Background:

The author of various drawings of characters known as the “Kukuxumusu Universe” had assigned the economic rights over the drawings to the company Kukuxumusu by means of various contracts, whose company brought an action for infringement, as well as other actions, against the author and other persons. The infringement was allegedly committed by the defendants through the marketing of products incorporating the designs on various Katuki Saguyaki websites and social networks.

The object of the contracts of assignment of the intellectual property rights were the drawings that were identified in the assignment contracts, which is a fact accepted by the parties, so the issue focuses on the scope of the rights that make up the transferred intellectual property.

The Provincial Court, upholding in part the defendants’ appeal, considered that the decision of the First Instance Judgment to cease and desist (a) the reproduction of the drawings whose economic intellectual property rights were assigned to Kukuxumusu in any medium “whatever the scene, situation or event in which these drawings may be represented” should be revoked by deleting the quotation in quotation marks; as well as the sentence to cease and desist from (d) transforming the Kukuxumusu Universe Drawings in any form whatsoever, … “in particular by adapting or recreating them in any new scene, situation or event in which they might be placed” should be reversed by deleting the phrase in quotation marks.

Decision in cassation:

The appellants basically raised the question of the scope of the reproduction and transformation rights. The decision in cassation is based on the premise, not disputed by the parties, that the subject matter of the assignment of the intellectual property rights were certain drawings and not the characters in them, and also that the order to “cease and desist” must refer to the alleged infringement declared in the decision.

With regard to the right of reproduction, the Court reasons that, although the terms used in art. 18 Intellectual Property Law are very wide (“the direct or indirect, temporary or permanent fixation, by any means and in any form, of the whole or part of the work, allowing its communication or the obtaining of copies”), it refers to each of the drawings that have been assigned, but not to other possible drawings of the same characters, as long as they are sufficiently different so as not to be considered a plagiarism of one of the assigned drawings.

The fact that dozens of drawings of the same character have been assigned corroborates that the works whose rights have been assigned are each of the drawings or representations of these characters, without being able to extend to other different ones, which is what the deleted mention suggests (“whatever the scene, situation or event in which these drawings may be represented”).

Notwithstanding the fact that there may be room for discussion, in a specific case, as to what extent a new drawing representing one of these characters from the assigned designs is really new and does not involve a total or partial reproduction of one of the assigned designs, the defendants cannot generally be prohibited from redrawing these characters in scenes, situations or incidents different from those appearing in the assigned designs, as long as the result of the drawing is really different and cannot be classified as plagiarism in accordance with case law.

With regard to the right of transformation, the decision considers that in the case under examination, its scope is more complex, deriving from the legal regime (art. 10 and 14.4 Intellectual Property Law) and the ambiguities in the wording of the contracts for the assignment of the rights over the designs, although it has not been disputed that the assignment of the right of transformation was included in the object of the contracts for the assignment of intellectual property. However, as the parties admitted that the assignment included the right of transformation of the designs, the judgment starts from that fact, without prejudice to limiting the assignment of the right of transformation to the animation of the designs and their adaptation into audiovisual works.

Thus, the transformation rights assigned in respect of those drawings are limited to their animation and adaptation to audiovisual works, and the order to cease the acts of transformation of those works that are the object of the assignment (drawings) must be limited to this specific transforming activity: the animation and adaptation to audiovisual works of the drawings that are the object of the assignment.

Certainly, the margin left to the authors of the drawings to make new drawings of these characters from the Kukuxumusu Universe is limited, insofar as the new drawings must be so different that they cannot be considered plagiarism of those that had been the object of the assignment, in order not to infringe the right of reproduction of art. 18 IPL; and neither can they make an animation or adaptation to audiovisual works of the assigned drawings, insofar as the right to carry out this form of transformation was also assigned.

Supreme Court Decision (Civil) of 19 December 2023