Abstract
Following the adoption of European Directive 2004/48/EC on the Enforcement of Intellectual Property Rights, a number of questions arose regarding the different methods of damage calculation proposed in its Art. 13. In particular, the transposition of its contents into the Spanish Intellectual Property Law initiated a debate among national scholars regarding the possibility or lack thereof to claim moral damages using any of the criteria given. The question arrived at the national Supreme Court this year, in a case of unauthorised use of an audio-visual work. The Court asked for a clarification from the Court of Justice of the European Union on a matter that might have important effects on the determination of the damages resulting from an infraction of intellectual property rights. This opinion seeks to offer a detailed perspective on the evolution of the case in the Spanish judicial system and the possible alternatives and consequences that a future European ruling might produce.
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Notes
Also in UK jurisprudence, in a case of unauthorized musical versions, the court had to clarify the scope of the Directive’s Art. 13. Specifically, it stated that, in cases where an infringement occurred with the awareness of the defendant, the plaintiff cannot request both the loss of income and the profits earned by the other party, as they are not cumulative damage. At the same time, the ruling makes a reference to moral damages, dismissing them in this case, as it is understood that they would only be taken into consideration in those cases where the recognized economic damage was disproportionate to the actual damage produced (Iverson 2015, p. 61). We cannot agree on this last point, because as already mentioned, moral and economic damage are two different types of damage that do not require their simultaneous existence to be appreciated. In any case, the decision is consistent with the treatment moral damages often receive in UK courts, where they are rarely recognized.
The fixation of the rules of damage compensation is strictly identical for all copyright regimes in France. This Article has its exact counterpart in Art. L521-7 of the 5th Book, where industrial property is regulated.
The possibility of claiming moral damages already existed in the previous French IP Law, on the condition of supplying circumstantial evidence by the victim. The new law reinforced the possibility by including juridical entities as claimants (Sirinelli 2015), p. 529. Also, the possibility for juridical entities to claim moral damage is accepted in Italy, as a method to enforce their reputation in the market (Ubertazzi 2012), p. 1870.
Sirinelli (2015), p. 529.
Ubertazzi (2012), p. 1868. The Italian precept seems less effective than the French because, depending on the decision of the court, the offender might just pay the same amount he would have paid if he had obtained the proper licence. In the French case, the amount is always higher and that works as a disincentive to future infractions. The same situation happens in Germany, where the national doctrine states that this method alone has no dissuasive value (Krasser 1980, p. 263).
Therefore, there is no need for a necessary coincidence of an infringement of moral rights and the compensation for non-economic damages (Ubertazzi 2012), p. 1870.
Nordemann (2014), p. 1988.
Although some differences can be noted: whereas Italian and French law allows for compensation higher than the license fee in cases of proper authorisation (“at least”/“lump sum which is higher”), the German law seems to be more restrictive in this regards. This different approach on the methods of calculation might lead to future questions to CJEU, considering that Art. 13.1(b) of the Directive uses the terms “at least” and intends to work as a de minimis rule.
The amendment of Art. 140 was drafted following Art. 2 of the Law 19/2006 of June 5, which extended the means of enforcing intellectual and industrial property, and extended and established procedural rules to facilitate the implementation of several EU regulations. The LPI provides the actions of injunction and damage claims in Arts. 139 and 140, which have different characteristics. The first is a right in rem and therefore effective erga omnes, only excluding the final consumer that acts in good faith (Art. 139.4 LPI); the second is in personam and may only be aimed towards those responsible for the infringement on the IP rights. In contrast, when a third party acted in good faith, even if he took part in an unlawful activity, he will not be included in a personal action for damages (Rodriguez-Cano 1997), p. 339.
Real Decreto Legislativo 1/1996, de 12 de abril, por el que se aprueba el texto refundido de la Ley de Propiedad Intelectual, regularizando, aclarando y armonizando las disposiciones legales vigentes sobre la materia.
