Clifford Chance

It is usually said in artistic circles that in order for a pupil to be brilliant, he has to have an excellent teacher, in all respects. This would have been the case, for example, with Leonardo Da Vinci and his teacher, Andrea Verrocchio.

Nevertheless, the relationship between teachers and disciples or, in broader terms, between authors working in a coordinated manner or according to the instructions of one of them, is not always easy. And, of course, it is not free of the legal problems related to the authorship of works: the authorship of the renowned artist, who attracts the limelight, can eclipse the unrecognised author who, fed up of living in the shadow of the other, sometimes decides to emerge by filing a claim requesting that the courts declare his status as author (or, co-author, as the case may be).

This is precisely what happened to the well-known pop artist Antonio Mr De Felipe whom the Madrid Court of Appeal, in its judgment of 21 May 2021 (the "21 May 2021 Judgment" or the "Judgment")¹ – the most relevant points of which we will be addressing shortly – ordered to recognise the co-authorship of Japanese painter Fumiko Negishi in 221 paintings signed exclusively by Mr De Felipe.

This is a long-standing problem in the field of copyright, one that comes up again and again, but that can largely be tackled by specific agreements that regulate ownership of the copyright over the works (notwithstanding moral rights²).

Relevant background to the case

Between 2004 and 2016, Japanese painter Fumiko Negishi and renowned pop artist Antonio de Felipe maintained a close and productive collaboration in which Ms Negishi and Mr De Felipe created up to 221 paintings. According to the facts considered proven in the 21 May 2021 Judgment:

a. Ms Fumiko Negishi produced paintings in Mr De Felipe's studio following the instructions that he gave her, while at the same time working on her own artistic works at her studio in the afternoons. 

b. The instructions that Mr De Felipe gave to Ms Negishi related to the requests submitted by customers who had placed orders, involving the choice of the subject of the work, the provision of a photograph in order to paint a portrait and even sketches of what Mr De Felipe wanted her to paint.

c. It was Ms Negishi who painted the work "from start to finish", using the instructions provided by Mr De Felipe to produce a painting, although Mr De Felipe occasionally added lines, marks or different figures on the paintings himself.

d. Ms Fumiko Negishi painted in Mr De Felipe's studio for five hours a day, Monday to Friday, in exchange for a monthly salary.

e. After Mr De Felipe dismissed Ms Negishi, the Spanish courts declared that the collaboration between the two artists constituted an employment relationship, with Mr De Felipe as Ms Negishi's employer.

f. There is no record of the parties having formalised an agreement on the copyrights to the paintings created in the context of that employment relationship.

g. Up to 221 paintings were created in the course of said employment relationship.

Against this background, after Mr De Felipe dismissed her, Ms Fumiko Negishi filed a claim against Mr De Felipe requesting, among other things, that Ms Negishi be declared the co-author, together with Mr De Felipe, of the 221 works released exclusively with the signature of Mr De Felipe.

The legal issue at stake: authorship vs. Co-authorship

In this context, the legal issue at stake to be decided by the Madrid Court of Appeal was, essentially, whether the fact that Mr De Felipe gave instructions to a subordinate employee, Ms Negishi, who executed them, was sufficient to grant Mr De Felipe full authorship of the 221 paintings or whether such authorship should be shared (co-authorship) by the two artists as Ms Negishi's contribution had creative content and value, despite the fact that she was an employee.

Relevant doctrine of the 21 may 2021 judgment

The first relevant issue addressed by the 21 May 2021 Judgment is that the employment relationship between Mr De Felipe (employer) and Ms Negishi (employee) does not necessarily eliminate the employee's artistic contribution in favour of the employer. It will depend on what the actual contribution of each one was to the work initially conceived and finally created (expressed in material form). Basically, being an "employee" does not mean that automatically one cannot be the "author" (or co-author) of the work.

Having established this, in the specific case of Ms Negishi, who is a professional artist, the Madrid Court of Appeal found that:

a. The fact that Ms Negishi adapted to a certain style of painting (pop art) stipulated by Mr De Felipe (which Ms Negishi was able to do as she possessed the necessary technical skills), as well as following the instructions given by Mr De Felipe, does not imply that she completely surrendered her artistic contribution to the works, as she was the one who painted them. 

b. Ms Negishi agreed, in exchange for remuneration, to set out on a canvas what Mr De Felipe asked of her, but she did so using not only her command of pictorial technique, but also her artistic ability to ensure that a pre-existing reality was transposed to an original and creative material format. Therefore, Ms Negishi's work was clearly creative.

c. The fact that Mr De Felipe provided instructions to his employee does not detract from the artistic merit of Ms Negishi's painting, which managed to transform what was a preliminary idea or project into an original painting. In other words, without Ms Negishi's intervention, the paintings would not have been the specific final result that materialised, but would in all likelihood have looked different.

