The matter at hand

Knoll is a company that distributes high-value designer furniture throughout the world. Knoll is authorised to assert the exclusive copyrights in certain of those designs with regard to Germany. Dimensione, another distributor of designer furniture, distributes its furniture by direct sale in Europe and offers furniture for sale on its website. It advertised furniture similar to the protected Knoll designs on its website, which was also available in German, and in various German daily newspapers, magazines and advertising brochures, stating: “Buy your furniture from Italy, but pay nothing until collection or delivery by a forwarding agent authorised to take payment (service arranged on request).”

It could not be established whether Dimensione actually sold products in Germany.

Knoll stated that the furniture offered for sale by Dimensione were imitations or counterfeit versions of the Knoll-designs and brought an action against both Dimensione and its Managing Director Labianca seeking an order prohibiting them from offering that furniture for sale in Germany.

Article 4(1) of the Copyright DirectiveDirective 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society stipulates that Member States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorise or prohibit any form of distribution to the public by sale or otherwise. Because it could only be established that Dimensione advertised for the product in Germany (and not that it actually sold/delivered furniture to German consumers) the German Federal Court of Justice asked the ECJ three questions concerning the scope of the distribution right:

i) whether the distribution right includes the right to offer the original or a copy of a protected work to the public for sale; and, if this question is to be answered in the affirmative,

ii) whether the distribution right includes the exclusive right to advertise for those objects; and

iii) whether the distribution right is infringed where eventually no purchase takes place on the basis of the offer for sale.

The judgment of the ECJ

The ECJ refers to earlier case law on Article 4(1) of the Copyright DirectiveDirective 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society in which it has held ''that distribution to the public is characterised by a series of acts going at the very least from the conclusion of a contract of sale to the performance thereof by delivery to a member of the public. A trader in such circumstances bears responsibility for any act carried out by him or on his behalf giving rise to a ‘distribution to the public’ in a Member State where the goods distributed are protected by copyright'' (paragraph 25). The ECJ points out that it had expressly mentioned the words ‘at the very least’ and ''that acts or steps preceding the conclusion of a contract of sale may also fall within the concept of distribution'' (paragraph 26).

With regard to the first question, the ECJ considers that, as is the case where a contract of sale and dispatch has already been concluded, ‘distribution to the public’ must also be considered proven where an offer of a contract of sale is made which binds its author, given such an offer constitutes an act prior to a sale being made (paragraph 27).

The ECJ subsequently holds that there is also ''an infringement of the exclusive distribution right under Article 4(1) of the Copyright DirectiveDirective 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, where a trader, who does not hold the copyright, sells protected works or copies thereof and addresses an advertisement, through its website, by direct mail or in the press, to consumers located in the territory of the Member State in which those works are protected in order to invite them to purchase it. The ECJ deems it irrelevant that such advertising is not followed by the transfer of ownership of the protected work or a copy thereof to the purchaser'' (paragraph 32). It therewith also answers the third question in the affirmative.