The contents of the Article are only a guideline for the evaluation of moral damages. It cannot be another way, as the indeterminacy of the concept does not allow pre-setting an effective system of calculation for its determination. Considering that the concept is purely subjective, it is not possible to use a set of general rules with pre-established parameters. That means the court should address the specific circumstances of each case to determine the amount. We find an analogy with the existing provisions in the Spanish Honour and Image Rights Law, which connects the quantification of a compensation “to the circumstances of the case and the severity of the injury committed, for what will be considered, if necessary, to what audience was the damage spread and the means used to do it.” (Art. 9.3 Ley Orgánica 1/1982, de 5 de mayo, sobre protección civil del derecho al honor, a la intimidad personal y familiar y a la propia imagen). Spanish scholars understand that, in situations affecting moral rights included in Art. 14 LPI, it seems advisable to follow the criteria offered by the honour and image rights legislation in connection with the contents of Art. 140.2 LPI (Vega Vega 1999), p. 186.
SJMerc Madrid, No. 6, No. 587/2011, 30/06/2011 (Judge Francisco Javier Vaquer Martín). (AC 2011\2074).
We find similar cases where the courts ruled over moral damage regarding the unlawful use of audio-visual works. For instance, the Provincial Court of Madrid granted moral compensation in a case of unauthorized use of images in a documentary about the Spanish region of Castilla y León (SAP Madrid, Sec. 28, No. 255/2007, 13/12/2007 (Judge Rafael Saraza Jimena). (AC 2008\820). The court provides a useful interpretation of the relevant elements, considering that the reputation of the author will not be affected when the new work is not of inferior quality, or when the author’s name is not mentioned as a participant. Similarly, the relevance of the damage will be determined by the coincidence of the subject of both works, taking into account (from our point of view rightly) that the coincidence of genres reduces the severity of the injury. Finally, the intention of the offender and the degree of diffusion should also be considered to evaluate the relevance of the infraction. Therefore, the element of public communication has special relevance when it comes to new technologies. An infringement of moral rights in the Internet will easily have a high diffusion and must be considered for the determination of the moral damage (Macías Castillo 2008), p. 293.
SAP Madrid, Sec. 28, No. 14/2013, 21/01/2013 (Judge Gregorio Plaza González). (JUR 2015\48619). Here, the appellant “Mandarina” alleged that the use of images from a third party was an “ius usus inoqui”, in the same way that the Spanish Supreme Court ruled the “Google case” (about Google’s use of links and portions of web contents in order to offer its search results to users). The relevance of that ruling comes from the fact that it applied the “three-step test” (Art. 9.2 of the Berne Convention and Art. 6 of the EU Database Directive) to the LPI doctrine of the “ius usus inocui” (somewhat like a Fair Use for copyright, but with a less extensive range of exceptions). The Supreme Court stated that authors’ rights cannot be used when their goal is simply to damage a third party, with no benefit for the rightholder whatsoever, and even resulting in a harm to the author’s interest itself. For that reason, Google’s conduct in that case was not considered an infraction, as it actually helped promote the visibility of the pages cited in the web. Nevertheless, the argument was rejected for the “Mandarina” case, no doubt wisely. It is not possible to justify that the “three-step test” applies in an act of unauthorized use like this, considering that: (a) the applicant's claim was not arbitrary (the exclusive right to authorize the use of its work was assisting him); (b) there was not good faith by the defendants (who were professionals in the media industry and should have known the conditions of use of third party material); and (c) the appropriation of the images produced an irrefutable prejudice to the author.
ATS, Civil Division, No. 834/2013, 12/01/2015 (Judge Rafael Sarazá Jimena).
Prior to the amendment, Art. 140 LPI clearly allowed moral damage claims, no matter what criterion was chosen to calculate the economic damage.
Morillo González (2015), pp. 340–341. Nevertheless, the same author qualifies his opinion when he admits the possibility of combining moral claims with the hypothetical royalty. He makes an analogy with an opinion of the Spanish Supreme Court in a case over trademark infraction. Even though the Spanish Trademark Law does not mention explicitly the possibility of claiming moral damage, the court understood that it did not mean that it was explicitly forbidden. STS, Civil Division, No. 137/1999, 18/02/1999 (Judge Alfonso Villagómez Rodil) (RJ 1999\660).
Macías Castillo (2008), pp. 282–283.
Clemente Meoro (2007), p. 816.
Carrasco Perera (2007), p. 140.
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Simon Altaba, M. Take It or Leave It – The Unclear Situation of Moral Damage Claims in Spanish Intellectual Property Law. IIC 47, 178–188 (2016). https://doi.org/10.1007/s40319-016-0445-1
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DOI: https://doi.org/10.1007/s40319-016-0445-1