Recent CJEU case-law in the field of digital media 

In the last month, the Court of Justice of the European Union (CJEU) issued several interesting judgements in the field of intellectual property protection in digital media. The Court's interpretations concern the use of a third party's trademark in online advertising, as well as YouTube's potential obligation to provide data, such as IP addresses, of subjects who illegally publish protected content.

The first CJEU judgment was delivered on 2 July 2020 upon request for a preliminary ruling from the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany) with reference to the following question:   

"Is a third party referenced on a website in an entry that contains a sign identical with a trade mark "using" that trade mark, within the meaning of Article 5(1) of Directive 2008/95, if the entry was not placed there by the third party itself, but was reproduced by the website’s operator from another entry that the third party had placed in infringement of the trade mark"

The request for preliminary ruling comes after a dispute between two German law firms - "MBK Rechtsanwälte" and "mk advokaten". The first law firm is the proprietor of a registered German national word mark 'MBK Rechtsanwälte', which enjoys protection for legal services in Class 45 of the Nice Classification. The second law firm initially operated under the identical name 'mbk Rechtsanwälte'.    

Following an action for trademark infringement brought by MBK Rechtsanwälte, the Landgericht Düsseldorf, by decision of 2016, prohibited mk advokaten from using the letter group 'mbk' in commercial activities related to legal services. That judgment became final. Subsequently, it was established that when looking up the phrase 'mbk Rechtsanwälte' in the Google search engine, the results included several referencing websites with an advertisement for legal services provided by 'mk advokaten'. The company, owner of the registered trademark, addressed the competent local court with a petition for imposition of a fine. mk advokaten sustains that it initiated its entry under the aforementioned name in only one such referencing website and subsequently requested deletion after the 2016 court decision. The company considers that, as far as its inclusion in other referencing websites was not made at its express request, it was not obliged to request the subsequent deletion. The Landgericht Düsseldorf accepted MBK Rechtsanwälte's argument, noting that the advertisement on the websites in question favours 'mk advokaten' and is based on the advertisement, which the latter company commissioned to be placed on a referencing website. The decision was appealed and the Oberlandesgericht Düsseldorf decided to stay the proceedings and refer for preliminary ruling to the EU Court of Justice.

In its conclusions , the CJEU states that “the offering of goods or services under a sign which is identical with or similar to another person’s trade mark and advertising those goods or services under that sign constitutes ‘use’ in relation to that sign ”. Furthermore, according to settled case-law, “such use of a sign that is identical with or similar to another person’s trade mark exists where that sign, selected by an advertiser as a keyword in an online referencing service, is the means used by the advertiser to trigger the display of its advertisement, even where that sign does not appear in the advertisement itself ”.

Therefore, when a person operating in the course of trade orders from the operator of a referencing website, the publication of an advertisement, the display of which contains or is triggered by a sign which is identical with or similar to another person’s trade mark, that person must be considered to be using that sign, within the meaning of Article 5(1) of  Directive 2008/95.

At the same time, the Court notes that a person cannot be held liable for the independent actions of other economic operators , such as those of referencing websites, with whom that person has no direct or indirect relationship and who do not act by order and on behalf of that person, but on their own initiative and in their own name.

The term ‘using’ in Article 5(1) of Directive 2008/95 presumes active conduct and direct or indirect control over the act constituting the use. However, this is not the case if that act is performed by an independent operator without the consent of the advertiser.

What is decisive for the CJEU is whether it follows from the conduct of mk advokaten, in the context of either a direct or indirect relationship between mk advokaten and the operators of the websites in question, that those operators had placed the advertisement online by order and on behalf of mk advokaten. In the absence of such conduct, 'mk advokaten' should not be penalized. In conclusion, the Court upholds that:   

Article 5(1) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that a person operating in the course of trade that has arranged for an advertisement, which infringes another person’s trade mark to be placed on a website, is not using a sign which is identical with that trade mark where the operators of other websites reproduce that advertisement by placing it online, on their own initiative and in their own name, on other websites”.

The second noteworthy ruling is of 9 July 2020 and concerns the interpretation of Article 8(2)(a) of  Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on on the enforcement of intellectual property rights. The reference for preliminary ruling was requested by the Federal Supreme Court of Germany (Bundesgerichtshof) in connection to a dispute between Constantin Film Verleih GmbH, a German-based film distribution company, on the one hand, and YouTube LLC and Google Inc., established in the United States, on the other hand. The dispute refers to information requested by Constantin Film Verleih from YouTube LLC and Google Inc, relating to the e-mail addresses, IP addresses and mobile phone numbers of users who had infringed Constantin Film Verleih’s IP rights .

In 2013 and 2014, the movies Parker and Scary Movie 5 were uploaded onto the video platform YouTube without the consent of Constantin Film Verleih - the owner of the exclusive rights on these works in Germany. They movies had been seen tens of thousands of times on YouTube. Which is why Constantin Film Verleih requested from YouTube and Google (the parent company of YouTube, where users must first register their profile) to provide a set of data for each of the users who uploaded these movies. In order to post videos longer than 15 minutes on the YouTube platform, a user must enter a mobile phone number on which they receive the activation code needed to make the post. In addition, in accordance with the joint terms of service and privacy policies of YouTube-Google, users of the YouTube platform consent to server logs, including the IP address, date and time of use as well as individual requests, being stored and to those data being used by participating undertakings. YouTube and Google refused to provide Constantin Film Verleih with the requested user data, in particular with the e-mail addresses, telephone numbers and IP addresses used at the time of uploading the files in question, as well as at the time of the last access to the Google / YouTube account.

By a 2016 decision, the Frankfurt am Main District Court rejected Constantin Film Verleih's request. However, in a 2018 ruling on the appeal, the Frankfurt am Main High Court partially upheld the request and ordered YouTube and Google to provide Constantin Film Verleih with the e-mail addresses of the users concerned. In its appeal to the Federal Supreme Court, Constantin Film Verleih continued to request that YouTube and Google be ordered to provide the mobile phone numbers, as well as the IP addresses of the users. Thus, the CJEU was referred to with the following question:

Do the addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services, as well as the intended wholesalers and retailers, mentioned in Article 8(2)(a) of Directive 2004/48/EC 1 and covered, as appropriate, by the information referred to in Article 8(1) of Directive 2004/48/EC, also include

(a) the email addresses of service users and/or

(b) the telephone numbers of service users and/or

(c) the IP addresses used by service users to upload infringing files, together with the precise point in time at which such uploading took place?”

In its analysis, the CJEU found that, in its usual sense, the word "address" refers only to the postal address of the person . Therefore, when used without further specification, as in Directive 2004/48, that word does not refer to an electronic address, telephone number or IP address. Additionally, the Court notes that in the preparatory work leading to the adoption of Directive 2004/48, there is nothing to suggest that the word 'address' must be understood to mean not only the postal address, but also the electronic address, telephone number or IP address of the persons concerned. The Court also indicates that the purpose of Directive 2004/48 is to reconcile compliance with various rights, in particular the right of holders to information and the right of users to protection of personal data.

The CJEU's final conclusion is that, as regards a user who has uploaded files in breach of an intellectual property right, the term 'addresses' in Directive 2004/48 does not include the user’s e-mail address, telephone number or IP address, used to upload said files, nor the IP address used when the user last accessed the account.

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