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On-line Cross-border Intellectual Property Disputes - new developments as to jurisdiction in relation to Internet related infringements Forum Rettsinformatikk.

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Presentation on theme: "On-line Cross-border Intellectual Property Disputes - new developments as to jurisdiction in relation to Internet related infringements Forum Rettsinformatikk."— Presentation transcript:

1 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 1

2 Structure Cross-border conflicts – A definition –International jurisdiction –New developments (at to Internet related infringements) –Norwegian and Swedish perspectives 2

3 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

4 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

5 Structure Cross-border conflicts – A definition –International jurisdiction –New developments (at to Internet related infringements) –Norwegian and Swedish perspectives 5

6 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

7 Cases – article 5(3) 1.21/76, [1976] ECR 1735, Bier v. Mines de potasse d’Alsace 2.189/87, [1988] ECR 5565, Kalfelis v. Bankhaus Schröder 3.C-220/88, [1990] ECR I-49, Dumez v. Helaba 4.C-261/90, [1992] ECR I-2149, Reichert v. Dresdner Bank 5.C-68/93, [1995] ECR I-415, Shevill v. Presse Alliance 6.C-364/93, [1995] ECR I-2719, Marinari v. Lloyd’s Bank 7.C-51/97, [1998] ECR I-6511, Réunion Européenne v. Spliethoff’s 8.C-167/00, [2002] ECR I-8111, Verein für Konsumenteninformation v. Henkel 9.C-334/00, [2002] ECR I-7357, Tacconi v. HWS 10.C-18/02, [2004] ECR I-1417, Danmarks Rederiforening v. LO 11.C-168/02, [2004] ECR I-6009, Kronhofer v. Maier 12.C-189/08, [2009] ECR I-6917, Zuid-Chemie v. Philippo’s Mineralenfabriek 13.C-509/09, [2011] ECR I-0000, eDate v. X 14.C-161/10, [2011] ECR I-0000, Martinez v. MGN 15.C-292/10, [2012] ECR I-0000, G v. Visser 16.C-523/10, [2012] ECR I-0000, Wintersteiger v. Products 4U 17.C-173/11, [2012] ECR I-0000, Fotball Dataco v. Sportradar 18.C-133/11, [2012] ECR I-0000, Folien Fischer v. Ritrama 1.21/76, [1976] ECR 1735, Bier v. Mines de potasse d’Alsace 2.189/87, [1988] ECR 5565, Kalfelis v. Bankhaus Schröder 3.C-220/88, [1990] ECR I-49, Dumez v. Helaba 4.C-261/90, [1992] ECR I-2149, Reichert v. Dresdner Bank 5.C-68/93, [1995] ECR I-415, Shevill v. Presse Alliance 6.C-364/93, [1995] ECR I-2719, Marinari v. Lloyd’s Bank 7.C-51/97, [1998] ECR I-6511, Réunion Européenne v. Spliethoff’s 8.C-167/00, [2002] ECR I-8111, Verein für Konsumenteninformation v. Henkel 9.C-334/00, [2002] ECR I-7357, Tacconi v. HWS 10.C-18/02, [2004] ECR I-1417, Danmarks Rederiforening v. LO 11.C-168/02, [2004] ECR I-6009, Kronhofer v. Maier 12.C-189/08, [2009] ECR I-6917, Zuid-Chemie v. Philippo’s Mineralenfabriek 13.C-509/09, [2011] ECR I-0000, eDate v. X 14.C-161/10, [2011] ECR I-0000, Martinez v. MGN 15.C-292/10, [2012] ECR I-0000, G v. Visser 16.C-523/10, [2012] ECR I-0000, Wintersteiger v. Products 4U 17.C-173/11, [2012] ECR I-0000, Fotball Dataco v. Sportradar 18.C-133/11, [2012] ECR I-0000, Folien Fischer v. Ritrama 1.21/76, [1976] ECR 1735, Bier v. Mines de potasse d’Alsace 2.189/87, [1988] ECR 5565, Kalfelis v. Bankhaus Schröder 3.C-220/88, [1990] ECR I-49, Dumez v. Helaba 4.C-261/90, [1992] ECR I-2149, Reichert v. Dresdner Bank 5.C-68/93, [1995] ECR I-415, Shevill v. Presse Alliance 6.C-364/93, [1995] ECR I-2719, Marinari v. Lloyd’s Bank 7.C-51/97, [1998] ECR I-6511, Réunion Européenne v. Spliethoff’s 8.C-167/00, [2002] ECR I-8111, Verein für Konsumenteninformation v. Henkel 