online and across borders: a net gain for technology companies?
TRANSCRIPT
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© 2012 Edwards Wildman Palmer LLP & Edwards Wildman Palmer UK LLP
Online and Across Borders:A Net Gain For Technology Companies?Edwards WildmanGareth Dickson
October 16, 2012
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Introduction
♦ Rules on jurisdiction: Foundations for ivory towers?
♦ Application to eCommerce disputes:
♦ Recent European cases
♦ A cause for concern from further afield
♦ Conclusions for technology companies
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Rules on Jurisdiction
♦ Jurisdiction and Governing law
♦ Home or away?
♦ Different procedural and evidential rules♦ Rules of disclosure and privilege♦ Recovery of damages and costs
♦ Practicalities♦ Location of evidence♦ Location of witnesses♦ Language barriers and transport costs
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Application to eCommerce disputes
♦ Lack of harmonisation regulating online behaviour leads to forum shopping
♦ Where IT services are provided across borders, disputes typically involve claims in contract and in tort
♦ Desire to achieve foreseeability, sound administration of justice and the efficacious conduct of proceedings
♦ CJEU has given some guidance, not all of it helpful
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Application to eCommerce disputes
Council Regulation (EC) No 44/2001 on jurisdiction and therecognition and enforcement of judgments in civil and commercialmatters:
♦ Persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State. Art 2(1)
♦ A person domiciled in a Member State may, in another Member State, be sued:
♦ in matters relating to contract, in the courts for the place of performance of the obligation in question. Art 5(1)(a)
♦ in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur. Art 5(3)
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Recent European CaseseDate v. X, Cases C-509/09 and Case C-161/10
♦ Can accessibility of online material create jurisdiction?
♦ Rules of special jurisdiction are derogations “based on the existence of a particularly close connecting factor between the dispute and the courts of the place where the harmful event occurred”
♦ “The internet reduces the usefulness of the criterion relating to distribution.” Criteria “must therefore be adapted”:♦ Sue for all damage in D’s domicile or place of establishment♦ Sue for national damage where information published♦ Sue for all damage where Claimant has “centre of interests”
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Recent European CasesWintersteiger AG v. Products 4U, Case C-523/10
♦ Litigation in Austria over advertisement by a German company on google.de that allegedly infringed Austrian trade mark
♦ Did Austrian Court have jurisdiction to hear Wintersteiger’s claim?
♦ Contrast with eDate:♦ Mere accessibility insufficient to create jurisdiction♦ Sue in courts of Member States where right is protected♦ Sue in courts of Member States where Defendant is established
♦ “The place of establishment of the server cannot, by reason of its uncertain location, be considered to be the place where the event giving rise to the damage occurred.”
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Recent European CasesFootball Dataco v. Sportradar, Case C-173/11
♦ FD alleged Sportradar had:♦ extracted data from FD’s football statistics database; and♦ jointly re-utilised that data with sites aimed at UK Internet users
♦ Transmission theory vs. Emission theory
“In the context of the Internet, the usefulness of employing conceptual constructions formulated in the context of broadcasting is highly questionable… What is required [is] a specific construction tailored to the particular characteristics of communication via the internet”
♦ “Making available to the public” is a “collection of acts” which occur, inter alia, where the server is located
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Recent European CasesTitus Alexander Jochen Donner, Case C-5/11
♦ “Distribution to the public” to be given an independent interpretation – but same as “making available to the public”
♦ Distribution “characterised by a series of acts” from, at least, conclusion of a contract of sale to the performance thereof by delivery to a member of the public
♦ Distribution may therefore take place, and be actionable, in a number of Member States
♦ Acts of the supplier vs. acts on his behalf
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Assessing Jurisdiction Under Article 5(3)EC Regulation 44/2001
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Predicting Jurisdiction Under Article 5(3)EC Regulation 44/2001
Case AG Court Jurisdiction (AG) Jurisdiction (Court)
eDate(Online, personality rights and privacy)
Cruz Villalón29 March 2011
Grand Chamber25 October 2011
All damage:1. Where content provider is
established; or2. Where Claimant has "centre of
interests" and dispute has its "centre of gravity"
National damage:Where content is published
All damage:1. Where content provider is
established; or2. Where Claimant has "centre of
interests“
National damage:Where content is accessible
Wintersteiger(Online, nationaltrade marks)
Cruz Villalón16 February 2012
First Chamber19 April 2012
1. Where right protected; or2. Where means necessary to produce
a potential for infringement were used
1. Where right protected; or2. Where advertiser is established; but3. NOT where the server is located
Titus Donner(Offline, copyright)
Jääskinen29 March 2012
Fourth Chamber21 June 2012
Where there is a targeted sales and delivery channel for buyers to acquire works
Where any of the "series of acts" giving rise to a "distribution [making available] to the public" occur
Sportradar(Online, database)
Cruz Villalón21 June 2012
Third Chamber18 October 2012
Where any of the "collection of acts" needed to produce a "making available to the public" occur, including where the server is located
WATCH THIS SPACE!
