Conflict of laws in IPR

RIA TANDON

9/15/2014

University Of Petroleum And Energy Studies, Dehradun

Conflict of Laws in IPR

Private International Law


UNIVERSITY OF PETROLEUM & ENERGY STUDIES

COLLEGE OF LEGAL STUDIES

BA.,LLB.(HONS). ENERGY LAWS

SEMESTER

ACADEMIC YEAR: 2014-15 SESSION: JULY-DECEMBER

PROJECT SUBMISSION: CONFLICT OF LAWS IN IPR

Private International Law

(LLBL 433)

Under the S’vision of: Ms. Anuradha Nayak

NAME: _____RIA TANDON_________________

SAP NO: ____500017689___________________

ROLL NO: ---------R-450211080----------------------------


Acknowledgement

I would like to extend my gratitude to my teacher Ma’am Anuradha Nayak for giving such an

appropriate topic for Private International Law which helped me understand the aspect of

various laws which are present in different countries related to Intellectual Property Rights.

How the international scenario with respect to the infringement which takes place in different

countries are governed when taking into consideration the conflict of laws.


Index

Serial Number Subject

Abstract

1. Chapter 1: Why Intellectual Property Right?

1.1 Introduction: General Overview

1.2 Genre of Law Dealing With Intellectual Property

a) Private International Law

2. Chapter 2: Principles with respect to Conflict of Laws

2.1 Territoriality

a) Introduction to Principle of Territoriality

b)Absence of Territoriality Principle:

c)Territoriality in today’s World and the Conflict of Laws

2.2 Extraterritoriality Rule/Principle

a) Introduction b) Understanding the European Scenario

3. Chapter 3 Jurisdictional Roles

3.1 General Jurisdiction Framework

3.2 Types of Jurisdiction

3.3 Choices of law

4. Chapter 4 :

4.1 Conclusion

4.2 Recommendations



ABSTRACT

Intellectual property is intangible in nature and is a human being creative brainchild .The legal

rights which protect it is IPR law. The topic deals with the conflict of laws in the ambit of

municipal legality and International.

The areas of concern with respect to Conflict of Laws in IPR deals with in the application law

side would be first detection of law and its relation with territoriality, ownership, infringement

and Commercial Dealing : In Article 8 of Rome II states that no choice of law persists and only

where the lex loci protectionist makes it universal law but choice of law factor is considered to

be protected under Contract law and Competition law which provides for the checks and balance

dimension. Secondly Personal Jurisdiction wherein which applies only to a particular person that

is the defendant this will be dealt especially with reference to Internet scenario as the effect of

this felt is not in the country of residence / domicile so here Minimum contact theory can be

understood and the aspect of forum non conveniens. Special Jurisdiction cases; This point

revolves around the aspect of whether the violation of foreign IPR laws can be tried in the

domestic courts but with the help of the Potter v. BHP case the aspect of that Foreign IPR and

foreign land there exist a prohibition.

The scheme of research for this paper is by analysis with respect to the Argumentative Scheme

with respect to the ideas and the doctrines and the Laws which are persisting.

Keywords: Territoriality, Intellectual Property Right, Forum non conveniens, Juristics,

Conflict of Laws


CHAPTER 1: Why Intellectual Property Right?

1.2 Introduction: General Overview

Understanding the word Intellectual Property and rights over it has been defined under the

Principles of Private International Law by ALI on IPR in Article 1011 as specially as the

intangible property which has been derived from the creative activities of the Human brain

including its invention, devices, industrial designs, works, trademarks, trade secrets and other

disclosed technical as well as business information.

The state makes law so that the creations are protected and there is a monopoly from the side of

the creator for certain time period. So as to exclude2 others from encroaching upon the right of

the real creator or the owner . These are the fundamentals of the Intellectual Property and the

laws related to it.

When we consider the aspect of IPR then we see that it is not confined to national boundaries

since with the coming to the technology the imaginary demarcation of the boundaries is

subliming. Courts are now increasingly facing the conflict of laws in the field of Intellectual

property . Hence this problem can be solved by adopting the international regimes with respect to

the municipal laws3 .It is seen that the countries whose market are more vulnerable to these

attacks provide for best solution as to come to a consensual relief. There are number of problems

which at times can be solved on the case to case 4basis.

1http://ec.europa.eu/justice/news/consulting_public/0002/contributions/civil_society_ngo_academics_ ot

rs/european_max_planck_group_clip_en.pdf .

2 http://blog.ipleaders.in/important-issues-in-ipr-competition-law/. 3 See Laurence R Helfer and Graeme B Dinwoodie, Designing Non –National System: The case of the Uniform

Domain Name Dispute Resolution Policy, William and Mary Law Review, 43,2001, 141,

http://papers.ssrn.com/sol3/papers.cfm. Paul Edwards Geller, An International Patent Utopia? European Intellectual

Property Review, 2002, 515, http://www.rcf.,usc.edu/~pgeller/publications.html.

4 See Jan J Brinkhof, Internationalization of Patent Law, Trans border Injunctions and Summary Proceedings in the

Netherland, CEIPI Texts on Intellectual Property,1995, 1 ar 12-13(pointing out that Dutch courts may decline

to impose remedies not known to the foreign legal system of another protecting country).

http://ec.europa.eu/justice/news/consulting_public/0002/contributions/civil_society_ngo_academics_ot%20rs/european_max_planck_group_clip_en.pdf

http://ec.europa.eu/justice/news/consulting_public/0002/contributions/civil_society_ngo_academics_ot%20rs/european_max_planck_group_clip_en.pdf

http://papers.ssrn.com/sol3/papers.cfm


1.2 Genre of Law Dealing With Intellectual Property

a) Private International Law

The main reason for understanding the concept of Intellectual Property Right with respect

to Private International is important because the issue no more confined to within the

ambit of the country but has become global in nature. It involves the element5 which is

foreign in nature. The dispute with respect to the exploitation of the work takes place.

Like in United States there have been many international disputes with respect to the

choice of law and also scholarly debate with respect to theit wherein the dispute reached

beyond the borders of US6. Yet it is seen that most of the courts try these cases within the

ambit of their country. It is noted that if there is any event with respect to the domestic

dispute which is multistate has lead to the prevailing of the attention towards the point of

conflict which are there are in United States. It is seen that China is the main reason

behind the USA having its guard all up as it was noted in the Senate statement’s , ITC

report that China’s IP rights infringement has cost the American economy a whooping

$487 billion in 2009 alone.

