Putting Right Holders in the Centre: Bolagsupplysningen and Ilsjan (C-194/16): What Does It Mean for International Jurisdiction over Transborder Intellectual Property Infringement Disputes?

Abstract

This paper analyses what the decision in Bolagsupplysningen and Ilsjan (C-194/16) means for international jurisdiction under EU Regulation No 1215/2012 with respect to transborder intellectual property infringement disputes. In this case, the Court of Justice of the European Union extended “the centre of interests” basis of jurisdiction under Art. 7(2) of EU Regulation No 1215/2012 to legal persons claiming infringements of personality rights on the internet. The Court also held that actions for rectification and removal of content infringing personality rights may not be brought before the courts of a Member State where the content is accessible. This article concludes that the centre of interests basis of jurisdiction is generally not applicable to right holders claiming infringements of intellectual property rights and/or complementary tort claims, except arguably for claims for the infringement of moral rights and unfair competition claims where the act exclusively affects the interests of a specific competitor. Many questions remain with respect to the localisation of a victim’s centre of interests. In addition, the article concludes that the judgment in Bolagsupplysningen does not affect a right holder’s ability to obtain an injunction in the Member State in which content accessible on the internet infringes a forum IP right to put an end to the infringement in that State. Still, the centre of interests basis of jurisdiction has the potential to give right holders an advantage for claims of online infringements of moral rights and acts of unfair competition that exclusively affect them and it can be expected that authors and traders will take advantage of this opportunity when considering their IP litigation strategies.

1 Introduction

In Bolagsupplysningen and Ilsjan (C-194/16) (“Bolagsupplysningen”),¹ the Court of Justice of the European Union (“CJEU”) extended “the centre of interests” basis of jurisdiction under Art. 7(2) of EU Regulation No 1215/2012 (“Brussels Ia Regulation” or “BIa”)² to legal persons claiming infringements of personality rights on the internet.³ The centre of interests basis of jurisdiction allows the victim to bring an action in the Member State where he/she is “at home” in contrast to the general rule that a defendant must be sued in the Member State of the defendant’s domicile. The CJEU created this basis of jurisdiction in its earlier judgment, eDate Advertising and others (C-509/09 and C-161/10) (“eDate”),⁴ by localising the damage under Art. 7(2) BIa to the place of the victim’s centre of interests.⁵ As the victims in eDate were natural persons, the judgment left open the question whether the centre of interests basis of jurisdiction could be invoked by legal persons claiming infringements of personality rights on the internet. In Bolagsupplysningen, the CJEU answers this question in the affirmative.

In Bolagsupplysningen, the CJEU also held that actions for rectification and removal of content infringing personality rights may not be brought before the courts of a Member State where damage allegedly occurs based on the accessibility of the content in that Member State.⁶ In eDate, the CJEU had held that notwithstanding the centre of interests basis of jurisdiction, the victim of personality infringements over the internet still had the option to bring his/her action before the courts of each Member State in whose territory content placed online is or has been accessible (“the mosaic approach”).⁷ Consistent with established CJEU practice, the CJEU held that those courts have jurisdiction only in respect of the damage caused in the territory of the Member State of the court seised.⁸ The CJEU did not, however, specifically address the scope of the Member State courts’ jurisdiction with respect to specific remedies.⁹ Bolagsupplysningen makes clear that these courts do not have jurisdiction to order removal and/or rectification of the content with effect for all Member States.

While the holdings in Bolagsupplysningen were limited to infringements of personality rights over the internet, the CJEU’s reasoning may have relevance for infringements of other rights over the internet.¹⁰ With respect to the centre of interests basis of jurisdiction, however, the CJEU has previously held that it is not applicable to damage arising from the infringement of registered trademarks and economic rights conferred by copyright.¹¹ The reason for this is that unlike personality rights, registered trademarks and economic rights conferred by copyright are territorially limited to the Member State of registration and protection. This leaves open the question whether right holders may invoke the centre of interests basis of jurisdiction for infringements of other types of intellectual property (IP) rights, in particular those rights where the principle of territoriality is not as firmly established, and for complementary tort claims that may be brought instead of or in addition to infringement actions.

The question is also raised whether Bolagsupplysningen eliminates the jurisdiction of the courts of each Member State where an IP right is registered and/or protected and alleged infringed due to its accessibility in the that Member State, to grant an injunction to stop the infringement there. Injunctions are the most commonly sought remedy in IP infringement disputes and are usually sought in the state of registration or protection of the IP right alleged infringed.¹²

The aim of this article is to analyse what Bolagsupplysningen means for international jurisdiction under the Brussels Ia Regulation for transborder IP infringement disputes. First, the article presents and analyses the Bolagsupplysningen judgment. Second, it analyses to what extent the centre of interests basis of jurisdiction is available to right holders claiming infringements of IP rights and/or complementary tort claims that may be brought instead of or in addition to infringement actions. Next, it analyses whether the courts of a Member State where an IP right is registered and/or protected and alleged infringed due to the accessibility of infringing content in that Member State, have jurisdiction to grant an injunction to stop the infringement in that Member State. Lastly, the article prognosticates with respect to the effect of Bolagsupplysningen for IP strategies in transborder disputes.

