the registration to allow the “Flower Thrower” work to be reproduced, provided that it is not for commercial purposes. However, the considerations on copyright in this decision are simply “obiter dictum” remarks of an administrative body that has cancelled a registration because the owner had no intention of using the mark when it was filed.

More importantly, the fact that the company Pest Control Office Limited has lost the exclusive right to use the Banksy work as a trademark for specific goods, as a consequence of the cancellation of the registration, does not mean that Banksy has lost his copyright in this work or the right to take legal action for infringement against any party seeking to make commercial use of the same.

In light of this “administrative” precedent from the EUIPO, it is important to keep in mind that in Spain we have a “judicial“ precedent that is much more in line with the orthodox continental approach to copyright, in a case involving another internationally renowned street artist.

Radiant Heart by Keith Haring

I refer to the Madrid Provincial Appellate Court’s judgement [in Spanish] of 2 November 2018, which recognised the intellectual property rights of Keith Haring in his iconic “Radiant Heart” work, convicting of infringement a company that had launched a wide range of merchandising items under a very similar logo to which it had added the word “Madrid”.

When art has the power to move us, it does not matter where it is on display, whether on a wall in Jerusalem, in a gallery or online. The attitude of the artist does not matter either, whether they are keen to flaunt their work or prefer to remain anonymous. It does not deserve to be fodder for lucrative merchandising, against the wishes of the artist. At the present time in Europe, it is reasonable to consider that such practices are open to challenge.


Author: Antonio Castán

Published previously in Expansión [in Spanish]

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What if we stop remunerating performers from outside the EU?

Y si dejamos de remunerar a los artistas de fuera de la UE

On 8 September 2020, the Court of Justice of the European Union (CJEU) handed down a judgment in case C-265/19, involving the Irish collective management organisations RAAP and PPI, the former representing artists and the latter representing producers.

The two entities had reached an agreement for PPI to be responsible for collecting and then sharing out the amounts obtained from the communication of the phonograms to the public through wireless broadcasting, remuneration established in Article 8(2) of Directive 2006/115/EC on rental and right and lending right (hereinafter the “Directive”).

What if we stop remunerating performers from outside the EU?  

The conflict arose as a consequence of PPI’s refusal to pay the corresponding part of this remuneration to RAAP, asserting that the Irish copyright act (CRRA) excludes performers who are neither nationals nor residents of Member States of the European Economic Area (EEA) and whose performances “do not come from a sound recording carried out in the EEA”. According to PPI, the remuneration of performers of certain States would infringe the principle of reciprocity laid down in the CRRA, in particular, the remuneration of United States performers, as this country only grants Irish performers the right to equitable remuneration to a very limited extent.

Obviously, RAAP opposed this interpretation stating that the performer’s nationality and residence are irrelevant in relation to sharing these amounts, as nothing is specified in this regard in Article 8(2) of the Directive.

In this context, the CJEU considered four questions.

The CJEU combined and rephrased the first two questions asking whether, in light of the Rome Convention or the World Intellectual Property Organisation Performances and Phonograms Treaty (WPPT), Article 8(2) of the Directive precludes a Member State from excluding performers who are neither nationals nor residents of Member States from the aforementioned remuneration.

First, the court refers to the fact that Article 8(2) of the Directive establishes no limitation whatsoever in that sense and adds that, from recitals 5 to 7 of this same text, it follows that these concepts must be interpreted “in such a way as not to conflict with the international conventions”. This forces the concept to be interpreted in accordance with the WPPT, with Member States having to pay performers and producers who are nationals of any contracting party. Consequently, the CJEU rules that the right to a single equitable remuneration cannot be limited by the national legislature solely to nationals of the EEA Member States, thus harming nationals of third States.

The court then goes on to consider the third question, namely, whether the reservations entered by third States affecting the rights of nationals of Member States will allow for the exclusion of nationals of third States from the rights recognised in Article 8(2) of the Directive.

The CJEU acknowledges that these reservations may affect the position of performers and producers of Member States vis-à-vis those of third States, considering the application of the principle of reciprocity laid down in international treaties, as “the need to safeguard fair conditions of involvement in the recorded music business constitutes an objective in the public interest capable of justifying a limitation of the right related to copyright”.

Nevertheless, although it deems them to be reasonable, the CJEU points out that these limitations can be established by the EU but not by Member States, pursuant to Article 52.1 of the Charter of Fundamental Rights of the European Union.

Thus, a Member State cannot limit the right to equitable remuneration even if there are reservations of third States in this sense. Only EU lawmakers are able to make such a decision.

The fourth question considers whether Article 8(2) of the Directive precludes equitable remuneration being limited only to the producer and not being shared with the performer. The court responds to this question by briefly indicating that it does preclude such a limitation.

In my opinion, this judgment does in fact provide certain relevant conclusions. Firstly, the existence of regulations such as the articles of the Irish CRRA in dispute here, reveal a lack of harmonisation in European intellectual property legislation, as only in an environment with such insufficient harmonisation can there be regulations that are so contrary to the provisions of a Directive.

Secondly, it shows some of the causes of inequalities in the recorded music market. While the CJEU’s interpretation seems conclusive, it is difficult to imagine EU lawmakers undertaking legislative reforms that impose limitations, like those discussed here, on the remuneration of nationals of third States. If it continues this way, the EU will remain in an unbalanced position with respect to countries such as the United States in this area. Whilst it is true that this type of restriction may be questionable in a global market such as the music market, applying the principle of reciprocity could provide a provisional solution for these inequalities.


Author: Martín Bello

Previously published in Economist & Jurist [in Spanish]

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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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