The commercial company “MC&F BROADCASTING PRODUCTION AND DISTRIBUTION, C.V.”, is a company specialised in the design, production and marketing of television formats, according to the defendant, the creator of the television test known in Spain as “EL ROSCO”, which has traditionally been included in the television programme “PASAPALABRA”.

On 2 February 2010, “MC&F” and the defendant entered into a licensing agreement for the economic exploitation of the “EL ROSCO” TV quiz.

In the exercise of its rights, “MC&F” brought an action against “ATRESMEDIA CORPORACIÓN DE MEDIOS DE COMUNICACIÓN, S.A. “and “ITV STUDIOS GLOBAL DISTRIBUTION LTD” for intellectual property and unfair competition, requesting a declaration that “MC&F” owned the intellectual property rights over the “EL ROSCO” format and that the ATRESMEDIA group’s broadcast of a television programme containing a game based on that format, as well as the reproduction, distribution or public communication of the same, constituted an infringement of that intellectual property.


Intellectual Property Actions

The main of the actions brought was the action claiming the recognition and declaration of the ownership of the television test as an intellectual property work (art. 14.3 TRLPI).

To begin with, the court made special reference to SJM M 50/2014 of 3 February, stating that it had an indirect binding effect on the subject matter of the appeal as it constituted a means of proof of relevant facts to support the court’s ruling. That judgment, which had already ruled on the game at issue, reasoned that: “EL ROSCO” constitutes a digital transformation of the original format “THE ALPHABET GAME” through which it has been progressively adapted to new circumstances of time and place, considering the preferences, schedules, tastes and customs of the public in each country in which it is broadcast”.

On the one hand, the chamber considered it necessary to start from the definition of the concept of “work”, which, according to the CJEU of 12 September 2019 (Case C-183/17, COFEMEL), provided that for an object to be considered original, it is both necessary and sufficient that it reflects the personality of its author, expressing free and creative decisions of the author.

Consequently, as regards the possibility that a television format can be an original work protected by intellectual property, the court quoted the following statement of the Supreme Court: “although the format is not provided for as one of the works protected by intellectual property in art. 10.1 TRLPI, it is considered that the format of the television programme can be considered a work for these purposes, when it can be considered as an original creation, in this case a literary and/or artistic one”.

However, the court ruled that for this protection to be enabled, it was necessary for the format to satisfy certain conditions, stating that not just any television format can be considered a work protected by intellectual property, and that it is necessary for there to be a qualitative leap between what are merely general conceptions and what is the embodiment of these, giving rise to a creation of a certain complexity, through a creative activity, without necessarily having the complexity and detail of the script.

In light of the above, after analysing the disputed game in the light of article 10 TRLPI, the Court ruled that the plaintiff’s argument had not been sufficiently proven, as there was no expert opinion proving that the game constituted an original work with the necessary elements to be protected as a television format by intellectual property.

In conclusion, as the plaintiff had not proved the thesis of authorship and originality of the disputed game, the court also dismissed the other intellectual property actions brought.

Unfair competition actions

The court dismissed the unfair competition actions on the grounds of the principle of relative complementarity, as the intellectual property actions had been dismissed.

Accordingly, in view of the different purposes pursued by the two types of action, the Unfair Competition Act has a complementary function as an instrument for regulating conduct in the market, and its purpose is not to protect the copyright holder or to resolve conflicts between competitors. It is therefore necessary to distinguish between the regulations on the legal protection of intangible property and those on unfair competition, which, according to the Unfair Competition Act, can complement, but not replace or substitute each other.

This is why, in the present case, as the disputed facts were fully subsumed within the scope of the Intellectual Property Law, it was not appropriate to apply the Unfair Competition Law.

In view of the foregoing, the court dismissed in their entirety the claims made in the action brought by “MC&F”, without any special mention of the costs of the proceedings.

ECLI:ES:JMB:2022:92 of 14 February 2022