2 Bolagsupplysningen and Ilsjan (C-194/16)

In Bolagsupplysningen, a company incorporated under Estonian law with its main business activities in Sweden (Bolagsupplysningen) and an employee of that company (Ms Ilsjan) brought an action in Estonia against a Swedish trade association (Svensk Handel) for the infringement of personality rights. The dispute arose because Svensk Handel had “blacklisted” Bolagsupplysningen on its website, alleging that the company carried out billing fraud. This “blacklisting” attracted over 1000 negative comments on the discussion forum on Svensk Handel’s website, and some comments called for acts of violence against Bolagsupplysningen and Ms Ilsjan. Svensk Handel refused to remove Bolagsupplysningen from the blacklist and refused to delete the comments.

The case reached the Estonian Supreme Court, which referred three questions to the CJEU concerning the extent of the Estonian courts’ jurisdiction under Art. 7(2) of the Brussels Ia Regulation with respect to the dispute between Bolagsupplysningen and Svensk Handel. Essentially, the Estonian court asked (1a) whether the centre of interests basis of jurisdiction extended to legal persons, and if so, (1b) what criteria and circumstances should be taken into account to determine that centre of interests; and (2) whether a victim of personality rights infringement on the internet can bring an action for rectification and/or removal of content in the Member State where the content is or has been accessible.

2.1 Centre of Interests Basis of Jurisdiction

In Bolagsupplysningen, the CJEU held that the centre of interests basis of jurisdiction applied to legal persons claiming infringements of personality rights on the internet. The centre of interests basis of jurisdiction is a derivative of Art. 7(2) BIa, which is a rule of special jurisdiction that derogates from the general rule that a defendant who is domiciled in a Member State shall be sued in the courts of that Member State.¹³ Article 7(2) BIa stipulates that for matters relating to tort, delict or quasi-delict, the defendant may be sued in the courts for the place where the harmful event occurred or may occur. Pursuant to established CJEU case law, this concept includes the place of the event giving rise to the damage and the place where the damage occurs.¹⁴ With respect to the infringement of personality rights through printed media, the CJEU has held that the damage occurs in every Member State where the content is distributed, when the victim is known in those places, but that these courts have jurisdiction only with respect to damage occurring within their territories.¹⁵

In its earlier judgment in eDate, the CJEU localised the damage occurring from personality infringements over the internet to the place of the victim’s centre of interests.¹⁶ This was because the CJEU had found that the distribution criterion was not useful with respect to distribution by internet due to its ubiquity.¹⁷ The CJEU also suggested that the distribution criterion was unfair to the victim due to the serious nature of the harm suffered by the victim from the worldwide distribution.¹⁸ The CJEU therefore adapted the damage head of jurisdiction by localising the damage at the victim’s centre of interests because the courts in that Member State were best placed to assess the impact that the material placed online has on the victim’s personality rights.¹⁹ According to the CJEU, a victim’s centre of interests was situated in the Member State of the victim’s habitual residence, although it noted, “a person may also have the centre of his interests in a Member State in which he does not habitually reside, in so far as other factors, such as the pursuit of a professional activity, may establish the existence of a particularly close link with that State.”²⁰ In addition, the CJEU observed that the criterion of the centre of interests accords with the Brussel Ia Regulation’s aim of predictability as it allows the victim to identify the court in which he/she may sue, and the defendant to reasonably foresee before which court he/she may be sued.²¹ The reason is that the defendant publishing content that allegedly infringes personality rights is in a position to know the centre of interests of the person who is the subject of that content, and that person is likely to be able to identify his/her own centre of interests.²²

In Bolagsupplysningen, the CJEU found that the reasoning in eDate was equally applicable to legal persons claiming an infringement of personality rights on the internet. The CJEU explained that the question whether the damage was material or non-material had no bearing on jurisdiction, regardless of the fact that it might be treated differently under the applicable substantive law.²³ In addition, the CJEU noted that the objective of the basis for jurisdiction under Art. 7(2) BIa was not to protect the weaker party but to facilitate the sound administration of justice.²⁴

With respect to the localisation of a legal person’s centre of interests, the CJEU held that it must reflect the place where the legal person’s commercial reputation is most firmly established, which is determined by reference to the place where it carries out the main part of its economic activities.²⁵ According to the CJEU, this place does not necessarily need to coincide with the legal person’s registered office, such as the situation in the dispute in the main proceedings. This is because the legal person’s commercial reputation which is likely to be affected by the publication is greater in the Member State where it carries out the main part of its economic activities and, therefore, any injury to that reputation would be felt most keenly there.²⁶ The CJEU explained that the courts of that Member State were best placed to assess the existence and scope of the alleged injury, in particular because the cause of the injury was content published “on a professional site managed in the Member State in which the relevant legal person carries out the main part of its activities and that are, bearing in mind the language in which they are written, intended, for the most part, to be understood by people living in that Member State.”²⁷ Finally, the CJEU added that if it was not clear at the stage when a court assesses its jurisdiction that the economic activity of the relevant legal person is carried out mainly in a certain Member State, so that its centre of interests cannot be identified, that person cannot invoke the centre of interests basis of jurisdiction.²⁸

The CJEU’s rulings in Bolagsupplysningen and in eDate are remarkable in that they lead to a forum actoris rule, which goes against the general rule on the defendant’s domicile. This can lead to disturbing results if one envisages a situation where a corporate commercial actor hauls a natural person that allegedly infringes its personality rights before the courts of its own “home” Member State such as a cyber transborder version of the Mclibel case.²⁹ Understandably, the CJEU has set a high bar for invoking the centre of interest basis of jurisdiction in that a legal person’s centre of interests must be clearly identifiable at the stage that the court assesses its jurisdiction.³⁰ There does not seem to be any reason why a high bar should not also apply to natural persons.