In a nutshell, the Court of Appeal found that without Ms Negishi's artistic contribution, the 221 paintings would not have been created as they currently exist. The Court found that a painting is a work of art that is characterised by embodying a specific artistic result, meaning that it was not sufficient for Mr De Felipe to have had an idea in this respect, but that this idea had to materialise in a physical format, which is what constitutes the ultimate artistic expression that characterises a copyrightable work.³ And this expression was realised by Ms Negishi in the form of an original work. The Court of Appeal accepts that Mr De Felipe played a primordial role in the birth of the idea for each painting, but the idea alone is not sufficient. It is also necessary for the idea to take a form (i.e. the execution of the painting) and that second task was carried out by Ms Negishi. Essentially, "we are not dealing with purely mechanical labour that is simply supplementary to the work of another, or a merely technical task". Ms Negishi's work "cannot be considered equivalent to that of a mere utensil or instrument, as if she had been no more than simply a tool used by the defendant to paint. Among other reasons because, even though Ms Negishi received instructions from Mr De Felipe to achieve a certain objective (regarding the object or person to be portrayed, the range of colours to be used, the scenography to be represented, etc.), it was Ms Negishi who […] painted alone for hours in the studio, meaning that she had to take decisions to ensure that what was merely an initial idea or project that had to materialise as a concrete result was transformed into the painted image ".

All of this led the Madrid Court of Appeal to conclude that the 221 paintings were a kind of artistic symbiosis derived from the collaboration of two professional painters: one who was able to conceive the ideas and concepts – Mr De Felipe – and the other able to express them on a canvas – Ms Negishi. As such, the authorship of the 221 works must necessarily be shared (co-authorship).

CONCLUSION (FROM A PRACTICAL POINT OF VIEW)

The 21 May 2021 Judgment accepted that the existence of an employment relationship cannot be used per se to deny that an employee who produces creative work can be considered an author (and become the holder of copyrights to the work created, as the case may be⁴ ).

Notwithstanding the moral rights that the employee may legally hold, in view of the doctrine of the 21 May 2021 Judgment it is highly advisable that:

1. all contracts signed by employers in Spain (or formalised in the past) with employees who perform creative tasks include copyright clauses; something that, in general, is common current practice; and
2. as a new development, such clauses envisage a regime according to which the employee, when following the instructions or guidelines provided by the employer, accepts that the result of his/her tasks will be a work that is owned by the employer in its entirety (no co-authorship).⁵
   
    

¹ Judgment number 204/2021 (Appeal Proceedings 54/2020; Judge rapporteur: Mr Enrique García García).

² In relation to moral rights, it is important to note that section 14 of the Spanish Copyright Act (Royal Decree 1/1996 of 12 April) provides that such moral rights cannot be waived or assigned.

³ Remember that, according to European Court of Justice case law, two cumulative circumstances must exist to qualify as a "work" protected by copyright: 1) there has to be a creation that can be considered original; and 2) this has to take the form of an object that is identifiable with sufficient precision and objectivity, which contains the elements that express the intellectual creation (CJEU Judgments of 11 June 2020, Brompton Bicycle Ltd, C-833/18, of 12 September 2019, Cofemel, C-683/17, of 16 July 2009, Infopaq International, C 5/08, and of 13 November 2018, Levola Hengelo, C 310/17).

⁴ This possibility is expressly envisaged in article 51 of the Spanish Copyright Act.

⁵ As a collective work (section 8 of the Spanish Copyright Act): "A work shall be deemed a collective work if it is created on the initiative and under the direction of an individual or legal person, who edits it and publishes it under his name, and where it consists of the combination of contributions by various authors whose personal contributions are so integrated in the single, autonomous creation for which they have been conceived that it is not possible to ascribe to any one of them a separate right in the whole work so created. In the absence of agreement to the contrary, the rights in the collective work shall vest in the person who publishes it and discloses it in his name".