Interesting Decision of the Spanish Supreme Court Dealing with Different Issues of Copyright Contracts
It is not usual to find judgements of the Spanish Supreme Court in the field of copyright (or at least not as usual as in other fields of IP Law). And even less common to find decisions concerning copyright contracts. Because of that we were delighted to find the Supreme Court Judgement 1902/2016 of 5 May (ECLI:ES:TS:2016:1902).
Atrium was the owner of the copyright of four books authored by Arco Team. Atrium granted a license for the publication of these books to Tandem Verlag Gmbh (Germany). Atrium sued Tandem in Spain for breach of the contract and copyright infringement. In particular, Atrium accused Tandem of publishing the literary works in a single volume (instead of four independent volumes), of granting sublicenses to third parties to exploit the books (something that was not permitted by the contract), and of not granting recognition to Arco Team as the authors of the books.
Atrium filed actions for breach of the contract, copyright infringement, and the action of revision of Art. 47 of the Spanish Copyright Act (in Spanish, SCA). This provision entitles authors to ask for a revision of the remuneration established in a contract for publication if they consider it as disproportionate in accordance with the incomes that the publisher is obtaining.
There are three aspects to be highlighted in the judgement: whether the dispute should be characterised as a contract or as an tort (copyright infringement) for the purpose of establishing the international jurisdiction of Spanish courts; the possibility of considering legal persons as authors; and whether licensees of copyright can initiate the action of revision established in Art. 47 SCA.
In relation to the first question, Atrium filed the complaint in Spain because the contract with Tandem included a forum-choice clause establishing the jurisdiction of Spanish courts. Tandem argued that the actions filed by Atrium concerned copyright infringement thus the forum-choice clause was not applicable. Instead Art. 5.3 Regulation 44/2001 (at present Art. 7.2 Regulation 1215/2015 or Brussels I) was applicable and since the infringement had not occurred in Spain, Spanish courts should have decline jurisdiction.
The Supreme court did not agree with Tandem. According to the magistrates, the actions filed by Atrium derives from a contract between the plaintiff and the defendant, thus the forum-choice clause was applicable. To sustain this conclusion, the Supreme Court recalls the Judgment of the CJEU of 23 April 2009, C-533/07, “Falco”. Another CJUE decision in the same direction is the Judgement of 13 March 2014, C-548/12, “Borgsitter”. The nature of the actions filed by Atrium – either for breach of the contract or for copyright infringement – is irrelevant. In our opinion, the Supreme Court’s interpretation is to be welcome. If the magistrates would have said that the applicable rules of jurisdiction depend on the nature of the actual actions filed by the plaintiff, this would have generated legal uncertainty. For instance, such an interpretation would make it very easy to circumvent forum-choice clauses just by suing for copyright infringement instead of by breach of a license.
In relation to the second question, Tandem argued that the contract with Atrium was invalid because, being a legal person, Arco could not be considered as author of the books. Being so, Arco’s copyright assignment to Atrium and the subsequent contract between Atrium and Tandem were invalid because there was nothing (no copyright) that could be transferred. The Supreme court recalls its previous case law about this issue (Judgement 155/2014 of 19 March, ECLI:ES:TS:2014:1241) to conclude that Arco could be considered as the original rightholder of the books. According to Art. 8 SCA the books were to be considered collective works and Arco was the original rightholder because it had coordinated their creation. Therefore, both the contract between Arco and Atrium, and between Atrium and Tandem were valid.
Finally, the Supreme Court deals with the question related to the action for the revision of the publishing contract established in Art. 47 SCA. The question raised to the Supreme Court is whether such a revision can be asked exclusively by authors or by assignees or licensees of the work. In the opinion of the Supreme Court’s magistrates, the wording of the provision (it exclusively refers to “authors”) and the principles that inform it (the protection of the author as the weaker party to the contract) implies that only authors are entitled to initiate this action. Furthermore, it is concluded that the right to initiate such action cannot be transferred by contract.
Related Posts:
- CJEU Judgment “Brogsitter”: Is It Possible to File an Extracontractual Action when the Parties under Litigation are Linked by an Intellectual Property License?
- Jurisdiction for declarations of non-infringement
- Trademark Coexistence Agreements and International Jurisdiction
- On the Different Interpretation of Forum Delicti Commissi in Relation to EU Trademarks and National Trademarks