The rulings leave many questions unanswered with respect to the localisation of both legal and natural persons’ centres of interests. While it is not clear exactly what the CJEU means by “mainly in a certain Member State”, it does suggest that legal (and natural) persons that carry out economic activities in several Member States would not have a centre of interests in any one Member State.³¹ At the same time, the CJEU’s decisions suggest that the localisation of the victim’s centre of interests is dependent upon the circumstances of the actual dispute. For instance, the localisation of the victim’s centre of interests in the Member State of his/her habitual residence or in the Member State where he/she pursues professional activities would seem to depend on whether the illegal content affects the person’s private or professional sphere, which would depend on various factors concerning the type of injury, the defendant’s activities and the content.³² In Bolagsupplysningen, the CJEU also suggested that the circumstances of the actual dispute may play a role when it observed that the allegedly infringing content was published on a website managed in the Member State where the injured legal person carries out the main part of its activities and in a language understood by people living there.³³

2.2 Jurisdiction over Actions for Rectification and Removal

In Bolagsupplysningen, the CJEU also ruled that the courts of each Member State where content allegedly infringing personality rights is or has been accessible within its territory do not have jurisdiction to order rectification and/or removal of content when exercising jurisdiction under Art. 7(2) BIa on the basis of damage within its territory. The CJEU acknowledged its holding in eDate where it ruled that a person who considers that his/her personality rights have been infringed may bring an action for damages before the courts of each Member State in whose territory content placed online is or has been accessible, which have jurisdiction only in respect of the harm caused in the territory of the Member State of the court seised. The CJEU distinguished, however, an application for rectification and/or removal from an action for damages because in light of the “single and indivisible” nature of an application for rectification/removal, the remedy would have effect in the territory of other Member States outside of the jurisdiction of the forum Member State. Consequently, the CJEU held that “in light of the ubiquitous nature of the information and content placed online on a website and the fact that the scope of their distribution is, in principle, universal” an application for rectification and/or removal may be made only before a court with jurisdiction to rule on the entirety of an application for compensation for damage.³⁴

3 Centre of Interests and Intellectual Property Rights and Complementary Tort Claims

The question raised here is what Bolagsupplysningen (and eDate) means for the possibility for a right holder to bring an infringement claim or complementary tort claim that may be brought instead of or in addition to infringement claims at the right holder’s centre of interests. Indeed, the extension of the centre of interests basis of jurisdiction to legal persons gives it a broader scope of application that is likely to be exploited, where possible, by right holders who are often legal persons.

This section first analyses how the CJEU distinguished infringements of registered trademarks and economic rights conferred by copyright from infringements of personality rights. Second, it analyses whether this reasoning is applicable to well-known and unregistered trademarks, moral rights conferred by copyright, and complementary torts claims that may be brought instead of or in addition to infringement actions.

3.1 Registered Trademarks and Economic Rights Conferred by Copyright

The CJEU has previously held that the centre of interests basis of jurisdiction is not applicable to damage occurring from the infringement of registered trademarks and economic rights conferred by copyright.³⁵ According to the CJEU, the place where the damage occurs may vary according to the nature of the right allegedly infringed, and the likelihood of damage occurring in a particular Member State is subject to the condition that the right whose infringement is alleged is protected in that Member State.³⁶ Consequently, the CJEU held that damage occurs (only) where the trademark is registered or where the economic rights conferred by copyright are subject to protection and capable of being infringed.³⁷

The reason is that in contrast to personality rights, which protect a person everywhere, the protection afforded by registered trademarks and economic rights conferred by copyright is territorially limited to the Member State of registration and/or protection.³⁸ The CJEU found that this was true also for the economic rights conferred by copyright notwithstanding that these rights, similarly to personality rights, are automatically protected in all Member States because the protection conferred by each Member State is territorially limited.³⁹ Consequently, the Member State where the right holder has its centre of interests is not appropriate to decide the dispute with a view to the ease of taking up evidence, because the relevant evidence to prove the existence and extent of the infringement is located in each and every Member State where the right is registered and/or protected and not concentrated in any one Member State. Conferring jurisdiction on the courts of a single Member State of the right holder’s centre of interests would therefore not correspond to the objective of the sound administration of justice.⁴⁰

Moreover, it seems that the CJEU was aware that pursuant to Art. 8 EU Regulation 864/2007 (“Rome II”),⁴¹ the law applicable to ubiquitous infringements of registered trademarks and economic rights conferred by copyright is the laws of the countries for which protection is claimed on a distributive country-by-country basis.⁴² Thus, if jurisdiction would be conferred on the courts of the Member State of the right holder’s centre of interests, the adjudicating court would have to apply multiple laws.⁴³

