the matter at hand

The case involves a natural person, TB, who is engaged in the online sale of decorative articles, including mechanically reproduced images which contain simple graphics, limited colors, geometric figures, and short sentences. TB claimed to be the creator of those images and asserted that these images qualify as "works" under copyright legislation.

Castorama Polska and Knorr marketed reproductions of those images, as well as similar images provided by Knorr, without indicating the author or the origin of the products concerned. Castorama Polska and Knorr did not obtain TB's consent for the reproductions or the sale of those reproductions.

TB brought an action before the Sąd Okręgowy w Warszawie (Regional Court, Warsaw, Poland) requiring information about the reproductions at issue to support her claim for copyright infringement and, in the alternative, an action for damages for unfair competition. TB asserted that she possessed the economic and moral copyright, and that the information was essential for initiating a copyright infringement lawsuit. Castorama Polska argues that the images should classify as ‘works’ and asserts that TB has not proved sufficient evidence to establish her economic rights over those reproductions. TB’s evidence is limited to presenting printouts of web pages showcasing articles available for sale on her online shore and invoices created from 2014 onwards.

The referring court seeks clarification on whether Article 8(1) of the Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights necessitates the applicant in a intellectual property infringement proceeding to provide evidence establishing their rightful ownership of the intellectual property right in question when making a request for information. Alternatively, it seeks to determine if it is sufficient for the applicant to provide reasonable support for their claim of being the rightful owner, particularly when the request for information is made before filing a compensation claim for the infringement of the mentioned intellectual property right.

the judgment of the ecj

The ECJ states that the wording of Article 8(1) the Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights does not explicitly require proof of the applicant's status as the holder of the intellectual property right (paragraph 32) and that Article 4 of the Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights “refers to the ‘holders of intellectual property rights’, that provision might be understood as meaning that, when applying Article 8 of that directive, the applicant must show that he or she is actually the holder of the intellectual property right concerned” (paragraph 35).

However, the ECJ emphasizes that when interpreting provisions of European law, it is essential to consider the context and objectives pursued by the rules. Other articles in the Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, such as Articles 6, 7, and 9, indicate that applicants must provide ‘reasonably available evidence to support their claims and the objective of the Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights is to “ensure a high, equivalent, and homogeneous level of intellectual property protection” (paragraph 39).

In addition, the ECJ considers that the procedure for requesting information under Article 8(1) is a separate process, distinct from infringement proceedings. The ECJ has emphasized that the right to information under Article 8(1) should not be limited to infringement proceedings but also applies to separate procedures following the termination of an action or proceeding an action for damages. This right of information is linked to the fundamental right to an effective remedy and the protection of intellectual property rights. Therefore, the request for information under Article 8 Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights serves a different purpose than infringement proceedings, and applying the same standards of proof would undermine the practical usefulness of the separate procedure established by Article 8 of the directive.

Considering the above, the ECJ concludes that the evidence presented in the context of a request for information under Article 8 the Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be evaluated in consideration of the nature of the intellectual property right and any specific formalities related to its ownership. Recital 17 of the Directive emphasizes that the measures, procedures, and remedies should account for the specific characteristics of each case, including the features of the intellectual property right and the (un)intentional nature of the infringement. This means that Member States and national courts are obligated to ensure that requests for information under Article 8 of the Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights are not abused.

Therefore, in proceedings involving the infringement of an intellectual property right under Article 8(1) Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, “the applicant must, for the purpose of a request for information under Article 8, provide any reasonably available evidence enabling the court seized of that request to satisfy itself with a sufficient degree of certainty that the applicant is the rightsholder, by submitting evidence appropriate to the nature of that right and any special applicable formalities” (paragraph 55).