Problems which have been faced with respect to Private International laws are many but

it was stated by a leading commentator8 with respect to it that there is a need for the

construction of Private International Law with respect to the Intellectual Property. The

other point with respect to Private International Law is its uncertainty since it is practical

in nature; hence it makes sure that justice is provided, with respect to the conflict

involving foreign element by choosing the forum for the best interest of justice.

5 Edward I Skyes and Michael Cpryles, Australian Private International Law 1, 3 rd ed. 1991 . 6 Refer to , e.g., Babcock v. Jackson, 12 N .Y.2d 473 (1963) (ado pting full-blown policybased analysis in the course

of deciding a conflict between the laws of New York and Ontario); Neumeier v. Kuehner, 31 N.Y.2d 121 (1972)

(endorsing the need to articulate certain general rules in guest statute cases in the course of deciding a conflict

between the law of New York and Ontario); Hurtado v. Superior Court, 11 Cal.3d 574 (1974) (conflict between the

laws of Mexico and California); Auten v. Auten, 308 N.Y. 155 (1954) (moving away from the traditional approach

to choice of law in deciding a conflict between the laws of New York and England); O’Connor v. O’Connor, 201

Conn. 632 (1986) (abandoning the lex loci delicti in course of deciding a conflict between the laws of Connecticu t

and Quebec); Milkovich v. Saari, 295 Minn. 155 (1973) (a lead ing case on the use of Professor Leflar’s choice -

influencing considerations involving a conflict between the laws of Minnesota and Ontario). 7 http://www.legalservicesindia.com/article/print.php?art_id=1256. 8 Carter, PB (1990) 6 BYIL 400, 402.


When we try to understand the problems of private international law in context of IPR , then the

principle of territoriality9 comes into play. Like for say in Article 610 of the Paris Convention it

states that territoriality limited and granted independent of each other with respect to the

principles. It is seen from the United States Copyright Act that rights are granted within the

ambit of the nation’s border. It was found in the case of Plastus Kreativ A.B. v Minnesota

Mining and Manufacturing Co. the essence given below that

“Although patent actions appear on their face to be disputes between two parties, in reality

they also concern the public. A finding of infringement is a finding that a monopoly

granted by the state is to be enforced. The result is invariably that the public have to pay

higher prices than if the monopoly did not exist. If that be the proper result, then that

result should, I believe, come about from a decision of a court situated in the state where

the public have to pay the higher prices11.”

The importance of the private international law is mitigated by the public international law.

This can be seen, from the Court of Appeal of the ninth circuit court which used the public

international lawmaking used by the United States Government which shows the

reluctance12 of its involvement with respect to intellectual property litigation. The above

was noted with respect to the case of Subafilms, Ltd. v. MGM-Pathe Communications Co.

In this case there was an unauthorized distribution abroad of the Beatle’s Yellow

Submarine .This lead to the extraterritorial13 application of the municipal law with respect

to the protection of the work abroad. However after this many courts had refused to follow

the Ninth Circuit’s decision.

It is however seen that the International standards are basically the minimum standard ;

different states who have entered into the international agreements have different level

9 See Graeme W Austin, Social Policy Choices And Choice Of Law For Copyright In Cyberspace, __Oregon Law

Rev. __(2001) . 10 Automotive Network Exchange Trade Mark (1998) RPC 885, 887 (UK). For discussion in the context of

European Community Trade Marks, see Gordon Humphreys, Territoriality in Community Trade Mark

Matters: The British Problem [2000] EIPR 405. It is noteworthy that the Madrid Agreement Concerning the

International Registration of Marks (1891), the subsequent Protocol of 1989 and the Paris Convention on

Industrial Property of 1886 do not determine issues of jurisdiction. See further, Richard Garnett, The

Internet and Trademark Rights: Some Problems of Jurisdiction 39 Intellectual Property Forum 18 (1999). 11 [1995] RPC 438, 447. 12 Refer to Subafilms, Ltd. v. MGM-Pathe Comms. Co., 24 F.3d 1088, 1095-98 (9th Cir.1994). 13 K. Yu, Peter, Conflict of Laws Issues in International Copyright Cases.


with respect to the protection14. Hence notwithstanding anything with respect to the

international treaties provision being in consensus with the minimum standards, these

states 15differ with respect to their national law persists. There is much latitude provided to

these member states with respect to make changes in their municipal laws so as to suit their

social and economic priorities. This idea is also complementing to the principle of

territoriality16 based on which the transnational border protection takes place. The only

relief which the parties involved in intellectual property dispute is that the authors and

producer’s rights are protected in other countries in same way as that to the local authors

and the producers17.

15 Refer to TRIPS Agreement, supra note 27, art. 1(1). The harmonization efforts of the EU seek to effect more

tightly-controlled commonality, sometimes imposing ceilings on the degree of variation that member states

may permit. See Dinwoodie, supra note 19, at 497 (discussing copyright directives); DINWOODIE ET AL.,

supra note 20, at 222 (discussing the limited room for variation permitted by the trademark harmonization

directive). 16 Refer to See Carter, supra note 3 (attributing the lack of attention to conflicts matters in intellectual property law

in part to the “territorial approach” of private international lawyers but noting that the situation had barely

improved in the era of policy-based conflicts methodologies); see also Vanity Fair Mills v. T. Eaton & Co.,

234 F.2d 633, 640-41 (2d Cir. 1956) (linking national treatment principle and territoriality). 17 Refer to TRIPS Agreement, supra note 27, art. 3.


