Judgment of 19 Apr 2012, C-461/10 (Bonnier Audio)

The applicants, publishing companies that rightholders of 27 audiobooks, brought proceedings in the Swedish court for copyright infringement by means of a file transfer protocol (FTP) server which allows file sharing and data transfer via the internet. The applicants applied to the Swedish court for an order for the disclosure of the name and address of the person using the IP address from which the files were sent. EPhone, the ISP, challenged the application, alleging that it violated the Data Retention Directive.

The national Court referred the following questions: (1) Does Directive 2006/24 preclude the application of a national provision which permits an internet service provider in civil proceedings, in order to identify a particular subscriber, to be ordered to give a copyright holder or its representative information on the subscriber to whom the internet service provider provided a specific IP address, which it is claimed was used in the infringement; (2) whether the answer to the first question is affected by the fact that the Member State has not implemented Directive 2006/24

Following the Court’s decision, Directive 2006/24 (on the retention of data generated or processed in connection with the provision of publicly available electronic communications services or of public communications networks and amending Directive 2002/58/EC) deals exclusively with the handling and retention of data generated by electronic communication service providers for the purpose of the investigation, detection, and prosecution of serious crime and their communication to competent national authorities. Thus, a national provision transposing the EU intellectual property directive, which permits an ISP in civil proceedings to be ordered to give a copyright holder information on the subscriber to whom the ISP provided an IP address allegedly used in an infringement, is outside the scope of Directive 2006/24 and therefore not precluded by that Directive. It is irrelevant that the Member State concerned has not yet transposed Directive 2006/24.

Regarding the notion of processing:, the Court ruled that the communication of the name and address sought by applicants constitutes processing of personal data. Furthermore, the communication of the name and address in question falls within the scope of Directive 2002/58 (and within the scope of Directive 2004/48, dealing with copyright).

Balancing fundamental rights: The national legislation in question requires, for an order for disclosure of the data in question to be made, that there be clear evidence of an infringement of an intellectual property right, that the information can be regarded as facilitating the investigation into a copyright infringement and that the reasons for the measure outweigh the potential harm to the person affected. Thus, it enables the national court seised of an application for an order for disclosure of personal data to weigh the conflicting interests involved, and thereby in principle ensures a fair balance between protection of intellectual property rights and protection of personal data.

Judgement of 19 Feb 2009, C-557/07 (LSG)

The applicant is a collecting society which, as trustee, enforces rights of recorded music producers in their worldwide recordings and of the recording artists in exploitation of those recordings in Austria. Tele2 is an Internet Service Provider (ISP) that assigns an IP address to its clients. LSG applied to the Austrian court for an order requiring Tele 2 to send names and addresses of persons to whom it had provided internet access service and whose IP addresses and date and time of connection were known. The national Court referred the following question (partial listing): Does Article 8(3) of Directive 2004/48, regard being had to Articles 6 and 15 of Directive 2002/58, not permit the disclosure of personal traffic data to private third parties for the purposes of civil proceedings for alleged infringements of exclusive rights protected by copyright?

The Court referred to the Promusicae judgment regarding (par. 70) balancing fundamental rights. According to the Court, article 15(1) of Directive 2002/58 – does not preclude Member States from imposing an obligation to disclose to private third parties personal data relating to Internet traffic in order to enable them to bring civil proceedings for copyright infringements. Community law nevertheless requires Member States to ensure that, when transposing Directives 2000/31, 2001/29, 2002/58 and 2004/48 into national law, they rely on an interpretation of those directives which allows a fair balance to be struck between the various fundamental rights involved. Moreover, when applying the measures transposing those directives, the authorities and courts of Member States must not only interpret their national law in a manner consistent with those directives, but must also make sure that they do not rely on an interpretation of those directives which would conflict with those fundamental rights or with the other general principles of Community law, such as the principle of proportionality.

In addition following the Court’s decision, Access providers who merely enable clients to access the Internet, even without offering other services or exercising any control, whether de iure or de facto, over the services which users make use of, provide a service capable of being used by a third party to infringe a copyright or related right, inasmuch as those access providers supply the user with the connection enabling him to infringe such rights. Thus, access providers which merely provide users with Internet access, without offering other services such as email, FTP or file‑sharing services or exercising any control, whether de iure or de facto, over the services which users make use of, must be regarded as ‘intermediaries’ within the meaning of Article 8(3) of Directive 2001/29.

