ELZABURU Blog - Industrial and Intellectual Property

Tag Archives: Spain

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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Passions Fly in Shopping Trolley Case

In a passionate dispute over shopping trolleys locks, Valencia Commercial Court No. 2 has found against a supplier who had been displaced at one of Spain’s largest retail chains (Judgment 134/19 of May 6th, 2019 in PO764/2017).

When this happens, emotions tend to run high and the row often ends up in court. The shunned supplier frequently alleges infringement of a utility model together with slavish imitation giving rise to unfair competition. A driving force for such litigiousness is the fact that utility models are not subject to any substantive examination in most European countries, for instance, in Spain and Germany. There is no bar to obtaining an exclusive right based on something which may be lacking in merit. This effectively shifts the State’s functions onto the shoulders of competitors, who are saddled with the burden of proving that the title is invalid. It might be fairer if that burden were shifted to the title-holder who, after all, has obtained an exclusive right based on nothing more than his or her own say-so.

The justification for this system is that it provides SME’s with a route to obtaining fast-track protection for inventions at a reasonable cost, thereby giving them access to the patent system and encouraging innovation. However, SME’s competitors are usually other SME’s who may be unjustifiably precluded from carrying out further developments simply because they cannot bear the cost of litigation. It is only fair to point out however that the system does have some checks and balances. The patent office can carry out a prior art search upon request and in fact this has now become mandatory in Spain before enforcement proceedings can be brought. Unlike the case of patents, a German infringement court can consider validity as a defence – an exception to bifurcation. Post-grant opposition is also available in both countries, which can be undertaken for a fraction of the cost of court proceedings.

In the Valencia case the Court found that the new shopping trolley locks did not infringe the utility model which was described by the Court as a simple alternative lacking in any inventive merit. Whether the lock was a slavish imitation or not was irrelevant from the point of view of unfair competition, as imitation per se is expressly permitted by the Spanish Unfair Competition Act. The Court had not been shown any evidence that the imitation had interfered with the normal workings of the marketplace such as causing a risk of association with the original coin-lock in the mind of the average buyer.

This decision applies settled case law which upholds the principle of free imitation. This comes as a surprise to many people who somehow imagine that their “intellectual property” is automatically protected. The whole point of the free market economy is that the public be offered a range of similar products. The granting of patents and other exclusive rights is in fact an exception to this general rule which is only justified because it encourages innovation.

Author: Colm Ahern
Visit our website: http://www.elzaburu.es/

New amendment to Regulation implementing the Trademark Act fires starting pistol for proof of use in Spain

Courtesy of Mohamed Hassan at Pixabay

The amended Regulation implementing  the Spanish Trademark Act (Act No. 17/2001) has been published has been published the 30th April and enters into force the 1st May 2019.

With the approval of this amendment, the starting pistol has been fired for applicants of trademarks, in the context of opposition proceedings, to be able to require the opponent to furnish proof of use of the registrations on which the opposition is based, provided that the registrations are subject to the use requirement. Thus, if the opponent fails to furnish proof of use of the mark invoked as the basis for opposition or show that there are proper reasons for non-use, the opposition will be dismissed with respect to that mark.

This is an important change to the Spanish trademark system, arising from the transposition of Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trademarks.

However, pursuant to the First Transitional Provision, this amendment will not affect trademark and tradename proceedings commenced before this amendment to the Regulation comes into force. Only applications filed as of 1 May will be subject to the new system of proof of use in opposition proceedings.

As already anticipated, the entry into force of the new system for administrative invalidity and revocation proceedings has been postponed until 14 January 2023.

Author: Luis Baz
Visit our website: http://www.elzaburu.es/en

Assessment of MWC Barcelona 2019

The Commercial Court of Barcelona and the European Union Trade Mark Courts of Alicante have published their report summarising the application of the duty service and fast-action protocol for the Mobile World Congress held last week in Barcelona (MWC 2019). The information provided in this report will be no surprise for those, such as ELZABURU, having experienced first-hand the procedural peripeteia at this Congress.

  1. The courts have handled and resolved 50 matters in total, representing a 42% increase when compared to those dealt with in 2018.
  1. 38 protective letters were submitted to avoid adopting preliminary injuctions inaudita altera parte, 36 of these in Barcelona with regard to patents and 2 in Alicante in relation to European Union trade marks and designs. They were all processed and resolved within 24 hours.
  1. In order to verify the presence of goods suspect of patent infringement during the trade fair, the court attended 5 petitions for verification of facts procedures, these being processed and granted within a period of 48 hours. 2 of these petitions were notified and carried out by means of seizing samples at the actual inauguration of the Congress.
  1. On the subject of preliminary injunctions inaudita altera parte, the court of Barcelona attended 5 petitions filed and granted within a period of 48 hours before the start of the Congress. The measures were performed while the Congress was underway, with onsite seizure of samples. Curiously, in one of the cases the interested party was able to file a brief of opposition within two days, with the court accepting the opposition and immediately lifting the measures.
  1. ELZABURU followed the MWC 2019 there and then, being involved in 6 legal proceedings, preparing the defence strategy for another 2 cases that took different courses, while attending the Congress onsite to face any incident that could have occurred.

In addition, the actions of the courts of Barcelona and Alicante were exemplary when assessed regarding the judicial response and the efficiency of the mechanisms established in the Protocol. All remaining is to think of MWC 2020!

Author: Enrique Armijo

Visit our website: http://www.elzaburu.es/en

 

The new Spanish Trade Secret Act is here! (II)

Trade secrets are considered an object of property, allowing for their transfer and licensing, under a similar regime to that of patents, which already provides for the transfer of know-how. Likewise, it establishes the regime for cases of co-ownership of trade secrets; that agreed between the parties would prevail in these cases, should this fail the corresponding provision of the Act would apply or, otherwise, the provisions regarding common property of the Civil Code. Once again, the legal regime is similar to that for patents.

Finally, this section of the Act would make the party transferring secrets it does not own liable for the damages caused to the acquiring party, provided that the former acted in bad faith.

With regard to the actions in defence of trade secrets, this right is placed on an equal foot with the rest of intellectual property rights, once again in line with the catalogue of actions allowed for patents, such as cessation, removal and compensation. The diminished liability of the bona fide third party, referred to above, becomes a reality here as the substitution of these actions for the payment of a monetary compensation is allowed in some cases. In addition, the Act provides for the exercise of precautionary measures and measures of enquiry to supplement the defence actions, following the procedures set out both in the Patent Act and the Civil Procedure Act.

One of the most significant developments included is the demand for confidentiality regarding trade secrets in legal proceedings, therefore avoiding placing this valuable information at risk by establishing preservation measures and penalties for their infringement.

The new Act is an opportunity for all companies, opening up the possibility to protect as trade secrets information that previously lacked clear protection. It is precisely for this reason that it becomes necessary to implement a trade secret protection plan to achieve the protection afforded by the Act. Otherwise, trade secret owners would not be in a position to bring all the actions this new Act makes available to them. Similarly, companies must be particularly diligent with the information they receive and use whenever this is considered secret since, as stated above, they could be liable for infringements, even when acting as third parties in good faith.

  The first part of this article is available here

Authors: Javier Fernández-Lasquetty , Cristina Espín and Martín Bello

Visit our website: http://www.elzaburu.es/en

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