CHAPTER-2 Principles with respect to Conflict of Laws

2.1 Territoriality

a) Introduction to Principle of Territoriality

Each community has its own laws .It is but natural for conflict to arise between the communities

. Territoriality generally means the approach which is from the national perspective with respect

to the international protection which is granted independently as well as with respect to territory

by territory as well as the objects which fall within its intellectual property law. It is important to

note that these were not exactly territorial when we try to understand the territorial aspect, they

became only so with the coming of the nation state18 concept. In the concept of the nation state at

that time the concept of latitude and longitude 19was being developed during that time. It was

within this geographical are wherein the territorial border concept was drawn. It was Von

Savigny who in the 19 th century came up with concept that legal relations had their focal point

20within the stated concept of territory. It was claim that like for say that the owners claim or

rights over his land was considered to be subject to the law which was in effect to that of situs of

the land21. Von Savigny had set up three methods with respect to choosing of the same laws that

governed the same legal claims and it did not matter where the suit was brought22. Firstly to have

a connecting factor with respect to the legal claim23 which was raised, secondly appropriate

qualifying claims and thirdly with respect to application of that state where there is a point of

attachment. His views were with respect to the aspect that legal relation had developed but it had

not affected with respect to the mentioned geographic space24.

With respect to concepts like torts and that of intellectual property the analysis is not simple. The

Paris and Berne Convention imposed the principle of national which is supported by the aspect

of independence of the rights25. This in another words means that the foreign claimants are not

18 Lipstein, Kurt, Principles of the Conflict of laws, National and International, The Hague, Nijhoff. 19 Bromley, Nicholas K, Law, Space , and the Geographies of Power, New York, Guilford Press, 1994, ch 3. 20 Savigny, Freidrich Carl Von, A treatise on the Conflict of Laws . 21 See ibid, 174-181 22 See ibid, 70 (Art 348). 23 See ibid, 221-233 passim. 24 See ibid, 56-57. 25 Sources of International Uniform Law, Leiden, Sijthoff, 1973, vol 3, 129; Berne Convention for the Protection of

Literary and Artistic Works, 9 Sept 1886, as last revised at Paris, 24 July 1971, Art 5(1), ibid, 21; also

Agreement on Trade-Related Aspects of Intellectual Property Rights, including Trade in Counterfeit Goods,


discriminated when it comes to the minimum rights. This idea is somewhat similar to that of the

torts wherein the law of that state applies where the infringing26 act took place.

b)Absence of Territoriality Principle:

The conflict of laws which arises with respect to the different states or communities having

different laws , the communities which are smaller in nature tend to become a bigger aspect with

respect to communities27 which are larger nature. Courts in such cases have no way out as such

so they have two option either they can adopt the conflicting laws as to be unchanging and not

dynamic in nature or that they can adopt the aspect of historical dynamism of the history which is

present and brings the communities together.

There are a number of laws. Supranational Laws as that of the European Union tries to bring in

autonomous laws with respect to the larger community as like that of EU while the Public

international laws recognizes the smaller community that is basically the nation state concept

with respect to overriding of the laws which takes place as the states are bounded by the

language28 of the treaty.

Private international Law which follows such of the laws being emerged in the communities , is

subjected to fall within the the ambit of the treaty provision as it is stated above that is the treaty

language especially with respect to the public policy considerations which are persisting, that is

ordre public international29. After the conflict which is persisting is referred, only then seeking

the choice of law by the court is possible then the court may regard these principles with respect

to ordre public as the ground for rejecting any of these to be objectionable30 in nature. It is the

duty of the court to make sure that the goals of the policy with respect to the international rules or

laws as that of intellectual property is kept in mind as soon as the localization of the

15 April 1994, GATT Doc MTN/FA II-A1C, Art 3, reprinted in International Review of Industrial Property

and Copyright Law (IIC), 25, 1994, 209. 26 Refer to Eugen Ulmer, Intellectual Property Rights and the Conflict of Laws, Deventer, Kluwer, 1978, 11-14; also

Paul Edward Geller, Conflicts of Laws in Copyright Cases: Infringement and Ownership Issues, Journal of

Copyright Society USA, 51, 2004, 315, 325-355, available at http://www-

rcf.usc.edu/~pgeller/publications.html. 27 Refer to Kurt Lipstein, Principles of the Conflict of Laws, National and International, The Hague, Nijhoff, 1981,

3-12. 28 Reuter, Paul,, Introduction to the Law of Treaties, London, Kegan Paul, 2d English ed, 1995, 32-33; also

Brownlie, Ian, Principles of Public International Law, Oxford, Clarendon Press, 4th ed, 1990. 29 Wolff, Martin,Private International Law, London, Oxford Univ Press, 2d ed, 1950, 153-166 (favouring lex

causae), with Ernst Rabel, The Conflict of Laws: A Comparative Study, Ann Arbor, University of Michigan

Press, 2d ed, 1958, vol 1, 47-56 30 Refer to Kegel, note 11 , 324-336; Loussouarn and Bourel, , 392-414.


infringement31 takes place. Provisions, like that of TRIPS helps in bridging the gap with respect

to the differences which are persisting in the national32 laws of various countries. TRIPS

agreement has provided with respect to provisions like seizure of the infringing copies and to

cease the goods from reaching the trans border markets with respect to the geographical space33.

The things which needs to be kept in mind is firstly with respect to the inward bound and the

outward bound with respect to any country but the focus here will be on the home country34 or

the country of the forum. In the aspect of the inbound aspect the whole aspect of authorization

and organizing of the infringement takes place and the fabrication to that of the copies infringed

but these activities entered into the markets of the home country. While on the other hand out

bound recommences from the home country but the exploitation happens in the markets abroad.

There are a number of instances with respect to inbound taking place which has been noted by

the US and European courts , the jurisdiction over the parties who have a settlement abroad and

are involved in the inbound infringing activities which poses a great threat to the home market

leads to , then it is considered to be localized35 and comes under the country’s law. To stop the

problems it should be kept in mind to localize the activities involving the outward – transaction

which takes place in the home country. Sometimes the cases fall outside as to what has been

mentioned above , under these cases there are copies which are considered to be illicit under the

law of the home country, when passes through another country is considered to be legitimate.

While there can be some restrictions with respect to the home country36 under its laws. In the

case of Playboy which had an Italian magazine with the name Playmen, which had its

infringement act done in the US37. In the year of 1990 the Italian publishers had also set up a

website of the same magazine in Italy . This website was registered with the same title in Italy.

