A recent Judgment rendered by the Spanish Supreme Court has clarified the problems arisen by the exploitation by a Spanish editorial (ENOKIA, S.L.) of the works of G.K Chesterton, which were considered as public domain as the protection period imposed by law had expired.

The holder of the rights, the entity “The Royal Literary Fund” (hereinafter RLF), claimed that the rights should not be under public domain based on the Intellectual Property Law of 1879, that established a period of protection of 80 years Post Mortem Autorem.

In the first instance, the claim was allowed. The defendant’s appeal was dismissed.

The Spanish editorial submitted another appeal before the Supreme Court based on the following grounds:

• Breach of the articles 5.2 and 7.6 of the Bern Convention.

• Breach of the articles 38 and 39 of the Intellectual Property Law of 1879 and the Transitional Provisions 4^th 5^th of the Intellectual Property Law of 1996.

The complexity of the case is understandable since in Spain the duration of the rights is regulated by a wide range of laws (Intellectual Property laws of 1879, 1987 and 1996, Bern Convention, the European Union legislation…), and considering that among those rules exist remarkable contradictions, not only in the duration periods, but also in the requirements in order to acquire this protection.

The works of Chesterton, who deceased in 1936, would be protected by the provisions of the 1879 Intellectual Property Law, as established in the Transitional Provision 4^th of the 1996 Intellectual Property Law:

“Exploitation rights of works created by authors deceased before 7 December of 1987 will have the duration expected on 1879 Intellectual Property Law”.

In 1879 Intellectual Property Law, the protection is subject to the formality of the registration with the Intellectual Property Registry.

The case law of the Supreme Court has already stated the non-application of formal requirements for the application of standards at European level in the field of copyright. Therefore, the obligation to register the work for protection would be irrelevant in this matter.

Moreover, article 7.8 of the Berne Convention establishes:

“however, unless the legislation of that country otherwise provides, the term shall not exceed the term fixed in the country of origin of the work.”

About the duration of rights in the country of origin, despite what is established according to the cited provision of the Berne Convention, it could not be applied based on the guiding principle of “non-discrimination against national authors”, as has been established by the Spanish Supreme Court in former judgments.

Therefore, in the opinion of the Court, it cannot be applied to foreign authors a term of protection minor than the term which the Spanish authors are protected with, and will therefore remain 80 years of protection as contained in the law of 1879.

Thus, despite being a foreign work, whose author died in 1936, and whose intellectual property rights are discussed in Spain, the Judgement applies the law of intellectual property of 1879, and consequently the principle of non-discrimination against national authors is applicable. So, the specific wording of the Berne Convention will not apply and the protection will extend to 80 years, which is the period of time applicable in Spain.