The direct economic interest in the results of the infringing behaviour and the ability to control the behaviour of the infringer is one of the three cases of liability for contributory infringement of intellectual property rights, as provided in the second paragraph of article 138 of the Intellectual Property Law.

Carlos Daniel is the owner of the Spanish trademark including the denomination “Rojadirecta”, for telecommunication services (class 38). The trademark was filed on July 9, 2010 and granted on January 17, 2011. Carlos Daniel is the sole partner and administrator of the company Puerto 80 Projects, S.L.U. (hereinafter, Puerto 80). Puerto 80 has operated a website whose domain name consists essentially of the name Rojadirecta, which provided links allowing access to the live or slightly deferred viewing of the retransmission of the matches whose rights corresponded to Mediapro, by peoeple who otherwise would not have been able to access such viewing. It was not the individuals who uploaded the links, but the rojadirecta website itself. The company Puerto 80 did not have any employee and it was Mr. Carlos Daniel who had the access codes to the website’s computer system.

Mediapro filed a lawsuit against Puerto 80 Projects S.L.U. and Carlos Daniel, for the exploitation of the website rojadirecta, which provided the links to access live or slightly deferred viewing of the soccer matches in respect of which the plaintiff had intellectual property rights. The plaintiff brought actions based on the infringement of its intellectual property rights and also on unfair competition.

Puerto 80 Projects S.L.U. had been declared liable as an infringer of Mediapro’s intellectual property rights, and the Supreme Court’s decision was limited to resolving the question of whether Carlos Daniel should be declared liable in accordance with the second paragraph of Article 138 of the Intellectual Property Law, according to which anyone who knowingly induces the infringing conduct shall also be considered liable for the infringement; whoever cooperates with the same, knowing the infringing conduct or having reasonable indications of knowing it; and whoever, having a direct economic interest in the results of the infringing conduct, has the capacity to control the conduct of the infringer. The foregoing does not affect the specific limitations of liability established in articles 14 to 17 of Law 34/2002, of July 11, 2002, on information society services and electronic commerce, to the extent that the legal requirements established in said law for its application are met.

The Supreme Court starts from the premise that the Provincial Court had declared that the activity carried out by the company Puerto 80 Projects, S.L.U. constituted a direct infringement of Mediapro’s rights, specifically those relating to public communication; and that the claim of lifting the veil of the company Puerto 80 Projects, S.L.U. to hold Mr. Carlos Daniel , sole shareholder and administrator of the company, liable for the conduct constituting the direct infringement declared, was rejected.

Even though the liability of Mr. Carlos Daniel, sole shareholder, has not been accepted based on the doctrine of the lifting of the veil of personality, the direct economic interest in the result of the infringement and the capacity of control of the sole shareholder and administrator of the company, constitute a clear manifestation of the capacity to control the conduct of the infringing company, and should be considered included in the third modality, given the undeniable economic interest in the result of the infringement and the capacity of control over the infringing conduct.

Supreme Court Decision (Civil order), October 26th, 2022