The District Court in New York had ordered the publisher of the Italian magazine to cease the

31 Geller, Conflicts of Laws in Copyright Cases . 32 Refer to TRIPS Agreement, note 8 above, Preamble. 33 Refer to Art 15-60 of TRIPS Agreement, also Art 9of Paris Convention, and Art 16 of Berne Convention. 34 Refer to Max Planck Institute, Stellungnahme des Max-Plank-Instituts für ausländisches und internationales

Patent and GRUR Int, 1985, 104 at 105-107 . 35 Refer to Spindelfabrik Suessen-Scurr v. Schubert & Salzer, 903 F 2d 1568,1578 (Fed Cir 1990) (US); BBC

Enterprises Ltd v. Hi Tech Xtravision Lt (1992( 9 R P C 167 at 170-183 (Chancery Division ). 36 Refer to Grammophone Co of India Ltd v Pandey, AIR 1984 SC 667, (1985) Fleet St Rep 136 , Dalal,

Praveen, The Long Arm Jurisdiction of Courts Regarding Copyright Law in India, Journal of

Intellectual Property Rights, 9, 2004, 557 564-565.

37 Playboy Enterprises Inc v Chuckleberry Publ Inc, 687 F 2d 563 (2d Cir 19820 .


access with respect to the website in the US or to shut it completely38.

In this case it was seen that the court talked with reference to the extraterritoriality principle as

that of the domestic trademark law. This case is a distinguished one as the court noted, in this

case that Playboy was successful with respect to its win against Playmen in the countries of

Europe except Italy39. The website has infringed the foreign marks, this infringing transaction

was inward-bound in nature even though the infringement was not pleaded outside the ambit of

US. The general statement which is made in cases like these is to apply the laws of all the states

where the action of infringement takes place so as to come up laws of the all the possible

countries40. This argument with respect to the above solution is complex in nature as the problem

of the posing the policy of one country over to another is a problem. Generally when such

problem arises then the same like how it was done in the case of Playmen, then wide-ranging

solution of injunction was adopted which is common for all with respect to the threat of

infringement41.

In the cases of IPR generally the laws of the country whose market it is . The monetary award

which is provided in the case as that of infringement apply the law of that country whose market

it is . When it comes to the national courts, it is seen that in the monetary awards involving cross

border issues have not reached consistence approach and the domestic laws are only taken into

consideration. In the case of Los Angeles News Service v. Reuters Television International it was

seen that 1992 Log Angeles riots which took place was videoed and this video was copies in

New York and then was transferred across the Atlantic where it was exploited in the Europe and

the law of the US was applied here with respect to the damage which happened overseas42.

In the cases with respect to the infringement both in the US and Canada we can see that , the

above mentioned precedents can make it possible with respect to the grant of the award which

can be overlapping in nature .

The court can be allowed to gage the monetary liability with respect to the other country43. In the

38 Ibid, 939 F Supp 1032 (S D N Y 1996) 39 Ibid, 1034 . 40 Ibid, 1034. 41 See François Dessemontet, Internet, le droit d'auteur et le droit international privé, Revue suisse de jurisprudence,

1996, 285and refer to Stellungnahme des Max-Plank-Instituts, note 35 above, 105-107 . 42 http://papers.ssrn.com/sol3/papers.cfm?abstract_id=416263. 43 Compare National Basketball Assoc v Motorola, Inc, 105 F 3d 841, 848-853 (2d Cir 1997) (US),

http://eprints.law.duke.edu/archive/00000455/,http://papers.ssrn.com/sol3/papers.cfm?abstract_id=416263.


case of Subafilms, Ltd v MGM-Pathe Communications Co 44, it was seen that there was two

billion dollar award which was to be given as an award with respect to exploitation which took

place partially in the US and the other outside, so here applying of the home law was denied with

respect to providing the relief abroad. Yet another provision a French Court had refused to

entertain the argument with respect to the application of the French law , just because the person

was stationed at France. So it was decide that the laws as like of countries45 such as Britain,

Sweden should be applied with respect to the place where the damage took place. Looking at

such precedents the courts in future will be likely to apply the laws with respect to the place

where the damage46 took place.

The analysis above has more of localization with respect to the place where the infringement

takes place or the targeted country market. This law is more focused more to that of country

whose market has been targeted and not who’s where the transaction to that of foreign market

takes place. The law with respect to any infringement attack which happens via the internet

sources it leads to the injunction provision of the law which is common to all but with respect to

the monetary award the country where the infringement47 takes place is considered.

Lex Fori helps in determining the procedure involving the in junction and also the monetary

award aspect.

When the aspect of the suit with respect to infringement in the countries is considered, the

procedure which follows in another court of the different countries48 will be different. The court

also differentiates with respect to the digital content involving different countries and their

protection in one but not in another. It is though not sure that the computing routing content with

respect to the global network can be reprogrammed without any problems. There are other

problems which crop up like since the computerized system is brought in so as to manage or with

44 Subafilms, Ltd v MGM-Pathe Communications Co, 24 F 3d 1088, 1094-1099 (9th Cir 1994) (en banc), cert

denied, 513 US 1001 (1994). 45 SISRO c Sté Ampersand Software, Cour d'appel, 4e ch, Paris, 8 Feb 2002, Expertises 2002, 230, affirmed Cass

civ I, 5 March 2002, JCP 2002 II, 10082, 994, excerpts trans lated in IIC, 34, 2003, 701. 46 Geller, Conflicts of Laws in Copyright Cases . 47 Geller, Conflicts of Laws in Copyright Cases 48 S Chisum, Donald, Normative and Empirical Territoriality in Intellectual Property: Lessons from Patent

Law, Virginia Journal of International Law, 37, 1997, 603, 614; also Dieter Stauder, Einheitliche

Anknüpfung der Verletzungssankionen im Gemeinschaftspatentüberein -kommen , GRUR Int, 1983, 586.


that of the policing the digital content49.

c)Territoriality in today’s World and the Conflict of Laws

Conflict of Laws and the Rome Regulation provisions:

With respect to the territoriality aspect of the intellectual property the analysis with

respect to the development in the private international law in context of the European Union can

be considered by understanding the Rome second50 regulation. This further can be understood

under the head of rigid territoriality aspect and the private international law with respect to the

European origin.

o Rigid approach to that of Rome II – Rome II is something which provides for specific

provision with respect to intellectual property, unlike that of Rome I Regulation51, this is

provided under Article 8 of the IPR.

