Keep scrolling: compliance with trade mark injunction requires removal of old social media posts.

Ghent court of appeal 22 May 2023, Docket Nr. 2022/AR/1538

In an enforcement dispute, the Ghent court of appeal held that an injunction to stop using trade mark and copyright infringing content does not only cover new social media posts, but that it also requires the defendant to actively remove old posts with that content. The judgment is a clear warning to mind your step with injunctions that are subject to a penalty for non-compliance.

Steps, or electronic scooters, is what this case was originally about. On 22 November 2021, the court of appeal issued an injunction stopping a company from using the signs EZ Rider and associated logo’s in relation to e-bikes and scooters, as well as photographs and video content in which the claimant held rights. The injunction was issued at a penalty of 5.000 EUR per day that the defendant would not comply with the court order.

The case came back to the court of appeal because the parties disagreed on the scope of the injunction. It was not in dispute that the defendant stopped posting content including the sign and the photographs referred to in the injunction. However, the claimant discovered—and had a bailiff confirm—that the defendant had not removed older (2019) posts with infringing content from his Facebook page. The claimant served an order to pay penalties to the defendant.

The defendant then filed an action to have the court of appeal interpret the 2021 judgment, specifically the scope of the injunction. He argued that the 2019 Facebook posts were only visible after minutes of scrolling, and that the injunction only covered social media posts that were put online after the injunction was issued. The court did not agree. It confirms that an injunction requiring the defendant to stop using infringing content also requires him to actively remove social media posts with that content.

This decision will be a bitter pill to swallow for the defendant: the penalties claimed amount to 465.000 EUR, so the claimant waited for 93 days before taking action after his discovery of the old social media posts. In an obiter dictum, the court of appeal did suggest a way to soften the blow : under the case law of the Cour de Cassation (Case C.15.0086.N), the attachment judge has jurisdiction to assess whether claiming penalties amounts to an abuse of rights and, if it does, to reduce such claim to reflect a normal exercise of that right.