FEIA v CSEC - Ownership of registered design in commission designs - AG's Opinion

In C-32/08 Fundacion Espanolas para la Innovacion de la Artesania v Cul de Sac Espacio Creativo SL & Acierta Product & Position SA, a preliminary reference was made to the ECJ by the Mercantile Court of Alicante, Spain. The critical issue was the proper interpretation of Art.14(3) of the Community Design Regulation 6/2002 which states that a design developed by an employee in the execution of his duties or following instructions given by his employer vests in the employer unless otherwise agreed or specified under Community law. The facts of the referred case was that the design in question had been commissioned under a contract. The Spanish court considered that it needed guidance on the effect of Art.14(3) on such contracts.

AG Mengozzi concluded that a commission was not a design developed by an employee in the execution of his duties. He thus said that contract and/or national law determined who was the owner of the design and that national law which conferred the ownership of such rights on the commissioner was not contrary to Art.14(3). 

However, Art.14(3) is only intended to deal with employment issues. Thus, it was necessary to consider the proper interpretation of Art.14(1) which states that the right to the design belongs to the designer or his "successor in title". The Advocate-General rejected a submission that "successor in title" meant only persons who acquired the right by devolution of title upon death or a merger of a company. In his opinion, it included persons who had acquired the right by contract. He further held that where the law of a Member State deemed the commissioner to own the design right in a contract of commission, that such was permitted under Art.14 and indeed envisaged under Art.88(2) which permitted recourse to Member States' law where the Regulation was silent.

Is this correct? One must await the judgment of the ECJ. Plainly, where a work is commissioned for money or money's worth, generally, it is recognised that the design right will vest in the commissioner. The rationale for this is that the commissionee has been paid regardless of the success of the design whereas the commissioner must obtain value from the commissioned design by exploiting it. That will incur risk because the design may not be a good design or may require investment to make it an attractive design. However, Art.14 appears to be a comprehensive code as to ownership. Whilst no doubt, a contract between a commissioner and a commissionee which stipulates that the design is owned by the commissioner will fall within Art.14(1) because the commissioner would be the successor in title to the commissionee's design, it is less clear that Member State's laws can in effect legislate on the issue of ownership of a Community design.