A right to information when there’s no IP: CJEU discusses the scope of Article 8 Enforcement Directive

Last year, former GuestKat Jan Jacobi reported both the Warsaw District Court’s Referral to the CJEU and AG Rantos’ Opinion on the TB v Castorama Polska and Knor litigation (see IPKat posts here and here). This question was whether, under Article 8(1) Enforcement Directive (2004/48/EC) (the Enforcement Directive), a claimant in infringement proceedings can request a court to order certain parties to disclose information.

On April 27 2023, the Court of Justice of the European Union (CJEU) held in Case C‑628/21 that to bring a request for information under Article 8 of the Enforcement Directive, the requesting party must provide reasonably available evidence to allow a court to satisfy themselves to a sufficient degree of certainty that the requesting party is the holder of the IP right that is allegedly infringed.  

One of TB's images

Background

TB (the Claimant), a natural person, owned certain images that are protected by copyright under Polish law. The Claimant argued that Castorama Polska and Knor (the Defendant) infringed her copyright. After sending a cease-and-desist letter in October 2020, the Claimant commenced proceedings in December 2020 under Article 479 of the Code of Civil Procedure, a Polish law that implements Article 8 of the Enforcement Directive.

In that connection, the Claimant requested the Court to order the Defendant to disclose information about the infringement under Article 8(1)(a) of the said Directive.

Article 4 provides that, persons entitled to apply for a request for information per Article 8 must fall within one of the four categories of persons or bodies listed in points (a) to (d) of that article. Article 4(a) refers to the ‘holders of intellectual property rights’ being entitled to apply for an Article 8 request. The Defendant, in response, argued that the Defendant had not proved that the Claimant held the copyright in those reproductions under Article 4(a).

The Court stayed the proceeding and referred the following questions to the CJEU for a preliminary ruling:

1. Should Article 8(1) read in conjunction with Article 4(1) be understood to refer to a measure to protect intellectual property rights only when the rightholder’s intellectual property right has been confirmed in these or other proceedings?

And if this was answered in the negative:

2. Should Article 8(1) …, read in conjunction with Article 4(1) be interpreted as meaning that it is sufficient to lend credence to the fact that that measure refers to an existing intellectual property right, and not to prove that circumstance, especially in a case where a request for information about the origin and distribution networks of goods or services precedes the assertion of claims for compensation on account of an infringement of intellectual property rights?’

A request for information of whether food is available

Ruling

Article 8(1) of the Enforcement Directive states that Member States are to ensure that, in proceedings concerning an infringement of an intellectual property right and in response to a justified and proportionate request from the claimant, the competent judicial authorities may order that information on the origin and distribution networks of the goods or services that infringe an intellectual property right be provided by the infringer.

The CJEU held that, on the wording of this provision, a requesting party is not required to prove that it is the holder of the IP right concerned when requesting information, which answers the first question in the negative.

Regarding the second question, Article 4 provides that “holders of intellectual property rights” are entitled to request information under Article 8. However, to answer, the CJEU considered not only the wording of the Enforcement Directive but also the context of Article 8 and the objectives of the Enforcement Directive.

First, the CJEU considered Articles 6, 7, and 9 of the Enforcement Directive, in each of which the standard of “reasonably available evidence” is referred to. Given the context of the other provisions of the Enforcement Directive using this standard of proof, the CJEU adopted this standard as well for an Article 8 request for information.

Next, the CJEU considered the objectives of the Enforcement Directive to determine the scope of its applicability, especially Article 8. The CJEU did this by analysing its previous judgements. In C-427/15 New Wave/All Toys, it held that a request for information could be made after infringement proceedings had concluded. In C-597/19 M.I.C.M, it held that a request for information could be made before proceedings commenced.

Since the case law showed that a request for information could be made separately from infringement proceedings, the CJEU agreed with AG Rantos’ Opinion that the objectives of requesting information under Article 8 must be distinguished from the objectives of an action seeking a finding that an intellectual property right has been infringed under Article 8(1). This is because a request for information in an action for infringement needs to give the requesting party full knowledge of the extent of the infringement of their intellectual property right, such that they can calculate precisely the amount of damages that they are entitled to by reason of the infringement.

The CJEU then held that when determining whether the evidence produced in the context of the procedure for requesting information under Article 8 is sufficient, it is necessary to take into consideration the nature of the intellectual property right relied on and any special formalities governing the ownership of that right.

Also, it will be for the referring court to assess the justification for, and proportionality of, the request for information before it, and to ascertain that the applicant in the main proceedings has not abused that request (the request can be refused if abuse is found).

The CJEU concluded that a party must, for the purpose of a request for information under Article 8 outside of infringement proceedings, provide any reasonably available evidence enabling a court to satisfy itself with a sufficient degree of certainty that the applicant is the rightsholder. This, by submitting evidence appropriate to the nature of that right and any special formalities governing the ownership of that right.

Image by Riana Harvey

Comment

Although Article 8 seems suited for requests for information where infringement has been established, the CJEU has confirmed its use when infringement has yet to be established. In line with AG Rantos’ Opinion, the CJEU has confirmed that it is necessary to distinguish the function of a request for information pursuant to Article 8 from that of legal proceedings seeking a finding that there has been an infringement of an intellectual property right. This is because, if that request for information was subject to same standards of proof as infringement proceedings, then the separate procedure that is established in Article 8 would lose its practical purpose.