Infringement seizure in copyright matters

The saisie-contrefaçon in copyright matters is the evidentiary measure by which the rightholder has a judicial officer record, and where appropriate seize, the copies and items establishing the alleged infringement, before any proceedings on the merits. It is governed by Articles L. 332-1 to L. 332-4 of the French Intellectual Property Code, reformed in 2014 to align it with the regime of the saisie-contrefaçon common to the other intellectual property rights and derived from Directive 2004/48/EC. It is the preferred means of proving infringement, without being the only one.

Conditions of the measure

The seizure is ordered on an ex parte application by the president of the competent judicial court, without the defendant being heard. The applicant must establish his or her standing, as author, successor in title, assignee or exclusive licensee as the case may be, and the likely existence of the work and of the rights relied on, by producing the evidence of creation and ownership. The order determines the scope of the operations: detailed description with or without the taking of samples, physical seizure of the infringing copies, of the equipment used to produce them and of the related documents, and, in copyright matters, suspension of ongoing performances or manufacturing and seizure of the receipts. The judge may make the measure conditional on security and must ensure that it is proportionate having regard to the interests at stake.

Conduct and follow-up of the operations

The judicial officer, possibly assisted by an expert independent of the applicant, carries out the operations within the limits of the order and draws up a report. The party seized may ask the judge to lift or limit the measure or to place the items in escrow, in particular to protect trade secrets. The applicant must bring proceedings on the merits within twenty working days or thirty-one calendar days, whichever is longer, from the seizure, failing which the seizure is annulled at the request of the party seized, without prejudice to damages. An annulled seizure does not deprive the claimant of the possibility of proving infringement by other means.

Specific features and pitfalls

Copyright retains features of its own: the seizure may extend to receipts and interrupt a show, and the order may be enforced in any place where the items alleged to be infringing are found. For software and databases, the seizure concerns the media and the code, and the measure often takes the form of a description accompanied by copies placed in escrow. The application must describe the work and its original elements precisely, since an order that is too broad is liable to be set aside on a retraction application. A seizure carried out without rights or in an abusive manner renders the applicant liable.

Key points

The saisie-contrefaçon is obtained on an ex parte application, carried out by a judicial officer and must be followed by an action on the merits within a short period, on pain of nullity. In copyright matters it allows copies, equipment, documents and receipts to be seized. Before applying for it, gather the evidence of creation and ownership, define the scope of the operations precisely and prepare the writ on the merits at the same time.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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