Judgment of 7 Jul 2016, C-494/15 (Tommy Hilfiger Licensing e.a.)

The company Delta Center is the tenant of the marketplace ‘Pražská tržnice’ (Prague market halls). It sublets to market-traders the various sales areas in that marketplace. Manufacturers and distributers of branded products discovered that counterfeits of their goods were regularly in Prague market halls. On that basis, they asked the Czech courts to order Delta Center to stop renting sales areas in those halls to people who committed such infringements. The intellectual property directive allows trademark holders to bring an action against intermediaries whose services are used by a third party to infringe their trademarks.

The trademark holders consider that, like the operators of online marketplaces covered by the judgment in L’Oréal, the operator of a physical marketplace may, pursuant to the directive, be forced in law to bring trade mark infringements committed by market-traders to an end and to take measures in order to prevent new infringements.

The Nejvyšší soud (Supreme Court, Czech Republic) asks the Court whether it is actually possible to order the operator of a physical marketplace to put an end to trademark related infringements committed by market-traders and to take measures seeking to prevent new infringements.

In today’s judgment, the Court finds that an operator which provides a service to third parties relating to the letting or subletting of pitches in a marketplace, and which thus offers the possibility to those third parties of selling counterfeit products in that marketplace, must be classified as an ‘intermediary’ within the meaning of the directive. The Court states that whether the provision of a sales point is within an online marketplace or a physical marketplace is irrelevant because the scope of the directive is not limited to electronic commerce.

Consequently, the operator of a physical marketplace may itself also be forced to put an end to the trade mark infringements by market-traders and to take measures to prevent new infringements.

Similarly, the Court states that the conditions for an injunction issued by a judicial authority against an intermediary who provides a service of letting sales points in market halls are identical to those applicable to injunctions addressed to intermediaries in an online marketplace.

Thus, not only must those injunctions be effective and dissuasive, but they must also be equitable and proportionate. They must not therefore be excessively expensive and must not create barriers to legitimate trade. Nor can the intermediary be required to exercise general and permanent oversight over its customers. By contrast, the intermediary may be forced to take measures which contribute to avoiding new infringements of the same nature by the same market-trader. In addition, the injunctions must ensure a fair balance between the protection of intellectual property and the absence of obstacles to legitimate trade.

Judgment of the Court of 15 September 2016, C- C-484/14, (Mc Faden)

Mr Tobias Mc Fadden runs shop in which he offers access to a Wi-Fi network to the general public free of charge in order to draw the attention of potential customers to his goods and services. In 2010, a musical work was unlawfully offered for downloading via that internet connection. The Landgericht München I (Regional Court, Munich I, Germany, takes the view that he was not the actual party who infringed the copyright, but is minded to reach a finding of indirect liability on the ground that his Wi-Fi network had not been made secure. The Landgericht has referred a series of questions to the Court of Justice.

The directive exempts intermediate providers of mere conduit services from liability for unlawful acts committed by a third party with respect to the information transmitted. That exemption of liability takes effect provided that three cumulative conditions are satisfied: (i) the provider of the mere conduit service must not have initiated the transmission; (ii) it must not have selected the recipient of the transmission; and (iii) it must neither have selected nor modified the information contained in the transmission.

According to the Court where the above three conditions are satisfied, a service provider such as Mr Mc Fadden, who providers access to a communication network, may not be held liable. Consequently, the copyright holder is not entitled to claim compensation on the ground that the network was used by third parties to infringe its rights. However, the directive does not preclude the copyright holder from seeking before a national authority or court to have such a service provider ordered to end, or prevent, any infringement of copyright committed by its customers.

