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The Ultimate Copyright Shopping Opportunity – Jurisdiction and Choice of Law in Website Blocking Injunctions

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Abstract

So-called “mere conduit” internet service providers (ISPs) have been issued injunctions to block access to websites to try to mitigate online copyright infringement. Such orders have an international and ubiquitous character, because various parties reside and infringing acts typically occur in different states. This raises questions as to which court has jurisdiction to try the case and to what extent, and which laws apply. These issues are examined de lege lata from the perspective of forum-shopping and choice of law, first in the context of proceedings against the website operator and then against the ISP. We see that the flexibility afforded by EU case law provides options for localizing infringing acts and damages and selecting the jurisdiction and applicable law. A typical but complex scenario is a state enforcing its laws and policies on a foreign website at the user end. The state of the ISP’s domicile has global jurisdiction but local law may only be applied to communications that go through the territory of that state. This portrays the distributive effect of the Rome II Regulation which usually leads to the application of multiple laws. Respectively, a foreign court would have local jurisdiction if the affected ISP at least had a branch or an agency there. Jurisdiction may also be based on preventive or protective measures with arguable cross-border limitations. On the other hand, Art. 5(3) of the Brussels I Regulation on tort liability and Art. 6(2) on third party proceedings seem inapplicable to these injunctions.

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Notes

  1. See e.g. L. Feiler, “Website Blocking Injunctions under EU and U.S. Copyright Law – Slow Death of the Global Internet or Emergence of the Rule of National Copyright Law?” (TTLF Working Paper No. 13, 2012); Husovec (2013); P. Savola, “Copyright Injunctions against Internet Connectivity Providers Especially with Regard to Peer-to-peer Networking” (Aalto University Thesis [in Finnish], 2013). The term “website” is used for simplicity to refer to all similar technical resources.

  2. See e.g. TorrentFreak.com, “Movie Studios Get UK ISPs to Block Torrent Site Proxies” (5 September 2013) and references. There have also been other attempts to reduce online copyright infringement, such as delisting or depreferring results in search engines. See e.g. TorrentFreak.com, “How Google Helps Copyright Holders Fight Piracy” (11 September 2013).

  3. Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, OJ L 167 (22 June 2001). See M. Husovec, supra note 1, at 116–117, paras. 1–5; L. Feiler, supra note 1, at 17–22; Fawcett and Torremans (2011, at 545–546, 575).

  4. See e.g. J. Fawcett & P. Torremans, supra note 3, at 548–550.

  5. For example, M. Husovec (supra note 1, at 125–126, paras. 46–48, 52) notes a paradigm shift from tort-law-centric injunctions to in rem injunctions and vulnerability of third party injunctions to abuse. See also C. Angelopoulos, “Beyond the safe harbours: harmonising substantive intermediary liability for copyright infringement in Europe”, 2013 I.P.Q. 253.

  6. See e.g. Hugenholtz (2013, 277 et seq); Tritton et al. (2008, 1153 et seq); Football Dataco Ltd v. Sportradar (C-173/11), 18 October 2012, para. 27. The grounds for this historical tradition have however been disputed. See e.g. Ubertazzi (2012b); Neumann (2011).

  7. Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market, OJ L 178 (17 July 2000). In general, Art. 3 forbids making foreign service providers subject to stricter requirements in local laws compared to those applicable in the state of their establishment, but this specifically does not apply to copyright and related rights. See L. Feiler, supra note 1, at 51–52.

  8. Denmark is partially excluded, and certain other non-EU states are also included per the Brussels and Lugano Conventions. I will not go into details here. Otherwise national procedural and substantive law applies, influenced by various international conventions and agreements, typically in a manner similar to principles outlined here. See e.g. J. Fawcett & P. Torremans, supra note 3, at 665 et seq.

  9. See e.g. Ubertazzi (2012a); De Miguel Asensio (2012); Maunsbach (2012); S. Neumann, supra note 6; Dinwoodie et al. (2009).