In contrast, when it comes to infringements of personality rights, a Member State court at the victim’s centre of interests will often be able to assess all the damage under its own law.⁴⁴ Rome II excludes personality rights from its material scope of application, so the adjudicating Member State court would need to apply its own conflict rules.⁴⁵ Even though the conflict of law rules of the Member States with respect to personality rights infringements are widely divergent, a common denominator is that they often lead to the application of a single law as opposed to a distributive application of the laws where the content was distributed or accessible.⁴⁶ Moreover, the rules are such that the Member States can often end up applying their own law.⁴⁷

Consequently, the courts of a Member State where a trademark is registered or which protect economic rights conferred by copyright, are not best placed to assess the infringement of trademarks and economic rights conferred by copyright taking place in other Member States and infringing other Member States’ laws. Indeed, if the court also had jurisdiction to adjudicate on the damage arising from the infringements of trademarks and economic rights conferred by copyright in other Member States, it would substitute itself for these Member States’ courts, which are best placed to rule on the damage within their own territories and under their own laws.⁴⁸

With respect to registered trademarks, the CJEU observed that the objective of foreseeability is best served if a dispute concerning the infringement of a registered trademark is brought in the Member State where the trademark at issue is registered.⁴⁹ While the CJEU does not explicitly state this, it seems logical to assume that defendants can easily search databases for possible trademark registrations. It is perhaps not surprising that the CJEU did not rely on the objective of foreseeability to justify allowing right holders to bring an infringement claim in every Member State where the economic rights conferred by copyright are subject to protection and capable of being infringed as this means a potential defendant can be sued in any Member State.⁵⁰

As the CJEU localised the damage that occurs from the infringement of a registered trademark under Art. 7(2) BIa in the Member State of registration, issues concerning the exclusive jurisdiction of the Member State’s courts under Art. 24(4) BIa over proceedings concerned with the registration or validity of patents, trademarks, designs and other rights registered in their territories will not arise.⁵¹ Indeed, the courts of the Member State having jurisdiction under the damage head of Art. 7(2) BIa are the courts of the Member State having exclusive jurisdiction over validity and registration proceedings under Art. 24(4) BIa. This may be another (implicit) reason why the CJEU localised the damage in the Member State of registration. It is submitted that the CJEU’s reasoning with respect to registered trademarks and economic rights conferred by copyright is equally applicable to other national registered IP rights (i.e. patents and registered designs) as these are characterised by the principle of territoriality.⁵² It is not as clear, however, whether the centre of interests basis of jurisdiction might be invoked for other IP rights or complementary tort claims.

3.2 Well-Known and Unregistered Trademarks

The CJEU has not ruled on the applicability of the centre of interests basis of jurisdiction to well-known and unregistered trademarks. There does not seem to be any reason why these rights should be treated any differently from registered trademarks and economic rights conferred by copyright.⁵³ That is, for the purpose of attributing jurisdiction, damage arises (only) in a Member State where a well-known trademark or unregistered trademark is subject to protection and capable of being infringed.⁵⁴ The reason for this is that these rights like other commercial IP rights are characterised by the principle of territoriality, notwithstanding the fact that they are not registered rights.

Pursuant to Art. 6^bis of the Paris Convention, all Member States must protect foreign well-known trademarks even when the marks have not been used or registered in their territories.⁵⁵ In this respect, well-known trademarks are similar to personality rights in that they must be protected in all Member States. A pre-requisite for protection, however, is that the mark has obtained some degree of recognition in the protecting Member State.⁵⁶ In this respect they differ from personality rights because the possibility of protection in each Member State depends on whether the mark qualifies as well known in that State. Not every trademark that qualifies as well known in one Member State will qualify for protection as well known in another Member State. Moreover, if a Member State protects a foreign well-known trademark by prohibiting the use of another mark, the prohibition is limited to the territory of that Member State.⁵⁷ The protection granted to a well-known trademark in its country of origin is also limited to the territory of the country of registration (well-known trademarks are usually registered in their countries of origin).⁵⁸

Not all Member States protect unregistered trademarks (beyond what is required under Art. 6^bis Paris Convention).⁵⁹ Those Member States that do protect unregistered trademarks require that the unregistered trademark has been used or has acquired recognition in that Member State.⁶⁰ In addition, the rights conferred by unregistered trademarks are the same as the rights conferred by registered trademarks, and are limited to the territory of the Member State that protects the right.⁶¹ Consequently, evidence concerning the extent of an online infringement of a well-known trademark or an unregistered trademark in one Member State is not relevant to establishing the infringement of the mark in another Member State.

In addition, if the right holder seeks protection for a ubiquitous infringement of a well-known or unregistered trademark, the applicable law will be the laws of all the countries for which protection is claimed on a distributive country-by-country basis.⁶² The Rome II Regulation specifically includes industrial property rights within the scope of its definition, which encompasses unregistered trademarks.⁶³ Thus, unregistered trademarks are treated just like registered trademarks for the purpose of the applicable law. Therefore, for the same reasons as with respect to registered trademarks, conferring jurisdiction on the courts of the Member State of the right holder’s centre of interests would not correspond to the objective of the sound administration of justice.

