The CJEU’s decision in Pinckney
does not improve with closer acquaintance.
Any judgment that sets up the accessibility of a website as a basis on
which to assume jurisdiction will ring alarm bells among internet actors, the
more so when the defendant did not itself operate the website in question. Pinckney
is also questionable from a more traditional intellectual property and jurisdiction
perspective.
The facts of Pinckney
assumed by the CJEU were that the Austrian defendant Mediatech pressed a batch
of CDs at its plant in Austria. Mediatech did this at the request of a United
Kingdom company which marketed them through an internet site. There was no
suggestion that Mediatech organised the distribution of the CDs by the UK companies
who sold them on their websites or that it had any connection with them
whatsoever. To adopt a publishing
analogy, Mediatech were the printer but not the publisher.
Peter Pinckney, the plaintiff, claimed that the CDs were
unauthorised and infringed his copyright.
He was able to purchase the CDs at his residence in France from the UK internet
sites, which were accessible to the French public. He commenced proceedings against Mediatech in
his local French court.
Mediatech challenged jurisdiction. Under Article 5(3) of the Brussels Regulation
the French court has jurisdiction if it is a court of the place where the
harmful event occurred. EU caselaw has
established that that includes both the place where the damage occurred and the
place of the event giving rise to it.
The CJEU allowed the French court to take jurisdiction on the
basis that the harm in France was the availability in France of the UK websites
from which the CDs could be purchased. Its jurisdiction was limited to determining the damage caused in France.
This result is open to the objection that the claim was
against Mediatech, not the UK websites, and that by reproducing CDs in Austria Mediatech
had caused no damage in France. Alternatively even if Mediatech's acts of reproduction in
Austria could be regarded as indirectly causing damage in France, that should not
be sufficient. Long established EU
jurisprudence (Dumez, Marinari) holds that a
court taking jurisdiction on the basis of the place of the damage caused by the
alleged wrong can do so only on the basis of direct, not indirect, damage. Only if the damage in France could be regarded as directly caused by Mediatech's reproduction of the CDs in in Austria should jurisdiction over Mediatech be available to the French court under Article 5(3).
The CJEU achieved its result in Pinckney by:
(1)
treating the various distinct ways of infringing
copyright as if they were a single universal wrong;
(2) glossing over the implications of copyright territoriality;
(3) separating abstract damage from infringement;
(4) thus rendering itself incapable of considering:
(a) whether the damage relied
upon was caused by the specific infringement alleged against the defendant and,
if so
(b) whether the damage was direct
or indirect in relation to the acts of the defendant.
A single universal
wrong
Advocate General Raaskinen, whose Opinion the Court did not follow,
focused on the fact that it was not clear from the French Cour de Cassation’s reference
what substantive infringement claim Pinckney was making in the French courts against
Mediatech, and thus what relevance the questions asked of the CJEU might have
to the Cour de Cassation’s decision.
The AG’s perplexity is understandable. By international treaty if copyright exists
in one country then corresponding copyrights automatically come into existence
in almost all other countries. However
each is still a separate territorial right.
National copyrights may differ in scope from one country to another, even
within the EU where copyright has to an extent been harmonised.
Each national copyright is also itself a bundle of separate
rights, governing different activities such as copying, distribution and
communication to the public. In a cross
border setting it is therefore dangerous to speak of ‘infringement of
copyright’ in a universal sense. It is
more accurate to speak of infringement of the UK distribution right, the French
reproduction right and so on.
According to the CJEU, however, no enquiry into the nature
of the infringement is necessary once the condition is satisfied that the
Member State in which the court is situated protects the copyrights relied on
by the plaintiff. (The Court assumed
that that would automatically be the case). The enquiry then moves to the
existence of damage within the jurisdiction of the court seised.
Glossing over
territoriality
On the facts assumed by the CJEU, Mediatech's allegedly wrongful
act was unauthorised reproduction in Austria.
