Introduction

Private International Law

Private International Law and Intellectual Property Rights

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Table of AuthoritiesINTRODUCTION

What the system looks like today- Lacunae, Uncertainties and Loopholes.

Issue 1: Jurisdiction and EnforcementIssue 2: Choice of Law

Issue 3: Remedies

Experience from Judicial Pronouncements

Conclusion- A brief note on possible solutions for the problems

CONCLUSION 3 10 11 14 20 25 26 36

Table of Authorities

Cases:

Abkco Music & Records, Inc. v Music Collection International Ltd. [1995] RPC 657, 660

Adams v Cape Industries plc [1990] Ch 433

Atkinson Footwear Ltd v Hodgskin International Services Limited (1994) 31 IPR 186 (NZ)

Attorney-General (UK) v Heinmann Publishers Australia Pty Ltd (1988) 165 CLR 30

Automotive Network Exchange Trade Mark (1998) RPC 885, 887 (UK)

Bensusan Restaurant Corp. v King, 937 F.Supp. 295 (SDNY 1996), affd on other grounds, 126 F.3d 25 (2d Cir 1997).

Bikram Chaudhrys Copyright Claim, Kedar Nath Gupta v J.K. Organization [1998 PTC 189 (Delhi)]; Malnak v. Yogi [592 F.2d 197, 197-98 (3d Cir. 1979)]

Bonzel v. Pfizer, Inc., 439 F.3d 1358 (Fed. Cir. 2006)

Bonzel v.Pfizer, Inc., 439 F.3d 1358 (Fed. Cir. 2006)

Boosey & Hawkes Music Pubs. v. The Walt Disney Co. 145 F.3d 481 (2d Cir. 1998)

Boys v Chaplin [1971] AC 356

British South Africa Co v Companhia de Moambique [1893] AC 602

British Telecommunications v One in A Million Ltd [1998] 4 All ER 475, 486 (UK).

Cf. Films by Jove, Inc. v. Berov, 154 F.Supp. 2d 432 (E.D.N.Y. 2001)

Cf. McBee v. Delica Co. 417 F.3d 107 (1st Cir. 2005)

Coca Cola Co v All-Fect Distributing Co [1999] FCA 1721.

Compare Murray v British Broadcasting Corp., 906 F. Supp 858 (SDNY 1995) affd 81 F.3d 287 (2d Cir. 1996).

Computer Associates Intl, Inc. v. Altai, Inc., 126 F.3d 365 (2d Cir. 1997)

Creative Technology, Ltd. v Aztech System Pte., Ltd., 61 F.3d 696 (9th Cir. 1995)

Deepsouth Packing Co. v. Laitram Corp., 408 U.S. 518 (1972).

Def Lepp Music v Stuart-Brown [1986] RPC 273 (obiter) (UK)

Fauntleroy v. Lum, 210 U.S. 230 (1908)

Griggs Group v. Evans, 2005 Ch D. 153 (H. Ct. 2004), later proceeding, 2005 F.S.R. 31 (Court of Appeal (2005) (UK); Tyburn Productions Ltd. v. Conan Doyle, [1990] 1 All ER 909(319 F.Supp.2d 1219 (W.D. Wash. 2004).

Gulf Oil Corp. v. Gilbert, 330 US 501 (1947) (US)

Hamlyn v Talisker Distillery [1894] AC 202, 207.

Hesperides Hotel Ltd vMuftizade [1979] AC 508.

Hilton v. Guyot, 159 U.S. 113, 163-64 (1895);

Huntington v Attrill [1893] AC 150 (PC)

International Shoe Co. v Washington, 326 US 310 (1945).

Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82, 89 (2d Cir. 1998)

John Pfeiffer Pty Limited v. Rogerson [2000] HCA 36 (21 June 2000)

John Walker & Sons Ltd v Ost, [1970] 2 All ER 106

Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342 (Fed. Cir. 1998).

London Film Prods. Ltd. v. Intercontinental Communications, Inc., 580 F. Supp. 47 (S.D.N.Y. 1984).

Macquarie Bank Ltd v Berg [1999] NSWSC 526 (June 2 1999)

Merklermedia Corp v DC Congress GmbH [1998] Ch 40.

Microsoft v. Lindows 319 F.Supp.2d 1219 (W.D. Wash. 2004).

Modus Vivendi (Ronson) v Keen (Lightman J, July 5, 1995)

Mount Albert Borough Council v Australasian Assurance Society Ltd [1938] AC 224, 240

National Football League v. Primetime 24 Joint Venture, 211 F.3d 10 (2d Cir. 2000)

National Football League v. T.V. RadioNow Corp., 53 U.S.P.Q.2d 1831 (E.D. Pa. 2000)

New Zealand Post Limited v Leng High Court, Auckland Williams J 17/12/98 CP 573/98.

Norbert Steinhardt & Sons Ltd v Meth (1961) 105 CLR 440.

