On-line Cross-border Intellectual
Property Disputes
- new developments as to jurisdiction in relation
to Internet related infringements
Forum Rettsinformatikk 2013
Ulf Maunsbach
Assistant Professor, LLD.
Faculty of Law
University of Lund
SWEDEN
ulf.maunsbach@jur.lu.se
http://works.bepress.com/ulf_maunsbach
1
Structure
• Cross-border conflicts
– A definition
– International jurisdiction
– New developments (at to Internet related
infringements)
– Norwegian and Swedish perspectives
2
What constitutes a cross-border
conflict?
• Cross-border = A conflict with a foreign
element
– May be parties domiciled in different countries
– May be a subject matter connected to another
jurisdiction
– May be a purposeful choice – party autonomy
• Exclusivity in Intellectual Property Law…
3
What constitutes a cross-border
conflict?
• Cross-border = A conflict with a foreign
element, that is to be considered by
Courts during the procedure
– When assessing jurisdiction
– When deciding what law to apply
– When enforcement and recognition becomes
relevant
4
Structure
• Cross-border conflicts
– A definition
– International jurisdiction
– New developments (at to Internet related
infringements)
– Norwegian and Swedish perspectives
5
International jurisdiction
Brussels I Regulation*
Article 5
[…]
3. in matters relating to tort, delict or quasi-delict, in
the courts for the place where the harmful event
occurred or may occur;
* COUNCIL REGULATION (EC) No 44/2001 of 22 December 2000 on jurisdiction
and the recognition and enforcement of judgments in civil and commercial matters
Cases – article 5(3)
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18.
17.
21/76, [1976] ECR 1735, Bier v. Mines de potasse d’Alsace
21/76, [1976] ECR 1735, Bier v. Mines de potasse d’Alsace
189/87, [1988] ECR 5565, Kalfelis v. Bankhaus Schröder
189/87, [1988] ECR 5565, Kalfelis v. Bankhaus Schröder
C-220/88, [1990] ECR I-49, Dumez v. Helaba
C-220/88,
[1990]
Dumez
v.
21/76,
[1976]
ECR ECR
1735,I-49,
Bier v.
Mines
deHelaba
potasse
d’Alsace
C-261/90,
[1992]
ECR
I-2149,
Reichert
v. Dresdner
Bank
189/87,
[1988]
ECRECR
5565,
KalfelisReichert
v. Bankhaus
Schröder Bank
C-261/90,
[1992]
I-2149,
v. Dresdner
C-68/93, [1995] ECR I-415, Shevill v. Presse Alliance
C-220/88,
[1990] ECR
Dumez
v. Helaba
C-68/93, [1995]
ECR I-49,
I-415,
Shevill
v. Presse Alliance
C-364/93,
[1995]
ECR
I-2719,
Marinari
v. Lloyd’s
Bank
C-261/90,
[1992]
ECR
I-2149,
Reichert
v. Dresdner
Bank
C-364/93, [1995] ECR I-2719, Marinari
v. Lloyd’s
Bank
C-51/97,
[1998]ECR
ECRI-415,
I-6511,
Réunion
Européenne
v. Spliethoff’s
C-68/93, [1995]
Shevill
v. Presse
Alliance
C-51/97, [1998] ECR I-6511, Réunion Européenne v. Spliethoff’s
C-364/93, [1995] ECR I-2719, Marinari v. Lloyd’s Bank
C-51/97, [1998]
ECR
I-6511,
Réunion
Européenne
v. Spliethoff’s
C-167/00,
[2002]
ECR
I-8111,
Verein
für Konsumenteninformation
v. Henkel
C-167/00,
[2002]
ECR
I-8111,
Verein
für
Konsumenteninformation
C-167/00,
I-8111,
Verein
für Konsumenteninformation
v. Henkelv. Henkel
C-334/00,[2002]
[2002]ECR
ECR
I-7357,
Tacconi
v. HWS
C-334/00,
[2002] ECR
I-7357, Tacconi
v. HWS
C-334/00, [2002]
v. HWS
C-18/02, [2004] ECR
ECR I-7357,
I-1417,Tacconi
Danmarks
Rederiforening v. LO
C-18/02, [2004]
Danmarks
Rederiforening
v. LO v. LO
C-18/02,
[2004]ECR
ECRI-1417,
I-1417,
Danmarks
Rederiforening
C-168/02, [2004] ECR I-6009, Kronhofer v. Maier
C-168/02,
I-6009,
Kronhofer
v. Maier
C-168/02,[2004]
[2004]ECR
ECR
I-6009,
Kronhofer
v. Maier
C-189/08,
[2009]
ECR
I-6917,
Zuid-Chemie
v. Philippo’s
Mineralenfabriek
C-189/08, [2009] ECR I-6917, Zuid-Chemie v. Philippo’s
Mineralenfabriek
C-189/08, [2009] ECR I-6917, Zuid-Chemie v. Philippo’s
Mineralenfabriek
C-509/09, [2011] ECR I-0000, eDate v. X
C-509/09,
[2011]
ECR
I-0000,
eDate
X
C-509/09,
[2011]ECR
ECR
I-0000,
eDate v.v.
v.MGN
X
C-161/10, [2011]
I-0000,
Martinez
C-161/10,
[2011]
ECR
I-0000,
Martinez
C-292/10,
G Martinez
v. Visser v.
