Posts Tagged Case C-170/12
Jurisdiction in copyright infringement with the involvement of the internet – The ECJ in Pinckney is satisfied with accessibility
[postscript 4 February 2014: the Cour de Cassation held on 22 January 2014, following the ECJ’s lead.]
Pro memoria: the case concerns an alleged infringement of a copyright which is protected by the Member State of the court seised (France), that court questioning its jurisdiction to hear an action to establish liability brought by the author (who lives in France) of a work against a company established in another Member State (Austria), which has in the latter State (Austria) reproduced that work on a material support which is subsequently marketed by companies (Crusoe and Elegy) established in a third Member State (the UK) through an internet site which is also accessible in the Member State of the court seised (France).
The Court of Appeal at Toulouse) held that the Tribunal de grande instance de Toulouse lacked jurisdiction on the ground that the defendant is domiciled in Austria and the place where the damage occurred cannot be situated in France, and that there was no need to examine the liability of Mediatech and Crusoe or Elegy in the absence of any allegation of collusion between them and Mediatech. The Cour de Cassation referred to the ECJ.
The ECJ concisely sets out its case-law in intellectual property rights vs personality rights infringements – I will not repeat the exercise here. It emphasises the (in my view conceptually wrong) link between applicable law and jurisdiction in the case of special jurisdictional rules. Unlike the AG, however, the court does not withhold ‘focus and target’ of the website as a criterion for jurisdiction. ‘(T)he possibility of obtaining a reproduction of the work to which the rights relied on by the defendant pertain from an internet site accessible within the jurisdiction of the court seised‘ (emphasis added) suffices. However if locus damni is the only jurisdictional ground for that Member State, that court, per the Shevill rule, only has jurisdiction to adjudicate on the damage caused in that Member State.
No doubt the IP community will chew a bit more on the judgment. The patchwork of litigation possibilities in IP infringement cases remains a challenge.
I reported just short of a year ago on the reference in Pinckney, Case C-170/12. The Advocate General opined on 13 June. Jääskinen AG first of all suggests the questions are inadmissible – let’s hope the ECJ will not agree for this will cut short the remainder of the discussion.
Pinckney, a resident of Toulouse (France), is the alleged author, composer and performer of 12 songs which were recorded on vinyl in the 1970s. The works have been copied in Austria, unto CD by Mediatech, registered in Austria. No permission was requested from Pinckney. Two UK-registered companies subsequently marketed the CDs from a variety of websites, which were accessible from Toulouse.
The AG distinguishes between two different infringements – both with ample reference to previous case-law:
Firstly, for reproduction rights, he suggests the locus damni is the same as the locus delicti commissi: for there is no third party involved. In the case at issue, this leads to both the UK (were the songs were copied on a host server) and Austria (where the copies were initially made) as having jurisdiction.
Further, for distribution and communication rights, the locus delicti commissi in the AG’s view, is the place where the infringers are established: the place of upload of the online content, and the place where the online offer of the CDs was decided. The locus damni is identified by the AG with reference to L’Oreal for trademarks, and to Football Dataco for database rights. The ‘targeting’ of consumers and the ‘focus’ of a website are determinant in the view of the AG (in the case of diffuse focus and target, leading to limited jurisdiction per the Shevill rule: jurisdiction only for the damage occurred on that territory). Mere accessibility of a site, ought not to be withheld in the view of the AG. Neither and importantly, the criterion of ‘centre of main interests’, withheld by the court in e-Date Advertising for the infringement of personality rights, and already rejected by the court in Wintersteiger for the infringement of trademarks: damage stemming from copyright infringement, the AG suggests, is not inherently related to the place of the copyright owner’s centre of interests.
‘Damage’, Brussels I and internet sales – Determining jurisdiction in copyright cases and material carriers
In Case C-170/12 Pinckney, on 11 April 2012, the French Cour de Cassation referred the following question for preliminary review with the Court of Justice (Case C-170/12)
Is Article 5(3) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters to be interpreted as meaning that, in the event of an alleged infringement of copyright committed by means of content placed online on a website,
– the person who considers that his rights have been infringed has the option of bringing an action to establish liability before the courts of each Member State in the territory of which content placed online is or has been accessible, in order to obtain compensation solely in respect of the damage suffered on the territory of the Member State before which the action is brought,
– does that content also have to be, or to have been, directed at the public located in the territory of that Member State, or must some other clear connecting factor be present?
Is the answer to Question 1 the same if the alleged infringement of copyright results, not from the placing of dematerialised content online, but, as in the present case, from the online sale of a material carrier medium which reproduces that content?
As excellently summarised by Stephen Vousden here, the Cour de Cassation is assuming two CoJ precedents need to be distinguished from Pinckney:
Case C-324/09, L’Oréal, which concerns the territorial scope of the EU’s trademark laws and revolves around websites ‘targeting’ consumers as opposed to merely being accessible to them; and
Cases C-509/09 and C-161/10 eDate Advertising and Martinez (‘Kylie Minogue’), in which the Court added the connecting factor ‘centre of interests’ for internet infringements of personality right. As I reported here, the Court of Justice in Wintersteiger confirmed that the connecting factor ‘centre of interests’ in Kylie Minogue and eDate Advertising only holds for infringement of personality rights in an internet context. Trademark violation is distinguished, on the grounds that rebus sic stantibus intellectual property rights are protected on a territorial basis. In Pinckney, which also concerns intellectual property, the Cour de Cassation moreover points out that the offending item was in fact a material carrier: a vinyl record, illegally compiling songs.
Plenty of factual elements therefore, complicating the finding of ‘place of the harmful event’ /damage under Article 5(3) Brussels I.