NTP Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005)

Oggi Advertising Ltd v McKenzie [1999] 1 NZLR 631

Pearce v Ove Arup Partnership Ltd [1999] 1 All ER 769

Phillips v Eyre (1870) L.R. 6 Q.B. 1,28-29

Plastus Kreativ A.B. v Minnesota Mining and Manufacturing Co. [1995] RPC 438, 447.

Playboy Enterprises Inc. v Webworld, Inc. 991 F.Supp. 453 (N.D. Tex. 1997)

Playboy Enterprises inc. v. Chuckleberry Pubg, Inc. 939 F.Supp. 1032 (SDNY 1996)

Potter v. BHP [1905] VLR 612; (1906) 3 CLR 479

Pro Swing Inc. v. ELTA Golf Inc.; 2006 CarswellOnt 7203; 2006 SCC 52 (2006).

Quality King Distributors, Inc v LAnza Research International, Inc, 523 US 135 (1998) Re Vissar [1928] Ch 877.

Red Sea Insurance Co v Bouygues SA [1995] AC 190

Bachchan v. India Abroad Publ'ns Inc., 585 N.Y.S.2d 661 (Sup.Ct.1992)

Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1251 (Fed. Cir. 2000)

SArL Loius Feraud v. Viewfinder. 15 U.S.C. 1125(d)(2)

Sheldon v Metro-Goldwyn Pictures Corp 106 F.2d 45, 52 (2d Cir 1939), affid, 309 US 390 (1940)

Show Format Case (2003), 35 I .I.C. 987 (2004).

Sirdar Gurdyal Singh v Rajhah of Faridkote [1894] AC 670.

Society of Composers, Authors & Music Publishers of Canada v. Canadian Assn. Of Internet Providers (Tariff 22"), 2004 SCC 45, 32 C.P.R. (4th) 1 (Supreme Court 2004) (Canada).

Spielbankaffaire, 30 I.I.C. 227 (1999)

Spiliada Maritime Corp. v Cansulex Ltd. [1987] AC 460 (UK)

STV Prod. Inc v California Authority of Racing Fairs 785 F. Supp 854, 866 (ED Cal 1992)

Telnikoff v. Matusevitch, 702 A.2d 230, 244 (Md.1997)

Tods SpA v. Heyraud SA, [2005] 3 C.M.L.R. 28 (ECJ 2005)

Tolofson v Jensen [1994] 3 SCR 1022

Tyburn Productions v Conan Doyle (1990) 19 IPR 455

Vanity Fair Mills v. T. Eaton & Co., 234 F.2d 633 (2d Cir. 1956)

Wendell v Club Mediterranee NZ [1989] 1 NZLR 216 (NZ).

Yahoo!, Inc. v. La Ligue Contre le Racisme et l'Antisemitisme, 169 F.Supp.2d 1181 (N.D.Cal.2001),

Monographs:

Dicey & Morris, The Conflict Of Laws, (13th ed., Lawrence Collins (ed), 2000)1512-13 David Goddard, Conflict of Laws: Jurisdiction and Foreign Judgments in The Laws of New Zealand (Wellington, Butterworths, 1996) Professor Ginsburg, Private International Law Aspects of the Protection of Works and Objects of Related Rights Transmitted Through Digital Networks, (1st ed. , 2000), Update, 2-4. C. Wadlow, The Law of Passing Off (2d ed.) 1st supplement 25 (1997).Articles: Andreas Reindl, Choosing Law in Cyberspace: Copyright Conflicts on Global Networks (1998) 19 Michigan Journal of International Law 799.

Cf. Andrew T. Guzman, Choice of Law: New Foundations, (2002) 90 Georgia Law Journal 883

Cf. Graeme B. Dinwoodie, Commitments to Territoriality in International Copyright Scholarship, Report of the Neuchtel Study Session of ALAI 74 (2002)

Dinwoodie, New Copyright Order,

Dinwoodie, The Role of International Norms

Donald S.Chisum, Normative and Empirical Territoriality in Intellectual Property: Lessons from Patent Law, 37 VA. J. INTL L. 603, 605 (1997)

Dreyfuss, Why Invite Conflicts, supra, at 822

Gordon Humphreys, Territoriality in Community Trade Mark Matters: The British Problem [2000] EIPR 405;

Graeme B. Dinwoodie, Private International Aspects of the Protection of Trademarks (Jan. 31, 2001) WIPO Doc. No. WIPO/PIL/01/4 (trademark)

Graeme B. Dinwoodie, Conflicts and International Copyright Litigation: the Role of International Norms, in Intellectual Property In The Conflict Of Laws 195, 201 (Basedow, Drexl, Kur and Metzger eds. 2005)

Graeme B. Dinwoodie, The Institutions of International Intellectual Property Law: New Actors, New Institutions, and New Sources, in Proceedings Of The 98th Annual Meet of The American Society of International Law 213 (2004)

Graeme B. Dinwoodie, The International Intellectual Property Law System: New Actors New Institutions, New Sources 2006 Marquette Intellectual Property Law Review [Vol. 10:2]

Graeme B. Dinwoodie, The International Intellectual Property System: Treaties, Norms, National Courts, and Private Ordering [at 21-23] in Intellectual Property, Trade And Development: Normative And Institutional Aspects (Gervais ed., Oxford 2007)

Graeme B. Dinwoodie, Trademarks and Territory: Detaching Trademark Law From the Nation-State,41 Houston Law Review 885, 891-92 (2004);

Graeme B. Dinwoodie, Remarks, 30 BROOK. J. INTL L. 885, 887 (2005)

Graeme W Austin, Social Policy Choices And Choice Of Law For Copyright In Cyberspace, 79 Oregon L. Rev. 101 (2001)

Graeme W. Austin, Intellectual Property Politics and the Private International Law of Copyright

GW Austin, The Infringement of Foreign Intellectual Property Rights (1997) 113 LQR 321, 323.

