Online copyright infringement—where to sue

Who has jurisdiction over online copyright infringement taking place in a different member state to where the claimant resides? Adam Rendle, senior associate at Taylor Wessing, and Dr Dominik Thompson from the firm’s Vienna office, say the Pez Hejduk v EnergieAgentur.NRW GmbHCase C-441/13 case could reduce claimants' choice as to where to sue if it is followed by the Court of Justice of the European Union (CJEU).

What were the background facts to this reference to the CJEU?

Ms Hedjuk is a professional photographer who specialises in architectural photography and lives in Austria. During her career, she created several photographic works about buildings by the Austrian architect Georg W Reinberg.In 2004, Mr Reinberg publicly displayed some of these photographic works when giving a lecture at an event organised by EnergieAgentur.NRW GmbH (a German energy think tank). Later on, EnergieAgentur published the same photographs on its own website, which had a German top level domain (.de). While Ms Hejduk had given consent to the use at the lecture, she did not consent to publication on the internet.

Ms Hedjuk brought an action against EnergieAgentur.NRW at the Commercial Court of Vienna seeking compensation. EnergieAgentur.NRW challenged the jurisdiction of the Austrian court arguing that only a German court could hear the case.

What was the nub of the questions referred?

The referred questions concern how to decide which member state's courts have jurisdiction over online copyright infringement taking place under a top level domain of a different member state to the member state where the claimant resides.

The Austrian court saw only two possibilities for the claimant in this case and asked the CJEU to choose between them. Is the claimant only allowed to bring the action:

  1. In the member state where the alleged infringer is established?
  2. In the member state(s) to which the allegedly infringing website (according to its content) is directed?

Could the Attorney General (AG) and CJEU have arrived at any conclusion other than that the claimant can sue in Austria for the damage suffered there?

A claimant may always sue where an infringer is domiciled under the Jurisdiction Regulation Council Regulation (EC) 44/2001, art 5(3). In case of an infringement, a rightsholder may opt to sue at the place ‘where the harmful event occurred’. The AG had to decide how this place should be determined when the infringement happened online.

In Pinckney v KDG Mediatech AG, C-170/12, [2013] All ER (D) 49 (Oct), the CJEU permitted a claimant to sue in France for the online sale of CDs by a defendant based in England because the relevant website was accessiblein France. The claimant could, however, sue only in relation to the harm suffered in France.

However, in this case, the AG opined that Ms Hejduk must bring the action in Germany because this is the place where the harmful event occurred (the test under the Jurisdiction Regulation). The AG arrived at this opinion by distinguishing online publication of the photograph from the online sale of a physical product (which were the facts in Pinckney). Online publication, the AG said, is fundamentally different because it usually will not be possible to say in which place or places a damage done by it materialises. As a result, the damage (in the AG's words) is:

  1. ‘dematerialised’
  2. has become diffuse
  3. can be said to have ‘shifted’ or become ‘delocalised’

The AG also rejected the argument that the Austrian court had jurisdiction over the damage which occurred in Austria. The AG indicated this would be both impractical and unfair, as it would be very difficult to assess the amount of damage which occurred in Austria. It also might be so little that the claimant might see the claim denied or that the Austrian court would award her compensation for all of the damage, which would contradict Pinckney.

What else did the AG opine?

The AG opined that extending the ratio from Pinckney automatically is not possible, because it was not really possible to determine the place(s) where the damage occurred. In such a case of ‘delocalised’ damage, the objectives of the Jurisdiction Regulation are best met by resorting to the place where the event occurred, which gave rise to the damage. It would be very difficult for the claimant to produce evidence indicating the amount of damage which occurred in the single member state where she brought the action and it would be difficult for a defendant potentially facing actions in a number of member states.

What practical factors should UK lawyers consider when advising rightsholders who are dealing with infringing content sold via the internet across borders?

The AG's opinion, if followed by the CJEU, would reduce claimants' choice as to where to sue for online copyright infringement, compared to the position following Pinckney. If suing in the member state where the infringer is located is not attractive, claimants would have to go to the source of the infringement.

In most cases, these places will be the same, but not always. Perhaps, however, if claimants could show specific damage in a particular territory (for example if standard licensing arrangements in that territory had been avoided by the infringer), this would help to show that the claimant could sue in that territory, even if it is not from where the infringement originates.

An earlier CJEU ruling on the location of online infringement of the ‘making available’ right in the database context held that it is infringed at least in the member state where the communication is targeted. As the AG did not find such a targeting in this case, he did not consider this question. The opinion may therefore need to be confined to its facts, applying only to circumstances where damage is ‘delocalised’. The AG himself said his solution is open for further distinguishing. It remains to be seen what the CJEU will make of this.

First published as an interview on Lexis®PSL IP & IT

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