Intellectual Property

Calculation of damages

|Gert Würtenberger|

On 25 January 2017 the European Court of Justice (Case C‑367/15, see hererendered a decision concerning the calculation of damages in a copyright infringement case which, however, also has to be regarded as a leading case with regard to any damage claim for infringement of intellectual property rights, including plant variety rights.

A Polish organisation that collectively manages copyrights sued a company that had been broadcasting television programs through cable networks for unauthorized use of copyright-protected works through a cable network. The relevant provisions under Polish law provide that in case of an infringement of copyrights the infringer may have to pay up to twice the amount of an appropriate licence fee. As this, however, was regarded by the Appeal Court as possibly colliding with the relevant article in the EU Directive on the Enforcement of Intellectual Property Rights, the Polish court referred the question to the European Court of Justice for a preliminary ruling.

Article 13 of the Enforcement Directive provides several possibilities for assessing damages:

. Coverage of lost profits which the injured party has suffered;

. Surrender of unfair profits gained by the infringer, taking into consideration, in appropriate cases, elements other than economic factors such as the moral prejudice suffered by the right holder through the infringement (immaterial damage);

. As an alternative to these two possibilities, in appropriate cases,  coverage by means of a lump sum amounting to at least the amount of royalties or fees that would have become due had the infringer requested authorization to use the intellectual property right in question.

In light of the general provision that the procedures and remedies to be provided by the Member States for the enforcement of the intellectual property rights shall be effective, proportionate and dissuasive, the Court concluded that the Polish provision providing for a double licence fee is in compliance with the European Union’s Enforcement Directive.

A more detailed discussion of the decision will follow on this blog shortly.

Published on 21 Apr 2017