J. Fawcett (ed.), Declining Jurisdiction In Private International Law: Reports To The XVI Congress Of The International Academy Of Comparative Law: Athens, August 1994, (1995).

Jane C Ginsburg, Global Use/Territorial Rights: Private International Law Questions on the Global Information Infrastructure, 42 Journal of Copyright Society USA 318

Jane C Ginsburg, International Copyright: From a Bundle of National Copyright Laws to a Supranational Code? 47 Journal of the Copyright Society of the USA 265 (2000).

Jane C Ginsburg, The Private International Law of Copyright in an Era of Technological Change, 1998 Recueil Des Cours De LAcademie Internationalle De La Haye (1999)

Jane C. Ginsburg, Copyright without Borders? Choice of Forum and Choice of Law for Copyright Infringement (1997) 15 Cardozo Arts & Entertainment Law Journal

Jane C. Ginsburg, Private International Law Aspects of the Protection of Works and Objects of Related Rights Transmitted Through Digital Networks, WIPO Doc. GCPIC/2 (Nov. 30, 1998) (copyright);

John Adams, Industrial Property in a Globalised Environment in Rickett & Austin (eds.) International Intellectual Property And The Common Law World 259 (2000).

Laurence R. Helfer, Regime Shifting: The TRIPS Agreement and New Dynamics of International Intellectual Property Lawmaking, 29 Yale Journal of International Law 1 (2004)

Laurette Barnard, Choice of Law in Equitable Wrongs: A Comparative Analysis [1992] CLJ 476.

Mark D. Rosen, Exporting the Constitution, 53 EMORY L.J. 171 (2004).

Ownership, 30 BROOK. J. INTL L. 899, 920-21 (2005)

P.B. Carter, Decisions of British Courts During 1990, 61 British Yearbook of International Law 386, 402 (1991)

Paul E Geller, The Universal Electronic Archive: Issues in International Copyright (1994) 25 IIC 54

Paul Torremans, Authorship, Ownership of Rights and Works Created by Employees: Which Law Applies?, 27 EUR. INTELL. PROP. REV. 220, 222 (2005)

Phillip Johnson, Which Law Applies: A Reply to Professor Torremans, 1 Journal of Intellectual Property Law and Practice, 71, 72 (2005);

Professor Dinwoodie Affirmation of Territorial Limits of United States Copyright Protection: Two Recent Decisions [1992] EIPR 136;

Richard Garnett, The Internet and Trademark Rights: Some Problems of Jurisdiction 39 Intellectual Property Forum 18 (1999).

Richard L. Garnett, Trademarks and the Internet: Resolution of International IP Disputes by Unilateral Application of U.S. Laws, 30 BROOK. J. INTL L. 925, 937 (2005).

Richard Waters and Chris Nuttal, Threat to Blackberry is Ended By $612m Deal, FIN. TIMES, Mar. 4, 2006 at 1.

Ricketson, Copyright, Designs & Confidential Information, Supplement No 1 75 (2000)

Sam Ricketson And Jane C. Ginsburg, International Copyright And Neighbouring Rights: The Berne Convention And Beyond 20.08 (2d ed. 2005)

Introduction

Private International Law refers to a part of national law, to be applied in courts when the issue before the bench involves a foreign element. In civil law systems, private international law is a branch of the internal legal system dealing with the determination of which state law is applicable to situations crossing over the borders of one particular state and involving a "foreign element" (lment d'extranit). Lato sensu (at large) it also includes international civil procedure and international commercial arbitration as well as citizenship law. In common law systems, private international law, firstly, is concerned with determining whether the proposed forum has jurisdiction to adjudicate and is the appropriate venue for dealing with the dispute, and, secondly, with determining which of the competing state's laws are to be applied to resolve the dispute. It also deals with the enforcement of foreign judgments.

In the present era of globalization, with the Internet opening up unchartered avenues, more areas kick up much consternation in the eye of law. With the push of a button, a single copyrighted work can be accessed by anyone across the world, indicating that the foreign elements involved in the dispute concerning exploitation and infringement of intellectual property rights could be numerous. Notably, private international law provides an integral part of the background against which disputes involving Intellectual property rights can be solved. Typically, extrusion of a countrys law occurs through its application by courts, nominally restrained by private international law, a context that is both transparent and subject to contest by courts of other countries.