“Article 852 – Infringement of intellectual property rights

1. The law applicable to a non-contractual obligation arising from an infringement of an

intellectual property right shall be the law of the country for which protection is claimed.

2. In the case of a non-contractual obligation arising from an infringement of a unitary

Community intellectual property right, the law applicable shall, for any question that is not

governed by the relevant Community instrument, be the law of the country in which the act of

infringement was committed.

3. The law applicable under this Article may not be derogated from by an agreement pursuant to

Article 14.”

The above provision which has been defined here is strictly confined to the territorial approach

of the infringement of the Intellectual property rights53. The first part of the article is not clear

with respect to the protection which is claimed under a number of the territories, so a number of

49 http://www.wipo.int/eng/meetings/1999/osp/index.htm, also Geller , Duke Journal of Comparative and

International Law. 50 Regulation (EC) 864/2007 of the European Parliament and Council dated on the law applicable to contractual

obligations, supra . 51 Regulation (EC) 593/2008 of the European Parliament and Council on the law applicable to contractual

obligations, JOUE 2008, No. L177 . 52 Refer to Article 8 of IPR in Rome -2Regulation. 53 For an in-depth analysis of Article 8 of the RomeII Regulation, see É. Treppoz “La lex loci protectionis et l’article

8 du règlement Rome II” D. 2009, p. 1643. Also, see the presentation by Nicolas Bouche, supra.

http://www.wipo.int/eng/meetings/1999/osp/index.htm


laws are involved. The second part should be read along to that with Article 4.154 as to that with

the regulation , although in some of the cases the favor is given to that of the infringement which

occurs in the various territories . Thirdly the Article 1455 is set aside that has provided with the

choice of law than normally the provisions with respect to the conflict of laws.

These solutions with that of the application with respect to the jurisdiction matters . Where there

is an infringement with respect to the number of countries , the court of the justice has come up

with the interpretation with respect to the resolution 44/200156 with the view to put limitation to

that of the reparation with respect to the damage seen in the national territory57. With respect to

the intellectual property the title of the defendant as that of ( be it trade mark, design or patent),

the country which issues the title is taken into consideration which has an exclusive

jurisdiction58. The private international law which is adopted in European origin is fully in favor

of the territoriality even though there are many problems or diversions with respect to it.

When it comes to Article 8 of the regulation it is considered that it affects the conflict in law but

it is contrary to the idea with respect to the specialized texts which are there within the Union

(Article 27) , Member States (Article 28) and the international convention which are present.

Like for say the provision in Directive (EC) No. 93/8359 wich talks with reference to the satellite

broadcasting of the authorship works, the country where the broadcast happens has the

application60 of its rules. The solution is a clear violation with respect to that of the Article 8 the

Rome II Regulation, Which talks with respect to the application of a number of laws where the

public receives a the work. The international convention which are present is the one providing

the provisions with respect to the conflict of laws rule61. Hence the fluctuation provisions62 of the

54 Refer to Article 4.1 of the IPR in Rome-2 Regulation. 55 Refer to Article 14 of the Rome -2 Regulation. 56 Article 5.3 of Regulation (EC) No. 44/2001 of the Council on jurisdiction and the recognition and enforcement of

judgments in civil and commercial matters, JOCE 2001, L12 . 57 ECJ 7 March 1995, C-68/93, Shevill, Rec. I-415. For a recent example: Civ., 1014; Revue Procédures, comm. 151

obs. By C. Nourissat; Rev. Crit. DIP, 2009.580, note by É. Treppo . 58 The solution results from the famous “GAT” case: ECJ,case C-4/03, Rec. I-6509. On this point, see J. Raynard,

supra. 59 Directive (EC) No. 93/83 of the Council, 27 , JOCE 1993, L248 . 60 Art. 1.2.B of the transposed Directive, in particular Articles L122-2-1 and 2 of the French Intellectual Property

Code. 61 For example, Art. 1(2) of the Paris Convention (supra), Art. 5(2) and 7(8) of the Berne Convention (supra) .


interpretation makes it even incompatible to that of the heading with respect to Rome -2

regulation.

When it come to the bypassing with respect to the Article 8 that of the Rome II Regulation when

the conflict if the law provision is being considered: Article 663 when talking with to the

competition law and the defining of the conflict of laws part. The provisions which has been

discussed above are somewhat complementary to that rules of the competition law, especially to

that of the unfair competition or the monopoly64 in the market. This leads to the ignoring of the

traditional rules with respect to IPR and the solutions which are there in the Article 8 of the

Rome II Regulation.

Since Rome regulation is not successful with respect to the inclusion of the conflict which is

present in the international domain. It is only the territorial idea which is in really a binding

force.

In one of the French case to that of the criminal case65 the offences which are committed on

Internet makes the phenomena clear, wherein the courts avoid the aspect of their competency too

easily. This can be understood by the European example, where the provision to that of the Court

of Justice in criminal matters66 can be understood, especially with respect to the ubiquity to that

of the digital networks.

62 For example, for an equivocal interpretation of Art. 5(2) of the Berne Convention, see: Civ, JCP ed. G , II, No.

10082, note by H. Muir Watt, p. 2998, note by N. Bouche, D. 2003, p. 58, note by M. Josselin -Gall; Cass. 1st

civ. , Rev. crit. DIP 2007, 769 note by T. Azzi; JDI (Clunet) , 163 note by M.-É. Ancel, GP 2008, No. 128, p.

27 note by É. Treppoz, JCP E , 5, 22, note by H.-J. Lucas, TGI Paris, , SAIF versus Stés Google France and

Google Inc., Comm. Comm. Elec. , Étude 22, Y. Gaubiac. 63 Refer to Article 6 of the Rome -2 Regulation. 64 Dessemontet, François, Conflict of laws for Intellectual Property in Cyber Space. 65 In relation to recent case law, see: J. Passa “Propriété intellectuelle et droit pénal international: incompétence de la

loi et du juge français à l’égard d’actes accomplis à l’étranger – À propos de Cass. Crim. 19 juin 2007”, JCP

E 2007 2504. C. Caron “Compétence du juge pénal pour sanctionner une atteinte à un droit d’auteur sur site

Internet étranger . 66 Sevill judgment, supra.


