Intellectual property: Copyright in Spain
The team at Baker McKenzie handles copyright issues in the media, entertainment, publicity and digital media sectors. The practice advises on existing copyright protection, maximising the use of copyrighted material, and the enforcement and defence of copyright. José María Méndez, who specialises in media law, heads the team in Madrid. IP litigator Carles Prat leads the Barcelona group. María Dolores Garayalde, who has significant experience advising on the IP facets of corporate transactions, is also noted.
Jose Maria Mendez; Carles Prat
L’Oreal UK (Limited)
Clifford Chance is known for its offering in intellectual property litigation and arbitration. The team has a particular focus on e-commerce and technology matters. IP and commercial disputes expert Miquel Montañá heads the practice with Josep Montefusco, who specialises in competition and advertising, and also leads the firm’s technology group. Senior associate Juan Cuerva de Cañas is also recommended. The team is currently advising VRMADA on copyright protection over its software as the company expands into the Middle East.
Miquel Montañá; Josep Montefusco
LZ Labs GMBH
Centros Comerciales Carrefour
Brookfield Asset Mgmt. Private Inst. Capital Adv. (Canada)
Mediterráneo Vida, S.A. de Seguros y Reaseguros
Fidelidade Companhia de Seguros S.A.
- Advised LzLabs on the negotiation and drafting of a package of agreements, including software licence agreements, with a leading Spanish bank.
- Advised VRMADA on its strategy to protect copyright over its innovative virtual reality technology.
- Advised Centros Comerciales Carrefour on the negotiation and drafting of inbound and outbound licence agreements with respect to the copyrights required for its day-by-day business.
The team at Cuatrecasas advises clients such as Instituto de las Industrias Culturales y de las Artes, the Sagrada Familia foundation, sports teams and individual athletes. It has a niche specialism in dealing with publicity rights for advertising or sponsorship, and also advises clients on software licensing and technology procurement. The practice is led by Albert Agustinoy, who has a background in image rights and technological agreements, and Álvaro Bourkaib, who has expert knowledge of authors’ rights, neighbouring rights and sui generis rights. Senior associate Jorge Monclús, who advises on outsourcing and software licensing, is also noted.
Albert Agustinoy; Álvaro Bourkaib
Fundación Bancaria Unicaja
Instituto De Las Industrias Culturales Y De Las Artes
Junta Constructora Temple Expiatori De La Sagrada Familia
Spsnish State Lotteries (SELAE)
- Advised Fundación Bancaria Unicaja on the acquisition of the full collection of original manuscripts and related copyright of Antonio Machado and Manuel Machado.
- Advised on the intellectual property assets of the Sagrada Familia.
- Advised Groupon Spain on copyright matters related to its e-commerce platform.
J&A Garrigues SLP handles copyright litigation with wide-ranging tax, competition and data protection implications. The team has a strong offering for copyright matters in the music, audiovisual and publishing sectors; sponsorship agreements; and image rights in sports and entertainment. João Miranda de Sousa co-heads the practice with Carolina Pina, who also co-leads the firm’s sports and entertainment group. Principal associate Cristina Mesa, who specialises in fashion and e-commerce, is also noted, as is Antonio Muñoz, who has experience in advising on publicity rights and negotiations with collecting societies.
Carolina Pina; João Miranda de Sousa
Uría Menéndez provides both contentious and non-contentious advice on copyright matters, including in relation to licensing and business transactions. Practice head Agustín González is an expert in art law. Also noted is competition specialist Montiano Monteaguo.
‘They have a business-oriented approach and quickly understand the needs of the client.’
Bird & Bird is noted for its copyright work in the retail and fashion sectors. Manuel Lobato, litigator Antonio Cueto and IT specialist Mariano Santos lead the practice, and associate Teresa Mercadal is also noted. Highlights included representing Mediapro as the claimant in civil and criminal litigation against pirate websites broadcasting La Liga football matches. Associate José Ángel García-Zapata is now Senior IP Counsel at Insud Pharma.
Manuel Lobato; Antonio Cueto; Mariano Santos
Industria De Turbo Propulsores, S.A.
International Olympic Committee (IOC)
Take-Two Interactive Software, INC.