Ten years ago, one could barely detect a private international law of intellectual property, either in the courts or in the literature. In the classical system, national courts had very little role to play in the construction of international intellectual property law. Litigation involved national rights; courts were reluctant even to adjudicate claims involving foreign intellectual property rights, prompting serial national litigation of multinational disputes. National courts are, however, beginning to tackle multinational cases and thus to contribute to the effective creation of international norms. This has occurred most perceptibly in the copyright context in the United States, India and the United Kingdom, where courts will now hear claims under foreign laws, provide multinational relief, and effectively regulate globally by localizing any Internet conduct in the United States.

A plethora of questions now arise. This paper seeks to proceed with a brief analysis of the following issues with regard to private international law: On what basis, and when would a court venture to exercise jurisdiction? What laws would govern the ownership, validity and infringement of IPRs? What remedies could possibly plug the loopholes and lacunae in the law?

In the course of this paper, these three issues will be dealt with in elaborate detail, with relevant instances of application in common law countries, with specific references to the United States, United Kingdom and India. For prudence and cogency, the paper shall be segregated into four parts. Part I shall elaborate upon the generic uncertainties in the prevailing legal regime, as regards private international law and intellectual property rights. Part II looks into the three issues, namely the Jurisdiction and Enforcement, the Choice of Law and the Remedies. Part III looks at a specific series of cases dealing with intellectual property rights and private international law, while Part IV is a summarizing conclusion. I. What the system looks like today- Lacunae, Uncertainties and Loopholes.

Before dealing with the overlapping segment of the venn diagram encompassing the domains of private international law and intellectual property law, it would be prudent to throw light on the prevailing system of law, as a greater number of the factors contributing to uncertainty are largely due to the ramifications and the decadence prevailing in the present scheme of things.

At the very outset, the incremental character of common law comes to fore. Common law can achieve little that is akin to the dramatic rationalizations facilitated by major codification exercises or ratification of major international conventions. The decisions of a court are binding only in a particular jurisdiction, and even within a given jurisdiction, some courts have more power than others. For example, in most jurisdictions, decisions by appellate courts are binding on lower courts in the same jurisdiction and on future decisions of the same appellate court, but decisions of non-appellate courts are only non-binding persuasive authority. Interactions between common law, constitutional law, statutory law and regulatory law also give rise to considerable complexity. However stare decisis, the principle that similar cases should be decided according to consistent principled rules so that they will reach similar results, lies at the heart of all common law systems.

Another cause for uncertainty is the very nature of the discipline of private international law. Private international law is intensely practical. Its object is to ensure, as far as possible, that disputes involving foreign elements are decided by the court best placed to do so in the interests of justice and that the forum so selected should not affect the substantive outcome of the dispute. Its goal is consistent with that of domestic legislation- prompt and efficient resolution of disputes and consistency and fair predictability of outcomes.

Alongside, Private international law distils intensely difficult theoretical problems, such as the authority of domestic courts to apply the laws of foreign jurisdiction and the role and scope of the principle of the comity of nations. These issues and their significance are sometimes directly reflected in substantive rules, such as the common law prohibition against the justifiability of torts involving foreign land, and the application of foreign revenue and penal statutes. Common Law courts also seldom wish to be involved in the recognition of rights that cannot be enforced, which are concerns largely informed by deeply held values about the appropriate relationships between sovereign nations.

With regard to the IPR context, these values are expressed in the principle of territoriality. National Trademarks are given with territorial limitation. In Quality King Distributors, Inc v LAnza Research International, Inc, Justice Ginsburg mentioned that Copyright mentioned that Copyright protection was territorial in nature, and the rights granted by the United States Copyright Act extend no farther than the nations frontiers. As far as patents are concerned, the words of Justice Aldous, in the Plastus Kreativ A.B. v Minnesota Mining and Manufacturing Co. maybe relied upon, which runs thus: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 prices.

Intellectual property regimes are regarded as primarily utilitarian in their aims and policies. Thus, it is not surprising that the policies of private international law should generate some friction when they are required to interface with the rights and principles that are decidedly public in character. Efforts to develop a private international law of intellectual property are much more recent, and are ongoing in a number of different institutional settings. Institutional questions may significantly affect the content of private international intellectual property law in a number of ways.

A perusal of means by which a private international law of intellectual property should be developed also raises institutional issues. As in public international intellectual property law, there has been a proliferation of actors seeking to shape policy, a phenomenon that of itself compels consideration of institutional choices. Should development of this area of law be pursued through soft law models that are becoming more significant components of the international legal regime? Should lawmaking initiatives be established at the international level, or would a network of cooperating national actors be preferable? Moreover, those increased institutional choices may present the opportunity to break impasses that are now developing in almost every intellectual property lawmaking context.