Lastly, the Court holds that an injunction ordering the internet connection to be secured by means of a password is capable of ensuring a balance between, on the one hand, the intellectual property rights of rightholders and, on the other hand, the freedom to conduct a business of access providers and the freedom of information of the network users. However, the directive expressly rules out the adoption of a measure to monitor information transmitted via a given network. Similarly, a measure consisting in terminating the internet connection completely without considering the adoption of measures less restrictive of the connection provider’s freedom to conduct a business would not be capable of reconciling the abovementioned conflicting rights.

Judgment of the Court of 24 November 2011, C‑70/10 (Scarlet)

(see also filtering)

SABAM, a management company representing authors, composers and editors of musical works, brought proceedings in the Belgian court against Scarlet, an internet service provider (ISP), to take measures to bring an end to copyright infringements committed by Scarlet’s customers. Scarlet had been ordered by the Belgian court of first instance to install a system for filtering electronic communications which use file-sharing software (“peer-to-peer”), with a view to preventing file 15 sharing which infringes copyright. Scarlet appealed. The court of appeal referred the question for preliminary ruling.

The national Court referred the following question: Whether EU Directives on electronic commerce in the internal market, intellectual property rights and data protection, read together and construed in the light of the requirements stemming from the protection of the applicable fundamental rights, must be construed as precluding an injunction on an ISP to introduce such a filtering system

The Court ruled that  ISP addresses are protected personal data because they allow the concerned users to be precisely identified. A filtering system may infringe the right to protection of personal data of the ISP’s customers, as it would involve a systematic analysis of all content and the collection and identification of the users’ IP address from which unlawful content on the network is sent. (¶¶ 50-51)

According the Court, the injunction to install the contested filtering system did not respect the requirement that a fair balance be struck between, on the one hand, the protection of the intellectual property right enjoyed by copyright holders, and, on the other hand, that of the freedom to conduct business, the right to protection of personal data and the freedom to receive or impart information. (¶ 53)

Judgment of 16 Feb 2012, C-360/10 (SABAM / Netlog)

SABAM is a Belgian management company which represents authors, composers and publishers of musical works. Netlog NV, is an online social networking platform where every person who registers acquires a personal space known as a ‘profile’. Users can, inter alia display personal photos or publish video clips. According to SABAM, Netlog’s social network infringes its making available right.

SABAM started court proceedings against Netlog (in Belgium). The Court of First Instance of Brussels made a reference for a preliminary ruling to the Court of Justice asking whether European Union law precludes a national court from issuing an injunction against a hosting service provider, such as an owner of an online social network, which requires it to install a system for filtering information stored on its servers by its service users, which applies indiscriminately to all of those users, as a preventative measure, exclusively at its expense and for an unlimited period.

Following the Court decision, αn imposition of a filtering system would require the hosting service provider to a) identify the files which are likely to contain works in respect of which holders of intellectual-property rights claim to hold rights, b) determine which of those files are being stored and made available to the public unlawfully, and, c) prevent files that it considers to be unlawful from being made available. Such preventive monitoring would therefore require active observation of the files stored by users with the owner of the social network. Accordingly, the filtering system would require that owner to carry out general monitoring of the information stored on its servers, something which is prohibited by the E-Commerce Directive.

The installation of a filtering system would involve monitoring all or most of the information stored by the hosting service provider concerned, in the interests of the copyright holders for an umlimited period and would be imposed for existing and future works. Such an injunction would result in a serious infringement of Netlog’s freedom to conduct its business since it would require Netlog to install a complicated, costly, permanent computer system at its own expense. Moreover, that injunction would also infringe the fundamental rights of its service users – namely their right to protection of their personal data and their freedom to receive or impart information – which are rights safeguarded by the Charter of Fundamental Rights of the European Union.

Consequently, the Court’s answer is that, in adopting an injunction requiring the hosting service provider to install such a filtering system, the national court would not be respecting the requirement that a fair balance be struck between the right to intellectual property, on the one hand, and the freedom to conduct business, the right to protection of personal data and the freedom to receive or impart information, on the other.

