Territorial jurisdiction of the President of the Judicial Court regarding orders authorizing the seizure of counterfeit goods
Pursuant to the provisions of the Intellectual Property Code relating to software and those of the Code of Civil Procedure, the President of the Judicial Court of the place where the harmful act occurred has jurisdiction to authorize the seizure of infringing software. Consequently, in the case of infringing acts committed on the internet, the place where the harmful act occurred is deemed to be the entire territory within which the website in question is accessible.
As we know, the rules governing seizures of counterfeit goods are complex, and compliance with them is scrutinized very strictly by the courts—particularly with regard to the role of the judicial officer and the steps taken by that officer during the seizure, but not only that…
In this case, the President of the Paris Judicial Court had to rule on his jurisdiction (in his capacity as president of the court with jurisdiction over the place where the alleged tort occurred) to authorize the petitioner to carry out a seizure of counterfeit goods.
In this case, our client, Company X—a firm specializing in software development and publishing—holds, among other things, the intellectual property rights to a management software program.
However, the company was informed that a competitor had copied the software (same architecture, same interface, etc.) and was marketing it. This marketing effort was accompanied by a smear campaign and a massive effort to poach customers.
Consequently, Company X filed a motion with the President of the Paris Judicial Court for an injunction against infringement and for injunctive relief (Article 145 of the Code of Civil Procedure) regarding the alleged acts of infringement and unfair competition. The President of the court granted the motion.
Following the seizure, the competitor filed a motion with the President of the Paris Judicial Court requesting that he rescind the order authorizing the measure, or at the very least lift the seizure.
The competitor argued primarily that, since its headquarters were located within the jurisdiction of the Nanterre Judicial Court, only the President of that Court had the authority to authorize such a measure.
The company seeking the injunction then argued that the competitor was promoting the software alleged to be infringing on its website, which was accessible throughout France.
Consequently, the court with jurisdiction over the tort was any court with jurisdiction over intellectual property matters within whose jurisdiction the competing website was accessible.
During the hearing, and with the President’s permission, a demonstration was conducted on our smartphone showing that 1) the petitioner’s website was accessible within the jurisdiction of the Paris Judicial Court and that 2) it was promoting the infringing software.
Thus, in an order dated July 19, 2024, the President of the Paris Judicial Court confirmed that the President of the court in the jurisdiction where the harmful event occurred has the authority to authorize a seizure for infringement.
In fact, Articles L. 332-1 through L. 331-4 of the Intellectual Property Code establish the rules of jurisdiction by providing that“the competent civil court” may order the seizure of counterfeit goods, without, however, specifying the jurisdiction of that court.
Article D. 211-6-1 of the Code of Judicial Organization designates the specialized courts with jurisdiction over literary and artistic property matters.
The jurisdiction of these specialized courts must nevertheless be assessed in light of the general rules of civil procedure, namely the location of the defendant’s principal place of business (Article 42 of the Code of Civil Procedure) or the place where the harmful event occurred (Article 46 of the Code of Civil Procedure), as the provisions of Articles L. 332-1 through L. 331-4 of the Intellectual Property Code do not impose any restrictions on the general rules for determining territorial jurisdiction.
Thus, the President of the Judicial Court of the location of the defendant’s principal place of business is not the sole competent authority.
The President of the Judicial Court also confirmed, in his order, the established case law holding that the accessibility, within the jurisdiction of the court seised, of a website displaying counterfeit goods is sufficient to establish that court’s territorial jurisdiction, considered as the place where the alleged damage occurred (and thus of the tortious act— Civ.1st, Oct. 18, 2017, No. 16-10.428), regardless of whether the counterfeit products can be ordered online on the site (Com., June 23, 2021, No. 20-10.635).
Furthermore, contrary to the argument put forward by the respondent, applying Article 46 of the Code of Civil Procedure does not constitute a departure from the rules on special jurisdiction if it is interpreted in conjunction with Article D. 211-6-1 of the Code of Judicial Organization.
If you are facing issues related to counterfeiting or unfair competition, or if you are subject to a seizure order, please do not hesitate to contact us.
Partner
Stemm Law Firm
#IntellectualProperty #Lawyer #Counterfeiting #Software #Jurisdiction #SeizureOfCounterfeitGoods