C-161/10,[2012]
[2011]ECR
ECRI-0000,
I-0000,
v. MGN
MGN
C-292/10,
[2012]
ECR
I-0000,
G
v.
Visser
C-523/10,
I-0000,
Wintersteiger
C-292/10,[2012]
[2012]ECR
ECR
I-0000,
G v. Visserv. Products 4U
C-173/11,
[2012] ECR
I-0000, Fotball
Dataco v. Sportradar
C-523/10,
C-523/10, [2012]
[2012] ECR
ECR I-0000,
I-0000, Wintersteiger
Wintersteiger v.
v. Products
Products 4U
4U
C-133/11,
[2012]
ECR
I-0000,
Folien
Fischer
v.
Ritrama
C-173/11, [2012] ECR I-0000, Fotball Dataco v. Sportradar
17. C-173/11, [2012] ECR I-0000, Fotball Dataco v. Sportradar
18.
18. C-133/11,
C-133/11, [2012]
[2012] ECR
ECR I-0000,
I-0000, Folien
Folien Fischer
Fischer v.
v. Ritrama
Ritrama
Structure
• Cross-border conflicts
– A definition
– International jurisdiction
– New developments (as to Internet related
infringements)
– Norwegian and Swedish perspectives
8
On-Line Cross-border Infringement Cases
•
•
•
•
•
C-509/09, eDate v. X and C-161/10, Martinez v. MGN
C-292/10, G v. Visser
C-523/10, Wintersteiger v. Products 4U
C-173/11, Fotball Dataco v. Sportradar
C-133/11, Folien Fischer v. Ritrama
• Cases C-236/08 to C-238/08 Google France
• Case C-324/09 L’Oréal and Others
• […]
C-509/09, eDate v. X and C-161/10,
Martinez v. MGN
25 October 2011
10
C-509/09, eDate v. X and C-161/10,
Martinez v. MGN
46. It thus appears that the internet reduces the
usefulness of the criterion relating to distribution, in
so far as the scope of the distribution of content
placed online is in principle universal. […]
48. The connecting criteria […] must therefore be
adapted in such a way that a person who has
suffered an infringement of a personality right by
means of the internet may
bring an action in one forum in respect of all of
the damage caused […]
C-509/09, eDate v. X and C-161/10,
Martinez v. MGN
50. The jurisdiction of the court of the place where the alleged
victim has the centre of his interests is in accordance with the
aim of predictability of the rules governing jurisdiction also with
regard to the defendant, given that the publisher of harmful
content is, at the time at which that content is placed online, in
a position to know the centres of interests of the persons who
are the subject of that content. The view must therefore be
taken that the centre-of-interests criterion allows both the
applicant easily to identify the court in which he may sue and
the defendant reasonably to foresee before which court
he may be sued.
C-292/10, G v. Visser
• 15 March 2012
• ..confirms eDate as to the applicability of
article 5(3)…
C-523/10, Wintersteiger v. Products 4U
19 April 2012
14
C-523/10, Wintersteiger v. Products 4U
24. However, […], that assessment, made in the particular context of
infringements of personality rights, does not apply also to the determination of
jurisdiction in respect of infringements of intellectual property rights, such as
those alleged in the main proceedings.
25. Contrary to the situation of a person who considers that there has been an
infringement of his personality rights, which are protected in all Member States,
the protection afforded by the registration of a national mark is, in principle,
limited to the territory of the Member State in which it is registered, so that, in
general, its proprietor cannot rely on that protection outside the territory.
C-523/10, Wintersteiger v. Products 4U
28. It is the courts of the Member State in which the trade
mark at issue is registered which are best able to assess,
[…], whether a situation such as that in the main
proceedings actually infringes the protected national mark.
Those courts have the power to determine all the damage
allegedly caused to the proprietor of the protected right
because of an infringement of it and to hear an application
seeking cessation of all infringements of that right.
C-523/10, Wintersteiger v. Products 4U
• 34 In the case of an alleged infringement of a
national trade mark registered in a Member State
because of the display, on the search engine
website, of an advertisement using a keyword
identical to that trade mark, it is the activation by
the advertiser of the technical process displaying,
according to pre-defined parameters, the
advertisement which it created for its own
commercial communications which should be
considered to be the event giving rise to an
alleged infringement, and not the display of the
advertisement itself.
17
C-523/10, Wintersteiger v. Products 4U
• 35 As the Court has already held in the context of
interpretation of the directive to approximate the
laws of the Member States relating to trade
marks, it is the advertiser choosing a keyword
identical to the trade mark, and not the provider
of the referencing service, who uses it in the
course of trade (Google France and Google,
paragraphs 52 and 58). The event giving rise to a
possible infringement of trade mark law
therefore lies in the actions of the advertiser
using the referencing service for its own
commercial communications.
