The “Kukuxumusu” case: the thin line between the protection of the drawing but not the character

Friday, 3 of January of 2020

Without any doubt, one of the most interesting cases in the field of intellectual property in 2019 is the one related with the “Kukuxumusu Universe”. Since the begining in 2016 of the war in the Courts for the economic rights over thousand of the welknown drawings before the Commercial Court nº 1 of Pamplona, there has been many difficulties in this case, which in turn, has left interesting interpretations concerning the limits of the assignments of rights in the field of copyright.

The latest round on this judicial procedure has been the victory for the cartoonists: recently, the Provincial Court of Navarra issued a judgment of 15 October 2019 that revokes the initial decision of the Commercial Court by partially upholding the appeal filed by the authors, headed by Mikel Urmeneta. They are all now currently part of the firm Katuki Saguyaki ("cat meat, mousy delicacy" in Basque).

The origin of the dispute goes back to the moment, in 2015, when Urmeneta, founder, partner and artistic director of Kukuxumusu, along with other members, abandoned the company due to important disagreements with the majority shareholder, Ricardo Bermejo. At the end of the relationship, the parties agreed on a masive assignment of the exploitation rights defined in the Intellectual Property Law over thousands of drawings, creations of Urmeneta and the other artists, who gave rise to the “Kukuxumusu Universe”. In this way, Kukuxumusu Ideas S.L. obtained the exclusive right to use all those drawings (including reproduction, distribution, public communication and transformation) from that moment on.

With the creation of Katuki Saguyaki by Urmeneta, Txema Sanz, Belatz, Asisko and Marko, the conflict began, because Kukuxumusu considered that the new creations marketed by this firm were a clear infringement of the economic rights over the drawings assigned to them, and this was tantamount to the unlawful reproduction or transformations of the same.

When this matter was raised before the Courts, the decision of the Commercial Court nº 1 of Pamplona left no doubt: through that exclusive assignment, the illustrators lost all their rights over the drawings, and only Kukuxumusu would be allowed to use and transform them, by making use of the characters in other creations.

The Court found enough evidence on the copyright infringement and sentenced the defendants to take off the infringing products from the market, to pay an economic compensation to Kukuxumusu, and to refrain from adapting or recreating the drawings of the Kumuxumusu Universe "in any other new scene, situation or event in which they could be placed or represented".

Despite this initial setback, they decided to continue the judicial fight to maintain their style, by invoking their creative freedom as authors of the famous characters, such as the bull Mr. Testis or the sheep Beeelorzia, because they understood that the transfer of those exploitation rights on the drawings could not mean, in practice, the assignment of the characters themselves.

Therefore, several core issues were to be solved by the Provincial Court: on the one hand, the determination of the boundaries between the assignment of exploitation rights and the authors' artistic production rights, and on the other hand, the establishment of the difference between the drawings, as a materialized graphic creations, and the characters, as an abstract creation of the authors, in order to delimit what could be the object of an assignment to a third party.

The Navarra Provincial Court tries to shed light on these approaches by resolving the Appeal of the defendants in the following terms:

"the exploitation rights contractually assigned were concerned with each of the drawings referred to in the contracts and not with the exploitation rights on the characters included in such drawings. Therefore, the exploitation rights on the characters contained in the drawings still belong to the authors, with the limit of those specific representations of the same which are included in the drawings which are part of the assignment contracts". The judgment thus upheld the appellants arguments by stating that "in such circumstances it is unquestionable that the author can continue to despict [the characters] in his works, as long as we are not facing a purely mimetic or identical reproduction of what appears in the drawing".

However, and this is the most controversial part of the judgment, the Navarra Provincial Court confirms that there was an infringement of the economic rights which were assigned, that is to say, that the goods marketed by Katuki Saguyaki constituted a copy or a transformation of those drawing which were objet of the assignment to Kukuxumusu, and therefore, the judgment maintains the damages imposed. But at the same time, in line with the position of the cartoonists, the Court considers that the assignment cannot suppose, a priori, that the authors of the characters can not use them " in any other new scene, situation or event in which they could be placed or represented". This would imply a denial of "the right to transform their characters, which the author continues to hold".

Thus, after this decision of the Navarra Provincial Court, it is established that the artistic production rights of Katuki Saguyaki's team are limited just to their ability to conceive and create other new drawings with those characters in order to be able to exploit the economic rights over them, but never in a way that infringe the rights previously assigned to Kukuxumusu.