Therefore if Mediatech infringed by copying it can only have infringed
the Austrian reproduction right, not the French reproduction right. While the French distribution right may have
been infringed by the sale of CDs into France, that was from UK websites with
whom, the CJEU stated, there was no evidence that Mediatech had any
connection.
The Advocate General wanted, if the reference was declared
admissible, to align the place of the damage more closely with the territoriality
of the substantive right. So the damage
for infringement of the reproduction right would occur at the place of
reproduction; the damage caused by infringement of the making available right
would depend on targeting (as does infringement of the right itself), and so on.
The Court, however, rejected such niceties. It was sufficient, in order to found the
French court’s jurisdiction over a copyright claim against Mediatech, that CDs
pressed by Mediatech in Austria were available in France from UK websites. That constituted the necessary damage in
France. There was no need to consider the
nature of the copyright claim against Mediatech. Indeed it positively should not be considered.
Separating damage from
infringement
There is a view that for intellectual property rights there
is no distinction under Article 5(3) between the act of infringement and the
damage caused by the infringement. According
to that view it would follow that, given the territorial nature of copyright,
the only damage caused by an unauthorised act of reproduction in Austria could
be in Austria.
The Court's approach implicitly rejected this view. The Court appears to have held not only that
damage can in some unspecified way be regarded as separate from the infringement,
but that damage resulting from a subsequent act of distribution by a UK third
party from a UK website into France is sufficient to found jurisdiction in
France against the Austrian copier.
The Court said:
“39 ... it is true that copyright …
is subject to the principle of territoriality. However, copyrights must be
automatically protected… in all Member States, so that they may be infringed in
each one in accordance with the applicable substantive law.
40 … the issue as to whether the
conditions under which a right protected in the Member State in which the court
seised is situated may be regarded as having been infringed and whether that
infringement may be attributed to the defendant falls within the scope of the
examination of the substance of the action by the court having jurisdiction
(see, to that effect, Wintersteiger, paragraph 26).
41 At the stage of examining the
jurisdiction of a court to adjudicate on damage caused, the identification of
the place where the harmful event giving rise to that damage occurred for the
purposes of Article 5(3) of the Regulation cannot depend on criteria which are
specific to the examination of the substance and which do not appear in that
provision. Article 5(3) lays down, as the sole condition, that a harmful event
has occurred or may occur. …”
43 It follows that, as regards the alleged
infringement of a copyright, jurisdiction to hear an action in tort, delict or
quasi-delict is already established in favour of the court seised if the Member
State in which that court is situated protects the copyrights relied on by the
plaintiff and that the harmful event alleged may occur within the jurisdiction
of the court seised.
44 In circumstances such as those at issue
in the main proceedings that likelihood arises, in particular, from the
possibility of obtaining a reproduction of the work to which the rights relied
on by the defendant pertain from an internet site accessible within the
jurisdiction of the court seised.”
And in the operative part
the Court held that:
“Article 5(3) … must be
interpreted as meaning 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. That court has
jurisdiction only to determine the damage caused in the Member State within
which it is situated.”
So although the operative part of the judgment referred to the
specific case of reproduction in the defendant’s own Member State, the supporting
reasoning was that the nature of the alleged copyright infringement was
irrelevant for Article 5(3) purposes.
Causation and directness
of damage
In Dumez and Marinari the CJEU established
that only direct, not indirect, damage can be relied upon as the basis for
jurisdiction under Article 5(3). It is
difficult to see how the directness or indirectness of the damage relied upon
can be assessed unless the wrong alleged against the defendant is properly
identified. Only then can the degree of connection
of the damage with the wrong be evaluated.
While there may be merit in treating
Article 5(3) as a uniform self-standing rule, that should not mean treating
damage as an entirely abstract concept, unrelated to the nature of the wrongful
act of the defendant that allegedly gives rise to it.
The operative part of Pinckney mentions 'the damage caused'. But it does not in terms state which
wrongful act is said to have caused the jurisdictionally relevant damage. It was apparently sufficient for causation
and directness of damage that Mediatech had reproduced CDs in Austria and that some
of those CDs had turned up on a UK website accessible in France.
