Spanish Court sees red in bull copyright claim

On 10 March 2017, the Commercial Court of Pamplona, the city famous for the Running of the Bulls, gave judgment on the use of drawings that an artist had assigned to their employer, including their bull cartoon, “Mister Testis”, sold to tourists at the famous festival. The Court enforced the terms of an assignment against the artist, essentially preventing them from using their distinctive illustration style for another company.

The artists’ work

Kukuxumusu’s drawings and designs are well known in Spain and the case has been a major step forward in the understanding of boundaries in the law of copyright and the transformation of protected works. The artists (defendants) – among which the former leader and founder of the claimant’s artistic team – had, prior to their exit from the company, signed a number of agreements for the assignment of copyright in the contended drawings. These images characterised Kukuxumusu in the market and gave its products a distinctive feel.

The issue came when the artists started using their style of drawing elsewhere. The artistic director, together with other Kukuxumusu artists, worked on the Katuki Saguyaki project for another company. The project allegedly included illegitimate reproductions of the Kukuxumusu drawings in breach of the copyright that had been assigned to Kukuxumusu.

The point of law

The Court heard opinions from several experts appearing for both the claimant and the defendant. The experts were asked to assess the similarities between the protected drawings and those created for the Katuki Saguyaki project. Among the arguments used, the principal one was the contrast between transformation right as an economic exploitation of the work, and the author’s moral rights.

Pursuant to the main piece of Spanish legislation in this field, the Royal Legislative Decree 1/1996, the differences between works derived by transformation and a truly original work lies in the “quantum of originality”. The Court was therefore asked to decide whether the defendants’ drawings for the Katuki Saguyaki project were original works per se or were merely works derived from the exercise of the transformation rights that were assigned to the claimant.

In order to ascertain this, the Court heard from various experts who gave the following views:

• that both groups of drawings share the same festive theme (San Fermines), as well as “facial and body features/expressions, among which the drawing of the eyeballs and the mobility of the characters’ limbs are key aspects“; and
• regarding the lines, colours and composition of the drawings, one expert concluded that the similarities were quite significant, even though it should be admitted that there is a common style shared among artists in the comic industry, and in some cases the artists use identical figures and characters.

The defendants also provided the opinion of an expert who explained that “it did not seem appropriate to pose a formal conflict of an artist with himself“, even though the similarities between the two groups of drawings (Kukuxumusu’s and Katuki Saguyaki project’s) did seem evident. The expert reminded the Court that one of the main artists of the Kukuxumusu’s drawings was, at the same time, the author of the Katuki Saguyaki project’s drawings, and it would be reasonable to accept some degree of common style.

The Court’s decision

The judgment was that, while it is settled that there cannot be a prohibition on an author having and using his/her own style, as it would be tantamount to overriding his/her constitutionally protected fundamental rights, the defendants must refrain from exploiting drawings that are identical to the ones which were assigned. In the Court’s words, “the drawings of the Katuki Saguyaki project do not have the necessary novelty and originality by themselves“.

To have ruled otherwise would be depriving Kukuxumusu’s rights under the contract, if it were to permit drawings to be reproduced in an identical manner despite having been assigned to a third party for payment. It should be noted that at no time was the validity or certainty of the contract under dispute.

Why this matters

This Court judgment is one of the few in existence on this subject matter in Spain and we will watch with interest the results of potential appeals. The case shows the importance of written agreements in copyright, particularly for companies retaining design agencies to design logos or other works. This brings to mind the case in the UK concerning the logo for Innocent (the drinks and smoothies company), which took a lengthy legal process to decide that there had been an equitable assignment of copyright in the logo. Companies seeking to protect their position should use contracts to ensure that Intellectual Property is owned by the company and not the design agency (which is the default position under copyright law).