A look at how recent judgments on jurisdiction might affect companies doing business online, together with some practical tips for how to make sure these rules do not catch you out

1. © 2012 Edwards Wildman Palmer LLP & Edwards Wildman Palmer UK LLP
Online and Across Borders:
A Net Gain For Technology
Companies?
Edwards Wildman
Gareth Dickson
October 16, 2012

2. Introduction
♦ Rules on jurisdiction: Foundations for ivory towers?
♦ Application to eCommerce disputes:
♦ Recent European cases
♦ A cause for concern from further afield
♦ Conclusions for technology companies

3. Rules on Jurisdiction
♦ Jurisdiction and Governing law
♦ Home or away?
♦ Different procedural and evidential rules
♦ Rules of disclosure and privilege
♦ Recovery of damages and costs
♦ Practicalities
♦ Location of evidence
♦ Location of witnesses
♦ Language barriers and transport costs

4. Application to eCommerce disputes
♦ Lack of harmonisation regulating online behaviour leads to forum
shopping
♦ Where IT services are provided across borders, disputes typically
involve claims in contract and in tort
♦ Desire to achieve foreseeability, sound administration of justice
and the efficacious conduct of proceedings
♦ CJEU has given some guidance, not all of it helpful

5. Application to eCommerce disputes
Council Regulation (EC) No 44/2001 on jurisdiction and the
recognition and enforcement of judgments in civil and commercial
matters:
♦ Persons domiciled in a Member State shall, whatever their
nationality, be sued in the courts of that Member State. Art 2(1)
♦ A person domiciled in a Member State may, in another Member
State, be sued:
♦ in matters relating to contract, in the courts for the place of
performance of the obligation in question. Art 5(1)(a)
♦ in matters relating to tort, delict or quasi-delict, in the courts for
the place where the harmful event occurred or may occur.
Art 5(3)

6. Recent European Cases
eDate v. X, Cases C-509/09 and Case C-161/10
♦ Can accessibility of online material create jurisdiction?
♦ Rules of special jurisdiction are derogations “based on the
existence of a particularly close connecting factor between the
dispute and the courts of the place where the harmful event
occurred”
♦ “The internet reduces the usefulness of the criterion relating to
distribution.” Criteria “must therefore be adapted”:
♦ Sue for all damage in D’s domicile or place of establishment
♦ Sue for national damage where information published
♦ Sue for all damage where Claimant has “centre of interests”

7. Recent European Cases
Wintersteiger AG v. Products 4U, Case C-523/10
♦ Litigation in Austria over advertisement by a German company on
google.de that allegedly infringed Austrian trade mark
♦ Did Austrian Court have jurisdiction to hear Wintersteiger’s claim?
♦ Contrast with eDate:
♦ Mere accessibility insufficient to create jurisdiction
♦ Sue in courts of Member States where right is protected
♦ Sue in courts of Member States where Defendant is established
♦ “The place of establishment of the server cannot, by reason of its
uncertain location, be considered to be the place where the event
giving rise to the damage occurred.”

8. Recent European Cases
Football Dataco v. Sportradar, Case C-173/11
♦ FD alleged Sportradar had:
♦ extracted data from FD’s football statistics database; and
♦ jointly re-utilised that data with sites aimed at UK Internet users
♦ Transmission theory vs. Emission theory
“In the context of the Internet, the usefulness of employing
conceptual constructions formulated in the context of
broadcasting is highly questionable… What is required [is] a
specific construction tailored to the particular characteristics of
communication via the internet”
♦ “Making available to the public” is a “collection of acts” which
occur, inter alia, where the server is located

9. Recent European Cases
Titus Alexander Jochen Donner, Case C-5/11
♦ “Distribution to the public” to be given an independent
interpretation – but same as “making available to the public”
♦ Distribution “characterised by a series of acts” from, at least,
conclusion of a contract of sale to the performance thereof by
delivery to a member of the public
♦ Distribution may therefore take place, and be actionable, in a
number of Member States
♦ Acts of the supplier vs. acts on his behalf

10. Assessing Jurisdiction Under Article 5(3)
EC Regulation 44/2001

11. Predicting Jurisdiction Under Article 5(3)
EC Regulation 44/2001
Case AG Court Jurisdiction (AG) Jurisdiction (Court)
eDate
(Online,
personality
rights and
privacy)
Cruz Villalón
29 March
2011
Grand Chamber
25 October 2011
All damage:
1. Where content provider is
established; or
2. Where Claimant has "centre of
interests" and dispute has its
"centre of gravity"
National damage:
Where content is published
All damage:
1. Where content provider is
established; or
2. Where Claimant has "centre of
interests“
National damage:
Where content is accessible
Wintersteiger
(Online,
national
trade marks)
Cruz Villalón
16 February
2012
First Chamber
19 April 2012
1. Where right protected; or
2. Where means necessary to produce
a potential for infringement were
used
1. Where right protected; or
2. Where advertiser is established; but
3. NOT where the server is located
Titus Donner
(Offline,
copyright)
Jääskinen
29 March
2012
Fourth Chamber
21 June 2012
Where there is a targeted sales and
delivery channel for buyers to acquire
works
Where any of the "series of acts"
giving rise to a "distribution [making
available] to the public" occur
Sportradar
(Online,
database)
Cruz Villalón
21 June 2012
Third Chamber
18 October 2012
Where any of the "collection of acts"
needed to produce a "making
available to the public" occur,
including where the server is located
WATCH THIS SPACE!

