The European Court has ruled in the case C‑628/21 TB v Castorama Polska sp. z o.o., „Knor“ sp. z o.o. The case concerns painting, their reproductions, and proof of authorship among others. It has the following background:
TB is a natural person who, in her online shops, markets decorative articles. As part of her business, she sells reproductions of images A, B and C, which she makes mechanically by herself. Each of those images has simple graphics, consisting of a limited number of colours, geometric figures and short sentences. In that regard, images A, B and C contain, respectively, the following sentences: ‘Mój dom moje zasady’ (‘My house, my rules’); ‘Nie ma ludzi idealnych a jednak jestem’ (‘Perfect people don’t exist, and yet here I am’) and ‘W naszym domu rano słychać tupot małych stopek. Zawsze pachnie pysznym ciastem. Mamy dużo obowiązków, mnóstwo zabawy i miłości’ (‘In our house, the patter of tiny feet can be heard in the morning. It always smells like delicious cake. We have lots of chores, lots of fun and lots of love’). TB claims to be the creator of those images, which, in her view, are ‘works’ for the purposes of the legislation on copyright.
Reproductions of those images are marketed by Castorama Polska and Knor (‘the reproductions at issue in the main proceedings’). Exact copies of images A and B are sold in the online shop and in the bricks-and-mortar shops of Castorama Polska and are provided by Knor. Castorama Polska also sells images provided by Knor, with text identical to that in image C, but displaying certain differences from that image in terms of graphics and font. Neither the reproductions at issue in the main proceedings nor the images themselves, which are the subject of the reproductions, indicate the author or the origin of the product concerned. Furthermore, TB did not consent to those reproductions or to the sale of those reproductions by Castorama Polska and Knor.
On 13 October 2020, TB gave notice to Castorama Polska to cease and desist its infringements of the economic and moral copyright in respect of the ‘works’ created by her.
On 15 December 2020, TB brought an action before the referring court, on the basis of Article 479113 of the Code of Civil Procedure, seeking an order requiring Castorama Polska and Knor to provide information about the reproductions at issue in the main proceedings, in particular with regard to the distribution networks and the quantity of goods received or ordered by them, and a complete list of their suppliers, the date on which those goods were placed on sale in Castorama Polska’s bricks-and-mortar shops and online shop, and the quantity and the proceeds of the sale of those goods, broken down into physical sales and online sales.
TB stated that she held an economic and moral copyright in the images that are the subject of the reproductions at issue in the main proceedings and that that information was necessary for the purpose of bringing an action for infringement of that copyright and, in the alternative, an action for damages for unfair competition.
Castorama Polska contends before the referring court that that request for information should be refused and, in the alternative, that the scope of the judicial decision to be given should be as narrow as possible, arguing that that decision should be strictly limited to ‘works’, for the purposes of the legislation on copyright, and disputing the very possibility that the images that are the subject of the reproductions at issue in the main proceedings might be classified as ‘works’, for the purposes of that legislation. It also seeks protection of business secrets and argues that TB has not proved that she held the economic copyright in those reproductions. In Castorama Polska’s submission, the intellectual works to which TB’s request refers are not original, since TB has failed to prove that the ‘novelty’ condition is satisfied. Granting her request would thus amount to affording copyright protection to ‘ideas’ and ‘concepts’, because the images that are the subject of those reproductions belong to the current fashion for ‘simplified motivational artworks’ with ‘trite sentences’. Castorama Polska maintains, moreover, that all the graphic elements of those images are trite and repetitive and that they do not in any way show originality, as far as concerns their composition, colours and the font used, with regard to other images available on the market.
It is apparent from the request for a preliminary ruling that the evidence adduced by TB consists only, first, of printouts of pages from her website displaying articles for sale in her online shops and of invoices drawn up from 2014 onwards and, secondly, of printouts of pages from Castorama Polska’s website and of invoices relating to the sale of images in the latter’s online shops.
For the purposes of examining TB’s application in the main proceedings, the referring court is uncertain as to the interpretation to be given to Article 8(1) of Directive 2004/48, in particular whether, in proceedings requesting information initiated on the basis of that provision, the fact that the person concerned is the holder of the intellectual property rights relied on in support of his or her application must be fully established by that person, or whether it is sufficient for that person merely to ‘lend credence’ to it.
In those circumstances, the Sąd Okręgowy w Warszawie (Regional Court, Warsaw, Poland) 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 Court decision:
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 proceedings concerning an infringement of an intellectual property right under that provision, the applicant must, for the purpose of a request for information under Article 8, provide any reasonably available evidence enabling the court seised of that request to satisfy itself with a sufficient degree of certainty that the applicant is the rightholder, by submitting evidence appropriate to the nature of that right and any special applicable formalities.