Intellectual Property Infringement on the Internet: What Court to Call?

by White & Case LLP

The internet does not know any national borders; website content can be viewed from anywhere in the world. This raises the question of what court has jurisdiction when the content of a website infringes on intellectual property rights.

Within the EU, this question is to be answered on basis of the Council Regulation (EC) No 44/20011 ("the Regulation"). The Regulation has established the fundamental principle that a person must be sued in the court of the Member State where the person is domiciled (Article 2 (2) Regulation). This would mean with regard to infringements on a website that any court action would have to be filed with the court of the Member State of the responsible person. This can cause severe obstacles for the person that is affected by an infringement. However, Article 5 (3) of the Regulation provides an exception to the aforementioned principle which – especially with regard to Internet based infringements – turns the table.

Article 5 (3) of the Regulation refers to matters relating to tort, delict or quasi-delict. Intellectual property right infringements by means of content placed on Internet websites are matters in this regard2. In such cases, Article 5 (3) of the Regulation rules that a person domiciled in a Member State may be sued in the courts of the place where the harmful event occurred or may occur. This covers the place where the damage occurred3.

The question, where this place is, can only be answered with regard to the nature of the affected intellectual property right4. The ECJ has specified this with regard to personality rights, trademark rights and copyrights.

Personality Rights
In case of an Internet related infringement of personality rights, for example due to a defamatory publication on a website, the damage occurs where the alleged victim has his centre of interests. This is – in general – the person’s habitual residence. However, a person may also have the centre of his interests where he does not habitually reside, in so far as other factors, such as the pursuit of a professional activity, may establish the existence of a particularly close connection with that place5. Hence, the claimant may chose the courts of the Member State where he resides or the Member State where he pursuits his professional activities.

Trademark Rights
In case of a trademark infringement the legal situation is different. Contrary to personality rights which are protected in all Member States, the protection afforded by the registration of a trademark is – in principle – limited to the territory of the Member State in which the trademark is registered. The ECJ states, that generally the only courts that are in the position to assess whether or not an action is infringing on the rights of a national trademark are the courts of the Member State in which the trademark is protected6. At first sight, this ECJ position does not surprise at all and rather "goes without saying". But the legal consequences with regard to trademark infringements on the Internet may be considered "unexpected". The case that the ECJ was dealing with demonstrates this perfectly. Subject to the decision was a Google-AdWords advertising that was solely published on a German website (Top-Level-Domain "de"). Due to that, one might think it is understood that the damage occurs in Germany and German courts have jurisdiction. But the court action was based on an Austrian trademark. Considering the aforementioned position that the ECJ took, not German but Austrian courts have jurisdiction7. Therefore, with regard to trademark infringements on the Internet, the jurisdiction depends on the Member State where the trademark is registered.

Uncertainty remains with regard to Community trade marks (CTM). The Regulation does not apply for CTMs because the jurisdiction is ruled under the EU-Regulation on CTMs8. Although the wording of the applicable Article 97 (5) of the EU-Regulation on CTMs is not identical (but similar) to the wording of Article 5 (3) of the Regulation9, subject to both Articles is the same matter. Therefore it is widely accepted that the case-law regarding to Article 5 (3) of the Regulation applies for Article 97 (5) of the EU-Regulation on CTMs as well (see Eisenführ, Commentary on the EU-Regulation on CTMs ["Gemeinschaftsmarkenverordnung"], 3rd Edition 2010, Sec. 97 Para. 11). Taking this into account, the consequences of the aforementioned ECJ principles with regard to CTMs are unclear. This is because CTMs are registered in all Member States and therefore, the courts of all Member States are able to assess whether or not a CTM is infringed on. Due to the ECJ principles above, the courts of all Member States would have jurisdiction when it comes to Internet related CTM infringements. But this would lead to an enormous number of courts the claimant could chose and may result in an unreasonable burden for the defendant. Due to that, it is likely that the ECJ will establish further requirements with regard to CTMs.

In case of a copyright infringement the ECJ ruled that the courts of any Member State have jurisdiction in which the copyright is protected and the website is accessible. For example, if the content of a website that is accessible in France infringes on a French copyright, the courts of France would have jurisdiction. But the jurisdiction is restricted to damages caused in that very Member State10.

1 - Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matter.
2 - see ECJ judgment of 25 October 2011 – C-509/09 and C-161/10 – eDate Advertising; ECJ judgment of 19 April 2012 – C-523/10 – Wintersteiger; ECJ judgment of 3 October 2013 – C-170/12 – Pinckney.
3 - The place of the event giving rise to it is also covered. This alternative jurisdiction is in Internet related cases mostly not interesting because it often leads to the same result as Article 2 (2) of the Regulation.
4 - ECJ judgment of 3 October 2013 – C-170/12 – Pinckney.
5 - ECJ judgment of 25 October 2011 – C-509/09 and C-161/10 – eDate Advertising.
6 - ECJ judgment of 19 April 2012 – C-523/10 – Wintersteiger.
7 - ECJ judgment of 19 April 2012 – C-523/10 – Wintersteiger.
8 - Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark), see its Article 94 (2) lit. a) and 97 (5).
9 - Article 97 (5) EU-Regulations on CTMs: “Proceedings […] may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened.”
10 - ECJ judgment of 3 October 2013 – C-170/12 – Pinckney.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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