  10. For example, a number of academic principles governing jurisdiction and choice of law have been suggested, e.g. so-called “ALI principles”, “CLIP principles”, the Japanese “Transparency Proposal” and “Joint Korean and Japanese Proposal”. As a summary, see e.g. P. De Miguel Asensio, supra note 9; B. Ubertazzi, supra note 9; International Law Association (ILA) Intellectual Property and Private International Law Committee, Sofia Conference (2012), First Report. The goal of these proposals has been, however, to reform legislation; they do not purport to be descriptive of the current law. See e.g. J. Fawcett & P. Torremans, supra note 3, at 646, 652–653.

  11. See generally J. Fawcett & P. Torremans, supra note 3, at 221–227 on forum-shopping.

  12. Here “website operator” refers to a company or people responsible for the (content of a) website. This typically excludes non-liable parties, for example the hosting provider.

  13. Other options are also available, for example initiating criminal proceedings against infringers.

  14. See Lemley and Reese (2003, at 1374 et seq); Schellekens (2011). See M. Husovec, supra note 1, at 124, paras. 44–45, for right holders pushing for a broad scope of injunctions against intermediaries.

  15. See e.g. M. Husovec, supra note 1, at 121, para. 25.

  16. This is supported by Art. 50(6) of the TRIPS Agreement, by which provisional measures may be revoked unless proceedings leading to a decision on the merits of the case are initiated within a reasonable period. It is possible that in other states a website blocking action is already considered to constitute a decision on the merits. See infra notes 84 and 98 and accompanying text.

  17. Finnish Copyright Act (404/1961, as modified by 821/2005 and 679/2006), Secs. 60b and 60c(4). This is similar to Art. 50(7) of the TRIPS Agreement.

  18. Council Regulation (EC) No. 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, OJ L 12 (16 January 2001). The recast regulation will apply from 2015. Article numbering has changed, but from the perspective of this paper, the changes in content are not relevant. See Regulation (EU) No. 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast), OJ L 351 (20 December 2012).

  19. Based on the CJEU judgment Folien Fischer AG, Fofitec AG v. Ritrama SpA (C-133/11), 25 October 2012, this also applies to negative declaratory actions seeking to establish that liability for damages does not exist. Earlier some states adopted a different model, with exclusive jurisdiction under Art. 22(4) of the Brussels I Regulation, which led to so-called “torpedo” issues aimed at lengthening proceedings. See B. Ubertazzi, supra note 9, at 247–249. Cf. Opinion of Advocate General Niilo Jääskinen on Fischer (C-133/11), 19 April 2012, proposing a restrictive interpretation and answering that Art. 5(3) did not apply, but this was not adopted in the judgment.

  20. See S. Neumann, supra note 6, at 584–585.

  21. Joined cases eDate Advertising GmbH v. X (C-509/09) and Olivier Martinez and Robert Martinez v. MGN Limited (C-161/10), 25 October 2011 (Grand Chamber). See e.g. U. Maunsbach, supra note 9, at 55–57. The effect of the website in the state must still be significant enough at least to constitute the centre of the victim’s interest. See e.g. J. Fawcett & P. Torremans, supra note 3, at 554–558; eDate (C-509/09 and C-161/10), paras. 49–50.

  22. See e.g. S. Neumann, supra note 6, at 596, especially note 56; B. Ubertazzi, supra note 9, at 231–232, para. 28 including references, at 233, paras. 36–38, and at 245, para. 111; U. Maunsbach, supra note 9, at 56; N. Hitsevich, “Article 5(3) of the Brussels I Regulation and Its Applicability in the Case of Intellectual Property Rights Infringement on the Internet”, 79 World Academy of Science, Engineering and Technology Index 1811 (2013). In the Finnish Pirate Bay declaratory action (Helsinki District Court case 11/48308, still pending), the applicants also argued for jurisdiction of the court based on the principle of eDate.

  23. Wintersteiger AG v. Products 4U Sondermaschinenbau GmbH (C-523/10), 19 April 2012, paras. 24–25; B. Ubertazzi, supra note 9, at 232, paras. 29–30.

  24. Peter Pinckney v. KDG Mediatech AG (C-170/12), 3 October 2013, paras. 32, 35–37.

  25. Wintersteiger (C-523/10), paras. 29, 38. Earlier it was widely argued that the infringing act and the damage must occur in the same protecting state. See S. Neumann, supra note 6, at 593–594 (stating that inter alia Art. 5(3) is considered to be limited to the infringement of IPRs committed in the protecting country). Based on newer case law, this no longer appears to hold. Pinckney also points in this direction, given that the infringing act (at least with a typical location of acts) apparently did not occur in the state where the action was brought.

