No. 28
January 2013
International Association for the Protection of Intellectual Property
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The Spanish Supreme Court raises the standard for obtaining copyright protection in respect of industrial designs
David Pellisé, Pellisé Abogados, Barcelona, Spain

The judgment of the Spanish Supreme Court dated 19 September 2012 arose from legal proceedings based on breach of contract and copyright infringement. The proceedings were initiated by the designer of a collection of lampposts against a company that was allegedly exploiting her designs. These designs, some of which are illustrated below, had received public recognition, and they had even won a contest for the design of lampposts intended to be installed in Barcelona:
David_Pellise_1.png David_Pellise_2.png
The Supreme Court, in setting out the conditions for the recognition of copyright protection in respect of industrial designs, and the possibility that the copyright protection would be in addition to industrial design protection available for the industrial designs, recognized that both copyright protection and industrial design protection are autonomous and independent of each other, and that both pursue “very different” goals.

However, despite this recognition, the judgment, instead of maintaining that both forms of protection, and their respective requirements, are on equal footing, proceeds to make copyright protection dependent upon the industrial design first meeting the specific requirements to obtain industrial design protection. Thus, in terms of this judgment, copyright protection for industrial designs is only recognized in cases where the industrial designs, in addition to the “novelty” and “individual character” requirements required for industrial design protection, have “additional creativity” or “some degree of artistic distinctiveness”.

This judgment raises a number of questions. For example, do industrial designs now require a higher degree or standard of originality than that required for other articles that are protected by copyright? Or is the standard of originality required by copyright for all literary or artistic creations now to be raised? This judgment also raises doubts about the standard of evidence required to prove the "additional creativity" or the necessary “artistic distinctiveness” for industrial designs to also be afforded copyright protection. This issue is especially concerning given the fact that the decision seems to not favour certain circumstantial evidence, which could lead to such recognition.

On the one hand, the judgment considered it reasonable to deny any relevance arising from the recognition obtained by the design in the abovementioned contest for the design of lampposts for installation in Barcelona. On the other hand, the judgment did not consider it relevant that the defendant company had signed a contract for the exploitation of the designs. Indeed, the Supreme Court held that the references to intellectual property rights contained in the contract are too generic and are not sufficient to presume an act of recognition of the design's copyright protection by the defendant company.

In short, although this judgment aims to shed light on a complex issue, the decision offers contestable aspects and, above all, generates legal uncertainty about the standard of merit to obtain copyright protection for an industrial design. This judgment has not been received with satisfaction by either designers or companies involved in the aunching of new designs.
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