With respect to the objective of foreseeability, economic operators cannot easily search for unregistered trademarks in databases as they can do with registered rights. EU law recognises, however, the existence of unregistered trademarks, so an economic operator can be assumed to be aware of the possibility of their existence.⁶⁴ Well-known marks are capable of protection in every Member State, and like copyright, may result in jurisdiction in every Member State in which the use of the mark is accessible. While this is difficult to reconcile with the objective of foreseeability, it has not, however, led the CJEU to abandon the mosaic approach for the economic rights conferred by copyright or even for personality rights.⁶⁵

3.3 Moral Rights Conferred by Copyright

The CJEU has not ruled on the applicability of the centre of interests basis of jurisdiction regarding claims for the infringement of moral rights conferred by copyright. In a Swedish case concerning copyright infringement over the internet, the Swedish Supreme Court held that it had jurisdiction under the damage head of Art. 5(3) Lugano Convention (which is basically identical to Art. 7(2) BIa) for all damage to the author’s moral rights because the author had his centre of interests in Sweden.⁶⁶ Emphasising the similarity between actions for compensation for the violation of personality rights and actions for the infringement of moral rights under Swedish law, the Court stated that the reasons underlying the CJEU’s judgment in eDate and others were equally relevant in the case of moral rights.⁶⁷

The CJEU has rejected the contention, however, that the applicable substantive law on non-contractual civil liability can be used to interpret the rule on jurisdiction in Art. 7(2).⁶⁸ The rules on jurisdiction in the Brussels Ia Regulation are based on considerations relating to the sound administration of justice and the efficacious conduct of proceedings whereas the applicable substantive law is based on political, economic, and moral considerations concerning the balance of conflicting interests. Consequently, the definitions of legal concepts such as moral rights and the localisation of damage under EU private international law are not always consistent with the definitions of concepts and localisation of damage under the applicable national substantive law.⁶⁹

When determining whether moral rights should be treated like personality rights or like IP rights for the purpose of jurisdiction, it would be interesting to see how they have been treated under EU choice of law rules.⁷⁰ Unfortunately, the Rome II Regulation is not very helpful. It defines IP rights to include copyright and industrial property rights but does not specifically mention moral rights. On the other hand, the exclusion from the Rome II Regulation refers to “Privacy and rights relating to personality, including defamation” but does not explicitly mention moral rights.⁷¹ While it is outside the scope of this article to conduct a full investigation into the characterisation of moral rights under European private international law, it is fair to say that moral rights bear a close relationship to personality rights.⁷² Indeed, the object of protection for both personality rights and moral rights is the person, as opposed to the property itself as is the case with economic rights conferred by IP rights.⁷³

If we return to the reasons why the CJEU attributed jurisdiction to the Member State where the victim of personality rights has his/her centre of interests, it appears that these reasons support characterising moral rights as personality rights and localising the damage occurring from the infringement of moral rights to an author’s centre of interests.⁷⁴ First, like personality rights, all the Member States protect moral rights in accordance with Art. 6^bis of the Berne Convention, so these rights may be infringed in each Member State in accordance with the applicable substantive law. The evidence relevant to proving the impact that material placed online is liable to have on an author’s moral rights will usually be concentrated at the place where the author has his/her centre of interests.⁷⁵ This is especially the case when the use or an alteration of the work is alleged to be prejudicial to the author’s honour because the author’s own subjective view is likely to be relevant to proving the existence of an infringement and/or the extent of the damage.⁷⁶

Second, a Member State court at the author’s centre of interests may be able to assess all the damage under one single law and in many cases the court will apply its own law.⁷⁷ This is the case regardless of whether infringements of moral rights are characterised as copyright or as personality rights under EU private international law for the purpose of the applicable law.⁷⁸ If moral rights infringements are characterised as personality rights, as discussed above, the national choice of laws rules for personality rights infringements apply. The national conflict of law rules for some Member States follow a lex originis approach for copyright including moral rights and apply the law of first publication or the personal law of the author, both of which are likely to correspond with the Member State of the author’s centre of interest.⁷⁹ At least one Member State that follows a territorial approach to choice of law for the economic rights conferred by copyright still makes an exception for the ubiquitous infringement of moral rights. In Sweden, professor Strömholm submits that infringements of moral rights should be localised to the country where the author has his/her habitual residence, and that this law should protect the author with respect to infringements taking place everywhere.⁸⁰

If moral rights infringements are characterised as copyright under EU private international law and fall within the scope of Rome II, forum law still applies because the author seeks protection for the forum Member State’s territory.⁸¹ It is then up to forum law as the referenced substantive law to determine whether the infringement of moral rights can be localised within its territory and fall within the scope of its substantive law even with respect to acts which might be localised abroad under other national laws.⁸² EU law has harmonised the commercial aspects of IP law but it has excluded moral rights from these efforts.⁸³ Consequently, the Member States’ legislation on moral rights diverges, not only in relation to the theoretical basis and content of the rights, but also in their spatial scope of application.⁸⁴