  26. Opinion of Advocate General Niilo Jääskinen on Pinckney (C-170/12), 12 June 2013, paras. 57–61, 68–69.

  27. See Pinckney (C-170/12), paras. 39–44.

  28. This did not make a difference in this particular case because (apparently) only two states were involved. In Football Dataco Ltd. v. Sportradar (C-173/11) this was also not considered.

  29. Pinckney (C-170/12), paras. 45–47. The former interpretation is supported by para. 45; the latter by paras. 46–47.

  30. The CJEU did not consider the details of the protection granted by a state, which kind of infringement had occurred, or where and by whom; possibly this was considered to belong to the substance of the matter. Likewise, there was no consideration of what damage could have been caused in which states. On the other hand, in his opinion the Advocate General discussed this in more detail and previous cases were also more detailed in this respect. Consequently, it is not obvious how well the statements in the judgment would apply to other cases.

  31. Opinion of Advocate General Niilo Jääskinen on Pinckney (C-170/12), para. 71. With Union-wide IPRs, under the Community Trade Mark (and Design) Regulation, the domicile or establishment of the defendant (if located in the EU) has principal jurisdiction; only local damages can be awarded by the court on infringement. See B. Ubertazzi, supra note 9, at 232, para. 30.

  32. Advocate General Niilo Jääskinen discussed this issue in some detail in his opinion on Pinckney (C-170/12), paras. 53 et seq. (especially in footnote 46), also referring to earlier case law. In para. 70 he explicitly noted that, when the exclusive right of communication to the public is infringed, the damage is linked to the location of the public rather than the centre of the author’s interests (as with personality rights). Given that the AG’s opinion was not followed and the referred case law did not relate to IPRs, the applicability of the argument is unclear.

  33. In practice this would result in an inverse situation compared to the principal rule of jurisdiction at the defendant’s domicile. Global jurisdiction was rejected but, as stated, the practical impact might still be the same. See infra note 36.

  34. Similarly in J. Fawcett & P. Torremans, supra note 3, at 561 (stating that the focus must be on the act of the defendant).

  35. Opinion of Advocate General Niilo Jääskinen on Pinckney (C-170/12), para. 70, specifically referring to Wintersteiger and the Advocate General’s opinion on Wintersteiger.

  36. Article 22(4) does not apply to infringement cases. See J. Fawcett & P. Torremans, supra note 3, at 19–20. The applicability of Art. 22(4) for copyright damages was reversed and rejected in the UK Supreme Court’s ruling, Lucasfilm Ltd. & Ors v. Ainsworth & Anor, UKSC 29 (27 July 2011). See B. Ubertazzi, supra note 9, at 243, paras. 93–94. Advocate General Niilo Jääskinen in his opinion on Pinckney (C-170/12), para. 69, also strongly advised against this because it would deprive Art. 2 of its meaning and distort the intention of the legislature.

  37. More generally, in certain matters relating to the validity of registered IPRs, the state that grants such a right has exclusive jurisdiction per Art. 22(4), but this does not apply to copyright. See G. Tritton et al., supra note 6, at 1210–1211.

  38. U. Maunsbach (supra note 9, at 57) has argued that it would not be unjust to force the right holder to bring its claims before the court where the action took place or where the defendant is domiciled.

  39. See supra note 27 and accompanying text. The Berne Convention precludes applying preferential “law of origin” treatment to copyright. See Basedow (2010) at 14.

  40. Football Dataco Ltd v. Sportradar (C-173/11), paras. 42–47. In this case the website was in Austria and the establishment of the defendant was in Germany, but it was held that the UK court could consider its jurisdiction for reasons of efficiency. See H. Smith & R. Montagnon, “Databases Hosted Outside the United Kingdom Can Infringe Rights in UK Databases”, 35 E.I.P.R. 111, at 112 (2013). However, there was no discussion about infringement occurring at the location of the establishment of the company, which would have followed the principal rule of the Brussels I Regulation. Cf. Opinion of Advocate General Cruz Villalón on Football Dataco Ltd v. Sportradar (C-173/11), para. 60, who specifically suggested that the court rule that infringement occurred in both states. The CJEU, however, underlined the territorial nature of the database sui generis right and that the directive had not aimed at uniform law at the EU level. Analogously, the court referred to the territorial nature of trade mark rights in Wintersteiger (paras. 24–28). While similar arguments could be made with regard to copyright (see supra note 26 and accompanying text), it is notable how the CJEU in Pinckney (C-170/12), para. 39, took an entirely different course by emphasizing protection in all Member States.

