Copyright Infringement & Erotic Products: Court of Rotterdam Knows the Ropes

The case involved a commercial dispute between two Rotterdam-based companies that produce erotic products. The Defendant previously had an agreement with the plaintiff to manufacture a whip and subsequently decided to source these from another company. The Plaintiff alleged that they designed the original whip and therefore continued manufacture of this product amounted to intellectual property infringement.

The Court of Rotterdam ruled that the conditions of Article 6 of the Dutch Copyright Act (DCA) were not met and required the defendant to:

• Stop the infringements with immediate effect;
• Account for the numbers of purchased and sold infringing products, and the purchase and sales prices;
• Carry out a recall action with a mandatory wording;
• Destroy the infringing products;

Learn more about the case and see the full Court ruling below.

Facts of the case

Plaintiff is a Rotterdam company (wholesale and retail) specialized in erotic products such as whips. The Defendant is O-Products B.V, a wholesaler of erotic products. In the past, the defendant had ordered the Plaintiff to have a certain whip manufactured, and subsequently decided to source these from another company. The Plaintiff claimed that they originally designed the whip and alleged therefore that the manufacture of this product by another party was unauthorized and amounted to intellectual property infringement.

The judge was asked to form an opinion in particular on the handle of the whips. The following questions were asked:

(1) is the handle of Plaintiff's whips a work within the meaning of the Copyright Act?

(2) if that answer is in the affirmative, who should be considered the maker?

Legal framework

Article 6 of the Dutch Copyright Act (DCA) provides that if a work has been created according to a design by another person and under his direction and supervision, this person is regarded as the maker of that work.

The judge ruled that the handle of the whip has its own original character and bears the personal stamp of the maker and is therefore a work that is protected by copyright. Plaintiff is the maker, because she had already designed the products before the parties came into contact with each other. Subsequently, the defendant submitted the defense that this was a design commissioned by the defendant, based on the abovementioned article 6 DCA, and that on that basis the copyright rests with him. O-Products had not sufficiently demonstrated at the Court hearing what his design consisted of.

At the hearing, the Plaintiff also pointed to the fact that it already had a variant of the basic model. The further arguments from the defendant about the design originating from her was, in the opinion of the court, wholly insufficient to be able to speak of a design. The Court ruled that it concerned only a few minor adjustments to the original model. The correspondence with the Plaintiff submitted by the Defendant did not elicit a design, nor did it indicate management and supervision on the part of the Defendant.

Court ruling

The Court ruled that the conditions of Article 6 DCA were not met and required O-products to:

• Stop the infringements with immediate effect;
• Account for the numbers of purchased and sold infringing products, and the purchase and sales prices, subject to submission of purchase and sales invoices;
• Carry out a recall action with a mandatory wording to be adopted as dictated by the court;
• Destroy the infringing products (or have them destroyed) at its own expense under bailiff supervision;

The foregoing by order of a penalty of € 1,000 for each day or part of a day that O-Products fails to comply with these orders in whole or in part or – at the discretion of the claimant, with a maximum of € 30,000;

O-Products is liable for damage suffered by the plaintiff as a result of the infringement of its copyright and orders O-Products to pay compensation for this, to be drawn up at the state

• O-Products is ordered to pay the costs of the proceedings, estimated on the part of the plaintiff at €8,491.98.

References

ECLI:NL:RBROT:2021:8684 (De Rechtspraak, 2021): https://uitspraken.rechtspraak.nl/inziendocument?id=ECLI:NL:RBROT:2021:8684&pk_campaign=rss&pk_medium=rss&pk_keyword=uitspraken