In principle copyright bears two major limitations – in terms of duration (70 years from the death of the author in the majority of cases) and in terms of territoriality. This so called ‘territoriality principle’ generally means that copyright law of one state applies only in the territory of that state and does not extend to any acts outside that state’s territory. Hypothetically, however, a copyright protected work can be made public, accessed and thus used anywhere around the globe with the tools of Internet and various other media. In such cases of cross-border use or infringement, the principle of territoriality gives rise to intricate issues related to jurisdiction and applicable law. With the expansion of cross-border trade and the uprise of information and communication technologies cases where a copyright work has been used lawfully or unlawfully beyond the borders of one single territory have largely increased.
In Europe, the applicable law and jurisdiction in civil litigation over intellectual property matters, regardless if they arise from a contractual or non-contractual basis, are regulated by the Brussels I Regulation and the Rome I and Rome II Regulations.
The Brussels I Regulation has been recast for purposes of clarity forming the new Regulation 1215/2015 known as ‘Brussels I Recast’, which applies in all EU Member States. The Brussels I Regulation applies when the defendant in civil and commercial matters (which include matters concerning intellectual property rights) is domiciled in the EU, irrespective of his/her nationality and thus determines the competence of courts in the Member States to exercise international jurisdiction. If the defendant is domiciled in a non-EU State, the court seized with the claim applies its own procedural law in the same manner as against defendants who are domiciled in the state where the court is located.
As a matter of principle, all claims may be brought before the courts in the state where the defendant is habitually resident. However, this general principle of the Regulation is derogated when the claims arise from tortuous conduct, which is a category including the infringement of IP rights. In these cases a person domiciled in a Member State may be sued in another Member State as jurisdiction is vested in the courts at the place where ‘the harmful event occurs or may occur’. If torts committed in one country take effect in another one, jurisdiction exists in both States (Bier v. Mines de Potasse d’Alsace). In its case law and more specifically Case C-170/12 Pickney, the CJEU determined that in tortuous cases of online copyright infringement jurisdiction exists in both the place where the damage occurred (the territory from which the infringing content was accessible) and the place of the event giving rise to it (the territory where the content was unlawfully made available/distributed). Thus, a copyright infringer can be sued at the choice of the applicant, in the courts of either of those places. Practically, due to the ubiquitous nature of Internet the damage can occur anywhere in the world where the online content is accessible and provided the copyright is granted protection there (which will be the case in all Member States covered by the InfoSoc Directive and all signatories of the Berne Convention). This gives the right holder a large field for manoeuvre to choose a jurisdiction (a practice widely known as ‘forum shopping’). However, this right is counterbalanced against the circumstance that each of these courts has jurisdiction only to determine the damage caused in the Member State within which it is situated. In contrast, the situation would be different if the defendant is sued in his/her domicile. The courts of the defendant’s domicile are granted jurisdiction to adjudicate EU-wide copyright infringement.
On the other hand, in cases of cross-border use of a copyright protected work which is related to a contract, the courts at the place of performance of the obligation in question have jurisdiction. Therefore, if for instance a licensee breaches his/her contractual obligation not to reproduce the copyright protected work, the competent courts to review the claim of the licensor will be the ones in the territory where the license right to use the work is exercised.
Finally, Article 35 of the Brussels I Regulation permits to apply for provisional and preliminary measures in any court that is competent under the law of the state where it is located, even if the courts in another country have jurisdiction over the substance of the matter. What this means is that right holders can apply for court injunctions against an infringer ordering the suspension and/or the future prohibition of a specific violation before any court provided the latter has the national competency to issue such injunctions.
After the court establishes jurisdiction, the next question that should be addressed is what law applies to the cross-border use of the copyright protected work. The Rome I and Rome II Regulations determine the law which must be applied in proceedings conducted before courts located in EU Member States, whenever a conflict of laws arises. Pursuant to Rome I, the main principle in copyright contractual obligations (i.e. licenses and assignments of rights) is the freedom of choice – parties remain free to determine the law that shall govern the relations between them. The choice can be made both explicitly and implicitly, in the latter case when it is ‘clearly demonstrated by the terms of the contract or the circumstances of the case.’ Nonetheless, if the contract is closely connected with another county than the one whose law has been chosen, the choice of the parties does not exclude the application of mandatory rules of that other country.
The freedom granted to parties to determine the applicable law is excluded in cases of consumer contracts. A consumer contract is a contract in which one of the parties is a natural person concluding the contract for non-commercial and non-professional purpose with another person who is acting pursuant to their trade or profession. In those limited circumstances the provisions of the law of the consumer’s habitual residence cannot be derogated and will apply in full force.
In all other cases of contractual agreements the absence of choice will result in the determination of applicable law in relation to the habitual residence of ‘the party required to effect the characteristic performance of the contract’.
On the other hand, the law applicable in non-contractual infringements of copyright is governed by the provisions of the Rome II Regulation. Pursuant to Article 8 (1) of Rome II the applicable law in cross-border cases of intellectual property right infringements is the law of the country for which protection is claimed. This so called ‘lex loci protectionis’ rule requires that each infringement of an intellectual property right is adjudicated by the law of the country that grants that right. For example, if a German copyright holder decides to bring a claim before French courts since specific damages from an infringement have occurred there, the French court will be obligated to apply the French national copyright law. In cases of online use of a work where the right is infringed in several states, the law of each state would apply with respect to the (part of) infringement occurring in that state. The principle of the law of the country for which protection is sought will also apply to all forms of contributory copyright liability, such as the liability of service providers for the unlawful conduct of their users. The law of the country for which protection is sought will be applied on various questions related to the case, such as what will amount to an infringement of an intellectual property right, the available exemptions and limitations of copyright, when is compensation due and what kind of damage is acceptable, which remedies for the right holder are available and what is their scope.
What this means for a copyright infringer is that they can be sued in both a foreign jurisdiction and in accordance with a foreign copyright law, when the damages they have caused occur outside the territory of their national jurisdiction.
The lex loci protectionis rule, however, prevents a right holder to acquire under a single applicable law an EU-wide collective relief. Even if the right holder manages to find an international jurisdiction to review their claim, the court would have to apply all the various national copyright laws for one and the same online infringement. This creates practical problems, such as burden of proof issues and increased duration and costs of the proceedings. Due to the aforesaid, da lege ferenda the lex loci protectionis rule may undergo legislative changes on a European level.