  41. Football Dataco Ltd. v. Sportradar (C-173/11), paras. 37–43 with references; Opinion of Advocate General Cruz Villalón on Wintersteiger (C-523/10), 16 February 2012, paras. 22–28. See also B. Ubertazzi, supra note 9, at 231, para. 26 (particularly on the German interpretation that the mere ability to download is not sufficient, but that the site must be “intentionally directed at” a specific country), and at 240, para. 78 (on factors to be assessed when considering whether a site is directed at the forum state); J. Fawcett & P. Torremans, supra note 3, at 561 (on where infringement may be considered to occur); A. Blythe, “Searching Questions: Issues Surrounding Trade Mark Use on the Internet”, 35 E.I.P.R. 507, at 512–513 (2013) (on criteria to assess the targeting of a specific state). One must, however, be careful when assessing these criteria, especially in the context of essentially unmanaged sites. Even if The Pirate Bay (as of this writing) supports 35 languages, there is actually very little translated content and the language matters little. Likewise, advertisements targeting a specific country are chosen automatically by the advertisement provider, not the website.

  42. Pinckney (C-170/12), paras. 41–42. This was distinguished from an appropriate targeting test under Art. 15(1)(c) in Pammer and Hotel Alpenhof (C-585/08 and C-144/09), 7 December 2010 (Grand Chamber). Application by analogy had already been adopted in Football Dataco Ltd v. Sportradar (C-173/11), para. 36, though the decision focused more on the details of where the act was considered to have occurred. Which courts have jurisdiction for online copyright infringement, and particularly whether a targeting test exists, has also been referred to the CJEU in a pending case, Pez Hejduk (C-441/13).

  43. See references in supra note 41.

  44. The ECJ case, Owusu v. Jackson (C-281/02), 1 March 2005 (Grand Chamber), paras. 37–46, seems to suggest that declining jurisdiction based on the doctrine of forum non conveniens or by using case management powers is severely restricted under the Brussels I Regulation. See J. Fawcett & P. Torremans, supra note 3, at 204–206, 218–221.

  45. On the other hand, Pinckney interpreted Wintersteiger so that the state where the registered IPR was granted would be best placed to ascertain whether the right had been infringed, implying higher concentration. The distinction was made for copyright because it was “automatically protected”. The same argument would also apply to other non-registered rights, such as database rights, even though Football Dataco Ltd v. Sportradar earlier took a different view. It is unfortunate that this discrepancy was not considered in Pinckney.

  46. At least in some cases, directly linking to copyright content may constitute infringement, but I cannot go into this here. This issue will be contemplated, for example, in pending cases Svensson E.A. (C-466/12) and C More Entertainment (C-279/13).

  47. An example of the second category is the Pirate Bay case in Sweden (Svea Court of Appeals decision on 26 November 2010, case B-4041-09; the Supreme Court denied leave to appeal on 1 February 2012); a third example is the Finnish Supreme Court case KKO 2010:47 (“Finreactor”). See Mylly (2012) at 214–215; Manner (2009). See generally C. Angelopoulos, supra note 5, on participation.

  48. Limited jurisdiction forces courts to investigate the factual subject matter (to some degree) before being able to decide questions of jurisdiction. See U. Maunsbach, supra note 9, at 47. On the other hand, in Pinckney (C-170/12), para. 40, the CJEU noted that attributability of infringement and other factors are matters of substance, not jurisdiction.

  49. See J. Fawcett & P. Torremans, supra note 3, at 553. In the context of trade marks, a modified version of Shevill (C-68/93), 7 March 1995, was proposed. Also, copyright infringement rarely relates to a legitimate business as such, and the enforcement perspective (i.e. the location of the server) is more relevant, especially if the location has been and is expected to remain stable.

