Cabinet Beau de Loménie
On December 13, 2011 the Cour de Cassation (the French Supreme Court) handed down, a decision (No. 10-28.088) regarding the application of the Right to Information contained in Article L. 716-7-1 of the Code de la Propriété Intellectuelle (French Intellectual Property Code), which implemented in French Law Article 8 of European Union Directive (EC) No. 2004/48 of April 29, 2004.
The Tribunal de Grande Instance of Lyon, by an Order of the Juge de la Mise en Etat (French judge in charge of handling a civil suit before trial) of June 7, 2010, ordered PUMA France and PUMA RETAIL AG (PUMA) to provide the plaintiff (Mr T. and the Barnett Company) with a number of documents, therefore applying the provisions of the Right to Information before any decision had been rendered regarding the infringement.
Following confirmation of the Order by the Lyon Court of Appeal on October 7, 2010 (No. 10/04507), PUMA filed an Appeal to the Cour de Cassation. PUMA essentially argued that the very wording of Article L. 716-7-1, particularly the mention of “produits contrefaisants” (infringing products), implies that the judge must declare the products to be infringing before he can apply (or not) the Right to Information.
In rejecting this argument, the Cour de Cassation has put an end to the wavering Case Law.
The Court states that Article L. 716-7-1 allows “the Juge de la Mise en Etat to order the measures that it contains before any decision has been taken on the reality of the infringement”. The Court thereby validates the idea that there is no obligation for the judge to decide in two steps. This interpretation seems directly in accordance with clause No. 20 of the Preamble of the EU Directive, which states that “(…) it is appropriate to ensure that effective means of presenting, obtaining and preserving evidence are available. (…) For infringements committed on a commercial scale it is also important that the courts may order access, where appropriate, to banking, financial or commercial documents under the control of the alleged infringer”.
Accordingly, the Court also dismisses the argument that, in the absence of proven infringement, trade secrets constitute a legitimate obstacle to the application of the Right to Information, since no ultra vires act justifying the annulment of the Order of the Juge de la Mise en Etat had been established. Therefore, information on the origin and distribution networks of the goods or services, the quantities bought, the state of the stocks, as well as the profit margin of the alleged infringer, can be required, even in the absence of a prior decision on the existence of infringement.
As one can see, the Cour de Cassation has given great freedom to the trial judge in applying the Right to Information and has refused, for the time being, to regulate it, despite the great risks at hand. What would happen to a company which, after finally being judged as having committed no infringing act, will have nevertheless been obliged to provide its competitor with information regarding its distribution networks and profit margins, and how will such harm be compensated? Maybe the courts will clarify this someday!