Update of Recent European Case-law on the Infringement and Enforcement of IPRs

The 'recent case-law update' reports on the latest significant European decisions related to infringing and enforcing IP rights. The document contains 234 summaries of key judgments from national courts and preliminary rulings from the Court of Justice of the European Union (CJEU).

The first partfeatures the most recent cases.

On 26 April, the CJEU delivered its long-awaited ruling in case C-401/19. It confirmed that Article 17 of Directive (EU) 2019/790 on copyright and related rights in the Digital Single Market (C-DSM Directive) is compatible with the EU Charter of Fundamental Rights. Therefore, it dismissed the action for annulment brought by the Republic of Poland. The Court essentially reasoned that the liability regime established under Article 17(4) of the C-DSM Directive entails a limitation of the freedom of expression and information by the preventive control it de facto requires from online content-sharing services providers on the content posted by their users. However, the Court ruled that the limitation is justified as it is accompanied by internal safeguards within Article 17 that are sufficient to protect those freedoms and rights and ensure a fair balance between them.

The CJEU also issued three preliminary rulings on the interpretation of Directive 2004/48/EC (Enforcement Directive - 'IPRED').

In case C-559/20 (Koch Media), the CJEU first clarified that lawyers' fees incurred in the pre-litigation phase for sending warning notices of copyright infringements are reimbursable by the unsuccessful party as ¡®other expenses¡¯ under Article 14 IPRED. The Court assessed if, and under which circumstances, reimbursement claims can be limited where a natural person has carried out an infringement without a commercial purpose. In such a case, the Court confirmed that the reimbursement of ¡®other expenses¡¯ can be calculated on a flat-rate basis, based on the value of the dispute limited by a legislation, unless the national court considers that the application of such a limitation is inequitable or disproportionate with regard to the specific characteristics of the case.

In case C-531/20 (NovaText), the CJEU interpreted Article 3(1) and 14 IPRED, specifically the concept of ¡®reasonable and proportionate legal costs' in relation to patent lawyers' costs. The Court ruled that in the proceedings under IPRED, the courts must be able to take due account of the specific characteristics of each case brought before them for the purposes of assessing whether the legal costs incurred by the successful party are reasonable and proportionate. National legislation or an interpretation thereof which goes so far as to subtract a category of court costs or other expenses from judicial review of their reasonableness and proportionality is not compliant with EU law.

In case C-44/21 (Phoenix Contact), the CJEU interpreted Article 9(1) IPRED in a patent dispute. The CJEU ruled that competent judicial authorities can grant an interlocutory injunction in infringement proceedings even if the validity of the patent has not been confirmed. That ruling challenges established case-law in Germany which stresses the importance of securing validity of a patent prior to the granting of a preliminary injunction.

In Holland, the Dutch Supreme Court examined whether the use of a lookalike in a commercial video could constitute a violation of an image right. The person displayed resembled a professional racing driver (Max Verstappen) and was wearing the same racing outfit and cap as the famous driver. The Court answered in the affirmative. It stated that a person has to be recognisable by the image of the lookalike, and that this possibility of recognition is increased when there are additional similarities, such as the manner of presentation of the lookalike.

In France, the Tribunal judiciaire de Paris issued another so called 'dynamic blocking injunction' in the sport sector, under the new accelerated judicial procedure provided for by Article 333-10 of the Sports Code, in a proceeding brought by Canal Plus publishing company against several French internet services providers. ARCOM (Autorité de regulation de la Communication audiovisuelle et numérique) is tasked with updating the blocking order together with the rights holders.

In Spain, the Madrid Commercial Court interpreted the now abolished article 32(2) of the Spanish Intellectual Property Law, enabling news publishers to receive compensation for the use of their content by online platforms, including news aggregators. The Court did so in a dispute between the Spanish Center for Reprographic Rights (CEDRO) and Google, in relation to its Google DISCOVER service.

In the United Kingdom, the High Court of Justice found in favour of Ed Sheeran in a proceeding in which his song 'Shape of You' was alleged to infringe upon Sami Chokri's song 'Oh Why'.

The update includes other national developments, in particular those on the interface between copyright and design protection, such as:

in Denmark, where the Danish Eastern High Court recognised copyright protection and subsequent infringement in a work of applied art (i.e. a plant box design).

in Belgium, where the Tribunal de l'Entreprise de Liège similarly confirmed the copyright protection and subsequent infringement of the model 'Le pliage' (a Longchamp handbag).

The second partcovers decisions issued between 2018 and April 2022.

The document aims to provide practitioners, judges and lawmakers with a meaningful overview of the latest developments and trends in jurisprudence in this field.