The post in the IPKat “Making available only happens when it happens” has brought to my attention an interesting case where the jurisdiction of the English courts to hear about an infringement of a sui generis database rights is questioned.
The dispute involves Football Dataco and others (FDC) vs. Sportradar, a German company with a Swiss parent. FDC enjoys a sui generis right in Britain over a database of certain information concerning football matches in England and Scotland. Sportradar assembles this information and hosts it in a similar database in a webserver located in Germany.
FDC launched proceedings in April 2010, alleging infringement of their UK copyright and database right. Sportradar answered that UK courts did not have jurisdiction to hear about the dispute and in the meanwhile they sued FDC in Germany in July, seeking negative declarations that its activities did not infringe any of FDC’s IP rights. Subsequently, FDC applied to amend their Particulars of Claim in order to clarify the nature of the acts which they alleged to constitute infringements and also to add some new ones.
The UK court understood that the defendant was right because “making available” of the database in the Internet for the purpose of section 20 of the Copyright Designs and Patents Act 1988 occurred in Germany, not in the UK.
I have to admit that I have only read the excellent summary of the decision provided by Jeremy but, in my opinion, the decision is wrong. In order to determine their jurisdiction in this case, UK court applied Art. 5 (3) Brussels I Regulation. According to this provision:
“A person domiciled in a Member State may, in another Member State, be sued: (3) in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur”
The court understood that since according to section 20 CDPA the act did not constitute an infringement, they could not declare jurisdiction. This interpretation of Art. 5 (3) is completely wrong for the following reasons:
1. Art. 5 (3) and many other provisions in the Brussels I Regulation (and in EU Law in general) must be given an automous independent interpretation (in this sense, see for instance, C-189/08, “Zuid-Chemie” at 17). That means that to determine “the place where the harmful event occurred” the judge cannot refer to his national law. By doing so there is a risk that the provisions in the Brussels I Regulation will be interpreted in a different way in each Member State. In the present case, the UK court is given an interpretation of Art. 5 (3) based on English Law (section 20 CPDA) not on EU Law.
2. It is generally understood, that the application of Art. 5 (3) is NOT dependent on whether a tort has been committed or not because, the aim of the action of which a judge declares jurisdiction in accordance with that provision is, precisely, to determine whether a tort exists or not and who is liable.
3. To determine whether they could declare jurisdiction, UK Courts should have establish whether the actions refers to facts that could constitute an infringement in the UK. In order to determine this, it is sustained that in Intrernet, it is enough to determine whether the web site is targeting the UK. In my opinion, since the web site of Sportradars include information about Scottish and English football matches and it is in English, it can be sustained that YES. Therefore, UK courts should have declared jurisdiction.
It is not the first decision I see where UK courts interpreted the Brussels I Regulation in accordance with English Law. Another example is Lucasfilm, also commented in the IPKat, where an intepretation based in the Common Law of the UK and even Australia is used to apply the Regulation. But the analysis of this decision deserves a post on its own.
Another interested question raised by this judgement is whether the “country of origin” criteria of the Satellite Broadcasting Directive should be applied to the exploitation of works in the Internet. According to the court, it should: “the place where the act of broadcast occurs is where the signals are introduced under the control of the person making the broadcast into an uninterrupted chain of communication. This is known as the “emission theory”. As many authors has sustained, the application of this theory to the explotaition of works in the Internet is very dangerous: wrongdoers will place their website in countries with a low level of IPR protection. As far as an infringement does not exist in the country of origin, they will be able to make the contents available any country in the world.
Another interested question that is not mentioned by Jeremy in his summary is the “torpedo action” initiated by Sportradar in Germany. Did the German Court really declare jurisdiction to hear about the non-infringement action? How come? Didn’t lis pendens exist because an action for infringement had already been initiated in the UK?. Unfortunately the judgement does not give any guidance on these questions.