At this juncture, therefore, we should embrace a prominent role for private international law in the international intellectual property system. A vibrant private international law, which recognizes the expressive and constitutive capacity of judicial decision-making, can make contributions to the system well beyond the resolution of private disputes. In urging that courts consciously acts upon that potential, a fuller appreciation of the role of dialogue as a lawmaking institution, both in developing and implementing a private international intellectual property law, would be the solution.II. Issue 1: Jurisdiction and Enforcement:

To obtain relief in more than one country for acts of intellectual property infringement, a plaintiff was required to sue separately in every country in which infringement was alleged to have occurred, notwithstanding that the allegations might involve the same conduct by the same defendant with respect to what in fact was the same piece of intellectual property. De jure, by virtue of the principle of territoriality, paradoxically installed by international treaty, the right holders separate national proceedings each sought to vindicate separate national property rights. This result, which might seem to flow most logically in the case of registered rights that come into being only upon separate application to different national authorities, pertains equally as a matter of law to rights (e.g., copyright) that accrue without registration.

There may be international intellectual property law, but there is no such thing as an international copyright, patent or trademark. When it comes to exercising jurisdiction, it must be noted that two aspects come to fore: The exercise of jurisdiction over the defendant- Personal Jurisdiction The application of foreign IPR laws in the case- Subject Matter Jurisdiction

Allied herewith, is the subsequent and incidental question as regards the enforcement of judgments rendered by and in foreign fora. a) Personal Jurisdiction:

Beyond the purview of international treaties, such as The Brussels Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters, 1972, and the Lugano Convention on Jurisdiction and Enforcement of Judgments in Civil and Commercial Matters, 1988, a court may validly exercise personal jurisdiction of the defendant has been validly served with the documents necessary to initiate the proceedings. Generally speaking, the forum can exercise personal jurisdiction over corporations or entities that are present in the jurisdiction. The domestic court may hear all claims against a defendant that is present in the forum even if some or even all of the causes of action do not involve acts done in the forum.

As for the defendants outside the forum, special rules of the domestic forum are utilized to determine whether service on the defendant is permitted. To justify the exercise of jurisdiction over an out-of-state defendant, ultimately, there must be a sufficient nexus between the defendant and the forum.

With the advent of internet based commerce, courts have been driven to engage with the issue of the degree of internet presence that provides a basis to exercise jurisdiction over the website operator. A passively accessible website is insufficient to sustain the exercise of jurisdiction.

A court may deny jurisdiction on the ground of forum non conveniens, i.e., if it concludes that another forum will be most convenient and would best serve the interests of justice. To analyze the existence of forum non conveniens, factors such as the strength of the plaintiffs case, relative cost and convenience of proceedings in each of the available for a; location and availability of evidence, the state of any related proceedings in other jurisdictions.

In the context of Anglo common law tradition, there was, until recently, a rigid prohibition against the exercise of subject matter jurisdiction over all claims involving infringement of foreign IPRs. However, IPR disputes have been considered to distill particular difficulties of their own. Thus, the application of the forum non conveniens rule to IPR disputes has received only scant analysis.

While the US courts seem to have greater experience in applying the rule of forum non conveniens to IPR issues, specifically in copyright issues, the judicial reluctance to engage with foreign copyright laws did not crystallize into a rigid rule.

b) Subject Matter Jurisdiction- Special Rules for IPR disputes?

Common Law courts have traditionally been concerned with whether infringement of foreign IPR is a proper subject matter to be heard within a domestic forum. Concerns arising from perceptions as to the connection between IPR and the exercise of sovereignty of the foreign state have caused some courts to adopt a particularly restrictive approach to the issue of subject matter jurisdiction over and above the concerns that might typically inform a forum non conveniens analysis. While common law is used to applying foreign contract or tort laws, IPRs exist at the sufferance of the domestic sovereign. As far as patents and trademarks are concerned, this characterization is fairly clear. Individual copyrights do not depend on State action to come into existence, but individual domestic copyright statutes still define the circumstances in which copyrights come into existence and the nature of the authors rights.

In an early decision from the High Court of Australia, Potter v. BHP, the court recognized an analogy between foreign land and foreign Intellectual Property rights, and held that a similar jurisdictional prohibition existed. The rule was later extended to copyright infringement actions.

The jurisdictional prohibition was reinforced by the lex fori and the double actionability rule, which apply to foreign tort claims. While the lex fori is strictly a choice of law, than a jurisdictional rule, it is convenient to discuss it here, as its application in foreign Intellectual Property Rights cases supported the courts refusal to entertain such claims. The lex fori rule requires a plaintiff to establish that the alleged wrong was actionable according to the lex fori and not defensible according to the law of the place where the alleged wrong occurred. Cases that involve allegations of infringing Intellectual Property Rights are foundered on the first limb, as were it not for the infringement of one countrys copyright law to be the infringement of another countrys copyright law, the requirement that the wrong be actionable according to the lex fori could never be satisfied.

For example, some scholars and courts read the core international copyright obligation of national treatment found in Article 5(1) of the Berne Convention, as implicating a principle of territoriality and from that a rule regarding choice of law. Yet, as the Court of Appeals for the Second Circuit has pointed out, consistent with the views recently expressed by the European Court of Justice, the principle of national treatment is really not a conflicts rule at all; it does not direct application of the law of any country. It simply requires that the country in which protection is claimed must treat foreign and domestic authors alike. To be sure, the principle of national treatment does generally suggest that national intellectual property laws should focus on place rather nationality, but this is a very general philosophy with little specific content.