Similarly the excerpts from the reasoning quoted above make
no mention of any need for a direct causal link between the wrongful act by the
defendant (not someone else’s wrongful act) and the damage relied upon.
Elsewhere in the judgment the Court mentioned, but did not
discuss: “the damage resulting from an
alleged copyright infringement” (para 30, emphasis added).
Nowhere did the Court address the Dumez and Marinari requirement for damage under Article 5(3) to be direct.
These omissions are perhaps inevitable, given the Court's refusal in its reasoning to focus on the nature of the substantive infringement alleged against the defendant.
On the facts of Pinckney,
it appears strongly arguable that the damage alleged in France was at best indirect as
against an Austrian defendant who pressed CDs in Austria, who thereby infringed
(if anything) Austrian copyright, and against whom according to the CJEU there
was no evidence of connection with the UK distributing websites.
It might be said against this that in Shevill, a defamation case brought against a newspaper publisher,
the damage was held to occur in any country in which the publication was
distributed and where the plaintiff had a reputation. The ECJ was not concerned to enquire as to
the length of the distribution chain that led to copies circulating in the UK
through independent distributors.
However Shevill
illustrates the difficulty. Pinckney is as if Ms Shevill had sued
not the publisher of the newspaper, Presse Alliance, but instead the printer. While it may be reasonable to regard the
publisher as causing direct damage in countries in which circulation occurs, can
the same be said of the printer? The
approach of the CJEU in Pinckney, taking a generic approach to copyright infringement, precludes
any such enquiry.
Court best able to
determine the issues
The CJEU in Pinckney
emphasised that the object of identifying the place of damage is to lead to the
court best able to determine the issues (for instance on grounds of proximity
and ease of taking evidence). This holds
true only if the alleged wrong is properly identified. The more remote the damage from the wrong, the
less likely it is to be the case.
Relevance of internet
jurisdiction caselaw
The CJEU cited recent CJEU caselaw concerning the place of
the harmful event where the allegations were of infringements committed via the
internet and which might, as a result, produce their effects in numerous places
(Wintersteiger, eDate/Martinez) (Pinckney, para
31).
However the relevance of these cases is unclear. In Pinckney,
while the distribution of the CDs by third parties occurred online, the
allegation against Mediatech was of reproduction at its pressing plant in
Austria – an alleged infringement committed neither online nor in the country
of the court asked to assume jurisdiction.
The CJEU’s refusal to regard as relevant to jurisdiction the
exact nature of the infringement alleged against Mediatech appears to have led
it to equate the effects of infringing online with those of physical
reproduction, while avoiding any substantive comparison between the two.
This refusal is puzzling when, at the level of the
nature of protection, the CJEU is content to adopt different meanings of Article
5(3) for, for instance, personality rights and trade marks (Wintersteiger, eDate/Martinez).
Effect on other
decisions
Pinckney does not
change previous decisions about the targeting condition for trade mark
infringement (L'Oreal v eBay) or for
making available to the public for copyright or database right (Sportradar). Pinckney
concerns jurisdiction criteria, whereas those decisions concerned the
territorial scope of substantive rights.
A historical footnote
The CJEU’s treatment of copyright infringement as a universal
wrong rather than a bundle of discrete rights brings to mind the famously outspoken
English 19th century barrister William Danckwerts KC, no respecter
of judges, who sitting at the back of court one day heard Lord Alverstone say
of the three prerogative writs that they were all “much the same thing”.
Danckwerts could then be heard intoning:
“Mandamus, a writ in the King’s name commanding a specified act to
be done. Quo warranto, a writ against a person or corporation that usurps a
franchise. Prohibition, a writ to forbid any court to proceed. And the Lord Chief Justice of England thinks
that all these remedies are much the same thing. Oh Lord!”*
Oh Lord! indeed. Even
a broad brush should be wielded with precision.