Kukuxumusu case: an analysis of the transformation rights

Written on 30 Mar 2017

On 10 March 2017, Commercial Court No 1 of Pamplona adjudicated on the case of the utilisation of drawings and designs that the defendants had assigned to Kukuxumusu when they were working as their internal artists.

The well-known Kukuxumusu’s drawings and designs (the character of the bull called “Mister Testis” standing out) have been the subject of one of the main pieces of case law that has been delivered recently. This case has meant a step forward in the understanding and setting-up of the boundaries of the transformation right of copyright-protected works under Spanish Copyright law.

The facts of the case are more or less broadly known: the authors (defendants) –among which the artistic director and main artistic figure of the entity stands out- formed the artistic team of the plaintiff, Kukuxumusu Ideas, S.L. (“Kukuxumusu“), for several years. Prior to their exit from the company they subscribed a number of agreements for the assignment of the copyright protecting the contended drawings, which have characterised the image and products of Kukuxumusu in the market.

The artistic director and main artist, together with other Kukuxumusu artists, initiated the Katuki Saguyaki project for which they created another company. This project has encompassed the distribution and communication of various materials that are the direct subject matter of the dispute as they would include illegitimate reproductions of the Kukuxumusu drawings in breach of the copyright that had been assigned to Kukuxumusu.

The Court bases its judgment on the opinions given by experts on the matter, proposed by both the plaintiff and the defendant. The experts were sought to assess the similarities with the drawings created for the Katuki Saguyaki project. Accordingly, the opinion given by the expert proposed by the plaintiff is fully analysed as the main source for the reasoning used by the Court in the judgment.

Among the main arguments used in the judgment, the principal one is the contrast analysis made by the Court between the transformation right as an economic exploitation right of the work and the author’s moral rights. In parallel, pursuant to the regulation of the cornerstone law in this field, namely Royal Legislative Decree 1/1996, of 12 April, which approves the consolidated text of the Copyright Law, regularising, clarifying and harmonising the legal provisions in force on the matter, it analyses the differences existing between derived works by transformation and a truly original work by establishing that it will lie in the “quantum of originality“, which will be, in the Court’s words, what shall be measured to ascertain whether in the dispute the defendants’ drawings for the Katuki Saguyaki project are original works per se; or, on the contrary, they are mere works derived from the exercise of the transformation right that were assigned to the plaintiff.

In order to ascertain the above, the Court uses technical argumentation from various experts conveying the following ideas: (i) 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“; (ii) regarding the lines, colours and composition of the drawings, the expert concludes that the similarities are quite significant even though it should be admitted that there is a common style shared among artists in the comic industry; in some cases the artists use identical figures and characters.

The defendants also provided the opinion of an expert in which, among other conclusions, he 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 about the fact 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 judgment concludes 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 those 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“). The contrary would imply that the Court would be depriving the rights to the exploitation of a drawing from their core meaning and contents if it were to permit that drawings could be reproduced in an identical manner despite having been assigned to a third party in exchange for payment. By way of clarification, it must be noted that at no time did the parties to the dispute contend the validity or the terms of the copyright assignment agreements subscribed by the defendants and Kukuxumusu.

As a final remark, it must be noted that this Court judgment is one of the few in existence on this subject matter in Spain, which gives it certain relevance in the latest Spanish hot legal news. In any event, attention must be paid to the results of potential appeals filed by any of the parties.