SPAIN Law and Practice Contributed by: Mario Sol Muntañola, Javier Márquez Martín, Ferran Llaquet Ballarín and Ana Padial, Sol Muntañola Abogados
8. Intersections and Overlaps 8.1 Choice of Protection and Strategic Considerations When an object is eligible for various forms of intel- lectual property protection – for example, copyright, design rights or trade marks – the choice of the most appropriate form for that object will depend on the strategy adopted. And the strategy must take into account the intended use of that creation and/or invention, that is, what its main application in the mar- ket will be, or also the most outstanding aspect of the object to be protected, that is, what it stands out for most, whether as a distinctive sign, a design or an original creation. It is equally important to consider the object’s potential for success in the specific form of protection sought. Similarly, its potential for inter- nationalisation or even the costs associated with the protection sought must be taken into account. 8.2 Cumulative and Overlapping Protection As regards the accumulation of protection, the Span- ish IP system is limited only by compliance with the various requirements set out in each of the different protection systems. If an object eligible for copyright protection also meets the requirements of patent law, it may be protected by both systems. This is a scenar- io that is difficult to imagine, where the existence of an original object, in the sense that it constitutes an intel- lectual creation specific to its author, reflecting their personality through free and creative decisions, and the existence of such an object can be identified with sufficient precision and objectivity, so that the scope of protection can be clearly determined (an interpre- tation recently reaffirmed in the “ Cantemir ” case of 2026, C-649/23), could also be protected by a patent right if it further possessed global novelty, involved an inventive step – in the sense of not being obvious to a person skilled in the field – and had industrial application. In any case, it is most common for this dual protec- tion, straddling the worlds of copyright and industrial property, to apply to designs. The special character- istics of designs mean that they can enjoy dual pro- tection. Not only do they have specific protection as designs, but if they meet the requirements set out in the Spanish Intellectual Property Law, they may also
pay compensation for the damage caused, as well as suffering reputational damage. However, there are some legal exceptions for spe- cific cases that allow text and data mining (TDM) to be carried out without the need to seek permission from the rights holders. In the EU, these exceptions were introduced by Directive (EU) 2019/790 on copy- right in the Digital Single Market, which are essen- tially divided into two types depending on the purpose and the beneficiary: (i) scientific research, intended for research bodies and cultural heritage institutions, which is mandatory; and (ii) the general exception, which allows text and data mining by any person or entity, including for commercial purposes (such as AI training), although under certain conditions, making it much more restrictive and limited (though it does grant greater flexibility to creators). 7.4 Enforcement Against AI-Enabled Infringement There are legal, regulatory and technical mechanisms in place to prosecute those who breach the rules by using generative AI tools. However, as of today, no adequate regulations have been developed to address the issues arising from the use of these tools; conse- quently, to tackle this type of infringement, one must rely on the provisions of the general regulatory and legal framework. The rapid evolution of technology presents significant challenges, and it has become clear that current legal frameworks are not as effective as they should be in taking effective action against the misuse of AI in are- as such as intellectual property or privacy, making the development of new, specific regulations essential. In all this, digital platforms and tool providers play a very important role. Precisely for this reason, and although historically they operated under the principle of “liabil- ity exemption” as mere intermediaries, the current EU regulatory framework has evolved towards a model of greater accountability on their part, so that these types of digital platforms and AI tool providers are increasingly exposed to subsidiary liability, at the very least, and even, in certain cases, to direct liability for the unlawful content, products and/or services offered by third parties using their infrastructure.
320 CHAMBERS.COM
Powered by FlippingBook