Intellectual property: Copyright in Spain

Baker McKenzie

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.

Practice head(s):

Jose Maria Mendez; Carles Prat

Key clients

L’Oreal UK (Limited)

SAP

Madrid Aloja

Clifford Chance

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.

Practice head(s):

Miquel Montañá; Josep Montefusco

Key clients

LZ Labs GMBH

Centros Comerciales Carrefour

Banco Santander

VRMADA Studios

Brookfield Asset Mgmt. Private Inst. Capital Adv. (Canada)

Airbus

Lakestar

Mediterráneo Vida, S.A. de Seguros y Reaseguros

Fidelidade Companhia de Seguros S.A.

Work highlights

  • 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.

Cuatrecasas

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.

Practice head(s):

Albert Agustinoy; Álvaro Bourkaib

Key clients

Fundación Bancaria Unicaja

Instituto De Las Industrias Culturales Y De Las Artes

Junta Constructora Temple Expiatori De La Sagrada Familia

Groupon Spain

Wavegarden

Sony

Spsnish State Lotteries (SELAE)

Work highlights

  • 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

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.

Practice head(s):

Carolina Pina; João Miranda de Sousa

Key clients

Infonis

Carrefour

Kia Motors

Spotify AB

Mediapro

Google

WPP Group

Uría Menéndez

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.

Practice head(s):

Agustín González

Testimonials

‘They have a business-oriented approach and quickly understand the needs of the client.’

Bird & Bird

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.

Practice head(s):

Manuel Lobato; Antonio Cueto; Mariano Santos

Key clients

GRoup CT

Industria De Turbo Propulsores, S.A.

International Olympic Committee (IOC)

Lexmark

Mediaproducción, S.L.U.

Take-Two Interactive Software, INC.

Western Digital

Work highlights

  • 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.

ECIJA

Firm founder Hugo Écija and the ‘exceptionally knowledgeableAlejandro 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.

Testimonials

‘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.’

Key clients

H&M

Vodafone

Telefonica

Santander

Fox

Makro

NH Hotels

Melia

ING

McCann

Segurcaixa

BNP Paribas

All Funds Bank

Madrid Bar Association

Work highlights

  • 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

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 CastánJavier 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.

Practice head(s):

Mabel Klimt; Antonio Castán; Javier Fernández-Lasquetty; Juan José Caselles

Key clients

Pokeepsie Films

DIA

Keith Haring Foundation

Work highlights

  • 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

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.

Practice head(s):

Vicente Arias Máiz

Key clients

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

CeloFun Producciones

Melodía Producciones PC

Work highlights

  • 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.

Gómez-Acebo & Pombo

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.

Practice head(s):

Eduardo Castillo

Key clients

Nintendo CO

Lidl Supermercados

Carrefour España

CBRE

GMP Property Socimi

Entertainment One UK Limited (eOne)

Vaughan Systems

Manolo Blahnik International Limited Ltd.

Work highlights

  • 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.

Grau & Angulo

Boutique firm Grau & Angulo specialises in intellectual property litigation. Jorge Grau and Ignacio Marqués head the team, which also focuses on advertising and copyright enforcement.

Practice head(s):

Jorge Grau; Ignacio Marqués

Key clients

Acceso

Ekornes

Consultorio Dexeus

Jean Cassegrain

Longchamp

Robin Ruth Group

Stokke

Telebrands

International Edge

Autodata

Work highlights

  • 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.

Practice head(s):

Santiago Mediano

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.

Practice head(s):

Ignacio Temiño Ceniceros; Ruben Canales

Key clients

Cedro

Camper

Bankinter

Fila

Hearst

AMC

Pharma Mar

El Catalogo Del Comic

King Features

Vevo

Work highlights

  • 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.

CMS Albiñana y Suárez de Lezo

The copyright team at CMS Albiñana y Suárez de Lezo is headed by María González Gordon, who joined from Gómez-Acebo & Pombo.

Practice head(s):

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’.

Practice head(s):

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.

Practice head(s):

Juan José Marín

Key clients

ADEPI

AGEDI

AIE

BQ

Ms. Leticia Moreno

Motion Picture Association of America (MPA)

Sammode

Santa & Cole

SGAE

Supercharango

Work highlights

  • 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.

DLA Piper

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.

Practice head(s):

Diego Ramos

Testimonials

Innovative solutions

Total availability’

Key clients

Levi Strauss

Warner Bros

Pfizer

Santander

Adobe

Odgers Bernston

Electronic Arts

Tata Consultancy Services

Rakuten

Bacardi

Work highlights

  • 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.

Roca Junyent

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.

Practice head(s):

Anna Viladás Jené

Testimonials

Focus on customer needs’

Key clients

The Gala-Salvador Dalí Foundation

Reckitt Benckiser, SA / Reckit Benckiser Healthcare

Lobkowicz Collections

Eurecat

Tandem Verlag GmbH

Universitat Autònoma de Barcelona

GSMA

ZiclaCities

Julià/Euroways

Intersport

Work highlights

  • 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.

Practice head(s):

Andrea Garcés