2.2 Extraterritoriality Rule/Principle

a) Introduction

In the current years it has been noticed that the US government with respect to its IPR interest

has increased . There is an urgent need with respect to the protection of the trade agreement in

that of the infringement taking place in the other countries. Attempts are being made with respect

to enforcement of the US IPR laws wherein the rights can be protected abroad67. While when we

see the scenario in European Union68 we can zero down to three basis on which the

extraterritoriality principle basis, Firstly the unitary laws enforcement, secondly on the basis of

enforcement of the rights parallel to the rights in other countries and thirdly rights provided

under the national law with that of the activities in other countries.

b) Understanding the European Scenario

Unitary law enforcement

The rights which are provided under the EU is considered to be great success with respect

to the IPR rights being harmonized. It is an easier way so as to enforced the rights .

Harmonization of the law with respect to the laws began from the year 1980s69 in the

field of trademark and the copyright. When we consider patent then the activity was

limited as European Patent Organization is International in nature which was created

outside the ambit of the EU at the time of 1970s so it was the only primary means for the

facilitation70. The only cases with respect to the enforcement of the rights71 as well as of

67 Refer to Kramer, Larry, Vestiges of Beale: Extraterritorial Application of American Law,1991 Sup. Ct. Rev.

179,181 & n.9. 68 Council Directive 87/54/EEC of 16 December 1986 on the legal protection of topographies o f semiconductor

products; First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member

States relating to trade marks. 69 Council Directive 87/54/EEC on the legal protection of topographies of semiconductor products; First Council

Directive 89/104/EEC to approximate the laws of the Member States relating to trade marks.

. 70 Convention on the Grant of European Patents, 1973, 13 I.L.M. 276. 71 .Case C-316/05, Nokia Corp. v. Joacim Wärdell, Court of Justice of the European Union;

Case C-235/09, DHL Express (France) SAS v. Chronopost SA, Court of Justice of the European Union. Other cases

that have reached the CJEU concern issues of validity of Community trademarks or designs, registration

issues, and issues of implementation by member countries (failure to communicate lists of courts). See

Judgments of the Court of Justice of the European Union, OHIM, available at

http://oami.europa.eu/ows/rw/pages/CTM/caseLaw/judgements ECJ.en.do.

http://oami.europa.eu/ows/rw/pages/CTM/caseLaw/judgements


the their enforcement in various countries72. It is confirmed that these rights are available

only in some European countries73. Notwithstanding the benefit with respect to the rights

which are present in unitary aspect EU, it has not been successful in removing the

national rights74 of intellectual property which is persisting. In the scenario that of the

unitary instruments it is seen that holders of the right have no other way out but go for the

national rights; the European patent convention does not provide for unitary patent they

rather go for a patent on the country basis 75.

Rights Parallel to Rights in other Countries

When there is an absence with respect to the rights which are not universal in the EU, the

rights holder have a great problem not just inside the country but also outside. The

provision in such cases followed is that of the national country. When the provision

comes with respect that of outside of EU then it depends whether conflict of laws which

are prevalent in a country allows for the infringement under the head of the substantive

right of the other country or that again it is on the basis of the country to country basis. It

was earlier thought upon that the situation with respect to that of the Brussel I

Regulation76 that scenario will be different for the jurisdiction and its enforcement aspect

in the EU . Since the wordings with respect to exclusive jurisdiction for the registered

rights 77. There is a difference in opinion with respect to the jurisdiction where the

infringement takes place. At one place the provision is with respect to the action of

invalid in nature should be under exclusive jurisdiction while other state that there should

72 DHL Express (France) SAS v. Chronopost SA, supra note 14. 73 Id., par. 48. The preliminary ruling also addressed issues of enforcement of injunctions

that are effective throughout the European Union. Id.,¶. 52 ff. 74 See, e.g., Statistics on National, International and Community Trade Mark Applications

in 2010, Office for Harmonization in the Internal Market, for trademarks available at

http://oami.europa.eu/ows/rw/resource/documents/OHIM/statistics/ctm_stats2010.pdf (last visited

October 9, 2014); for designs available at http://oami.europa.eu/ows/rw/resource/

documents/OHIM/statistics/rcd_stats2010.pdf (last visited October 9, 2014) . 75 Convention on the Grant of European Patents, 13 I.L.M. 276. 76 Council Regulation on jurisdiction and the recognition and enforcement of judgments in civil and commercial

matters [hereinafter Brussels I Regulation] (EC) .

77 Id. at Art. 22(4).


be a nexus between the infringement and the valid rights for the exclusive jurisdiction78

qualification. The first provision allows the exclusive jurisdiction as to that of

infringement proceedings and the rights in different multiple laws of the municipal ,

while later excluded such scenario.

Rights provided under the national law with that of the activities in other countries

Since there is no universal rule with respect to the infringement proceedings , hence the

municipal laws is considered to be de facto and not enforceable in nature. This is the

problem which is faced by a number of right holders not just in one country but a number

79of them.

78 Trimble, Cross-Border Injunctions, supra note 21, at 360-361. 79 http://www.wipo.int/freepublications/en/intproperty/941/wipo_pub_941.pdf, 21.


CHAPTER -3 Jurisdictional Roles

3.1 General Jurisdiction Framework

Jurisdiction has two sides to its coin first is with respect to the defendant and the other is with

respect to the adoption of the foreign IPR laws this is referred to as the subject matter. It is

important to understand the jurisdictional provisions as to understand conflict of laws can be best

understood with respect to practical sense in this way.

To understand the general framework when we talk with respect to the Jurisdictional part with

respect to Conflict of laws in the area of IPR can be understood by considering the International

efforts which have taken place. The main regulation is that of Brussel 1 of 200080 it deals with

respect to IP matters. It is applicable to the persons who are domiciled in the Member State of

the European Union. The next development was with respect to Lugano Convention of 1988

which has three contracting states like Liechtenstein, Norway and Iceland as that of EFTA and

they do are part of the European single market but are not actually member of EU81. This

principle is same as that of the Brussels Convention.

With respect to those Defendants who do not fall within the EU or the EEA , but still they are

governed under it. On basis of the above the Dutch82 now has incorporated the principles of that

of the Brussels regulation within its Civil Procedure but it has not fully committed itself to it.