In Pearce v. Ove Arup Partners, the English Court held that there was no per se objection to the application of Dutch Copyright Laws by an English Court. The court adopted a more flexible approach to the lex fori rule that was recognized earlier in Red Sea Insurance Co. v. Bouygues, and took the view that a foreign copyright claim could be actionable in an English Court as the claim was not conceptually unknown in English law and was one for which the English Court would have given a remedy had the facts alleged arisen in England. In addition to this common law rule, it is also mandated in the Brussels Convention, where applicable, where the validity of rights sued upon is put in issue, only the courts of the place where the rights are registered may exercise jurisdiction.

c) Enforcement of Judgments:

Another point of concern is that of the enforceability of any judgment rendered in the context of cross-border cases. While some states have enacted the Uniform Foreign Country Money-Judgments Recognition Act, 1962, which provides for the enforcement of any judgment of a foreign state granting or denying recovery of a sum of money, certain other states rely on common law, which in turn contain similar procedural parameters.

One major constraint as far as enforcement of foreign judgments are concerned, is that a judgment will not be enforced if the court lacked personal jurisdiction over the defendant. The critical factor is usually the residence of the defendant in the form. Alone, assumption of jurisdiction in accordance with the rules of the country will not suffice.

A foreign judgment could also be impeached for the breach of natural justice, but not on the ground that the foreign court misapplied lex fori or some other body of law. III. Issue 2: Choice of Law

The question that arises is as to what law is to be applied. To proceed with the answer, one has to analyze the issue in the light of infringement, ownership and commercial dealings and equitable causes of action. a) Infringement:

To obtain relief in more than one country for acts of intellectual property infringement, a plaintiff was required to sue separately in every country in which infringement was alleged to have occurred, notwithstanding that the allegations might involve the same conduct by the same defendant with respect to what in fact was the same piece of intellectual property. De jure, by virtue of the principle of territoriality, paradoxically installed by international treaty, the right holders separate national proceedings each sought to vindicate separate national property rights. This result, which might seem to flow most logically in the case of registered rights that come into being only upon separate application to different national authorities, pertains equally as a matter of law to rights (e.g., copyright) that accrue without registration. There may be international intellectual property law, but there is no such thing as an international copyright, patent or trademark.

Most national courts have applied the lex loci protectionis to determine the applicable law in intellectual property cases, at least in adjudicating the question of infringement. The generic choice of law approach in IPR actions flows from the territoriality of Intellectual Property Rights. The issue really arises only in the context of copyright actions, as the opportunities for domestic courts to engage with choice of law principles with respect to infringement of foreign registered rights such as patents and trademarks are quite remote. Anglo common law systems regard international copyrights as a mosaic of territorially confined copyrights- English copyright, a French Copyright, an Indian Copyright, and so on.

Moreover, the scope of application of the lex loci protectionis is even more uncertain. Certain aspects of an intellectual property dispute (e.g., the validity of a contract relating to the transfer of intellectual property rights, or the allocation of rights between employer and employee) implicate interests of states other than the state where the allegedly infringing conduct occurred (and for which, therefore, protection was sought). States where commercial exchanges are made have an interest in determining the conditions under which those bargains are upheld. The regulation of the employment relationship affects the social and economic fabric of the country of production, rather than (or at least as much as) the country where an act of infringement occurred. Thus, although some countries afford the lex loci protectionis a broad scope of application, others have, for example, opted to apply the lex originis to determine questions relating to the authorship and ownership of copyright.

Although U.S. courts have nominally looked to the policy-based approach of the Second Restatement, and applied the law of the place with the most significant relationship to the parties and the transaction to questions of initial copyright ownership, they have given weight in particular to the nationality of the authors and the place of first publication. As a result, the United States has effectively adopted a lex originis rule on copyright authorship.

Extraterritorial approaches have clear parallels in other branches of Private International Law doctrines. At common law, courts determine the proper law of a contract. The traditional common law rule for choice of law in tort was double actionability. The general aim, however, is to establish a single law that governs the plaintiffs claims.

Much has been written on the plausible adoption of a single governing law approach in the Copyright context particularly in the context of cross border copyright issues. Some of these suggestions include the law of the place of upload of the work, the law of the authors residence, or the law of the country of imitation of the infringement. Such approaches may bring in efficiency, for litigants, courts and contracting parties. One law, rather than a potential multiplicity of foreign copyright laws may simplify many cross-border IPR issues. Territorial approaches may need to give way in the light of the shift in International copyright relations from a bundle of national copyright laws to a supranational code.

So long as individual nations remain content to have key aspects of their domestic information policy shaped by public international copyright law norms, the relevance of strictly territorial approaches to choice of copyright laws must inevitably wane.