12. Predicting Jurisdiction Under Article 5(3)
EC Regulation 44/2001
Case AG Court Jurisdiction (AG) Jurisdiction (Court)
eDate
(Online,
personality
rights and
privacy)
Cruz Villalón
29 March
2011
Grand Chamber
25 October 2011
All damage:
1. Where content provider is
established; or
2. Where Claimant has "centre of
interests" and dispute has its
"centre of gravity"
National damage:
Where content is published
All damage:
1. Where content provider is
established; or
2. Where Claimant has "centre of
interests“
National damage:
Where content is accessible
Wintersteiger
(Online,
national
trade marks)
Cruz Villalón
16 February
2012
First Chamber
19 April 2012
1. Where right protected; or
2. Where means necessary to produce
a potential for infringement were
used
1. Where right protected; or
2. Where advertiser is established; but
3. NOT where the server is located
Titus Donner
(Offline,
copyright)
Jääskinen
29 March
2012
Fourth Chamber
21 June 2012
Where there is a targeted sales and
delivery channel for buyers to acquire
works
Where any of the "series of acts"
giving rise to a "distribution [making
available] to the public" occur
Sportradar
(Online,
database)
Cruz Villalón
21 June 2012
Third Chamber
18 October 2012
Where any of the "collection of acts"
needed to produce a "making
available to the public" occur,
including where the server is located
WATCH THIS SPACE!

13. Predicting Jurisdiction Under Article 5(3)
EC Regulation 44/2001
Case AG Court Jurisdiction (AG) Jurisdiction (Court)
eDate
(Online,
personality
rights and
privacy)
Cruz Villalón
29 March
2011
Grand Chamber
25 October 2011
All damage:
1. Where content provider is
established; or
2. Where Claimant has "centre of
interests" and dispute has its
"centre of gravity"
National damage:
Where content is published
All damage:
1. Where content provider is
established; or
2. Where Claimant has "centre of
interests“
National damage:
Where content is accessible
Wintersteiger
(Online,
national
trade marks)
Cruz Villalón
16 February
2012
First Chamber
19 April 2012
1. Where right protected; or
2. Where means necessary to produce
a potential for infringement were
used
1. Where right protected; or
2. Where advertiser is established; but
3. NOT where the server is located
Titus Donner
(Offline,
copyright)
Jääskinen
29 March
2012
Fourth Chamber
21 June 2012
Where there is a targeted sales and
delivery channel for buyers to acquire
works
Where any of the "series of acts"
giving rise to a "distribution [making
available] to the public" occur
Sportradar
(Online,
database)
Cruz Villalón
21 June 2012
Third Chamber
18 October 2012
Where any of the "collection of acts"
needed to produce a "making
available to the public" occur,
including where the server is located
WATCH THIS SPACE!

14. Recent European Cases
Lucasfilm v. Ainsworth [2009] EWCA Civ 1328
♦ Online sale of allegedly infringing goods into California from UK.
Lucasfilm sought remedies in the UK
© 2009 Danny Choo (@dannychoo). Reproduced with permission.
http://www.dannychoo.com/post/en/1677/Mac+Life+4.html#image-25130

15. Recent European Cases
Lucasfilm v. Ainsworth [2009] EWCA Civ 1328
♦ Court of Appeal:
♦ “The sheer omnipresence of the Internet does not easily create
that presence which is a necessary ingredient in the
enforceability of foreign judgments”
♦ Mere accessibility falls short of “establishing a fixed place of
business from which [a defendant] carries on business”
♦ “Mere selling of goods from country A into country B does not
amount to the presence of the seller in country B”
♦ Supreme Court:
♦ “The English court has jurisdiction [in claims for infringement of
foreign copyrights], provided that there is a basis for in
personam jurisdiction over the defendant”

16. Recent European Cases
Solvay v. Honeywell, Case C-616/10
♦ Belgian company sued one Dutch and two Belgian companies for
infringement of a European patent, valid in Netherlands and
Belgium, amongst others
♦ Honeywell raised invalidity as a defence and said Dutch courts had
no jurisdiction
♦ CJEU said:
♦ Since there was a risk of irreconcilable judgments, the
Defendants could be sued together in the Netherlands
♦ National Court could grant preliminary injunctive relief against
all three Defendants

17. A Cause for Concern Further Afield
Bahattab v. Juniper Networks Middle East, 2012
♦ Decision of the Dubai Court of Cassation
♦ Concerned a claim of infringement of a US patent by the sale of
network routers within UAE
♦ Claimant sought royalty for all routers worldwide
♦ First patent dispute in Dubai’s 12 year patent-law history
♦ No Court made any finding on the issue of jurisdiction!

18. Conclusions for Technology Companies
♦ Trends in the CJEU’s jurisprudence
♦ The risks of an online “presence”
♦ Acknowledging the possibility of an outlier
♦ Forum shopping
♦ Practical considerations for working with third parties

19. Online and Across Borders:
A Net Gain For Technology Companies?
Thank You
Gareth Dickson
England and Wales, New York
GDickson@EdwardsWildman.com
+44 (0)207 556 4470