This is the second of a series of newsletters on the granting of cross-border injunctions regarding (territorially limited) intellectual property ("IP") rights by Dutch courts. Last week, in Part 1, we gave a general introduction and focused on cross-border injunctions for patents, trademarks and design rights. In this part we address cross-border measures for copyright, other IP rights and advertising law. In Part 3 we will give an update on 'pre-trial cross-border enforcement' and securing evidence in the Netherlands for the infringement of IP rights outside the Netherlands.

1. Copyright Law: material law EU countries harmonised by Copyright Directive

Also in cases concerning copyright infringement Dutch courts assume jurisdiction to grant cross-border injunctions against Dutch defendants. In Technip (20 September 2010), regarding infringement of a computer program, the Court of Appeal of The Hague issued a European Union ("EU")-wide cross-border injunction with reference to the harmonisation of copyright protection in the Software Directive and an injunction for several non-Member States.

Since then, the Court of Justice of the EU (the "CJ") in Painer (C-145/10, [2011]) enabled the granting of cross-border injunctions in copyright infringement cases against foreign defendants based on Art. 6(1) JRER[i]. The CJ broadened the interpretation of the "same situation of law" criteria required for the applicability of Art. 6(1) JRER, explaining that national courts can apply Art. 6(1) JRER in cases where there are several defendants domiciled in different EU Member States, even though the claims are based on different but "substantially identical" national laws. National copyright laws within the EU are substantially harmonised following the implementation of the Copyright Directive[ii] and the CJ's case law regarding the interpretation of the Directive. If there is similarity in both law and fact in this respect, the claims are deemed to be so closely connected that there is an interest to examine them together and to rule on them at the same time to avoid conflicting decisions. In practice this means that when several defendants (both Dutch and from other EU Member States) allegedly infringe the same work in several Member States Dutch courts thus are likely to assume international jurisdiction to grant a cross-border injunction based on Art. 6(1) JRER. Indeed the District Court of The Hague recently assumed such cross-border jurisdiction regarding copyright claims against German co-defendants (in Bang & Olufsen v Loewe, 21 January 2013) arguing that the concept of protection of a copyrighted work is harmonised EU-wide.

2. Advertising Law

In advertising law the situation is similar to copyright law: substantial harmonisation has taken place within the EU through both the Misleading and Comparative Advertising Directive[iii] and the Unfair Commercial Practices Directive[iv]. Depending on whether it regards (i) business-to-consumer (B2C) or business-to-business (B2B) advertising and (ii) either misleading or comparative advertising, one or the other directive applies. The Unfair Commercial Practices Directive provides for maximum harmonisation as concerns misleading B2C advertising, while the Misleading and Comparative Advertising Directive provides for a minimum level of protection throughout Europe concerning misleading B2B advertising. It also fully harmonises the rules of EU countries on both B2C as well as B2B comparative advertising. So in cases concerning the topics covered by these directives by analogy with Painer the same situation of law required by art 6(1) JRER can be assumed to exist within the EU. If the same advertisement is used in several (or all) EU Member States the requirement of same situation of fact is also likely to be met.

In light of the above, Dutch courts could in principle award pan-European injunctions when (one of) the defendant(s) is domiciled in the Netherlands pursuant to (Art. 2 and) Art. 6(1) JRER. Indeed very recently (on 29 January 2013, Wilkinson v Gillette) the Court of Appeal of The Hague in preliminary injunction proceedings granted a cross-border injunction covering Belgium, Luxemburg and The Netherlands. The case concerns unlawful B2C comparative advertising in which Gillette requested a pan-European injunction. The Court of Appeal assumed territorially unlimited international jurisdiction regarding a German (co-)defendant based on Art. 24 JRER[v] as the German defendant had appeared (and not solely to contest jurisdiction). When ruling on the infringement issue, however, the Court of Appeal explicitly considered that Art. 4(c) of the Misleading and Comparative Advertising Directive provides for maximum harmonisation. This means that had the Court of Appeal based its jurisdiction on Art. 6 JRER it would have had unlimited international jurisdiction over the German (co-)defendant as well because the criterion of "same situation in law" is fulfilled.

3. Other IP rights

Our view is that the rules concerning the granting of cross-border measures apply to all other IP rights as well. In summary proceedings (Art. 31 JRER) it is key that there is "a real connecting link" with the court addressed to determine whether cross-border measures are possible. Case law regarding the exception of invalidity (Art. 22(4)) applies to registered IP rights only (patents, national and Benelux trademarks and designs), but is irrelevant for copyright and advertising cases and specifically excluded for Community trademarks and designs. Whether Art. 6(1) JRER (granting cross-border measures in connected cases against multiple defendants from different Member States) applies and if so to what extent will depend on whether the national court deems that there is "the same situation of fact and law". The main variation between different IP rights for the possibility to grant cross-border measures lies in the extent in which the relevant legislation is the same or similar in different Member States. For database law, for instance, the situation is similar to copyright and advertising as material law throughout the EU is considerably harmonised due to the Database Directive[vi]. For plant breeders' rights the situation will differ for national rights and for Community rights (with the same situation of law being given in the latter situation, as it is for Community trademarks and designs). For all Community rights certain specific rules apply.

4. Practical consequences and conclusion

In an IP case where a Dutch and a foreign defendant are sued jointly for infringement of parallel national or Community IP rights in several EU countries by committing similar infringing acts, it should in principle be possible to obtain a cross-border injunction against all parties in the Netherlands under the conditions explained above to avoid irreconcilable decisions. For EU-based foreign defendants it will be necessary to illustrate that the same situation of law and fact exists; for non-EU defendants broader Dutch national rules apply. Due to the on-going harmonisation of IP law within the EU it is likelier that there is the same situation in law. In proceedings concerning provisional measures different, even broader possibilities exist in the Netherlands.

The small size of the country combined with the Dutch business spirit has traditionally resulted in a strong cross-border orientation which is reflected in the case law of the Dutch courts. Therefore the Netherlands is an excellent forum for cross-border measures in IP cases. We would be happy to advise whether cross-border measures can be obtained in your specific situation.