Judgement of the Appeal Court of Barcelona. Civil Court.

Legal background

The claimant entity, Schibsted (a web portal aimed to the creation, management and exploitation of websites publishing advertisements, and in particular, the website Coches.net), filed a lawsuit against the entity Autodescuento because of copyright and trademark infringement and unfair competition acts.

The Commercial Court nº 8 of Barcelona, ruled Judgement of 30 October 2017, considering all the claims stated in the lawsuit and acknowledged the copyright infringement as follows: data extraction from the database without consent of a substantial part of the content and use in the defendant´s website, as a result infringing the sui generis right; the signs disclosing the information of the right´s management (watermarks) are deleted, added by the claimant in the pics embodied in his website. In addition, it is also recognized the trademark infringement and the unfair competition act: the misappropriation of third parties’ effort.

Following this, the plaintiff filed an Appeal on December 13, 2017 based on the following grounds: misinterpretation of the applicable law and wrong assessment of the body of evidence submitted. In view of this, the Court ruled judgment of May 3, 2019 dismissing partially the Appeal as follows:

  • The existing damages and benefits and the loss of profit. The Appellant argues that there is a misapplication of articles 138.1 and 140.1 of TRLPI as in the appealed judgement it is not declared that the are damages, but they are taken for granted as well as the calculations. However, the Court states that the defendant has already acknowledged in his observations, that the advertisements of the webpage have been copied from the database. Consequently, the sui generis database infringement likewise the unfair competition act based on the misappropriation of third parties’ effort is uphold. Therefore, the plaintiff is entitled to claim the damages caused by such situations. With regards to the calculation, and not being provided additional evidence by any of the parties, it is considered that the infringement terminates in 2017. On a related note, and upon assessment of the body of evidence submitted by the plaintiff, the rule to calculate the final amount of damages is the percentage of the benefits obtained only in the car advertisement section, thus this statement is partially accepted by the Court.
  • Infringement of article 162.2 of TRLPI with regards to the pictures where the watermarks haven been deleted, the owners are the advertisers and those are the creators of such pictures, therefore the claimant holds no ownership over such creations and thus the quoted article cannot apply. The Appellant statement is considered by the Court.
  • Trademark infringement of Article 34.4 of the Spanish Trademark Act as the watermarks inserted in the pictures of the advertisements were deleted. The Court dismisses this statement in the Appeal, and clarifies that when deleting the trademark of the plaintiff without consent and being replaced by the defendant´s sign, the consumer cannot recognize the real origin of the services provided by the claimant and the quality of such services as well as it is deprived of obtaining and maintaining a reputation that allows to obtain loyal consumers.

Judgement of Audiencia Provincial of Barcelona of May 3, 2019. Matter 785/2019.