9.C-334/00, [2002] ECR I-7357, Tacconi v. HWS 10.C-18/02, [2004] ECR I-1417, Danmarks Rederiforening v. LO 11.C-168/02, [2004] ECR I-6009, Kronhofer v. Maier 12.C-189/08, [2009] ECR I-6917, Zuid-Chemie v. Philippo’s Mineralenfabriek 13.C-509/09, [2011] ECR I-0000, eDate v. X 14.C-161/10, [2011] ECR I-0000, Martinez v. MGN 15.C-292/10, [2012] ECR I-0000, G v. Visser 16.C-523/10, [2012] ECR I-0000, Wintersteiger v. Products 4U 17.C-173/11, [2012] ECR I-0000, Fotball Dataco v. Sportradar 18.C-133/11, [2012] ECR I-0000, Folien Fischer v. Ritrama 1.21/76, [1976] ECR 1735, Bier v. Mines de potasse d’Alsace 2.189/87, [1988] ECR 5565, Kalfelis v. Bankhaus Schröder 3.C-220/88, [1990] ECR I-49, Dumez v. Helaba 4.C-261/90, [1992] ECR I-2149, Reichert v. Dresdner Bank 5.C-68/93, [1995] ECR I-415, Shevill v. Presse Alliance 6.C-364/93, [1995] ECR I-2719, Marinari v. Lloyd’s Bank 7.C-51/97, [1998] ECR I-6511, Réunion Européenne v. Spliethoff’s 8.C-167/00, [2002] ECR I-8111, Verein für Konsumenteninformation v. Henkel 9.C-334/00, [2002] ECR I-7357, Tacconi v. HWS 10.C-18/02, [2004] ECR I-1417, Danmarks Rederiforening v. LO 11.C-168/02, [2004] ECR I-6009, Kronhofer v. Maier 12.C-189/08, [2009] ECR I-6917, Zuid-Chemie v. Philippo’s Mineralenfabriek 13.C-509/09, [2011] ECR I-0000, eDate v. X 14.C-161/10, [2011] ECR I-0000, Martinez v. MGN 15.C-292/10, [2012] ECR I-0000, G v. Visser 16.C-523/10, [2012] ECR I-0000, Wintersteiger v. Products 4U 17.C-173/11, [2012] ECR I-0000, Fotball Dataco v. Sportradar 18.C-133/11, [2012] ECR I-0000, Folien Fischer v. Ritrama

8 Structure Cross-border conflicts – A definition –International jurisdiction –New developments (as to Internet related infringements) –Norwegian and Swedish perspectives 8

9 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 […]

10 C-509/09, eDate v. X and C-161/10, Martinez v. MGN 25 October

11 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 […]

12 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.

13 C-292/10, G v. Visser 15 March confirms eDate as to the applicability of article 5(3)…

14 C-523/10, Wintersteiger v. Products 4U 19 April

15 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.

16 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.

17 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

18 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

19 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/

20 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

21 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

22 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...

23 C-173/11, Fotball Dataco v. Sportradar 18 October

24 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...

25 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.

26 C-133/11, Folien Fischer v. Ritrama 25 October

27 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.

28 Structure Cross-border conflicts – A definition –International jurisdiction –New developments (as to Internet related infringements) –Norwegian and Swedish perspectives 28

29 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 , decided 13 May

30 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.

31 District Court of Stockholm (STR) Case no. T , 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

32 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?

33 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 , decided 13 May 2013

34 Thanks for the attention! Ulf Maunsbach Assistant Professor, LLD. Faculty of Law University of Lund SWEDEN


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