For other forms of Intellectual Property rights, there may be too much friction caused by perceptions of the public policy importance of the property rights at stake or extraterritorial approaches to be entertained.

b) Ownership and Commercial Dealings:

For the purpose of private international law, the common law tradition borrows the movable/immovable categorization. Land is categorized as immovable property, along with certain interests in land that within domestic law, fall under the gamut of personal property. Intellectual property falls squarely within the gamut of immovable property. The situs of the property determines the nature of the property as movable or immovable. Choses in action are thereby generally situated in the country where they are properly recoverable or can be enforced. Because the essence of an Intellectual Property is the owners right to take action to prevent others from engaging in certain types of activity in a given territory, it naturally follows that a patent, a trademark or a copyright is situated in the country whose law governs its existence. Similarly, the assignability of an Intellectual Property Right must inevitably be governed by the law under which it was created.

This approach withstands the test of consistency with a territorial approach, both to initial copyright ownership and transfers of ownership. Thus, a purportedly global transfer of a copyright may not be acceptable in certain countries, if, according to the law of such countries, the transfer was inconsistent with a certain procedural requirement.

The single law approach receives support by those essentially concerned to see Private International Law principles facilitate frictionless international trade in Intellectual Property Rights. Divided ownership of Intellectual Property would augment costs greatly, which is evidenced in the division of the exclusive rights in a copyright work, on a territory-by-territory basis. But, the difference in the suggested regime would be that a territorial approach to a choice of law for copyright ownership possibly leading to different owners for different territories, arising out of the operation of law, and not out of prior commercial exchange.

Primarily because common law private international law principles on ownership and transfer of Intellectual Property remains in a fairly underdeveloped state, there are more questions than answers. c) Equitable Causes of Action:

Statutory Intellectual Property rights provide only part of the legal autonomy available to protect interests. Common law and equitable causes of action are frequently invoked to supplement, or as alternatives to, statutory rights. These points of reference will be elaborated upon using the examples of passing off and breach of confidence.

As far as passing off was concerned, the lex fori rule determined actionability. In the United Kingdom, the Private International Law Act, 1995 was passed, indicating that the governing law was lex loci. In other jurisdictions, the rule of lex fori would apply.

An important exception to the traditional notions of jurisdiction and choice of law has long been recognized in Anglo Common Law. In John Walker & Sons Ltd v Ost, an English Judge recognized that an English Court had jurisdiction over acts done in the UK comprising supply of instruments of fraud which facilitated passing off abroad.

This strand of common law theory has recently been resurrected in cybersquatting disputes. It was mentioned that the court would not stand by and allow what can graphically be called an instrument of fraud to remain in the hands of a trader.

In common law jurisdictions, where there is no statutory protection for data, the course of action is labeled as a breach of confidence, so as to prevent misappropriation of secrets. The equitable duty of good faith plays a role here.

Very little definitive authority delineates private international law approach to equitable wrongs. Further work is needed with respect to applicable private international law principles for equitable harms and common law claims. These areas of concern and emerging doctrines provide useful reminders of possible alternatives to the territorial approaches that dominate in the Private International Law of Copyrights, Trademarks and Patents.IV. Issue 3: Remedies

As it is in many other branches of law, in litigation involving Intellectual Property Rights, the remedies and procedural assistance offered by the forum are particularly important. The law of the forum govern the matters of procedure. Remedies are generally regarded as procedural matters. Particular remedies may not be available in the forum, despite being permitted by the lex causae. Additionally, a remedy available under the forums law may be refused if it is radically different from remedies available under the lex causae.

Due to limited opportunities for the exercise of any kind of subject matter jurisdiction over foreign Intellectual Property Rights, there is scant authority on the issue of the approach to remedies in cross-border cases. However, there would appear to be at least some scope for tension between the forums approach to damages, for instance, and that of the applicable foreign laws.

While interspersing Private International Law and Intellectual Property Right disputes, careful consideration is needed as to whether, departure from the common law rule that the rule of lex fori governs the relief, is warranted. Within the territorial paradigm, damages are often sought to compensate for the defendants usurpation of particular markets.

The marketing opportunities lost are those created by the intellectual property protections afforded by the laws of the foreign states. The close link between the existence of the rights and the means of their protection might support the view that remedies and rights should be governed by the same body of law.

Finally, mention should be made the issue of interim relief. Many intellectual property infringement actions do not reach a full trial. Interim reliefsuch as preliminary injunctions is usually sufficient to shut down an infringing operation.

In the Internet era, the willingness of cour ts to provide interim relief which may have international effects will increasingly be an important issue. Some courts may be reticent to offer even preliminary relief which may have the result of cutting across international borders.

In a recent Australian decision, for example, a New South Wales Judge dismissed an ex parte application for an interim injunction to restrain dissemination via the Internet of allegedly defamatory material. In a recent cybersquatting case, a New Zealand Judge was apparently less inhibited by the international dimensions of the relief sought, ordering the defendant to delete the words NZ Post or any similar name, from any Internet service or site any domain name over which he had control. This was in a passing off action. However, there was no evidence before the Court that plaintiff had goodwill in the name NZ Post in any of the jurisdictions outside of New Zealand where the website was accessible.

