On November 2 2011 the Bizkaia Court of Appeal confirmed a judgment handed down by Bilbao Trial Court Number 3, which had sentenced the defendants in an IP criminal case to eight months' imprisonment for reproducing bracelets that were considered to be almost identical to those designed by the claimant (for further details please see "Court rules on infringement of jewellery designer's copyright").

The defence appealed this decision and alleged that IP crimes can be committed only with malice, since this type of offence does not punish fraudulent intent – an intermediate concept between malice and negligence. Moreover, the defence argued that the intervention of the criminal jurisdiction in this matter violated the so-called 'minimum intervention' principle of criminal law.

The claimant, in turn, insisted that all of the elements of an IP crime were present. In its opinion, the defendants were aware of the features of the original bracelets; that there were no essential differences between the original bracelets and the imported bracelets; and that consequently the replica products could produce confusion – all of which determined plagiarism.

The Bizkaia Court of Appeal's judgment confirmed the condemnatory judgment of the trial court and stated as follows:

  • Precious jewellery or costume jewellery ornaments are considered as 'artistic creations' and, consequently, are protected as intellectual property. Thus, they must be considered worthy of protection (Article 10 of the Intellectual Property Act).
  • The qualification of plagiarism regarding the defendants' conduct made by the judgment was correct, since it consisted of the appropriation of the essential part of a work. To reach this decision, the court of appeal defined 'plagiarism' as the fraudulent copying of a work and the concealment of this from the actual author.
  • The originality factor of the designed bracelet (registered by the jewellery designer) was determined by the way in which the bracelet links connected. It did not matter that this type of link is common or that there was any difference between the number of links and the locking structure of the bracelets designed by the claimant and those distributed by the defendants.
  • For plagiarism to qualify as a criminal act, it must be proven that the defendants knew of the existence of the previous work (malice), however, the existence of fraudulent intent will suffice. This conduct existed from the moment that the defendants became aware of the specific danger of committing a crime through their action and, this notwithstanding, carried it out regardless.

Regarding the objective elements, the court of appeal stated that the precision that is essential to determining whether plagiarism exists must be resolved taking into account expert reports. However, the court also stated that the purpose of an expert report is exclusively to aid the judge in his or her decision, not to replace the judge.

Of particular interest were the statements made in this judgment regarding the expert reports and their value. The court emphasised that it was necessary to examine the consistency of their conclusions. The court expressly disagreed that a report's value depends on the background of the expert who drew up the report; thus, the Court of Appeal did not agree with the trial court's holding that certain expert reports, because of the person who issued them, had more value than others.

The court also reasoned that it is enough to fulfil the elements of a crime that the defendants acted with fraudulent intent - that is, assuming the possibility of infringing a third-party right, without actually having to infringe it.

To evaluate the existence of this fraudulent intent, the court took into consideration that:

  • the claimant and the defendants, as jewellery professionals, had met at fairs on numerous occasions;
  • the claimant had previously filed a criminal complaint against the defendants for an alleged crime against her IP rights in a very similar case; and
  • a few months prior to the filing of the claim, identical objects to those concerned in this case had been seized from the defendants.

For further information on this topic please contact Filomena Millano at Grau & Angulo by telephone (+34 93 202 34 56), fax (+34 93 240 53 83) or email ([email protected]).