The Advocate General of the European Union A. RANTOS has issued an opinion in the case C-628/21 TB, Castorama Polska Sp. z o.o., „Knor“ Sp. z o.o.
This dispute concerns when and to what extent IP ownership has to be proved in the process of collecting information for IP infringements on the territory of the EU. The case has the following background:
TB is a natural person who, through her online shops, markets decorative articles. In the context of her economic activity, she sells reproductions, produced mechanically by the applicant herself, with simple graphics, consisting of a limited number of colours and geometric figures and short sentences. In that regard, images A, B and C (‘the reproductions at issue’) contain, respectively, the following sentences: ‘Mój dom moje zasady’ (‘In my house, I make the rules’); ‘Nie ma ludzi idealnych a jednak jestem’ (‘Perfect persons do not exist, and yet I am one’) and ‘W naszym domu rano słychać tupot małych stopek. Zawsze pachnie pysznym ciastem. Mamy dużo obowiązków, mnóstwo zabawy i miłości’ (‘In our house, the sound of tiny feet can be heard. There is always the aroma of delicious cake. We have many obligations, much pleasure and much love’). TB claims to be the creator of the images which she reproduces, which in her contention are works for the purposes of the legislation on copyright.
Exact copies of images A and B, supplied by ‘Knor’ Sp. z o.o. (‘Knor’), are sold without TB’s consent in the ‘bricks and mortar’ shops and online shop of Castorama Polska Sp. z o.o. (‘Castorama’). Neither TB’s reproductions of those images nor the reproductions offered by Castorama indicate the author or the origin of those images. Castorama also sells reproductions, supplied by Knor, with identical wording to that of image C, but with certain differences in terms of their graphics and fonts. On 13 October 2020, TB gave notice to Castorama to cease and desist its infringements of the economic and moral copyright in the works created by her which that company was selling without her consent.
On 15 December 2020, TB brought an action before the Regional Court, Warsaw, the referring court, under Article 479113 of the Code of Civil Procedure. In the course of those proceedings, she requested Castorama and Knor to provide her with information, concerning the reproductions at issue, on the distribution networks and the quantity of goods received and ordered, a complete list of suppliers, the date on which the goods were placed on sale in Castorama’s ‘bricks and mortar’ shops and online shop, the quantity involved and the price derived from the sale of the goods, broken down into physical sales and online sales. TB relied on her economic and moral copyright in the reproductions at issue and stated that the information requested was necessary for the purpose of bringing an action for infringement of her copyright and, in the alternative, an action for damages for unfair competition.
Castorama contended that that request for information should be refused and, in the alternative, that the scope of the judicial decision should be as narrow as possible, strictly limited to works classified as such for the purposes of the legislation on copyright, and disputed the very possibility that the reproductions at issue might be classified as ‘works’. It also relied on the protection of business secrets and claimed that TB had not proved that she held the economic copyright in those reproductions. In Castorama’s contention, the intellectual works to which TB’s request refers are not original and TB has not proved that the ‘novelty’ condition was satisfied. Granting her request would amount to affording copyright protection to ideas and concepts, because the reproductions at issue belong to the current fashion for ‘simplified motivational artworks’ with trite sentences. Castorama maintained, moreover, that all the graphic elements of the reproductions at issue are trite and repetitive and are not distinguished in any original manner, as far as concerns composition, colours or the fonts used, from the other images available on the market.
In answer to those arguments, TB did not adduce any evidence to prove the existence of an intellectual property right in the reproductions at issue and calling for special knowledge (with a view to an expert report) in the field of graphics and design. The evidence which she produced in her application of 15 December 2020 consisted of printouts of pages of articles on sale in her online shops and of sales invoices from 2014, and also of printouts of pages from Castorama’s websites and sales invoices of images in the latter’s online shops.
When examining TB’s request, the referring court was uncertain about the interpretation to be given to Article 8(1) of Directive 2004/48, in particular as regards the question whether it is necessary to adduce proof of the legal nature of the asset to which the request for information relates, or merely to lend credence to it, in view of the fact that Articles 6 and 7 of that directive use different formulations and that Article 4 of that directive refers to the ‘holders of intellectual property rights’. The referring court’s doubts also related to the possibility that a different standard of proof might be applied as regards the status of the reproductions at issue, namely whether or not they are works, and consequently on TB’s standing to bring proceedings.
The referring court observes that Article 479113 of the Code of Civil Procedure constitutes the transposition of Article 8 of Directive 2004/48 and that Article 47989 of that code, which defines the scope of intellectual property cases, refers, in paragraph 2(1), to cases relating to ‘the prevention and combating of unfair competition’. Referring to recital 13 of that directive, (5) the referring court emphasises that, for the purposes of the present case, although the Polish case-law has not yet given an unequivocal answer to that question, that court accepts the interpretation according to which national law extended, for domestic purposes, the application of that directive to acts involving unfair competition which consist in producing exact copies of goods, even if those goods are not the subject of exclusive rights such a those of the copyright holder. In the light of those factors, as regards the part of the request relating to images A and B, no problem of interpretation of EU law arises, since TB has proved that Castorama has sold reproductions consisting of exact copies of those images.
On the other hand, in order to adjudicate on the request relating to image C, it is necessary to interpret EU law, since the reproduction sold by Castorama is not an exact copy of that image, in that the text has been reproduced and its position on the page has been retained, but with the use of other graphic elements and other fonts. According to the Polish case-law, which coincides with the Court’s, (6) it is for the court dealing with the matter to examine the creative characteristics of a work. In that regard, according to the referring court, where the facts of the case are complex and the judge’s experience is insufficient, it is necessary to have recourse to an expert’s opinion, while the burden of proof and responsibility for requesting an expert report are generally borne by the applicant.
Polish legal commentators have expressed two contradictory viewpoints on the interpretation of Article 479113 of the Code of Civil Procedure and have considered either that the applicant must adduce proof that she is the holder of the intellectual property right in question or that she is not required to prove the infringement of the protected right, but is required merely to lend credence to such an infringement, since the request for information may also be addressed to a third party.
The referring court states that in its view Article 8(1) of Directive 2004/48, read in conjunction with Article 4 of that directive, must be interpreted as meaning that it refers to a measure to protect intellectual property rights only when the ownership of the intellectual property right is proved and that credence being lent to the fact that that measure relates to an existing intellectual property right is not sufficient, since it is necessary to adduce proof of that circumstance, in particular where the request for information on the origin and the distribution networks of goods or services precedes the assertion of claims for compensation on account of an infringement of intellectual property rights.
In those circumstances, the Sąd Okręgowy w Warszawie (Regional Court, Warsaw) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:
‘(1) Should Article 8(1) read in conjunction with Article 4(1) of [Directive 2004/48] 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?
– if Question (1) is answered in the negative:
(2) Should Article 8(1) …, read in conjunction with Article 4(1) of Directive [2004/48] 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?’
The Advocate’s opinion:
In the light of the foregoing considerations, I propose that the Court of Justice should answer the questions for a preliminary ruling referred by the Sąd Okręgowy w Warszawie (Regional Court, Warsaw, Poland) as follows:
Article 8(1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights
must be interpreted as meaning that in the context of an action relating to an infringement of an intellectual property right, the applicant must lend credence, by submitting sufficient evidence, to the fact that he or she is the holder of the intellectual property right in question, in particular where the request for information precedes the assertion of claims for compensation on account of the infringement of the intellectual property right. The national court must also assess the merits of that request and take due account of all the objective circumstances of the case, including the conduct of the parties, in order to ascertain, in particular, that the applicant has not abused that request.