The other provision with respect of recent years is the ILA committee83 which has organized four

intensive meeting with respect to examining the status quo of the current legal framework with

respect to the protection of IP rights present in the international sphere which can be

comprehended by the lawyers all around84. Proposals have been set up to promote the guidelines

with respect to promote efficient cross border disputes which take place. The meetings which

have taken place so far are Lisbon during 2012, second at Sofia , third at Amsterdam and Fourth

80 Refer to Brussel1 Convention of 2000. 81 http://www.ejcl.org. 82 www.iept.nl. 83 Refer to ila-hq.org/en/committees/index.cfm/cid/1037. 84 Intellectual Property and Private International Law, Washington Conference 2014 .

http://www.ejcl.org/


at Paris. This committee has drafted such principles that it has covered all the various

provisions85 which are available in various regions.

3.2 Types of Jurisdiction

a) Transnational Jurisdiction

In IPR issues it is seen that the rights are mostly confined to that of the national rights and has

not claim with respect to a supranational86 IPR this is where the conflict of interest as well as the

laws arise. This is a great problem since the person has to deal with the infringement at a global

level. It was noted in the case of Focus Veiling v. Lincoln Electric87 that the Dutch private

international law shouldn’t be limited within its own territory .It was argued by the court in this

case that the tort which was committed in different jurisdiction means that the trade mark laws of

separate states applied was considered to be not appropriate. Then in the case of Philips v.

Postech88 it was stated by the Dutch , Supreme Court that if its court has jurisdiction it has the

right to issue injunction orders in the cross border jurisdiction This reversed the decision with

respect to the preliminary injunction which was not allowed earlier against the Swiss and

Taiwanese defendants. When cross border injunctions, the court have to apply the national law of

the place where the infringement took place since lex loci delciti and lex loci protectionis. This is

the reason as to why injunction in the transnational borders is given with respect to the patent

cases. So it can be stated that there is no opposed condition with respect to patent as compared to

trademarks or copyright89. While when we see the case of Safeway v. Kedge 90, which was

decided by the District Court at the Hague it was found out that cross border relief were denied

in the Patent case since the national patent law differed , like for say with respect to the use of

85T he American Law Institute, Intellectual Property: Principles Governing Jurisdiction, Choice of Law and

Judgments in Transnational Disputes (Chestnut, ALI Publishers, 2008); European Max Planck Group on

Conflict of Laws in Intellectual Property, Conflict of Laws in Intellectual Property: The CLIP Principles and

Commentary (Oxford University Press, Oxford, 2013); Japanese Transparency Principles available in J.

Basedow, T. Kono, and A. Metzger (eds.), Intellectual Property in the Global Arena: Jurisdiction, Applicable

Law, and the Recognition of Judgments in Europe, Japan and the US (Tübingen, Mohr Siebeck, 2010); and

the Joint Japanese-Korean Proposal, se Commentary on Principles of Private International Law on

Intellectual Property Rights (Joint Proposal Drafted by Members of the Private International Law Association

of Korea and Japan)’ (2011) 2(6) Kigyō to Hōsōzō, available at www.globalcoe-waseda-

lawcommerce.org/activity/pdf/28/08.pdf. 86 Engelen, C.J.A, Jurisdiction and Applicable Law in Matters of Intellectual Property . 87 Refer to IEPT19891124, HR, Focus Veilig v. Lincoln Electric. 88 Refer to IEPT20040319, HR, Philips v. Postech . 89 Refer to Section 6 of European Patent Convention. 90 Refer to IEPT20100310, Rb Den Haag, Safeway v. Kedge.


the history and use of the doctrine of equivalence. Before this recent judgment it was of thought

that since all the jurisdiction are being followed under the Article 69 with respect to the

European Patent Convention, so there was no need to look after the differences which were

persisting under the National Patent laws.

b) Defendant’s Jurisdictional Matter

When we see beyond the provision of the Brussel as well as the Lugano Convention, then we see

that in the Anglo common law tradition there is a provision of personal jurisdiction to be

followed. It is of the general view that if the defendant who has have been served the documents

with respect to the proceeding will be covered under the jurisdiction. The person who is present

within the jurisdiction shall be considered to be within the jurisdiction as this can be proved by

the permanent place with respect to the business in the forum91.

At times the defendant is not present within the jurisdiction of the forum so this raises the

question as to the law of which country will apply. So here it is seen as to where the cause of

action took place, like for say where the tort or the damage 92took place wherein this resulted into

an act which was considered to have been committed in the home forum93.

91 Refer to Companies Act 1993, ss 334 and 2(1) (NZ). 92 Some difficult questions may arise with respect to whether passive availability of a material on a website

comprises a tort committed in the forum. In the United States America, it is reasonably clear that making a

work available to the public is regarded as a breach of the copyright owner’s bundle of rights in the territory

in which the relevant public is situated. See eg, Playboy Enterprises Inc. v Webworld, Inc. 991 F.Supp. 453

(N.D. Tex. 1997). For a similar analysis in the trade marks context, see Playboy Enterprises inc. v.

Chuckleberry Pub’g, Inc. 939 F.Supp. 1032 (SDNY 1996) (operator of an Italian website effected a

distribution of copies. In the United States of America in violation of Playboy Enterprises’ United States

trade marks). In the trade mark context, an issue may arise as to whether mere “use” of a trade mark on a

website is “use in a trade mark sense.” However, the notion of trade mark use appears to be expanding: see,

eg, Coca Cola Co v All-Fect Distributing Co [1999] FCA 1721. In addition, expansive notions of passing off

may also assist in showing that a tort has been committed within the jurisdiction. See Part III, infra. 93 See e.g., ord. 11, r.1(1)(f) Rules of the Supreme Court (United Kingdom). In this aspect, ord. 11 parallels Art 5.3

of the Brussels Convention, as interpreted by the European Court of Justice in Shevill and Others v Presse

Alliance S.A. Case 68/93 [1995] ECR 415. In New Zealand, service may be effected as of right “where any

act or omission for or in respect of which damages are claimed was done or occurred in New Zealand”: High

Court Rules R 219(a). Where a case does not fit within the rules permitting service on a foreign defendant as

of right, application must be made to the Court to serve the defendant, and the plaintiff must satisfy the

Court that the New Zealand Court is the forum in which the case can most suitably be tried for the interests of

all the parties and for the ends of justice. Within the scope of the Brussels Convention, application may be

made to the Courts of a Contracting State for such provisional measures as may be available under the laws

of that State: Art. 24. This rule applies notwithstanding the fact that a different forum may have jurisdiction

over the substance of the claim.