The territorial nature of the Berne Convention is not unanimously accepted, and in any case, the Convention does not localise where an infringement of moral rights takes place.⁸⁵ Consequently, it cannot be excluded that some Member States will localise the infringement in the Member State of the author’s habitual residence. Indeed, Member States following a droits acquis approach to copyright view moral rights like personality rights, and as such may not be limited to the exploitation of the rights on the territorial market.⁸⁶ For example, the Greek and Portuguese Copyright Acts are not explicitly territorially limited but rely on a choice of law rule to determine the spatial scope of the applicable law. If the author claims protection for the forum Member State, that State’s law will apply under Art. 8(1) Rome II, and as stated, the law determines its own spatial scope of application. Similarly, if the author brings the claim in a common law Member State, that State’s law will apply under Art. 8(1) Rome II as the country for which protection is claimed. In contrast, however, in the Member States following the common law tradition, the substantive law of moral rights is territorially limited to the acts of infringement in the territory.⁸⁷ In either case, the courts of a Member State that protects authors habitually resident in its territory under forum law are arguably best placed to rule on the damage localised within its territory.⁸⁸

The possibility for a natural person who has created a work to bring a claim for infringement of moral rights before a court in the Member State of his/her centre of interests arguably existed, however, already after the CJEU’s judgment in eDate and others. An interesting question is whether the decision in Bolagsupplysningen extends this alternative to right holders who are legal persons. At first, this question seems bizarre because from a European perspective, copyright arises in the natural person who creates a work by imprinting it with his/her personality, and the moral rights conferred by copyright are inalienable.⁸⁹ This leads to the conclusion that only natural persons enjoy moral rights conferred by copyright under European law.⁹⁰ Notwithstanding this, however, some Member States recognise as the author of a collective work the person under whose direction the work was created, and accept the possibility of this person being a legal person, which can enjoy moral rights.⁹¹ These moral rights would likely be limited to certain moral rights such as the right of attribution and reputational rights. Indeed, legal persons can hardly claim personality rights that emanate from human dignity such as the right to protection for honour. In that more limited respect, it seems that the CJEU’s reasoning in Bolagsupplysningen is applicable to legal persons claiming infringement of moral rights conferred by copyright.⁹²

The CJEU’s statement in Bolagsupplysningen that economic activity must be carried out mainly in a certain Member State in order to invoke the centre of interests basis of jurisdiction is likely to raise difficult questions with respect to how to draw the line. Indeed, can internationally renowned creators, such as the Swedish video and film director Jonas Åkerlund, who probably earns more money directing US music videos than from jobs at home in Sweden, have his centre of interests in Sweden?⁹³ To what extent do the circumstances of the dispute at hand affect the identification of an author’s centre of interests? For example, is it relevant when identifying Åkerlund’s centre of interests that the work infringed is not well known to a Swedish audience or if the alleged infringer who uploads the infringing content is targeting markets other than Sweden?

If a court in the Member State of origin applies its own law to protect the moral rights of authors habitually resident in its territory with effects in other Member States, this might raise difficulties when the judgment is enforced in another Member State.⁹⁴ As a general rule, a judgment given in one Member State must be enforced in another Member State with only a few limited grounds for refusal.⁹⁵ If the content that the court of origin orders the defendant to remove is legal in the Member State of the enforcing court, the defendant may claim that enforcement should be refused on the ground that it would be manifestly contrary to public policy (ordre public) in the receiving Member State.⁹⁶ For example, assume that a defendant domiciled in Sweden uploads the French film “Le voyage Dans la Lune” (Trip to the moon), the economic rights of which have expired, onto its Swedish homepage, where the defendant makes some satirical changes to the film. Georges Méliès heirs then bring a claim for the infringement of moral rights in France on the ground that it is the author’s centre of interest. The French court applies French law which protects morals rights perpetually and finds that the changes are prejudicial to the author’s honour. The French court orders the Swedish defendant to remove the film from its website even though the use of the work is legal in the Sweden.

An argument might be made that an extraterritorial application of French copyright law violates internationally accepted views on the territorial scope of IP rights.⁹⁷ While this argument has clout with respect to patent rights, it is less persuasive with respect to copyright for which a territoriality principle is not unanimously accepted. An additional argument might be that enforcement violates the defendant’s constitutional right of freedom of expression. However, the ordre public exception is narrowly applied.⁹⁸ These questions may lead to legal uncertainty for users of copyright material.

3.4 Complementary Tort Claims

A right holder may rely on a variety of complementary tort claims under the laws of the Member States in addition to or instead of a claim for the infringement of an IP right.⁹⁹ Examples of such claims are unfair imitation of a sign protected by a trademark, passing off, commercial disparagement, defamation, malicious falsehood, the right to one’s name under Art. 12 of the German Civil Code, and protection of general personality rights under German and French case law. Depending on the Member State, such causes of action may have their theoretical basis in unfair competition law or in personality rights. The question whether the centre of interests basis of jurisdiction is available cannot depend, however, on the classification of a claim under national law; the classification must be made pursuant to an autonomous EU definition.

