The matter at hand
Liffers is the director, scriptwriter and producer of the audiovisual work entitled Dos patrias, Cuba y la noche. Mandarina produced an audiovisual documentary, in which certain passages of the work Dos patrias, Cuba y la noche were included without the consent of Liffers. That documentary was broadcast by a Spanish television channel owned by Mediaset. Liffers brought an action before the Commercial Court in Madrid requesting the court to order Mandarina and Mediaset to cease all infringement of his intellectual property rights and to pay him € 6740 for the infringement of his exploitation rights, and an additional sum of € 10 000 as compensation for the moral prejudice which he claimed to have suffered. The amount of material damage (the first sum) had been determined by reference to the amount of royalties that would have been due to him if Mandarina and Mediaset had requested his authorisation to use his work. Liffers was partly successful in his action.
However, on appeal the Provincial Court in Madrid reduced the compensation for material damage and completely set aside the compensation for the moral prejudice. According to that court, since Liffers had chosen to use the calculation method based on hypothetical royalties, as set out under the Spanish implementation of Article 13(1)(b) 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, he was not entitled to claim compensation for moral prejudice as well. Liffers appealed this decision before the Supreme Court, which referred to matter to the ECJ for a preliminary ruling.
The judgment of the ECJ
First of all, the ECJ considers that Article 13(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 – by providing for the possibility of setting the damages as a lump sum on the basis of, ‘at least’, elements such as hypothetical royalties – allows other elements to be included in that amount as well, such as, where appropriate, compensation for any moral prejudice caused to the rightholder (paragraph 15).
Secondly, the ECJ points out that Article 13(1) sets out the general rule that the competent authorities must order the infringer to pay damages that are appropriate to the actual prejudice suffered by the rightholder as a result of the infringement. “Consequently, where the rightholder in question has in fact suffered moral prejudice, (…) Article 13(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] (…) precludes the calculation of the amount of damages to be paid to that rightholder from being based exclusively on the amount of hypothetical royalties” (paragraph 18). This is in line with 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 “to attain a high level of protection of intellectual property rights that takes into account the specific aspects of each given case and is based on a method of calculating damages that addresses those specific aspects” (paragraph 24).
The ECJ concludes that Article 13(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 “must be interpreted as permitting a party injured by an intellectual property infringement, who claims compensation for his material damage on the basis of the amount of royalties or fees which would have been due to him if the infringer had requested his authorisation, to also claim compensation for the moral prejudice that he has suffered” (paragraph 27).