  50. Wintersteiger (C-523/10), paras. 36–37; Football Dataco Ltd. v. Sportradar (C-173/11), para. 45.

  51. Football Dataco Ltd. v. Sportradar (C-173/11), paras. 37–47. In this case, the website and the establishment of the defendant were in Austria and Germany, respectively, and the company was sued in the UK. It was claimed that the web server location constituted a ground for exclusive jurisdiction, but this was rejected.

  52. See B. Ubertazzi, supra note 9, at 242, para. 89 (that the server as a central point of infringement is no longer identifiable in the era of cloud computing), and at 247, para. 123 (that the place of the server can be manipulated too easily). J. Fawcett & P. Torremans (supra note 3, at 571) also argue that the location of the server does not normally have much weight, but the weight increases if an action against a hosting provider or other intermediary is made based on primary or secondary liability. Similarly, little weight should be put on a third-party website location (e.g. Ebay) if the alleged infringer acts alone. See generally van Eechoud (2003, 221 et seq) (on criteria for states that have an effective rather than a theoretical connection to infringement).

  53. A similar argument was presented in Football Dataco Ltd. v. Sportradar (C-173/11), paras. 45–46: by locating in a different EU Member or non-Member State, it should not be possible to escape the applicability of national law. As noted above, relying on the choice-of-law provisions would also have sufficed.

  54. It is worth noting, however, that in Football Dataco Ltd v. Sportradar (C-173/11), paras. 39–42, it was held that infringement may occur in the territory of the state where the target persons are located. In this manner, the state where the users are targeted, even if they do not commit infringing acts, might be relevant depending on where the website operator’s infringing act is considered to have occurred. According to Pinckney, the location of acts and their effects could also be examined with the substance, not necessarily when considering jurisdiction.

  55. See supra note 39 and accompanying text. Damage claims can be made in essentially any state that is a party to the Berne Convention or TRIPS. See Metzger (2010) at 173 (that sharing a file in a peer-to-peer network could infringe intellectual property rights in all WTO member states and third countries as well). This interpretation should be restricted so that, if damages have not occurred in that state, such state should not have jurisdiction for infringement. See e.g. Larsen (2011). Indeed, this suggestion is supported by Pinckney.

  56. The rationale of the provision is to establish that infringement occurred, provide a forum to investigate liability for costs and damages, and satisfy the defendants’ fair-trial requirements, which are not yet guaranteed in the blocking injunction proceedings. See supra note 81 and accompanying text for a critical evaluation of ex-parte proceedings.

  57. Similarly in Lundstedt (2001), at 136–137, arguing that the “event giving rise to the damage” is infringement itself (by which damage may or may not be proven), and the damage occurs at the place of infringement. See also J. Fawcett & P. Torremans, supra note 3, at 174 (that infringement cases do not require that damage be shown). Later in Wintersteiger, the CJEU considered the damage rather to have occurred where the right was registered (see supra note 25) and in a similar manner apparently also in Football Dataco Ltd. v. Sportradar.

  58. Tacconi (C-334/00), 17 September 2002, paras. 21–23 including references.

  59. Reichert and Kockler (C-261/90), 26 March 1992, paras. 17–20. See supra note 19 on Fischer. In ČEZ (C-343/04), 18 May 2006, paras. 15 and 18, it was also considered whether Art. 5(3) applies to prohibiting a neighbour from causing a nuisance. This was, however, not specifically addressed by the court.

  60. Similarly, L. Lundstedt, supra note 57, at 137, who argues that jurisdiction should lie in a court in the state where the alleged infringement occurred, regardless of any proof of damage. This is also what is apparently referred to by B. Ubertazzi, supra note 9, at 248, note 153.

  61. These rules would also be applied if the Brussels I Regulation were not applicable. As a minor detail, Chapter 10, Sec. 7, restricts jurisdiction for cases relating to tort, delict and quasi-delict to damages; the occurrence of harmful events is unspecified.

  62. Regulation (EC) No. 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations (Rome II), OJ L 199 (31 July 2007). See U. Maunsbach, supra note 9, at 59–60; P. De Miguel Asensio, supra note 9, at 352–353; J. Fawcett & P. Torremans, supra note 3, at 804; S. Neumann, supra note 6, at 586–591; A. Metzger, supra note 55, at 157–161, 171–172; J. Basedow, supra note 39, at 27.

