In Fundación Española para la Innovación de la Artesanía v Cul de Sac Espacio Creativo SL and Acierta Product & Position SA C 32/08 2 July 2009 (unreported), the European Court of Justice (ECJ) has ruled that a person who commissions a design does not acquire the rights in it by virtue of the commission and that those rights remain with the designer unless they are assigned by contract.

BACKGROUND

The Fundación Española para la Innovación de la Artesanía (FEIA) instigated a project called “D’Artes” and appointed AC&G SA to organise the project. AC&G entered into an agreement with Cul de Sac Espacio Creativo SL under which Cul de Sac would develop a design and provide technical assistance to craftsmen under the D’Artes project. Cul de Sac designed a series of cuckoo clocks, which were manufactured by Verónica Palomares and marketed as the “Santamaria Collection”. Ms Palomares was not employed by Cul de Sac or AC&G.

Cul de Sac subsequently released a series of cuckoo clocks which it called the “Timeless Collection” together with Acierta Product & Position SA. FEIA considered that the Timeless clocks were a copy of the Santamaria Collection.

FEIA claimed to own unregistered Community design rights in the Santamaria Collection by virtue of its sponsorship and financing of the D’Artes project and the assignment to it by AC&G of the exclusive rights to exploit the products produced as a result of that project. FEIA sued Cul de Sac and Acierta for infringement of the Community designs and for unfair competition.

The Alicante Court held that FEIA could only assert ownership of the Community design if AC&G, which purported to assign such rights to FEIA, had owned the right to those designs by virtue of commissioning them. It referred preliminary questions to the European Court of Justice asking if

  1. Article 14(3) of the Community Designs Regulation (6/2002/EC) applied also to Community designs that were produced as a result of a commission and therefore fell outside the employment relationship.
  2. Article 14(1) of the Regulation meant that a Community design vested in a designer unless it was assigned by way of contract to someone else.

DECISION

The ECJ held that it was clear that under Article 14(1), the right to a Community design vested in the designer or his successor in title unless that design was created by an employee in the execution of his duties or following the instructions given by his employer. In that case, the design was owned by the employer under Article 14(3).

The ECJ rejected FEIA’s submissions that the terms “employer” and “employee” should be interpreted broadly in order to apply also to commissioned designs.

As to the meaning of the phrase “successor in title” in Article 14(1) the ECJ rejected FEIA’s submission that the phrase should be given an interpretation broad enough to encompass the various possible means of acquiring a right according to the laws of the Member States.

Accordingly, the ECJ held that Article 14(3) did not extend to Community designs that have been produced as a result of a commission and that Article 14(1) 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.