- Represented Mediapro as the claimant in civil and criminal litigation against pirate websites.
- Advised Lexmark, a hardware manufacturer, on a new law which has established a private copying compensation system based on levies on recording and storage devices.
- Advised the International Olympic Committee (IOC) regarding the rights of rushes and out-takes taken from recordings and films produced under the direction or commission of the IOC.
Firm founder Hugo Écija and the ‘exceptionally knowledgeable’ Alejandro Touriño, who is experienced in privacy and entrepreneurship law, are part of the copyright team at ECIJA. The practice advises on IP assets in the digital environment, protected content and advertising contracts. Highlights included advising the Republic of Costa Rica on legislative policies to protect the intangible heritage of indigenous peoples.
‘At ECIJA, all the lawyers I worked with knew their trade and were able to provide clear, actionable recommendations.’
‘Alejandro Touriño is exceptionally knowledgeable, readily available and easy to work with.’
All Funds Bank
Madrid Bar Association
- Advised Rakuten TV, a Japanese media company, on extrajudicial negotiations with copyright collecting societies across several European jurisdictions, concerning IP rights over the clients audiovisual catalogue.
- Advised the government of the Republic of Costa Rica on the design of public and legislative policies on intellectual and industrial property.
- Represented Fox Spain on the IP protection issues arising from the company’s international advertising contracts.
Elzaburu has a strong offering for rights holders in the entertainment sector. The practice advises on rights purchasing and licensing agreements, financing, the negotiation of royalties with performing rights societies, advertising, ticketing and image rights, and also has an anti-piracy team. The team is headed by anti-counterfeiting and anti-piracy specialist Juan José Caselles, litigator Antonio Castán, Javier Fernández-Lasquetty, who focuses on IT matters, and media expert Mabel Klimt, who joined from Andersen Tax & Legal. Highlights included representing the Keith Haring Foundation in an action over the ‘radiant heart’ artwork.
Mabel Klimt; Antonio Castán; Javier Fernández-Lasquetty; Juan José Caselles
Keith Haring Foundation
- Defended supermarket chain Dia against allegations of plagiarism in product packaging.
- Represented the Keith Haring Foundation in copyright proceedings.
- Advised on the copyright protection of Marvel characters.
Eversheds Sutherland Nicea offers an established copyright and entertainment practice which acts for clients in the publishing, audiovisual, e-commerce and software sectors. Entertainment and media specialist Vicente Arias Máiz leads the team, which is currently defending Sony/ATV Music Publishing against multiple claims for copyright infringement.
Vicente Arias Máiz
Sony/ATV Music Publishing
Warner Music Spain
Emi Music Publishing
Netflix International B.V.
Warner Chappell Music Spain
Ground Control Productions
Pacha Multimedia S.L.
Big Artist Management
Melodía Producciones PC
- Acted for Sony/ATV Music Publishing in copyright infringement lawsuits for unauthorised advertising.
- Defended Warner Music Spain in a lawsuit over a claim filed by an artist over royalties and masters of recordings.
- Defended Warner Chappell Music in lawsuits filed for breach of publishing agreements.
Core strengths for Gómez-Acebo & Pombo's copyright practice include digital business, unfair competition and audiovisual matters. Competition and litigation specialist Eduardo Castillo heads the team, which also includes Jesús Muñoz-Delgado and Gonzalo Ulloa. Recent highlights included advising eOne on its rights over the PJ Masks and Peppa Pig characters.
GMP Property Socimi
Entertainment One UK Limited (eOne)
Manolo Blahnik International Limited Ltd.
- Represented Vaughan Systems in a copyright infringement claim brought by Sony Music.
- Advised eOne on protecting the IP rights over the PJ Masks and Peppa Pig characters.
- Provided ongoing advice to Manolo Blahnik with regard to copyright infringement protection.
Jorge Grau; Ignacio Marqués
Robin Ruth Group
- Represented Stokke, a children’s furniture and accessories manufacturer, in claims of copyright infringement against a highchair design.
- Represented Autodata, an automotive company, in a claim against an infringer selling pirated car software.
