Ruling may be first cross-border injunction in a copyright infringement case in the field of industrial design.
The Court of Florence recently ruled on an application for injunctive relief filed by an Italian designer against an Italian company and a Hong Kong company for allegedly manufacturing and distributing, in breach of the claimant’s intellectual property rights, a product reproducing an original knife set named “Voodoo” (also known in the United States as “The EX”) created by the claimant.
The facts indicate that the defendants were manufacturing and distributing the knife set internationally and online without the designer’s consent. In particular, the defendant Italian company was distributing the “Voodoo” knife set through a website corresponding to a gTLD.com domain name, and the defendant Hong Kong company was marketing the same product through several foreign-based websites with TLD.com.hk and TLD.com.cn domains. All the defendants’ websites were identical and in Italian.
The Court of Florence upheld the claimant’s application. It granted copyright protection to the knife set as an original work of authorship and ordered the seizure of the infringing products, preventing the defendants from any further distribution of those products, including the exportation, promotion, online sale and international sale thereof.
In accordance with the Italian laws enacting the EC Directive 48/2004 (regarding the enforcement of intellectual property rights), the Court ordered the defendants to disclose information on the distribution network of the infringing goods, most notably the domain names where the infringing product could be purchased.
The Court decision does not give a precise explanation of the legal grounds on which the claimant’s application was upheld. Thus the reasoning of the Court remains unclear and the principles of law applied by the Court must be inferred from an analysis of the ruling as well as from a reading of the petition for injunction.
In any case the ruling is of interest from an international point of view. By preventing both the Italian company and the Hong Kong company from distributing the infringing products online and internationally, the Court decision appears to be the first that explicitly allows a so-called “cross border injunction” in a case of copyright infringement in connection to industrial design. Additionally, by ordering the defendants to disclose information on the distribution network of the infringing goods, including domain names based outside of Italy, the Court’s decision is also one of the first to apply the principles set forth by the EC Directive to the enforcement of intellectual property rights.
It appears that the Court of Florence held itself to have jurisdiction over the claim against the Honk Kong company by applying Article 6 of the Brussels Convention (which substantially mirrors the provision of Regulation 44/2001), as interpreted by the European Court of Justice (ECJ). Notably, a foreign defendant may be sued in Italy where it is one of a number of defendants, provided that one of the said defendants is domiciled in Italy and there exists between various actions the claimant brings against the different defendants a connection of such a kind that it is practical to hear them together in order to avoid irreconcilable judgments being handed down.
From the facts of the case, it would appear that one of the defendants was an Italian company and that the conduct of both defendants was in some way linked (the same people were involved in both Italian and Hong Kong companies).
In principle, the Court of Florence could have held itself to have jurisdiction over the Hong Kong company also on the basis of Article 5 Paragraph 3 of the Brussels Convention (which substantially mirrors the provisions of Regulation 44/2001) which, also according to the interpretation of the ECJ, has held that the so-called “locus commissi delicti” rules are applicable in the event that one of the following criteria are fulfilled: (i) a harmful event, in respect of which the claimant seeks redress, has occurred in Italy, or, alternatively, if the claimant so chooses, (ii) the act directly causing the said harmful event has been carried out in Italy. In this respect, in order to retain jurisdiction over a trademark infringement allegedly carried out through a foreign-based website operated by a foreign company, the Court of Rome (ruling of 9 March 2000) applied Article 5, Paragraph 3 of the Brussels convention of 1968, as interpreted by the ECJ, stating that the place where the harmful event occurred must either be the place where the event ultimately causing the harm occurred or the place where the ultimate harm occurred. Since the claimant was Italian and alleged that the trademark infringement had occurred in Italy, the Court of Rome held that the Italian courts had jurisdiction. Furthermore the criminal section of the Italian Supreme Court, in its ruling handed down on 27 December 2000, held that both Italian jurisdiction and Italian law were applicable to the case of a foreign-based website which was accessible from Italy and which contained statements and images which were harmful to the reputation and privacy of an individual domiciled in Italy.
In this respect, the actual “destination” of the foreign websites to the Italian public as well as the Italian domicile of the claimant may have played an important role.