A starting point for an EU definition of acts of unfair competition is Art. 10^bis of the Paris Convention, which is binding on all EU Member States. According to paragraph 2 of that provision, “[a]ny act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition.” Paragraph 3 lists three examples that “in particular shall be prohibited” but the examples are not exhaustive.¹⁰⁰ Moreover, recital 21 of the Rome II Regulation suggests that unfair competition should be given a broad definition for the purpose of applicable law.¹⁰¹ This is arguably true also for jurisdiction. Thus, it is submitted that claims between competing traders or between a trader and an association of consumers concerning industrial or commercial matters should be classified as claims for unfair competition and not violations of personality rights for the purpose of jurisdiction and applicable law.¹⁰²

It is submitted that the centre of interests basis of jurisdiction is generally not applicable to claims of online violations of unfair competition. Pursuant to Art. 10^bis Paris Convention, all Member States must ensure effective protection against unfair competition.¹⁰³ In this respect, protection against unfair competition is similar to personality rights in that all Member States must provide protection. The protection conferred under the general EU choice of law rule on unfair competition is similar, however, to the protection conferred by commercial IP law in that the protection is usually limited to a specific territory.¹⁰⁴ The objective of modern rules against unfair competition is to protect not only competitors (horizontal dimension) but also consumers and the public in general (vertical relations).¹⁰⁵ The general rule on unfair competition in the Rome II Regulation reflects this triple objective. Indeed, this rule uses as its point of reference the country where competitive relations or the collective interests of consumers are, or are likely to be, affected.¹⁰⁶ Thus, the applicable substantive law protects competitors, consumers and the public only in the affected market, and if several markets are affected, several laws will be applicable.¹⁰⁷ In addition, only evidence concerning the impact that the unfair conduct has in the affected Member State is relevant to proving the unfair competition claim under that Member State’s law. Consequently, the courts of each Member State where the collective interests of consumers are affected by the allegedly unfair competitive activities are best placed to assess whether such conduct affects the collective interests of consumers within their territories and under their national laws.¹⁰⁸ This result is also consistent with the objective of foreseeability because a trader engaging in unfair competitive conduct can reasonably expect to be sued in the courts of the Member States where its conduct affects the market.

The CJEU has not ruled specifically on the applicability of the centre of interests basis of jurisdiction to unfair competition claims.¹⁰⁹ It has ruled, however, that for the purpose of jurisdiction over an action for the violation of a prohibition on resale outside a selective distribution network by sales made on foreign websites, the damage occurs in the territory of the Member State which protects against such violations, which is the territory in which the claimant alleges a reduction in its sales.¹¹⁰ Similarly, in a non-internet case involving a claim of unfair competition based on the unlawful comparative advertising or unfair imitation of a sign protected by a Community trade mark, the CJEU localised the damage in the Member State in which the protection of the IP right by means of national unfair competition law was at issue.¹¹¹ In both cases, the CJEU localised the damage in the Member State that offered the protection against the unfair competition.¹¹²

The situation may be different when an act of unfair competition exclusively affects the interests of a specific competitor such as the unlawful use or disclosure of trade secrets over the internet.¹¹³ While these acts are likely to have indirect effects on all the markets where the competitors operate, the direct damage suffered by the injured trader might be localised where the injured trader has its centre of interests. For example, assume that firm X established in State A operates in markets A, B, and C. Assume that firm Y, which also operates in markets A, B, and C, unlawfully acquires the plans for firm X’s new advertising campaign, which firm Y uses to advertise its own products over the internet. Does the direct damage suffered by firm X occur in State A where firm X mainly carries out its business or in States A, B, and C due to those being the States where both firms sell products.¹¹⁴

What suggests the applicability of the centre basis of jurisdiction in these cases is that for the purpose of choice of law, Rome II departs from the connecting factor where the competitive relations or the collective interests of consumers are, or are likely to be, affected in favour of the law of the country where the direct damage occurs (although this law may be displaced if the parties have a common habitual residence or if the tort is manifestly more closely connected with another country).¹¹⁵ When an act of unfair competition exclusively affects the interests of a specific competitor, the object of protection is the competitor and not the market as is the case under the general unfair competition rule.¹¹⁶ In the example above, the direct damage arguably occurs where firm X developed and stores the trade secret, which likely coincides with the Member State of its centre of interests.¹¹⁷ If this is the case, the courts of the Member State where firm X has its centre of interests would arguably be best placed to rule on all the damage. This result is also consistent with the objective of foreseeability because a trader that uses or discloses the trade secret of another trader is usually in the position to know that trader’s centre of interest and can reasonably expect to be sued there.

As an exception to the general choice of law rule on unfair competition, the exception should be narrowly interpreted. It is submitted that this exception would not apply to complementary tort claims that could be brought in addition to or instead of a claim for the infringement of an IP right such as a claim for unlawful comparative advertising or unfair imitation of a sign protected by a national or EU trademark. The reason for this is that such claims do not exclusively affect the interests of a specific competitor, but directly affect the competitive relations or the collective interests of consumers.¹¹⁸ For these cases, the evidence needed to prove a claim of unfair competition for unlawful acts in relation to subject matter protected by commercial IP rights would be located in each State whose market was affected by the unlawful acts, and the forum court would need to apply these States’ laws. In such cases, the application of the centre of interests basis of jurisdiction would not be justified. In addition, localising damage arising from unfair competitive acts in relation to subject matter protected by commercial IP rights in each Member State that protects against these acts under their national unfair competition law, avoids issues concerning the exclusive jurisdiction of the Member State courts over proceedings concerning national IP rights registered in their territories.¹¹⁹ The reason for this is that the courts of the Member State having jurisdiction under the damage head of Art. 7(2) BIa will be the courts having jurisdiction under Art. 24(4) BIa.¹²⁰

4 Jurisdiction over Actions for Injunctions in Transborder Intellectual Property Disputes at the Place of Damage

The question raised here is what the decision in Bolagsupplysningen means for the possibility for a right holder to obtain an injunction in the Member State of registration and/or protection to end an infringement in the forum state. It is submitted that the decision does not mean anything new but only clarifies what should have been obvious all along. That is, the scope of a Member State court’s jurisdiction to issue an injunction mirrors the scope of that court’s jurisdiction over the dispute.

