On the 4th July 2013 Eversheds reported on the Opinion of Advocate General Niilo Jääskinen (the “AG”) in the Case C-170/12 Pinckney. (Click here to view this article). Following this, in October 2013, the European Court of Justice (the “ECJ”) has made its ruling which, in contradiction of the AG’s Opinion, finally gives copyright holders some clarity on a member state’s jurisdiction in respect of infringing copies sold online.
The ECJ stated that the courts of a member state will have jurisdiction in relation to infringing copies offered online provided the website that is supplying such copies is accessible from the member state of the court seised, and that the copyright in question is protected in that member state. The effect of this is to, to a certain extent, avoid the concomitant complications of bringing infringement proceedings against multiple parties in multiple jurisdictions. Now the seised court has jurisdiction to establish liability against an infringing party located in another member state and in respect of an act of infringement in another member state. That said, the determination of damage is still an issue for the courts of the member state where the damage was caused.
This is clearly different to the rules applicable to online sales that infringe trade marks where the website must target consumers within the courts seised jurisdiction.
Mr Pinckney a resident of Toulouse, France had written and performed various songs. Mediatech, a company incorporated in Austria, pressed 12 of Mr Pinckney’s songs to CDs in Austria without his consent and supplied the CDs to two separate UK companies which then sold the CDs via online websites accessible in Toulouse.
Mr Pinckney sued Mediatech before the Toulouse Regional Court for damage sustained as a result of the infringement of his copyright. Mediatech challenged on the basis that the French courts did not have jurisdiction and that proceedings should be issued in Austria or the UK because damage was suffered in the UK and infringing copies made in Austria.
Toulouse Court of Appeal held that the court of first instance lacked jurisdiction as the defendant was domiciled in Austria and the damage that occurred could not be situated in France. Mr Pinckney challenged the decision. The matter was referred to the ECJ.
This involved an analysis of Brussels I Regulation on jurisdiction and enforcement of judgments which sets out a system for allocation of jurisdiction.
Article 2 of the Regulation is clear that persons domiciled in a member state shall be sued in the courts of that member state regardless of their nationality.
Article 5(3) is an exception to Article 2, it allows for a person to be sued for matters relating to torts in another member state if that court is the “place where the harmful event occurred or may occur”.
The ECJ interpreted these provisions and ruled that in the event of the infringement of copyright that is protected in a member state, its courts can have jurisdiction to liability on a claim brought against a company established in another member state where:
- That company reproduced copyright work on a material support (such as a CD) in the country it was established; and
- The material support is sold by companies in a third member state via the internet provided those sites are accessible within the jurisdiction of the court seised.
However, the court seised in these circumstances can only determine damage that arises in its jurisdiction. Therefore, it may be necessary for a claimant to file proceedings in all jurisdictions where damage has been caused to recover all of its loss.
The ruling adds clarity and allows copyright owners to claim damages in the jurisdiction that protects the copyright where the websites selling infringing copies are accessible in the same territory. It seems to be a sensible interpretation of the Brussels I Regulation. Due to the differences between this and trade mark law on jurisdiction, this may be helpful where a product being sold online infringes copyright and trademark but does not target consumers in the jurisdiction. However, this may be of limited assistance if there is little tangible damage in that jurisdiction and further proceedings will still need to be filed, making claims for damages costly.
In the modern dot com world this case proves once again the practical difficulties of the territoriality of copyright works when exploited online and the shortcomings of infringement actions.