We recently commented on the new French law of 11 March 2014 aiming to fight against the infringement of intellectual and industrial property rights (1). With that law, France has taken a major step forward and must clearly be considered as one of the most advanced country as regards the protection for IP rights.
It seems that the Cour de cassation, which is the highest French civil court, has simultaneously taken a step in the same direction, but from another angle. Until now (2), French courts usually declared they were competent to decide over an IP infringement matter, when committed on the Internet outside France, on two conditions:
- That the web site was accessible from France;
- And that the web site was, at least in part, intended for the French public, directed to the French consumers.
To determine if the second criterion was met, French judges appreciated whether there was a sufficient, substantial or significant connection, likely to have an economic impact, between the allegedly infringing actions and the French territory.
But last January the Cour de cassation issued three major decisions and ruled that it is enough, for French courts to be competent to hear a case, that the infringing products, contents or materials are accessible from France, whether they are broadcast or distributed via the Internet or via terrestrial communications means (3).
One of these decisions, the Pinckney case, was issued after a preliminary ruling from the ECJ on the interpretation of Article 5.3 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 (4). The ECJ ruled “that, in the event of alleged infringement of copyrights protected by the Member State of the court seised, the latter has jurisdiction to hear an action to establish liability brought by the author of a work against a company established in another Member State and which has, in the latter State, reproduced that work on a material support which is subsequently sold by companies established in a third Member State through an internet site also accessible with the jurisdiction of the court seised.” The Court added that “That court has jurisdiction only to determine the damage caused in the Member State within which it is situated” (5).
In the Pinckney case, material supports reproducing the copyrighted work (CDs) were in fact accessible in France via an internet web site and could be bought from France, although they were produced in Austria by an Austrian company and they were sold online on English web sites operated by English companies.
In the two other cases, the Cour de cassation went farther than the ECJ ruled.
In the “BBC” case, there weren’t any material support. A French photographer had found that some of his photographs had been reproduced in a documentary broadcasted by the BBC. Parts of the documentary were also broadcasted on YouTube without the BBC having nothing to do about it. It was decided that French courts were competent to rule on such a copyright infringement matter for the only reason that the documentary was accessible from France, either by terrestrial means requiring a specific subscription or via the Internet.
The third case related to the famous Che Gevara’s portrait by the photographer Alberto Korda. The portrait was reproduced over tee-shirts made and sold by American companies on web sites operated from the United States. Although Article 5.3 of Council Regulation (EC) No.44/2001 of 22 December 2000 did not apply since the web sites were established outside the European Union, the Cour de cassation decided that French courts were still competent in such a situation, on the grounds of Article 46 of the French Code of Civil Procedure (6).
What you need to remember
These decisions are a clear statement from the French highest civil court that French courts may have extended jurisdiction over IP infringement matters committed worldwide via the Internet.
But let us not forget that hearing the case does not mean dealing with the case in its entirety. As the ECJ put it, French courts have jurisdiction only to determine the damage caused in France. For IP infringement actions committed via the Internet outside France, and merely accessible from France, damage suffered in France by the victim in all probability would be of low intensity and very difficult to assess.
(1) See our article.
(2) See for example the following decisions from the Cour de cassation: Commercial ch., 11 January 2005, Case No.02-18381, “Hugo Boss” (trademark infringement matter); Criminal ch., 9 September 2008, Case No.07-87281 (copyright infringement matter); Commercial ch., 29 March 2011, Case No.10-12272 (trademark infringement matter).
(3) Civil 1st ch. 1, 22 January 2014, Case No.10-15890, Peter Pinckney v. KDG Mediatech AG; Civil 1st ch. 1, 22 January 2014, Case No.11-24019, “BBC”; Civil 1st ch. 1, 22 January 2014, Case No.11-26822, Korda v. Onion.
(4) Article 5.3 of Council Regulation (EC) No.44/2001 of 22 December 2000: “A person domiciled in a Member State may, in another Member State, be sued: […] 3. In matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur; […]”.
(5) ECJ, 3 October 2013, Case C-170/12, Peter Pinckney v. KDG Mediatech AG.
(6) Article 46 of the French Code of Civil Procedure: “The plaintiff may bring his case, at his choosing, besides the court of the place where the defendant lives, before: […] in tort matters, the court of the place of the event causing liability or the one in whose district the damage was suffered; […]”.