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Standing of intellectual property collective rights-management bodies to bring an action for copyright infringement

30.11.2023 | EN, News EN

Standing of intellectual property collective rights-management bodies to bring an action for copyright infringement

lis 30, 2023

According to Article 4(c) of Directive 2004/48 on the enforcement of intellectual property rights, persons entitled to request the application of the measures, procedures and remedies (provided for in this Directive) are intellectual property collective rights-management bodies which are regularly recognised as having a right to represent holders of intellectual property rights, in so far as permitted by and in accordance with the provisions of the applicable law.

In turn, it follows from recital 18 of the directive that the persons entitled to request application of [the] measures, procedures and remedies (provided for in this Directive) should be not only the rightholders but also persons who have a direct interest and legal standing in so far as permitted by and in accordance with the applicable law, which may include professional organisations in charge of the management of those rights or for the defence of the collective and individual interests for which they are responsible.

The dispute in the main proceedings:

The dispute was initiated by the Finnish organization Kopiosto ry (hereafter Kopiosto), which manages and grants licenses on behalf of numerous authors on the basis of mandates conferred on it by them. In addition, it has also been approved by the Finnish Ministry of Education and Culture as a contractual licensing organization. According to the Finnish law, these are agreements concluded between a user and the approved organization, which represents, in a specific sector, multiple authors of works used in Finland, for the use of authors’ works falling within that same sector (a licensee who has obtained a contractual licence pursuant to that agreement may use all the works of authors falling within the same sector). This applies in particular to retransmissions of works included in radio or television broadcasts.

Thus, within the meaning of Directive 2004/48, Kopiosto is a collective management organisation (hereinafter: organization).

The defendant Telia Finland Oy (hereinafter: Telia) operates a cable television network by which broadcasts of domestic free-to-air television channels are transmitted to the public.

In 2018, Kopiosto applied to Finnish Market Court for a declaration that Telia had retransmitted television broadcasts and that, in the absence of prior authorisation on its part, that retransmission infringed the copyrights of the authors that Kopiosto represents. Telia, in turn, argued that under Finnish law, Kopiosto does not have standing to bring an action for copyright infringement.

The court found in favour of Telia’s argument and rejected Kopiosto’s claims, stating that Kopiosto does not have standing to bring an infringement action in its own name on behalf of rightholders whom it represents as a contractual licensing organisation, and furthermore that it also lacks standing to bring an infringement action on behalf of rightholders who had granted it an administrative mandate and powers of attorney in respect of their rights.

Kopiosto, appealing this judgment to the referring court, claimed first of all that because of its status as a contractual licensing organisation, it has, as required by Article 4(c) of Directive 2004/48, in conjunction with recital 18 thereof, a direct interest in bringing proceedings in the event of unlawful use of the works of authors whom it represents and, in the alternative, that it has, at the very least, the right to bring proceedings in respect of the works of authors whose copyright it manages on the basis of the mandates for management and representation conferred on it by those authors..

CJEU ruling:

In its judgment of November 23, 2023, in Case No. C-201/22, the CJEU held that Article 4(c) of Directive 2004/48 must be interpreted as meaning that the capacity of an intellectual property collective rights-management body to seek, in its own name, the application of the measures, procedures and remedies provided for therein is subject to the condition that that body is regarded by the applicable national legislation as having a direct interest in the defence of such rights and that that legislation authorises it to bring legal proceedings for that purpose.

However, since judicial capacity alone is not sufficient for this purpose, recognition of an organization’s authority to act on its own behalf is subject to the organization’s having legal standing to defend intellectual property rights, which may arise from a specific provision in this regard or from general procedural rules.

The reference to the ‘applicable lar’ in this case must be understood as referring to the national legislation of the member states. This means, therefore, that it is the member states that are obliged to grant an organization the power to apply for the measures, procedures and remedies provided for in this directive and to bring actions to enforce such rights, particularly when the organization is recognized by national legislation as having a direct interest in defending such rights. Consequently, it is up to the national courts to determine whether such an organization has a direct interest under the relevant national legislation in defending the rights of the legitimate entities it represents, with the understanding that if this condition is not met, such an obligation of recognition is not incumbent on the Member State concerned.

Comment:

The ruling formulates the obligation of member states to grant intellectual property collective rights-management organization a standing to defend intellectual property rights if it has a direct interest in doing so, while relieving them of this obligation when there is no such interest.

 

 

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