Opinions
Click, Stream, Infringe? UPC defines the limits of its jurisdiction in Dish and Sling v. AYLO.
In the recent case Dish and Sling v. AYLO (Case No UPC-CoA-188/2024, Sept. 3, 2024) the Court of Appeal (CoA) of the Unified Patent Court (UPC) ruled that the UPC has international jurisdiction for alleged infringement actions that originate outside the UPC’s Member States.
From Streaming Services To Courtroom: The Essential Details Of The Case
The heart of the dispute centred on a media streaming patent that describes a method for adaptive video streaming. In the First Instance Dish, the patent owner, and Sling, its licensee, brought an infringement action against AYLO before the local Mannheim Division.
AYLO was accused of indirectly infringing the patent in numerous UPC Member States, including Germany, by offering and supplying video files available for streaming and the media players for streaming them via Internet. AYLO lodged a preliminary objection requesting that the infringement action be dismissed for lack of UPC jurisdiction, Rule 19.1(a) UPC Rules of Procedure.
After the preliminary objection was rejected, AYLO escalated the matter by appealing the Mannheim Division’s order. However, the CoA ultimately upheld the order of the Court of First Instance.
Let’s take a look together at main AYLO’s arguments and the UPC’s reasoning.
UPC’s Jurisdiction: Website Accessibility Trumps Server Location
AYLO challenged UPC’s international jurisdiction on the basis of Article 7(2) in conjunction with Article 71b(1) of the Brussels I Recast Regulation, because the harmful event would not occur in a UPC Member State since AYLO’s servers are located in the United States.
The CoA disagreed, explaining that the Article 7(2) phrase “place where the harmful event occurred or may occur” is intended to cover both:
- the place where the damage occurred; and
- the place of the event giving rise to the damage.
This means legal action can be taken in either location.
Therefore, regardless the location of AYLO’s server, the UPC had jurisdiction over the infringement action because AYLO’s websites are accessible in Germany where the patent has effect. Users in Germany could download both players and videos that were connected to key parts of the protected technology and could be used to implement the invention.
The CoA clarified that a website doesn’t need to specifically target users of the concerned Member State. What truly matters is whether people can access the website and whether this access harms the European patent owner in a Member State.
Parallel Proceedings: Why UPC And A National Court Can Handle The Same Case
AYLO also claimed that the UPC lacked jurisdiction due to a parallel national proceeding initiated a day earlier by Dish and Sling in the Regional Court of Munich, relying on the lis pendens rule in Article 30(2) of the Brussels I Recast Regulation.
However, the CoA dismissed this argument, as AYLO failed to demonstrate that the necessary conditions for lis pendens were met. Moreover, the existence of similar proceedings did not automatically preclude UPC jurisdiction, leaving the final decision on competence to the Court’s discretion.
Click To Sue: How Website Access Defines Patent Jurisdiction
This ruling clarifies the extensions of UPC’s jurisdiction in today’s digital environment, as most websites are globally accessible, and the Court only needs to show that users can access them in a Member State where the allegedly infringed patent has effect – no matter where the website owner is based or operates.
This newsletter is for the sole purpose of providing updates and general information and is not intended as legal advice on any particular or specific issue.
For clarifications or information, please contact the authors or your reference professional in the Intellectual Property area at our Firm.
Niccolò Ferretti, Partner
E: n.ferretti@nmlex.it
T.: +39 026575181
Valentina D’Adda, Trainee
E: v.dadda@nmlex.it
T.: +39 026575181
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