  63. B. Hugenholtz, supra note 6, at 278; J. Fawcett & P. Torremans, supra note 3, at 676–678, 806–810; J. Basedow, supra note 39, at 12–13. See also Frohlich (2009, at 885).

  64. See P. De Miguel Asensio, supra note 9, at 353, para. 12; S. Neumann, supra note 6, at 592–593; U. Maunsbach, supra note 9, at 54, 59; J. Fawcett & P. Torremans, supra note 3, at 818; A. Frohlich, supra note 63, at 886; Dinwoodie (2009, at 730); M. van Eechoud, supra note 52, at 105 et seq., 222. In the Pirate Bay case (Svea Court of Appeals decision on 26 November 2010, case B-4041-09), when the Rome II Regulation was not yet in effect, Swedish law was applied to all damages, calculated on the total number of downloads. This might no longer be appropriate. See U. Maunsbach, supra note 9, at 53–54; B. Ubertazzi, supra note 9, at 249, para. 133. Similarly also in Schack (2009, at 133) (that if infringements happen in several protecting countries at once, distributive application of multiple laws would be unavoidable).

  65. See references in supra note 10. I will not go into further detail here.

  66. See e.g. A. Frohlich, supra note 63, at 886. Cf. Matulionyte (2011) at 60.

  67. In the context of tort law, for example, Art. 4(1) explicitly selects the law where damage occurred (i.e. where the effects were felt), rather than where the act was committed. Lex loci protectionis could however be based on different choices.

  68. See e.g. A. Metzger, supra note 55, at 171–172. See also S. Neumann, supra note 6, at 589–594 including numerous references; J. Basedow, supra note 39, at 27. However, as noted above, in new case law, for example Wintersteiger and Pinckney, the damage and the act might occur in different states. See supra note 25.

  69. Lagardère Active Broadcast (C-192/04), 14 July 2005, para. 46. The statement might be of obiter dictum nature.

  70. See S. Neumann, supra note 6, at 587 (on territoriality having an impact on the substantive law). On the other hand, categorical limitations on what a state is allowed to protect do not exist, for example, in tort or criminal law. Both allow national law to penalize extraterritorial conduct, although with some restrictions. See M. van Eechoud, supra note 52, at 97. While the perspective was on exclusive jurisdiction, the grounds of territoriality are disputed, e.g. in B. Ubertazzi, supra note 6, at 160 et seq.

  71. Finnish Copyright Act (404/1961, as modified by 648/1974 and 446/1995) Secs. 63–65. The most important territorial restrictions concern which works are protected, but as all works under the Berne Convention are covered, this is not relevant when it comes to infringement. However, some uses of related rights are territorially limited, for example, requiring that communication to the public must occur in Finland.

  72. The protection of Swedish authors in Finland and by Finnish law is provided by Art. 5(2) of the Berne Convention and similar agreements. Protection for locally occurring damages by foreign acts is provided by jurisdiction of Finnish courts per Art. 5(3) of the Brussels I Regulation and Sec. 57 of the Finnish Copyright Act.

  73. See supra note 68 and corresponding text.

  74. Football Dataco Ltd v. Sportradar (C-173/11), para. 39. This is a questionable example of localizing acts of ubiquitous infringement.

  75. The reproduction right might also be infringed at the website location or operator’s domicile by virtue of the web server’s making a copy of the work as a necessary technical step in order to enable downloading.

  76. The same arguments presented in the context of jurisdiction also apply to the choice of law, although the requirement for predictability is not so strict. See supra note 44 and accompanying text.

  77. This scenario of being domiciled in a country of lax protection was suggested in the context of suing where the web server was located, e.g. by J. Fawcett & P. Torremans, supra note 3, at 553 (referring to Ginsburg in its note 126). See also R. Xalabarder, “Copyright: Choice of Law and Jurisdiction in the Digital Age”, 8 Annual Survey of International and Comparative Law 79, at 84–88 (2002).

