International Jurisdiction in IPR Infringements Committed on the Internet – Revisiting CJUE decisions in “Pinckney” and “Hejduk”
Intellectual property rights (IPR) are territorial in nature and its protection is established at national level. For this reason, it is particularly troublesome to determine the jurisdiction and the applicable law in cases in which IPR infringements are committed on the Internet. The difficulties derive from the fact that a single infringing act may have consequences in many different jurisdictions.
The Court of Justice of the European Union (CJEU) has heard several cases related to such kind of infringements. The latest judgment so far dates back to January 22 of 2015, C-441/13 “Hejduk”, regarding the interpretation of article 5.3 of Council Regulation 44/2001, of December 22 of 2000, on jurisdiction and the recognition and enforcement of judgments on civil and commercial matters (now, Art. 7.2 of Regulation 1215/2012, the recast version of the so-called Brussels I Regulation)
In the particular case heard by the submitting Court, Ms. Hejduk, a professional photographer with domicile in Vienna (Austria), requested before the courts of this country the declaration of an infringement of her copyrights over some pictures published without her authorization in a web site owned by EnergieAgentur.NRW GmbH, a company domiciled in Düsseldorf (Germany). Since the company is domiciled in Germany and the web site in which the infringing pictures are published operates under a German top level domain name (.de), the defendant challenged the international jurisdiction of the Austrian court. This court referred a preliminary question to the CJUE to determine whether in the event of a dispute concerning an infringement consisting on the unauthorized publishing of pictures in a web site that operates under the top level domain name of a Member State other than that of the domicile of the copyright´s owner, the courts of the Member State of the alleged infringer’s domicile are the sole competent courts; or if the Courts of the Member States to which the content of the web site is addressed can also be competent.
Within the above framework, the CJEU is formally requested to interpret article 5.3 (now 7.2) of the Brussels I Regulation. Such article provides an exception to the general ground of jurisdiction established in article 2.1 (now art. 4.1) of this regulation: the courts of the Member State where the defendant is domiciled. The exception consists of the possibility of suing a person in a Member State other than that of his domicile “in matters relating to tort, delict or quasi-delict”, concretely before “the courts of the place where the harmful event occurred or may occur”. This special ground of jurisdiction is justified in the existence of a link between the court and the controversy that ensures a good administration of justice.
In order to determine the meaning of “the courts of the place where the harmful event occurred or may occur”, the CJEU makes reference to its Judgment of 5 June 2014, C-360/12 “Coty Germany”, from which it can be understood that the action can be filed, at the defendant´s discretion, either at the place where the harmful event took place or in the place where the causal fact that caused the harm occurred.
Analyzing the case at issue, the CJEU considers that the causal fact that causes the alleged infringement of rights lies on the decision of publishing the litigious photographs in the defendant´s web site which is hosted at the physical address of the company that took the decision to publish the photographs (Germany).
In order to consider the application to the facts of the first criterion on jurisdiction consisting of the materialization of the alleged harm, the Court rejects the argument given by the defendant by virtue of which the content of his web site was not directed to Austria, as shown by the fact that it operates under a top level domain belonging to some other State. The CJEU invokes the “principle of accessibility of the web site” and states that damages exists just by the fact that the web site containing the litigious pictures is accessible from the Member State to which the submitting court belongs.
Lastly, the judgment recalls that the court in charge of the proceeding shall only be competent to hear about the harm caused in the territory of that Member State.
The judgment dismiss the conclusions reached by the Advocate General which supported the application of the criterion on the jurisdiction for the place of the causal fact instead of the materialization of the damage caused, and confirms the previous decision of the CJEU in its Judgment of 3 October 2013, C-170/12 “Pinckney” which gives greater freedom to the copyrights and related rights´ holders when choosing the jurisdiction to bring legal actions aimed at the defense of their rights when such rights are infringed on the internet. Bearing in mind that any web site is accessible from any Member State, the principle of accessibility grants the rights´ holders broad discretion when choosing the jurisdiction to file the complain. While the lawsuit can only be referred to the damages caused by the infringement within the territory of that state, it can be considered that the defendant´s right of a fair trial is jeopardized because he is obliged to defend himself in some states poorly connected with the litigation, causing him important economic damages. Even more, there is nothing to prevent a plaintiff from filing subsequent lawsuits relating to the same infringement before the courts of different Member States. To the extent that, as a consequence of the principle of territoriality, such infringement is going to be judged pursuant to different laws in each state (art. 8.1 Rome II Regulation), the existence of lis pendens or related actions with the previously ongoing proceedings shall not be taken into account nor will the “res judicata” effect be applicable.
To our understanding, in the “Pinckney” and “Hejduk” judgments, the CJEU has lost the opportunity to adopt the principle of “directing activities” to determine the jurisdiction of IP rights infringement actions on the Internet, as it has been done with other matters such as consumer contracts (CJUE Judgement 7 December 2010, 585/08, “Pammer” and 144/09, “Hotel Alpenhof”) and online defamation (CJUE Judgement 25 October 2011, C-509/09, “eDate Advertising” and 161/10 “Martinez”). In accordance with this principle, the courts of the place where the effects of the infringement are shown can only be declared competent if there are enough evidences that the web site is directed to that specific state. Thus, by way of example, in the “Hejduk” proceedings it was clear, because of the language used in the webs site – in spite of the name of the domain name-, that it was addressed to Germany and Austria, as they are countries that share the language used therein. Although it is true that this criterion reduces the rights´ holder’s opportunities, it guarantees a proper protection of the defendant´s right to a fair trial.
Related Posts:
- On the Different Interpretation of Forum Delicti Commissi in Relation to EU Trademarks and National Trademarks
- The Adoption of Provisional Measures in Cross-border IP Disputes in the Framework of the Brussels I Regulation
- CJEU Judgement “Wintersteiger”: useful criteria to determine jurisdiction in Internet-related IP disputes
- Jurisdiction for declarations of non-infringement