Judgment of 25 Jan 2017, C-367/15 (Stowarzyszenie Oławska Telewizja Kablowa)

SFP is a Polish organisation collectively managing copyright for audiovisual works. OTK broadcasts television programmes by means of a cable network in the town of Oława (Poland). After notice of termination was given on 30 December 1998 of a licensing agreement that set out the rules on payment between the parties to the main proceedings, OTK continued to make use of copyright works and filed an application with the Komisja Prawa Autorskiego (Copyright Commission, Poland) seeking, in essence, that the fee payable for use of the copyright managed by SFP be set. By decision of 6 March 2009, that commission set the fee at 1.6% of the net income, exclusive of value added tax, earned by OTK from its retransmission of works by cable, not including certain charges borne by it.

The Polish Supreme Court refers the which according to the CJEU should be understood as designed to establish whether Article 13 of Directive 2004/48 must be interpreted as precluding national legislation which provides for the possibility of demanding payment of a sum corresponding to twice the appropriate fee which would have been due if permission had been given for the work concerned to be used (‘the hypothetical royalty’).

Directive 2004/48 seeks to ensure that the substantive law on intellectual property is applied effectively in the European Union. Directive 2004/48 lays down a minimum standard concerning the enforcement of intellectual property rights and does not prevent the Member States from laying down measures that are more protective.

Article 13(1)(b) of Directive 2004/48 must be interpreted as not precluding national legislation, such as that at issue in the main proceedings, which provides that the holder of economic rights of copyright that have been infringed may require the person who has infringed those rights to compensate for the loss caused by payment of a sum corresponding to twice the amount of a hypothetical royalty.

Mere payment of the hypothetical royalty is not capable of guaranteeing compensation in respect of all the loss actually suffered, that are linked to researching and identifying possible acts of infringement, compensation for possible moral prejudice or payment of interest on the sums due.

1. Judgment of 17 Mar 2016, C-99/15 (Liffers)

Mr Liffers is the director, scriptwriter and producer of the audiovisual work entitled Dos patrias, Cuba y la noche. Mandarina produced an audiovisual documentary using certain passages of the work Dos patrias, Cuba y la noche  without authorization. That documentary was broadcast by the Spanish television. Mr Liffers brought an action before the Spanish Court against Mandarina and Mediaset, in which he requested that court to order those parties to cease all infringement of his intellectual property rights and to pay additionally compensation for the moral prejudice which he claimed to have suffered.

The Spanish Supreme by its question asks whether Article 13(1) of Directive 2004/48 must be interpreted as not permitting a person injured by an intellectual property infringement, who claims compensation for the material damage suffered as calculated, in accordance with heading (b) of the second subparagraph of Article 13(1) of that directive, on the basis of hypothetical royalties, also to claim compensation for his moral prejudice as provided for under heading (a) of the second subparagraph of Article 13(1) of that directive.

With regard, first, to the wording of heading (b) of the second subparagraph of Article 13(1) of Directive 2004/48, it must be noted that, although that provision does not mention moral prejudice as an element which the judicial authorities must take into consideration when setting the amount of damages to be paid to the rightholder, it also does not exclude that type of harm from being taken into account. By providing for the possibility of setting the damages as a lump sum on the basis of, ‘at least’, the elements referred to therein, that provision allows other elements to be included in that amount, such as, where appropriate, compensation for any moral prejudice caused to the rightholder.

Article 13(1) of Directive 2004/48 sets out the general rule that the competent judicial authorities must order the infringer to pay the injured rightholder damages that are ‘appropriate to the actual prejudice suffered by him as a result of the infringement’. Consequently, where the rightholder in question has in fact suffered moral prejudice, the actual wording of heading (b) of the second subparagraph of Article 13(1) of Directive 2004/48, read in conjunction with the first subparagraph of Article 13(1) of that directive, precludes the calculation of the amount of damages to be paid to that rightholder from being based exclusively on the amount of hypothetical royalties.

On the other hand, the application, by the competent judicial authorities, of the lump sum calculation method is permitted as an alternative only ‘in appropriate cases’. The latter term applies ‘for example where it would be difficult to determine the amount of the actual prejudice suffered’. In such circumstances, the amount of damages may be calculated on the basis of elements such as the royalties or fees normally due for use of the intellectual property right, which does not take into account any moral prejudice.

