The internet is global. It knows no borders. That universality means that website content can be viewed from anywhere in the world. Worldwide access exposes website operators and internet publishers to the possibility of being hauled into courts hither and thither.

Deciding where an intellectual property right (IPR) holder can seek redress is a tricky matter. When choosing where to file an infringement claim, the principal underlying factors from the victim’s viewpoint are convenience and expense. Yet, the governing law may dictate a different jurisdiction to that of choice.

The starting point is Council Regulation 44/2001. This regulation stipulates that a person must be sued in the court of the member state where the person is domiciled. However, in the case of website infringements, the regulation establishes the rule that a person domiciled in a member state may be sued in the courts of the place where the harmful event occurred or may occur.

In addition to the principles laid down in the regulation, the case law of the Court of Justice of the European Union (CJEU) provides further guidance for potential litigants in choosing a forum, depending on the nature of the affected IPR.

In a case of copyright infringement, Mr Pinckney, a resident of France, discovered that an Austrian company, without his authority, had reproduced songs from his album and that companies from the United Kingdom were marketing the songs on various internet sites accessible from France.

Deciding where an intellectual property right holder can seek redress is a tricky matter

Mr Pinckney brought a copyright infringement action against the Austrian company in a French court seeking compensation for damage sustained on account of the infringement of his copyright. Mediatech, the Austrian company, challenged the jurisdiction of the French courts. The Luxembourg Court acknowledged that copyright is subject to the principle of territoriality. The court ruled that, when a member state protects infringement of copyrights, the court of that State has jurisdiction to hear an action to establish liability brought by a copyright owner against a company established in another member state. In determining damages, the court ruled that the jurisdiction is restricted to damages caused in that very member state. The court therefore found that the French courts were correctly seized of the case.

In the case of an internet-related infringement of personality rights, the harmful event is deemed to occur where the victim has its centre of interests, which would mean either the person’s habitual residence or such other place where the person has a particularly close connection through, for instance, the pursuit of a professional activity. A claimant can sue in relation to a defamatory publication on a website either in the defendant’s home jurisdiction or, alternatively, in any jurisdiction wherever the content is accessible, but in the latter case, only insofar as damage occurred in that jurisdiction.

Online use and abuse of trademarks also raises questions of territoriality. The CJEU addressed the question in the case of eDate Advertising. The Austrian website owner published an article on its website in which it reported on an alleged crime committed by a German citizen. The latter requested eDate Advertising to remove the article concerned from its website. eDate Advertising refused to oblige and the German citizen initiated a claim before the German courts to have the article removed. In its defense, eDate Advertising contended that the German courts do not have jurisdiction on this matter since the website is hosted in Austria. In its judgment the CJEU concluded that the regulation allows a person to initiate proceedings for an alleged violation of his personality rights against a party established in another member state, either before the courts in which the website provider is established or in the victim’s own country, provided that damages have occurred in such country.

In a case of trademark infringement, an Austrian company that makes and sells ski-related products under the Austrian trademark Wintersteiger registered its mark also in Germany. Without authorisation, Products 4U registered Wintersteiger as a Google AdWord in respect of searches carried out on Google’s search engine for Germany, a sponsored link appears on the right-hand side of the page with a link to Product 4U website. Wintersteiger brought an action in Austria against Products 4U. Following a reference by the Austrian Supreme Court, the Court in Luxembourg ruled that a claim for trademark infringement relating to online use of the mark can be brought in the country where the mark is registered, even if the online use relates to a website operating under a foreign country-specific URL. At the same time, the claim can also be brought in the defendant’s home jurisdiction, even if the infringement relates to a trademark registered in another member state.

The case law illustrates that state boundaries to the enforcement of IPRs are not impervious barriers.

Josette Grech is adviser on EU law at Guido de Marco & Associates.

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