  78. Football Dataco Ltd. v. Sportradar (C-173/11), paras. 39–43. See Smith & Montagnon, supra note 40, at 112; C. Angelopoulos, supra note 5, at 255–259 (on jurisprudence and the background to joint tortfeasance doctrine in the UK).

  79. See supra note 42 and corresponding text. The Advocate General did make detailed suggestions on localization, however.

  80. In Finland, however, in Supreme Court case KKO 2010:47, the operators of a site (“Finreactor”) were held directly liable for users’ infringement. Liability was based on knowingly participating in concerted actions. On the difficulty of proving the ISP’s role in concerted action, see J. Fawcett & P. Torremans, supra note 3, at 545. However, the site was actively administered (including managing user accounts, monitoring upload/download ratios, and maintaining content metadata) and had a private BitTorrent tracker. As such it is not clear if the same argumentation could be reasonably applied to an essentially unmanaged site as far as content is concerned, such as the current version of The Pirate Bay. See P. Savola, supra note 1, at 160–170.

  81. See J. Fawcett & P. Torremans, supra note 3, at 920–921.

  82. See P. De Miguel Asensio, supra note 9, at 352, para. 10.

  83. For example, in the Swedish Pirate Bay case (Svea Court of Appeals decision on 26 November 2010, case B-4041-09), the operators were held criminally liable and this was cited as a ground in subsequent requests in Finland. The French Supreme Court considered having jurisdiction to adjudicate criminal proceedings only if the infringing act took place in France, not if the harm was suffered in France. See B. Ubertazzi, supra note 9, at 249, para. 133.

  84. In the Finnish request for a declaratory judgment (Helsinki District Court, case 11/48306, still pending), the right holders sought compensation for Finnish music producers’ works shared by Finnish users. The alleged website operators lived abroad in various states or unknown locations.

  85. See P. De Miguel Asensio, supra note 9, at 353, para. 12; J. Fawcett & P. Torremans, supra note 3, at 818–819.

  86. Other intermediaries, such as hosting providers or search engine operators have been assigned further requirements for non-liability in the case law of EU, German and French courts. See e.g. C. Angelopoulos, supra note 5.

  87. Scarlet Extended SA v. SABAM (C-70/10), 24 November 2011. See e.g. Kulk and Borgesius (2012); L. Feiler, supra note 1, at 17–20. Specific orders will be contemplated in the pending case, UPC Telekabel Wien (C-314/12). See M. Husovec, supra note 1, at 118, para. 8.

  88. See L. Feiler, supra note 1, at 27–30.

  89. See L. Feiler, supra note 1, at 46; Kopko (2003) at 116–117.

  90. See L. Feiler, supra note 1, at 46–52. Applicability to a local site is arguable, but not a key topic in the international context.

  91. For example, in the case of The Pirate Bay, the site was hosted for years until February 2013 in Sweden. The Finnish ISPs that were the target of injunctions also had an international presence. For example, an ISP named Elisa Plc. had a presence at interconnection points in Stockholm, Oslo, Copenhagen, Frankfurt, London, Amsterdam, New York, and Tallinn, and also had customers in some of these locations. See P. Savola, supra note 1, at 181–182. Likewise TeliaSonera Finland Plc. and DNA Ltd. also had an international presence.

  92. While Pinckney did limit jurisdiction to the local protecting state, it is submitted that the judgment only considered jurisdiction in the context of Art. 5(3) and provided no guidance to interpret Art. 2.

  93. GIE v. Zurich (C-77/04), 26 May 2005, paras. 33–37.

  94. Opinion of Advocate General Jacobs on GIE v. Zürich (C-77/04), 24 February 2005, paras. 32–33; Jenard Report of 1968, OJ C 59, at 27–28 (5 March 1979). See also J. Fawcett & P. Torremans, supra note 3, at 188–189.

  95. See Schlosser Report, OJ C 59, at 112 (5 March 1979).

  96. See G. Tritton et al., supra note 6, at 1184–1185, 1194–1196. J. Fawcett & P. Torremans, supra note 3, at 248–250, note different views on extraterritoriality between German and English lawyers and that the law is not acte clair.

  97. Even though the recast Brussels I Regulation abolishes the exequatur procedure, enforcing decisions abroad will require providing that the judgment has been successfully served. This may be challenging, because, for example in Finland, the case against website operators has been pending due to the inability even to serve the summons successfully.