A Member State court exercising jurisdiction based on damage occurring in its own territory has jurisdiction only with respect to damage in its territory and may issue injunctions only with respect to that damage. This is true for both a Member State court at the victim’s centre of interests and in every Member State where content is accessible where the victim claims a reputation. The difference is that the CJEU localises damage occurring from personality rights infringements on the internet in the Member State of the victim’s centre of interests. Thus, the Member State courts there have jurisdiction to issue an injunction for rectification and removal of the content with effect everywhere because even if the content is accessible in all the Member States, its impact is felt (and localised) at the victim’s centre of interests.

In contrast, a Member State court exercising jurisdiction based on the accessibility of the illegal content in its territory has jurisdiction to issue injunctions only with respect to its own territory. If it would grant an injunction for rectification and removal of the content with effect everywhere, it would be exercising jurisdiction over the territories of the other Member States in light of the fact that such an injunction affects the accessibility of the content in the other Member States over whose territories the adjudicating court does not have jurisdiction.

The CJEU states this quite succinctly when it pronounces:

However, in the light of the ubiquitous nature of the information and content placed online on a website and the fact that the scope of their distribution is, in principle, universal, an application for the rectification of the former and the removal of the latter is a single and indivisible application and can, consequently, only be made before a court with jurisdiction to rule on the entirety of an application for compensation for damage, and not before a court that does not have jurisdiction to do so.¹²¹

Thus, it is submitted that any Member State court that had previously granted an injunction ordering the removal of defamatory content published on the internet when exercising jurisdiction based on the accessibility of the content in their jurisdiction, exceeded the scope of their jurisdiction.¹²²

This holds true also with respect to infringements of IP rights on the internet. That is, a court in a Member State where a trademark is registered does not have jurisdiction to order a defendant to cease using the trademark on the internet with effect for all Member States because the court would exceed the scope of its jurisdiction, which is limited to its territory.¹²³ Today, geoblocking technologies are quite sophisticated for ensuring that infringing effects are not felt within a certain country’s territory.¹²⁴ In addition, a creative court can tailor an injunction with other solutions such as disclaimers and gateway pages to delineate their activities to certain Member States.¹²⁵ While the CJEU may be criticised for not considering geoblocking technology,¹²⁶ the issue of an injunction for a specific Member State was not raised in Bolagsupplysningen because the plaintiff had sought an injunction for rectification and removal of the content from the internet with effect everywhere. It is submitted therefore that Bolagsupplysningen does not prevent a Member State court from ordering the defendant to cease the infringement in the territory.¹²⁷

5 Conclusions

The article concludes that the centre of interests basis of jurisdiction, confirmed and extended to legal persons in Bolagsupplysningen, is generally not applicable to right holders claiming infringements of IP rights and/or complementary tort claims. The reason for this is that these claims are territorial in nature in that protection is granted for the specific territories of the Member States under those Member States’ laws. Two exceptions to this general conclusion may be infringements of moral rights and unfair competition claims where the act exclusively affects the interests of a specific competitor. That said, many questions remain with respect to the localisation of a victim’s centre of interests. First, how do the national courts draw the line when determining whether a victim carries out economic activities mainly in a certain Member State? Second, to what extent do the circumstances of the actual dispute affect the localisation of the centre of interests? The CJEU will need to answer these questions in future cases.

In addition, the article concludes that the judgment in Bolagsupplysningen does not affect a right holder’s ability to obtain an injunction in the Member State in which content accessible on the internet infringes a forum IP right. The court of the Member State of registration and/or protection continues to have jurisdiction to issue injunctions ordering the defendant to terminate the infringing effects in its own territory. It is now beyond doubt that such injunctions may not have the effect of eliminating access to the content in the other Member States.

Still, the centre of interests basis of jurisdiction has the potential to give right holders a great advantage for claims of online infringements of moral rights and acts of unfair competition that exclusively affect them, as it allows them to obtain relief without territorial restrictions. It can be expected that authors and traders will take advantage of this opportunity when considering their IP litigation strategies. Indeed, authors and traders may haul alleged infringers domiciled in other Member States before the courts of their home Member States and obtain an injunction for rectification and removal of the content with effect everywhere (and damages). Moreover, it is possible that the claim in its entirety will be subject to forum law. This allows an author or trader with a centre of interests in a Member State granting strong protection to export this law to the other Member States. A possible consequence is that content may be removed from the internet even though its use is legal in other Member States. This may lead to more challenges to the enforcement of judgments on public policy grounds. A serious question can be raised whether these legal uncertainties harm the proper functioning of the Internal Market.