When we consider the Anglo common law , then we see that there was rigid attitude with respect

to the jurisdiction which involves the foreign intellectual property rights. So it can be understood

the reluctance with respect to court’s forum non conveniens94. Jurisdictional prohibition acts as a

stoppage with respect to non conveniens .When we see the above statement the best way to

support the upper assertion is by understanding the US courts experience with respect to forum

non conveniens with respect to the copyright context. United States has been more reluctant

when it comes with respect to applying the foreign laws95 when the US courts agree to apply the

foreign copyright laws96. Though there have been occasions at times when forum non

conveniens97 was ignored totally. US courts are not empathetic towards the statement that

foreign copyright laws are too exotic98 with respect to executing or ascertaining.

94 The Eleftheria (Owners) [1970] P 94; Primesite Outdoor Advertising Ltd v City Clock (Australia) Ltd (1991) 4

PRNZ 472. 95 Refer to Worldfilm v RAI, 50 USPQ2d 1187 (SDNY 1999); Armstrong v Virgin Records, 91 F.Supp. 2d 628

(SDNY 2000) . 96 Refer to Dicey & Morris, Part Seven “Law of Obligations”. 97 Refer to Ricketson, Copyright, Design & Confidential Information, Supplement No 1 75 (2000). 98 [1905] VLR 612; (1906) 3 CLR 479. See also Norbert Steinhardt & Sons Ltd v Meth (1961) 105 CLR 440.


3.3 Choices of law

This is one of the problem with respect to the Conflict of laws as there are many Cross- border Ip

related problems. With the introduction of the global market so came the problem of the IP

protection with respect to the content online .The committee which is ILA was set up to deal

with the aspects like firstly originality, secondly infringement issues and the ownership aspect.

Ownership

The ownership came up in the case of Itar-Tass Russian News Agency v. Russian

Kurie99r, Inc.- In this case a Russian Journalist had went onto suing a New York based

news paper which was accused to have committed infringement with respect to copyright

in their newspaper as well as in the magazine articles which were stated to have been

published in reality in Russia. When the interpretation with respect to the two countries

were studies , it was found out that the U.S court of the appeal for the second circuit

stated that the national treatment cannot be considered to be a choice of law aspect. The

court came up with common laws so as to fill up the gaps which existed under the U.S.

Copyright Act. The Second Circuit court was of the opinion that important relationship to

that of the copyright work and the parties, in this case the Russian law would be regarded

as the applicable law to that of the state.

Infringement

Here in this case the principle of lox loci deliciti 100which means that wherever the

infringement happened . For determination of the substantive law aspect governing the

infringement process, generally related to torts101 conflict of law has lex loci delicti

applies.

99 Refer to Itar-Tass Russian News Agency v. Russian Kurie. 100 http://en.wikipedia.org/wiki/Lex_loci_delicti_commissi. 101 http://www.yourdictionary.com/law/lex-loci-delic.

http://www.yourdictionary.com/law/lex-loci-delic


Originality

In the case of Feist Publications, Inc. v. Rural Telephone Service Co102.- In this case US

Court in the year of 1991 made it a point that the aspect of the originality will be

considered as the constitutional requirement, so the U.S court were not allowed or able to

apply lenient process involving the originality aspect or the standard of a foreign country

in the copyright case. This aspect was explained in the case of case of Bridgeman Art

Library, Ltd. v. Corel Corp103. In this case earlier the British law was applied but then it

was seen whether the subject matter has nexus with that of the originality requirement for

the copyright aspect.. Upon the reconsideration then U.S court stated that U.S law will

rule with respect to the originality issue.

102 Refer to Feist Publications, Inc. v. Rural Telephone Services Co. 103 Bridgeman Art Library, Ltd. v. Corel Corp .


CHAPTER-4

4.1 Conclusion

Intellectual property is intangible in nature and is a human being creative brainchild .The legal

rights which protect it is IPR law. The topic deals with the conflict of laws in the ambit of

municipal legality and International.

The areas of concern with respect to Conflict of Laws in IPR deals with in the application law

side would be first detection of law and its relation with territoriality, ownership, infringement

and Commercial Dealing : In Article 8 of Rome II states that no choice of law persists and only

where the lex loci protectionist makes it universal law but choice of law factor is considered to

be protected under Contract law and Competition law which provides for the checks and balance

dimension. Secondly Personal Jurisdiction wherein which applies only to a particular person that

is the defendant this will be dealt especially with reference to Internet scenario as the effect of

this felt is not in the country of residence / domicile so here Minimum contact theory can be

understood and the aspect of forum non conveniens. Special Jurisdiction cases; This point

revolves around the aspect of whether the violation of foreign IPR laws can be tried in the

domestic courts but with the help of the Potter v. BHP case the aspect of that Foreign IPR and

foreign land there exist a prohibition.

There are a number with respect to the conflict of laws with respect to IPR issues. Since it is seen

that many of the ideas are developed in the global market now so there is an aspect of for choice

of law which is present . Even then we see a number of problems that many countries are rarely

accepting the foreign judgment with respect to this. In the United States there is a conflict with

respect to the copyright act even among the federal courts of the country so not much can be

said.

4.2 Recommendations

Courts are the main key player since they encounter a number of problem with respect to the

conflict of laws with respect to IPR. The problems can be resolved if there is localization of the

acts which have been infringed by satisfying the desiderata of that of the international regime

which persists. Hence the markets of the country which get affected because of the infringement


will be able to put the municipal law in better perspective. The other problem which seemed to

have been visible is that of the disharmony which persists from countries to countries like that is

in European Union even though it is one in nature but still there persists a number of the

variation. The courts in such cases cannot go for a uniform aspect . They will have to adopt the

aspect of case to case basis scenario. If there is set up of a international code then it will help in

narrowing down the problems which seems to be persisting.

Documents

Conflict of laws in IPR