SPANISH LOGIC: IF THERE IS A LAW SPECIFICALLY DEALING WITH DESIGNS IT FOLLOWS THAT NOT ALL DESIGNS ARE “ORIGINAL ARTISTIC CREATIONS” PROTECTED BY IP LAW PROTECTING CREATIVITY: THE LAW OF ART, FASHION AND DESIGN 58 th UIA CONGRESS – FLORENCE Friday, October 31, 2014 MARITA DARGALLO NIETO SOL MUNTAÑOLA ABOGADOS BARCELONA, SPAIN (c) Marita Dargallo Nieto

DESIGN PROTECTION IN SPAIN (c) Marita Dargallo Nieto As from 2003 in Spain designs are granted specific protection under Law 20/2003 incorporating into domestic law EC Directive 98/71/CE. Unregistered designs are protected under EC Regulation 2/2002 Some designs (protected under Spanish law or EC Regulation) are also protected under IP Law. Disposición Adicional 10ª Law 20/2003, Art. 10, 1 e) IP Law, Art of Community Design Regulation 2/2002 Therefore Spain has not opted for a system of total separation between the protection afforded by author rights and that afforded by industrial design rights (Italy, US), or a system with total unity (France) where the two types of protection accumulate. Spain has opted for a system where the accumulation of both types of protection is relative, i.e. restricted (Germany, Portugal, Denmark, Baltic countries), and as a result there is a subjective element in the determination of whether the accumulated protection operates or not.

WHEN WILL PROTECTION ACCUMULATE? DESIGN PROTECTION Novelty Singularity IP PROTECTION Originality Deserving the consideration of artistic (c) Marita Dargallo Nieto The shape of a product will also be protected by IP law when it has high level of creativity and artistic level.

(c) Marita Dargallo Nieto The notion that IP law and design protection do not accumulate automatically is further reinforced by Spanish IP law itself: Distinction between photographic works of art and mere photographies (Art. 128 TRLPI) Editorial works and mere original editions (Art. 129 TRLPI) Databases, while being protected under IP law –”sui generis” right- are not works of creation, but rather the result of sweat of the brow. Therefore it is equally arguable that not everything is a work of art.

(c) Marita Dargallo Nieto Barcelona Court of Appeals decision of 21st November 2003: not an artistic work

WHY SEEK IP PROTECTION FOR DESIGNS? (c) Marita Dargallo Nieto Relative facility to access such protection (e.g. no need to register, longer life for the rights, moral rights, etc.). The design has not been registered and the protection afforded to unregistered designs has expired. Imitation is not slavish, particularly in the fashion world (alternative defence would be unfair competition), with mixed results and overall to the detriment of the argument. ECCE HOMO DE BORJA

SPANISH CASE-LAW ON THE REQUIREMENT OF ORIGINALITY FROM DESIGNS IN ORDER TO BE PROTECTED UNDER IP LAW: ORIGINALITY REQUIREMENT AND MINIMUM RELEVANCE OR CREATIVE LEVEL. (c) Marita Dargallo Nieto Originality is to be considered from two perspectives: Subjective  “ a work is original when it reflects the personality of the author” (TS 26 October 1992, jewellery case) Objective  as objective novelty “having created something new, that did not exist before”(24 th June 2004 decision TS Raffle case) The design must have a minimum of relevance or creative level

(c) Marita Dargallo Nieto Appeal Court of Murcia, decision nº 114/2006 of April 24th, in a court case involving perfume bottles designed by Agatha Ruiz de la Prada court found that they had sufficient creative level and originality on the basis of subjective originality: “plastic works, in any event and in order to be the object of IP must be original, originality which must not be understood in an objective sense and which does require creative height, since good works and bad works are protected, poor art, and minimalism, a child’s drawing. The originality required is subjective: that the creator expresses its own idea, putting its personal mark”

(c) Marita Dargallo Nieto

REGISTERED DESIGNS LACKING ARTISTIC LEVEL. Decision of the Court of Appeals of Barcelona July 2nd While the designs may have originality they cannot be considered artistic works meriting the protection of IP Law

(c) Marita Dargallo Nieto Decision of the Barcelona Appeals Court of 29th September 2005: Claimant sought a declaration of plagiarism of plans and layouts for kitchens and bathrooms published in a trade magazine. Defendant argued that there was no work of creation involved, hence no plagiarism. The Court ruled that there are plenty of similar types of plans and drawings in the market and that in view of the reduced sizes of these rooms and their standard measures there was little margin for originality, so that in fact there was not sufficient originality and as a result IP afforded no protection. The Court did not follow the “bath screen” ruling

(c) Marita Dargallo Nieto Originality may vary according to the different categories of work depending on the various concurrent factors such as: The greater or lesser degree of freedom which the authors have in each case TS decision of 27 September 2012, where this EC Registered design was found to be lacking in Originality to be protected under IP law. Originality cannot be equated to novelty, “or new forms which add value to the product from a commercial point of view, but lack a certain level of originality and/or creativity within the relative liberty imposed by its applicability to a object.” Therefore protection accumulation requires a “plus” of creativity

(c) Marita Dargallo Nieto In connection with the “TRIPP-TRAPP chair its designer invoked infringement of IP rights and the Appeals Court of Madrid considered, without much explanation that the chair had sufficient level of originality to be protected under IP law (German and Dutch courts arriving to a similar conclusion)

(c) Marita Dargallo Nieto Decision of the Appeals Court of Las Palmas of May 4th 2012, in a case where two Spanish companies were importing counterfeits of Crocs popular Cayman model and Crocs invoked IP rights. The Court found that the vesting of IP rights from the designer to Crocs Inc. had not been proved (vid. Contrary to TS in Shower screens) and that the clogs “do not have a sufficient creative level that can be expected from a work of applied art, in as much as the personal trait (persönlicher Handschrift) of an author is not invoked, or, plausibly, any shoe designer could have created a similar model”. In essence the court found the design too simple to claim IP protection against slavish imitation.

CONCLUSION (c) Marita Dargallo Nieto Spain is not a unitary system, and therefore the accumulation of IP and design law protection is not automatic. The consistency of the system imposes demanding greater creative level to these works as opposed to those that can only be protected by intellectual property law. Otherwise it would be difficult to justify the need for other legal concepts such as industrial design that afford less rights to the title owner, with a lower time threshold of protection, and subject to registration and payment of fees, when one could claim without further ado, the protection offered by intellectual property laws, which is broader in time scope and content and requires no registration expenses. In other words, if all designs were artistic creations we would not need a specific design legislation. The downside is the subjective element when considering originality and creative level.

(c) Marita Dargallo Nieto THANK YOU FOR YOUR ATTENTION Marita Dargallo Nieto SOL MUNTAÑOLA ABOGADOS