The objective of that directive is to ensure, inter alia, a high, equivalent and homogeneous level of intellectual property protection in the internal market and to attain a high level of protection of intellectual property rights that takes into account the specific aspects of each given case and is based on a method of calculating damages that addresses those specific aspects.

Thus, first subparagraph of Article 13(1) of that directive must be interpreted as establishing the principle that the calculation of the amount of damages to be paid to the holder of the intellectual property right must seek to ensure that the latter is compensated in full for the ‘actual prejudice suffered’ by him, which also includes any moral prejudice.

Setting the amount of damages due as a lump sum on the basis of hypothetical royalties alone covers only the material damage suffered by the intellectual property rightholder concerned; consequently, for the purposes of providing compensation in full, that rightholder must be able to seek, in addition to the damages thus calculated, compensation for any moral prejudice which he has suffered.

• Judgment of the 22 June 2016, Thomas Philipps GmbH v Grüne Welle Vertriebs GmbH

Grüne Welle Vertriebs is the exclusive licensee for a Community design for laundry balls. That license has not been entered on the register of Community designs. Thomas Philipps operates an on-line shop and sells, along with other products, a laundry ball under the description ‘washing machine ball with ceramic granules’. Taking the view that that product was a copy of the registered Community design for washing balls and that it was empowered by the rightholder of that model to bring all claims arising from the design in its own name, Grüne Welle Vertriebs sent a letter before action to Thomas Philipps demanding that it refrain from selling the laundry balls.  The national court, hearing a claim for damages and requests for measures of inquiry by Grüne Welle Vertriebs, held Thomas Philipps liable, finding that the applicant had established that it was entitled to bring the action for damages in its own name. Thomas Phillips appealed that decision and contended before the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany) that Grüne Welle Vertriebs is not entitled to bring claims arising from the Community design.

Oberlandesgericht referred to the General Court asking whether the first sentence of Article 33(2) of Regulation No 6/2002 must be interpreted as meaning that the licensee cannot bring proceedings alleging infringement of a registered Community design which is the subject of the license, if that license has not been entered in the register.

In that question, the Court held that the first sentence of Article 33(2) of Regulation No 6/2002 must be interpreted as meaning that the licensee may bring proceedings alleging infringement of a registered Community design which is the subject of the license although that license has not been entered in the register.

By its second question, the referring court asks whether Article 32(3) of Regulation No 6/2002 must be interpreted as meaning that the licensee can, in proceedings concerning the infringement of a Community design brought by it in accordance with that provision, claim damages for its own loss.

Answering that question, the Court explained that whilst the licensee may seek damages for the loss it has incurred by intervening in the infringement proceedings brought by the rightholder of the Community design, nothing prevents it from also doing so where it brings the infringement proceedings itself with the consent of the rightholder of the design, or, if it is the holder of an exclusive license, without that consent in the case of inaction by that rightholder after having given it notice to bring proceedings. It also held that according to recital 29 of the Regulation, the licensee should be able to seek damages in an efficient manner throughout the territory of the European Union.  To prohibit it from acting for that purpose in those proceedings would make it totally dependent, including in the case of an exclusive license, on the rightholder of the design to obtain compensation for damage suffered by it and, should that right holder not bring proceedings, would, therefore, be detrimental to the exercise of those rights. Therefore, such a prohibition is contrary both to the objective of Regulation No 6/2006 and to the purpose of Article 32(3) and (4) of that regulation. Consequently, the answer to the second question is that Article 32(3) of Regulation No 6/2002 must be interpreted as meaning that the licensee can claim damages for its own loss in proceedings for infringement of a Community design brought by it in accordance with that provision.

Further reading on enforcement regarding in general enforcement:

Trademarks

16 July 2015 C-681/13, Article 14 trademark

12 April 2011 C‑235/09 Article 3 trademark

12 July 2011  C‑324/09 Article 11 (trademark)

18 January 2017  C-427/15 Artcile 8 (trademark)

15 November 2012 C-580/13 Article 8 trademark

Patents

18 October 2011  C-406/09 Article 14 patent

28 July 2016 C-57/15 Artcile 14 patent

Plant varieties

9 June 2016 C-481/14 Article 13 & 14 Plant Varieties