Jurisdiction in online infringement cases: ‘substantial link’ theory confirmed

In Ferrara v Ministère public (Case 07-87.281, September 9 2008), the Criminal Chamber of the French Supreme Court has confirmed the applicability of the ‘substantial link’ theory in criminal cases involving the infringement of IP rights on foreign websites.

The expanding use of the Internet has given rise to one of the most challenging jurisdictional issues in the fight against the infringement of IP rights. Due to its lack of boundaries, cyberspace has become an effective tool for the display and sale of counterfeit goods, as well as a platform for sophisticated infringement cases. This situation has raised the issue of when the French courts should declare themselves competent to hear cases involving the infringement of IP rights online.

French law provides no set of codified rules in this regard. However, the courts have considered the issue on several occasions and have established a series of criteria to determine the circumstances in which the infringement of a third party’s IP rights on the Internet constitutes infringement in France - and, therefore, whether the French courts have jurisdiction.

The first theory developed by the French courts was based on the accessibility of the foreign websites. Pursuant to this theory, the French courts had jurisdiction over online infringement cases as long as the foreign websites were accessible from the French territory (see the December 9 2003 decision of the First Civil Chamber of the Supreme Court in Cristal (Case 01-03.225)). As a consequence, the French courts almost systematically declared themselves competent to hear such cases, as the plaintiff could easily prove that the foreign website was accessible from France.

However, litigants - and the courts themselves - called for new criteria to determine the jurisdiction of the French courts in online infringement cases. In particular, new principles were needed in order to restrict forum shopping. Because almost all foreign websites are accessible from France, plaintiffs often chose to file suit before the French courts based on:

the fact that the burden of proving the infringement was relatively easy to meet;
the amount of damages awarded; and
the length of the proceedings.

However, in Société Hugo Boss v Société Reemtsma Cigarettenfabriken GmbH (Case 02-18.381, January 11 2005), the Supreme Court overturned the ‘accessibility’ theory. The court held that the mere fact that the website was accessible from France was insufficient to determine that the French court had jurisdiction to hear the case or that the infringement had taken place in France (for further details please see “French marks are not protected against use on foreign websites”). Following this decision (which has subsequently been confirmed), the issue is now whether the website in question targets the French public.

The case law of the Paris Court of Appeals is even more stringent, as it requires that the courts determine in each case whether there is “a sufficient, substantial or significant link between the facts or acts and the alleged prejudice on the French territory” (see Google Inc v Axa (June 6 2007) and Cass v eBay (November 9 2007)).

Therefore, with regard to civil law matters, the ‘substantial link’ theory is now well established.

In the present case, French newspaper Le Monde sued Giuliano Ferrara, an Italian citizen, for publishing an article which was intended to be published exclusively in Le Monde. The article was translated into Italian and published in its entirety on an Italian website owned by Ferrara (the online edition of the newspaper Il Foglio), which was accessible from France. In addition, the article was downloadable as a PDF document.

At the appeal stage, the Paris Court of Appeals considered that because the Italian website was accessible from France, the court had jurisdiction to hear the case. Ferrara appealed to the Supreme Court, contesting the applicability of the ‘accessibility’ theory.

The French Supreme Court overturned the Court of Appeals’ decision, indicating that:

“the Court of Appeals should have verified whether the acts had been committed in France, since the commission of the infringement on the French territory is an element of the infraction.”

From a broader standpoint, the Supreme Court overturned the Court of Appeals’ decision on the grounds that the lower court was not competent to hear the case based on the following elements:

the paper version of the Italian newspaper was not available in France;
the website was only in Italian; and
it was impossible to order the Italian newspaper from the French territory.

Therefore, the court concluded that the link between the infringing act and the French territory was insufficient.

The Supreme Court thus confirmed the applicability of the ‘substantial link’ theory in criminal matters, holding that only cases involving active websites targeting the French public may be heard by the French courts.

As a result, before filing a criminal action in the French courts, an IP rights holder should now determine whether there is a sufficient link between the infringing foreign website and the French territory (eg, by examining the language of the website and the availability of the products in France).

Jean-François Bretonniere and Sophie Rodari, Baker & McKenzie, Paris

Jurisdiction in online infringement cases: ‘substantial link’ theory confirmed

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