January 26, 2023
TB issued proceedings for copyright infringement in the Polish courts against Castorama Poska Sp zoo and “Knor” Sp zoo in respect of their marketing and sale in “bricks and mortar” shops and online of small signs consisting of geometric figures, simple graphics and short sentences stating, e.g. “In my house, I make the rules” and “Perfect people do not exist, and yet I am one”.
TB said that the signs sold by Castorama were exact copies of the signs that she had created and was selling online and in which she claimed to hold the copyright.
During the course of proceedings, TB asked Castorama and Knor to provide her with information on the reproductions in question in accordance with Article 8(1) of the Directive, including on their distribution networks, the quantity of goods ordered, a list of suppliers, the date on which the goods were placed on sale in Castorama’s shops and online, the numbers involved and the price at which they were sold. TB relied on her economic and moral copyright in the reproductions and said that the information requested was necessary for the purpose of bringing infringement proceedings.
Castorama contended that the request for information should be refused or strictly limited to “works” classified as such. They disputed that copyright subsisted in the signs as they were not sufficiently original and said that, in any event, TB had not proved that she was the copyright owner.
The Polish court has asked the CJEU whether Article 8(1) of the IP Enforcement Directive (2004/48/EC) means that the claimant must prove that she is the legal copyright owner or merely lend credence to it.
In the Advocate General’s opinion, although the Directive refers to “holders of intellectual property rights” among those who can seek to use its procedures and remedies, it expressly provides that the claimant, pursuant to Articles 6, 7 and 9, can present reasonably available evidence sufficient to support his or her claims, i.e. without having to prove that he/she is the holder of the IP right in question. Accordingly, the concept of “holder of intellectual property rights” did not mean that an applicant must, under Article 8, prove that he or she is the holder of the IP right relied on in infringement proceedings.
However, the AG said, the applicant must lend credence to the fact that he or she is the IP right holder by submitting sufficient evidence. Further, the national court must assess the merits of the request for information to check that the applicant has not abused his/her right to information under Article 8. (Case C-628/21 TB v Castorama Polska Sp zoo EU:C:2022:905 (Opinion of Advocate General) (17 November 2022) — to read the Opinion in full, click here).