The Milan IP Court gives its view on jurisdiction over online IP infringements

In a recent order issued in preliminary (injunction) proceedings, the Milan IP Court summarised its standpoint on jurisdiction and venue for infringements of IP rights committed online.

Having been enjoined by the same court from marketing women’s bags that were found to infringe on the trademark and design rights of a Milan-based company, two parties, both based outside the Milan judicial district, filed appeals objecting, among other things, that Milan was not a proper venue to hear the case.

The appellants, who sold their products exclusively online, relied on a recent judgment by the Italian Court of Cassation (ruling no. 5254 of 2017), under which, in a case where the alleged unlawful conduct consisted of online advertising, the place where “the facts have been committed” for the purposes of Article 120 of the Intellectual Property Code (locus commissi delicti) is the place of establishment of the advertiser or, alternatively, of the ISP hosting the relevant website.

The three-judge appeal panel, however, rejected the defendants’ argument, finding that the Milan court was indeed the forum commissi delicti in the case at hand. Having noted that the “place of the tort” includes both the place where the harmful conduct was put into effect and the place where the damage occurred, the judges considered that, in the case before them, the appellants had allegedly shipped some of the disputed products to a location in the Milanese district: a circumstance which, in their view, was sufficient to establish the Milan IP Court as the rightful venue.

As for the Court of Cassation’s ruling invoked by the appellants, the judges dismissed it as referring exclusively to mere instances of (unlawful) Internet advertising and thus irrelevant.

The judges added that the Milan IP Court was also competent to hear the matter on another ground: it was the place of establishment of the right-holder and, thus, the “place of perception of the offence by the injured party” in cases where the unlawful conduct is perpetrated through the Internet. This reasoning was actually borrowed from case-law, including ECJ case-law, concerning international jurisdiction.

Where interpretation of jurisdiction rules in Internet-related tort cases places the locus commissi delicti in either the infringer’s or the host provider’s place of establishment, it becomes overly burdensome for the right-holder to identify the competent court. What is worse, online infringers are encouraged to base their whole Internet operations abroad in order to escape the Italian jurisdiction altogether. The interpretation adopted by the Milan Court is openly aimed at countering these adverse effects.