Santiago Mediano Abogados
Santiago Mediano Abogados focuses on copyright litigation in the media and entertainment sectors, with the capacity to handle cross-border matters. Firm founder Santiago Mediano leads the team, which also includes entertainment and sports specialist Santiago Ilundáin and Raúl Bercovitz, formerly at Bird & Bird, who joined the firm in January 2020. Technology expert Sara de Román left to join the newly established firm Ambar in April 2020.
Abril Abogados, SL
Highlights for Abril Abogados, SL included filing a complaint against an advertising campaign on behalf of iRobot, the owner of the ‘Roomba’ brand. The team also assists clients in the media, telecoms and publishing fields. Ignacio Temiño Ceniceros and marketing expert Ruben Canales lead the practice.
Ignacio Temiño Ceniceros; Ruben Canales
El Catalogo Del Comic
- Filed a complaint for iRobot (Roomba) against a Spanish direct competitor.
- Advised Greenpeace Spain on regulating copyright assignment with its photographers and collaborators.
- Sued several press clipping companies on behalf of Cedro, the Spanish Reproduction Rights Centre.
María González Gordon
Estudio Juridico Bercovitz-Carvajal
Core strengths at boutique law firm Estudio Juridico Bercovitz-Carvajal lie in the music, audiovisual and architecture sectors. The team advises on copyright in the digital environment, contractual relationships in the music industry, clearance of music rights on behalf of online platforms, and copyright infringement. Rodrigo Bercovitz Rodríguez-Cano heads the practice. Alfonso González Gozalo is recommended for his ‘experience in litigation’ and ‘extraordinary technical academic background’.
Rodrigo Bercovitz Rodríguez-Cano
HOYNG ROKH MONEGIER
HOYNG ROKH MONEGIER is particularly strong in cross-border IP litigation. Recent highlights included representing the Motion Picture Association of America against Spanish ISPs in seeking blocking orders against pirate and streaming websites. Juan José Marín leads the team. Luis Fernández-Novoa is also noted.
Juan José Marín
Ms. Leticia Moreno
Motion Picture Association of America (MPA)
Santa & Cole
- Represented the Motion Picture Association of America in an action against major ISPs in Spain, seeking to block websites which make audiovisual works available through streaming or linking.
- Represented Santa & Cole, an architect and designer based in Barcelona, in copyright infringement litigation brought against the state of Qatar and a related state-owned company.
- Advised Agedi, the Spanish collecting society managing the rights of phonogram producers, in a matter before the European Court of Justice, regarding the public communication of phonograms incorporated into audiovisual works and recordings.
The practice at DLA Piper advises on intellectual property contract negotiations and media and software licensing. Diego Ramos, who has extensive copyright experience in video games and fashion, heads the team, which also includes compliance expert Paula González de Castejón. Highlights included assisting Adobe with licensing software to a Spanish bank.
Tata Consultancy Services
- Advised Levi Strauss on schemes for the protection of its intellectual property, including cross-border enforcement actions against infringement.
- Advised Warner Bros Entertainment Spain on drafting agreements for copyright protection.
- Handled the protection of copyright and the licensing of software applications for Pfizer.
Anna Viladás Jené heads the copyright practice at Roca Junyent, which focuses on digital technology. Key clients include the Gala-Salvador Dalí Foundation and Universitat Autònoma de Barcelona. Javier Vázquez is also recommended.
Anna Viladás Jené
‘Focus on customer needs’
The Gala-Salvador Dalí Foundation
Reckitt Benckiser, SA / Reckit Benckiser Healthcare
Tandem Verlag GmbH
Universitat Autònoma de Barcelona
- Advised the Gala-Salvador Dalí Foundation concerning infringement disputes.
- Advised Grupo Julià/Euroways, a tourism company, on its global IP strategy.
- Advised Ziclacities, which creates products from recycled materials, in connection with IP protection.
Ventura Garcés & López-Ibor
Andrea Garcés heads the intellectual property department at Ventura Garcés & López-Ibor. The team advises on publishing agreements, the adaptation of existing works, cinematic distribution and commissioning new works, and has a particularly strong offering in the fine art, fashion, beauty and design sectors. Since publication, the firm has split with the Madrid and Valencia offices now operating as López-Ibor Abogados and the Barcelona office as Ventura Garcés.