The judgement of the Barcelona Provincial Court overturns the judgement handed down at First Instance (see Review) and, upholding MC&F’s claim, recognises its ownership of the rights over the “21×100” test for a television quiz show, now known as “El Rosco”, and that these rights are protected by intellectual property law.

The lawsuit exclusively concerns the ownership of the copyright over the “21×100” (El Rosco) quiz for a television quiz show which is currently part of the television programme “Pasapalabra”. The applicant (MC&F) claims ownership of those rights, while Atresmedia (licensee) and ITV (licensor) object on the ground that it was a derivative work of the programme “The Alphabet Game” licensed by ITV and that it was therefore entitled to the rights. The defendants also allege the existence of res judicata, which had previously been rejected by the Barcelona Provincial Court by Order dated 13 May 2021 on the grounds that the parties in the two proceedings were not identical.

The issues analysed by the Barcelona Provincial Court ruling are basically three: the ownership of the rights that may exist over the “21×100” test; the protection of the aforementioned rights; and compensation for damages.

A) Ownership of the rights.

The judgment, after a detailed analysis of the evidence adduced in the proceedings, concludes that the creators of the “21 x 100” test were Messrs Vidal and Jose Ignacio, who assigned their exploitation rights to MC&F, on behalf of the Einstein company, which in 1998 approached them to design a test for a television quiz show.

B) The nature of MC&F’s rights.

The Judgment considers the protection of “El Rosco” or “21×100” as an intellectual property work, based on article 10 of the Intellectual Property Law, which states that “all original literary, artistic or scientific creations expressed by any means or medium, tangible or intangible, currently known or to be invented in the future, are subject to intellectual property”. In the interpretation of this rule, the judgment mentions the doctrine of the STS of 22 October 2014, regarding the protection of television formats, defined as “a set of technical and intellectual elements intended for the production of a periodically broadcast television programme with a narrative structure, characters and scenic elements common to all broadcasts, normally expressed in a document….”. These are therefore works in which, unlike most works protected by intellectual property, the form of expression is very secondary to the content expressed”, as well as in the case law of the CJEU, which has stated that protection is only reserved when two elements are present: “an original object”, for which it is both necessary and sufficient “that it reflects the personality of its author”, manifesting the free and creative choices of the author.

C) Regarding the scope of damages

The Provincial Court comes to the conclusion that the action for damages in intellectual property matters requires the concurrence of subjective elements of culpability, unlike what is provided for in the different modalities of industrial property.

In order to reach this conclusion, it starts from the fact that articles 138.1 and 140 of the TRLPI do not expressly establish whether the infringement must be intentional or culpable in order for the infringer to be liable for damages, which is not required by Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004, which limits itself to establishing in article 13. 1 that “Member States shall ensure that the competent judicial authorities order, at the request of the injured party, the infringer who knowingly, or with reasonable grounds to know, participated in an infringing activity, to pay the rightholder compensation appropriate to the actual damages suffered as a result of the infringement”. In other words, a system of strict liability is an addition to what is required by the aforementioned Directive and, on the other hand, bearing in mind that the common system of tort law (Article 1902 of the Civil Code) is that of subjective liability, the conclusion reached by the judgment is that if the legislator had intended to establish strict liability for damages actions against intellectual property infringers, it should have established this expressly and clearly.

Consequently, the damages awarded to the plaintiff, given that the defendant had acted under an allegedly valid licence, are those corresponding to a royalty that begins to accrue on the day of notification of the notification of the judgement pronounced by the Court.

Barcelona SAP of 14 November 2022 (MC&F v. ATRESMEDIA and ITV)