News Item
ECJ confirms ownership of commissioned community designs
10 July 2009
The European Court of Justice (ECJ) has confirmed that the rights to Community Designs are not automatically transferred to the commissioner where the design arises from a commissioned piece of work. This is contrary to many national laws including that of the UK, which allows for design rights to transfer automatically to a commissioner.
Several questions on this topic were referred to the ECJ from the Juzgado de lo Mercantil no 1 de Alicante y no 1 de Marca Comunitaria (Spain) in respect of a claim made by Fundación Española para la Innovación de la Artesanía (FEIA) against Cul de Sac Espacio Creativo SL and Acierta Product & Position SA.
The facts of the case were as follows. The FEIA devised a project known as ‘D’ARTES’ in which 50 skilled workshops in various sectors could produce, through a design project executed by a professional in the field, a family of objects to be placed on the market. The organiser of the project was a company called AC&G SA and they were responsible for selecting the designers and concluding agreements with them. AC&G entered into an oral agreement with Cul de Sac (a company not subject to the Spanish Labour Code) under which, for the sum of EUR 1800, Cul de Sac was responsible for developing a design and providing technical assistance to a craftsman with a view to the creation by him of a new collection of products.
As a result of the ‘D’ARTES’ project Cul de Sac designed a series of cuckoo clocks which were manufactured by the craftswoman Verónica Palomares. The series was released in April 2005 as part of the ‘Santamaría’ collection. Subsequently, Cul de Sac and Acierta produced cuckoo clocks and placed them on the market as part of the ‘TIMELESS’ collection. FEIA believed that these cuckoo clocks were a copy of the unregistered Community Designs comprised in the ‘Santamaría’ collection which it claimed to own by virtue of (a) its position as sponsor and main source of finance for the ‘D’ARTES’ project and (b) the assignment to it by AC&G of the exclusive rights to exploit the products from the ‘D’ARTES’ project. FEIA therefore sued Cul de Sac and Acierta for both infringement of its unregistered Community Design rights and unfair competition.
The main issue considered was whether AC&G and/or FEIA ever owned the rights to the designs, as was disputed by Cul de Sac and Acierta. In order to deal with this point, the Spanish Court appeared unsure whether, since there is no specific mention of the ownership of a commissioned Community Design in Community Design Regulation No 6/2002, they should apply national (Spanish) law which treats commissioned designs in the same manner as employee designs – automatically transferring the rights in the designs to the commissioner / employer respectively.
The proceedings were therefore stayed while questions on this point were considered by the ECJ, whose reply was as follows:
"1. Article 14(3) of Council Regulation ... 6/2002 of 12 December 2001 ... does not apply to Community designs that have been produced as a result of a commission.
2. In circumstances such as those of the main proceedings, Article 14(1) of Regulation No 6/2002 must be interpreted as meaning that the right to the Community design vests in the designer, unless it has been assigned by way of contract to his successor in title."
In view of the ECJ ruling, we would advise that any person commissioning design work in either in the UK or the rest of the European Community takes particular care in ensuring that all available design rights are expressly assigned to them.
For further information contact your usual Marks & Clerk attorney or Pam Coles at pcoles@marks-clerk.com.