18
C-523/10, Wintersteiger v. Products 4U
• 36 It is true that the technical display process by
the advertiser is activated, ultimately, on a server
belonging to the operator of the search engine
used by the advertiser. However, in view of the
objective of foreseeability, which the rules on
jurisdiction must pursue, the place of
establishment of that server cannot, by reason of
its uncertain location, be considered to be the
place where the event giving rise to the damage
occurred for the purpose of the application of
Article 5(3) of Regulation No 44/2001.
19
C-523/10, Wintersteiger v. Products 4U
37. By contrast, since it is a definite and
identifiable place, both for the applicant and for
the defendant, and is therefore likely to facilitate
the taking of evidence and the conduct of the
proceedings, it must be held that the place of
establishment of the advertiser is the place
where the activation of the display process is
decided.
20
C-523/10, Wintersteiger v. Products 4U
38. It follows from the foregoing that an action
relating to alleged infringement of a trade mark
registered in a Member State through the use,
by an advertiser, of a keyword identical to that
trade mark on a search engine website
operating under a country-specific top-level
domain of another Member State may also be
brought before the courts of the Member State
of the place of establishment of the advertiser.
21
C-173/11, Fotball Dataco v. Sportradar
27. In that context, the protection by the sui generis right
provided for in the legislation of a Member State is limited
in principle to the territory of that Member State, so that the
person enjoying that protection can rely on it only against
unauthorised acts of re-utilisation which take place in that
territory...
C-173/11, Fotball Dataco v. Sportradar
18 October 2012
23
C-173/11, Fotball Dataco v. Sportradar
39. The localisation of an act of re-utilisation in the territory
of the Member State to which the data in question is sent
depends on there being evidence from which it may be
concluded that the act discloses an intention on the part of
its performer to target persons in that territory...
C-173/11, Fotball Dataco v. Sportradar
On those grounds, the Court (Third Chamber) hereby rules:
[…] the sending by one person, by means of a web server located
in Member State A, of data previously uploaded by that person from
a database protected by the sui generis right under that directive
[directive 96/9/EC] to the computer of another person located in
Member State B, at that person’s request, for the purpose of
storage in that computer’s memory and display on its screen,
constitutes an act of ‘re-utilisation’ of the data by the person
sending it. That act takes place, at least, in Member State B, where
there is evidence from which it may be concluded that the act
discloses an intention on the part of the person performing the act
to target members of the public in Member State B, which is for the
national court to assess.
C-133/11, Folien Fischer v. Ritrama
25 October 2012
26
C-133/11, Folien Fischer v. Ritrama
On those grounds, the Court (First Chamber) hereby rules:
Point (3) of Article 5 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 must be interpreted as meaning that an action for a
negative declaration seeking to establish the absence of
liability in tort, delict, or quasi-delict falls within the scope of
that provision.
Structure
• Cross-border conflicts
– A definition
– International jurisdiction
– New developments (as to Internet related
infringements)
– Norwegian and Swedish perspectives
28
On-Line Cross-border Intellectual Property
Disputes
- Norwegian and Swedish perspectives
Cross-border:
•NJA 2000 s 273 (Flootek)
•NJA 2007 s 287 (Aredal)
On-Line Cross-Border:
•RH 2008:4 (Arbeiderbladet)
•Swedish Supreme Court, NJA 2012 s 483 (Tylden),
decided 4 July 2012
•District Court of Stockholm (STR) case no. T 2409-12,
decided 13 May 2013
29
Swedish Supreme Court
NJA 2012 s 483 (Tyldén)
25. […] The ECJ found that the publication of content on a site is
different from territorial distribution of such printed media so that the
publication of content on a site in principle is addressed to an
unlimited audience. The content online can be instantly accessed
by an unlimited number of Internet users everywhere in the world,
completely independent of the sender's intentions regarding
availability outside the Member State where the sender is
established and exercises control (para 45 of the eDate Judgment).
Further, the ECJ emphasized the serious violation of personality
rights because the content that violates personal rights is available
anywhere in the world (para. 47).
26. This [eDate] case concerns the application of Article 5.3 and
should be applied mutatis mutandis to infringement of copyright by
the content on a website.
District Court of Stockholm (STR)
Case no. T 2409-12, decided 13 May 2013
Scanpix Sweden AB v. Google Inc.
• Use of “thumb nail” photos and copyright
infringement
• The decision regards the preliminary issue of
applicable law – Swedish Law was found to be
applicable
31
In summary…
• This is what we know
– Article 5(3) embraces three jurisdictional
heads (where the action took place, where the
damage occurred and where the centre of
interest is…)
– Article 5(3) may be used also in relation to
negative declaration
– It may be argued that Article 5(3) only applies
in relation to intentional/purposeful on-line
infringements?
This is what to expect!?
Pending…
• Pinckney - Case C-170/12
• Coty Prestige Lancaster Group - Case C-360/12
On-going…
• District Court of Stockholm (STR) case no. T
2409-12, decided 13 May 2013
Thanks for the attention!
Ulf Maunsbach
Assistant Professor, LLD.
Faculty of Law
University of Lund
SWEDEN
ulf.maunsbach@jur.lu.se
http://works.bepress.com/ulf_maunsbach