  98. In the UK, only the first blocking injunction (Twentieth Century Fox Film Corp & Ors v. British Telecommunications Plc, EWHC 1981 (28 July 2011) (Newzbin II) included primary proceedings or the website operator as a party to the blocking order proceedings. See M. Husovec, supra note 1, at 122, para. 33 et seq., and in the context of website blocking, supra note 16.

  99. For the latter, see Solvay SA v. Honeywell (C-616/10), 12 July 2012.

  100. See e.g. Somafer SA v. Saar-Ferngas AG (33/78), 22 November 1978; SAR Schotte v. Parfums Rothschild (218/86), 9 December 1987.

  101. The purpose of having network infrastructure abroad might be to optimize traffic load and to save transit costs by increasing the amount of traffic exchanged through settlement-free peer arrangements with other ISPs.

  102. Somafer SA v. Saar-Ferngas AG (33/78), para. 13.

  103. Lloyd’s Register of Shipping v. Société Campenon Bernard (C-439/93), 6 April 1995.

  104. Comparatively, for example, the Personal Data Directive does not apply to foreign data controllers when equipment is used only for purposes of transit through the territory of the Community per Art. 4(1)(c). See Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data, OJ L 281 (23 November 1995).

  105. The German version of Art. 5(3) also covers an action that is comparable to a tort (“eine Handlung, die einer unerlaubten Handlung gleichgestellt ist”). On the other hand, the Finnish text only covers damages for non-contractual issues (“sopimuksenulkoinen vahingonkorvaus”).

  106. See Tacconi (C-334/00), 17 September 2002, paras. 21–23 including references. On Fischer (C-133/11), see supra note 19.

  107. See M. Husovec, supra note 1, at 113, para. 11. There is no provision in the Brussels I Regulation that would grant jurisdiction in cases of in rem issues, except when related to object rights to immovable property per Art. 22(1). While copyright may be classified as immovable property, for the purposes of the Brussels I Regulation, it should not be treated as such. See J. Fawcett & P. Torremans, supra note 3, at 33–34, 189; ČEZ (C-343/04), para. 33 (likewise that the provision only applies to the existence and content of rights such as ownership and no other kind of related rights or damages).

  108. Reichert and Kockler (C-261/90), paras. 17–20, referred to in the Opinion of Advocate General Niilo Jääskinen on Fischer (C-133/11), para. 52.

  109. Similarly, on indirect liability in the context of choice of law, see P. De Miguel Asensio, supra note 9, at 353, para. 10.

  110. See e.g. Wintersteiger (C-523/10), paras. 18, 27, 31 referring to Recital 12 of the Brussels I Regulation.

  111. P. De Miguel Asensio, supra note 9, at 353, paras. 12–13. Academic proposals have indeed made de lege ferenda suggestions to limit this uncertainty. See ibid., at 354–357; ILA PIL committee report, supra note 10.

  112. See P. De Miguel Asensio, supra note 9, at 352–353, para. 10; J. Fawcett & P. Torremans, supra note 3, at 811–812, 920–921.

  113. S. Neumann, supra note 6, at 599–600.

  114. See supra note 52 and accompanying text. At least for now, this might still be valid even after Pinckney.

  115. This principle, its scope and to what extent it is really universally accepted has been doubted. See e.g. S. Neumann, supra note 6, at 587 et seq.

  116. For a description of technical measures, see e.g. M. Husovec, supra note 1, at 122, para. 30; P. Savola, supra note 1, at 67 et seq.

  117. For example, in 2002, US providers that were targeted were global backbone operators operating in dozens of (or even a hundred) states. See D. Kopko, supra note 89.

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Acknowledgments

I thank Taina Pihlajarinne, Martin Husovec and anonymous reviewers for comments.

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    Pekka Savola (Licentiate in Science (Technology) at Aalto University; Master of Law and JD candidate at University of Helsinki, Finland; Legal Counsel and Senior Network Specialist at CSC–IT Center for Science Ltd)

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Savola, P. The Ultimate Copyright Shopping Opportunity – Jurisdiction and Choice of Law in Website Blocking Injunctions. IIC 45, 287–315 (2014). https://doi.org/10.1007/s40319-014-0184-0

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