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Predicting Jurisdiction Under Article 5(3)EC Regulation 44/2001
Case AG Court Jurisdiction (AG) Jurisdiction (Court)
eDate(Online, personality rights and privacy)
Cruz Villalón29 March 2011
Grand Chamber25 October 2011
All damage:1. Where content provider is
established; or2. Where Claimant has "centre of
interests" and dispute has its "centre of gravity"
National damage:Where content is published
All damage:1. Where content provider is
established; or2. Where Claimant has "centre of
interests“
National damage:Where content is accessible
Wintersteiger(Online, nationaltrade marks)
Cruz Villalón16 February 2012
First Chamber19 April 2012
1. Where right protected; or2. Where means necessary to produce
a potential for infringement were used
1. Where right protected; or2. Where advertiser is established; but3. NOT where the server is located
Titus Donner(Offline, copyright)
Jääskinen29 March 2012
Fourth Chamber21 June 2012
Where there is a targeted sales and delivery channel for buyers to acquire works
Where any of the "series of acts" giving rise to a "distribution [making available] to the public" occur
Sportradar(Online, database)
Cruz Villalón21 June 2012
Third Chamber18 October 2012
Where any of the "collection of acts" needed to produce a "making available to the public" occur, including where the server is located
WATCH THIS SPACE!
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Predicting Jurisdiction Under Article 5(3)EC Regulation 44/2001
Case AG Court Jurisdiction (AG) Jurisdiction (Court)
eDate(Online, personality rights and privacy)
Cruz Villalón29 March 2011
Grand Chamber25 October 2011
All damage:1. Where content provider is
established; or2. Where Claimant has "centre of
interests" and dispute has its "centre of gravity"
National damage:Where content is published
All damage:1. Where content provider is
established; or2. Where Claimant has "centre of
interests“
National damage:Where content is accessible
Wintersteiger(Online, nationaltrade marks)
Cruz Villalón16 February 2012
First Chamber19 April 2012
1. Where right protected; or2. Where means necessary to produce
a potential for infringement were used
1. Where right protected; or2. Where advertiser is established; but3. NOT where the server is located
Titus Donner(Offline, copyright)
Jääskinen29 March 2012
Fourth Chamber21 June 2012
Where there is a targeted sales and delivery channel for buyers to acquire works
Where any of the "series of acts" giving rise to a "distribution [making available] to the public" occur
Sportradar(Online, database)
Cruz Villalón21 June 2012
Third Chamber18 October 2012
Where any of the "collection of acts" needed to produce a "making available to the public" occur, including where the server is located
WATCH THIS SPACE!
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Recent European CasesLucasfilm v. Ainsworth [2009] EWCA Civ 1328
♦ Online sale of allegedly infringing goods into California from UK. Lucasfilm sought remedies in the UK
© 2009 Danny Choo (@dannychoo). Reproduced with permission.http://www.dannychoo.com/post/en/1677/Mac+Life+4.html#image-25130
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Recent European CasesLucasfilm v. Ainsworth [2009] EWCA Civ 1328
♦ Court of Appeal:♦ “The sheer omnipresence of the Internet does not easily create
that presence which is a necessary ingredient in the enforceability of foreign judgments”
♦ Mere accessibility falls short of “establishing a fixed place of business from which [a defendant] carries on business”
♦ “Mere selling of goods from country A into country B does not amount to the presence of the seller in country B”
♦ Supreme Court:♦ “The English court has jurisdiction [in claims for infringement of
foreign copyrights], provided that there is a basis for in personam jurisdiction over the defendant”
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Recent European CasesSolvay v. Honeywell, Case C-616/10
♦ Belgian company sued one Dutch and two Belgian companies for infringement of a European patent, valid in Netherlands and Belgium, amongst others
♦ Honeywell raised invalidity as a defence and said Dutch courts had no jurisdiction
♦ CJEU said:♦ Since there was a risk of irreconcilable judgments, the
Defendants could be sued together in the Netherlands♦ National Court could grant preliminary injunctive relief against
all three Defendants
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A Cause for Concern Further AfieldBahattab v. Juniper Networks Middle East, 2012
♦ Decision of the Dubai Court of Cassation
♦ Concerned a claim of infringement of a US patent by the sale of network routers within UAE
♦ Claimant sought royalty for all routers worldwide
♦ First patent dispute in Dubai’s 12 year patent-law history
♦ No Court made any finding on the issue of jurisdiction!
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Conclusions for Technology Companies
♦ Trends in the CJEU’s jurisprudence
♦ The risks of an online “presence”
♦ Acknowledging the possibility of an outlier
♦ Forum shopping
♦ Practical considerations for working with third parties
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Online and Across Borders:A Net Gain For Technology Companies?
Thank YouGareth Dickson
England and Wales, New York
+44 (0)207 556 4470