Despite involving facts already known to the reader, it is worthwhile to briefly outline the origins of this dispute.
Ricardo Bermejo, owner of 66% of Kukuxumusu, acquired the economic rights to 15,000 drawings that constitute the so-called “Kukuxumusu Universe” by virtue of a series of assignment contracts signed between 1994 and 2013. Urmeneta left the company in early 2016 to establish a new brand, Katuki Saguyaki, which was going to be launched during the San Fermín festival last year.
However, on the eve of the Pamplona festival, Kukuxumusu filed a lawsuit for infringement of intellectual property rights against Urmeneta and the company Hombre de Paja S.L., the owner of the new brand. It alleged that Katuki Saguyaki had reproduced drawings which, in Bermejo’s opinion, belonged to the Kukuxumusu Universe.
A decree dated June 28, 2016 considered the request for precautionary measures filed by the plaintiff, prohibiting the reproduction, public communication or transformation of these drawings.
The main hearing, which, as we said at the beginning of this article, was just held in the Navarran capital, remained pending.
From reading the headlines which have spread the news of this case, one might have the impression that either the authorship or the ownership of characters like Testis the bull and Tetis the cow is being discussed. Many artists have publicly expressed their concern. Fernando Vicente, a Madrid illustrator, told El País in an article dated July 8, 2016: “It’s quite hard for us to carve out our own style over the years, to then be told that by law, you cannot continue with it.” As I noted in a previous article I wrote about this dispute, what causes concern among artists and graphic designers is whether transferring the economic rights to one of their creations implies, in practice, “forgetting” the style used to depict said creation.
But is this really the case? Has Urmeneta given away his style in addition to his drawings? Will he be able to continue to use the popular characters he has created? What does an author give up when they transfer the rights to their work?
To answer this question, it is best to start from the beginning. And the beginning is the work itself. A work is the original product of the creation of an artist (article 10 of the Revised Text of Spain’s Intellectual Property Law, hereafter “TRLPI”). Yet a work is an intangible asset. In other words, it is not identified with the material medium in which it has been formed. A drawing is much more than the paper it has been drawn on, but it requires this medium to be marketed. This is why doctrine distinguishes between the corpus mysticum (the drawing) and the corpus mechanicum (the paper) of the work. According to article 56.1 of the TRLPI, acquiring the corpus mechanicum does not mean acquiring the exploitation rights to the work. In order to acquire the exploitation rights to the work, the author must transfer them; they must expressly assign them.
What rights can an author give up? The creation of an original work confers two types of rights upon its author: moral rights and economic rights (article 2 TRLPI). The former are personal rights, which means they cannot be renounced or transferred. The aim of such rights is to protect the author’s person through their work (Cámara Águila). They primarily guarantee the recognition of authorship and the integrity of the work (article 14 TRLPI).
Economic rights, on the other hand, bring together the opportunities for economic exploitation or enjoyment derived from use of the work. They include the right of reproduction (article 18 TRLPI), the right of distribution (article 19 TRLPI), and the right of public communication (article 20 TRLPI), to mention the most significant ones. Only these rights can be transferred.
Following Gete-Alonso y Calera, two types of assignment of these economic rights can be distinguished: one entails the assignee fully acquiring the right or rights that the assignor owned, with the exact content they had (the author compares this assignment to the transfer of ordinary property); the other assumes that the author and the exploiter of the work agree on the conditions, form and manner in which the assignment will be carried out in the market. The assignee does not acquire the ownership of the right, but only the power to exploit the work within the limits and to the extent defined in the assignment contract.
In both cases, the Law (articles 43 and 45) requires that all forms of exploitation affected by the assignment be explicitly and specifically expressed, namely those of communication, reproduction, distribution or transformation.
The problem that worries cartoonists and designers lies precisely in that final form of exploitation, because while it is true that in the hearing Bermejo himself recalled that the assignment contracts that were signed between Kukuxumusu and Urmeneta do not involve the characters, “but the drawings”, thus to his understanding, the defendants “can draw in the style they want because they are free; what they cannot do is use a drawing ceded to the company”; it is no less true that the decree of precautionary measures stated that the drawings used by the co-defendants were “copies or transformations of those that were exclusively assigned to the plaintiff (Kukuxumusu)”.
The recent hearing has underscored the difficulty of defining when a current drawing is considered to be a copy of those under Kukuxumusu’s power, if the same style and same characters are used. It is a difficulty that every artist should be aware of when deciding the manner in which they wish to give up their work, because where is the line that separates the use of a character in an original drawing and the transformation of a drawing starring the same character?
Partner at ICN LEGAL