The close link between the existence of the rights and the means of their protection might support the view that remedies and rights should be governed by the same body of law. V. Experience from Judicial Pronouncements:

These principles have been put under pressure, at least in the first place, not by withering scholarly critique or the force of sustained international reform efforts. Rather, social and commercial pressures have generated disputes among private parties that by their very nature call into question the wisdom or resilience of these principles. To illustrate those disputes, which can also be used as test cases for proposals discussed in Part II of this Paper, and the challenges that globalization causes for intellectual property law, consider the following four trans-border litigation scenarios drawn from case law over the past decade. These illustrations reinforce what conflicts scholars have long known: territoriality does not foreclose the effective development of a private international law. In fact, the principle of territoriality compels a private international law of intellectual property.Case 1: NTP v. Research in Motion.

In a litigation that attracted substantial public attention because of its significance for the continued availability of the Blackberry personal data assistant, a U.S. patentee brought an infringement action against Research in Motion (RIM), the Canadian manufacturer of the Blackberry device. RIMs most compelling argument was that the acts alleged to infringe NTPs patents did not occur within the United States as required by the language of the U.S. patent statute.

Some of the necessary elements of the RIM Blackberry service (in particular the relay or router that transfers the email from the Blackberry server to the local network allowing the Blackberry user to receive the email) occurred in Canada. This relay was a key feature of the NTP patent; it was an essential element in the claim of the NTP patent that RIM was alleged to infringe. NTP possessed no equivalent patent in Canada where the essential activity occurred.

In its initial opinion, a panel of the Court of Appeals for the Federal Circuit held that because control and beneficial use of the infringing system was within the United States, the statutory language was satisfied and upheld the finding of infringement. Patent law is resolutely territorial, and the Supreme Court has consistently reaffirmed that principle, albeit subject to later targeted Congressional derogations (sometimes in implementation of treaty obligations). Thus, the decision came as a surprise to many commentators. As a result, the Canadian government filed an amicus brief supporting a request for rehearing en banc, urging restraint and comity on the part of the U.S. courts and suggesting that the courts opinion interfered with the business and legal environment in Canada. The original panel of the Court of Appeals decided to withdraw its original opinion. In its revised opinion, the Court concluded that the situating of the router in Canada enabled RIM to avoid infringement of NTPs method claim because a process cannot be used within the United States as required by section 271(a) unless each of the steps is performed within this country. However, the court affirmed that, with respect to the system claim, the use of a patent occurs at the place at which the system as a whole is put into service, i.e., the place where control of the system is exercised and beneficial use of the system obtained. Thus, RIM remained liable for infringement of NTPs system claims because RIMs customers located within the United States controlled the transmission of information and benefitted from the resulting exchange of information.

After the issuance of the panels revised opinion, RIM and the Government of Canada (unsuccessfully) sought en banc rehearing. The Canadian Government argued that transnational enforcement of patents may be appropriate in certain circumstances, but that this should only occur after a full analysis of the international implications of applying U.S law to activity happening abroad (which it did not discern in the panels opinion). More particularly, the Canadian government argued that: The reissued panel opinion lacks any acknowledgment or discussion of the effect of, or the effect upon, long-established international understandings and agreements regarding national jurisdiction over intellectual property. Because the decision of the panel was neither explained nor justified in terms of contemporary, internationally-accepted principles of national jurisdiction, the opinion raises questions concerning fundamental principles upon which this international intellectual property system has harmoniously been based for well over a century.

The position of the Canadian government accurately captures the essence of three important propositions: (1) it may well be that, in an interconnected world, national courts will on occasion be

required to grant transborder relief; (2) this should only occur after a full airing of the principles of private international law that inform that question; and (3) the court of appeals had effectively announced a rule of private international law by localizing the use in the United States under what is a version of the law of the most significant relationship test. The Canadian government position, as articulated both in its briefs before the court and in the state interests reflected in its law and (non-grant) of rights to NTP, required respect for several reasons.

First, in a world of shared, non-exclusive prescriptive authority, the prescriptive authority and legitimacy of U.S. law is diminished notwithstanding substantial U.S. activity, and Canada had a rightful prescriptive interest in the dispute. Second, for practical reasons of enforcement, to the extent that the decisions of the U.S. courts might require recognition in Canada to be effective, the legitimacy-grounded assertions of the government of Canada can have real practical bite. Private international law has always been concerned with practical questions as well as claims of fairness and legitimacy.

Even if the U.S. courts concluded that U.S. laws finding of infringement should prevail over the lack of plaintiffs rights in Canada because of the weight of the respective interests of those two countries, the mere recognition and consideration of the international implications would surely render Canadian cooperation more likely and show the respect toward the decisions of other nations that other doctrines purport to further.Case 2: Boosey & Hawkes Music Pubs. v. The Walt Disney Co.

In 1940, Disney released the animated motion picture Fantasia. The soundtrack to the film included a performance of The Rite of Spring by Igor Stravinsky. Because under U.S. law the work was in the public domain, Disney needed no authorization to record or distribute it in the United States, but permission was required for distribution in countries where Stravinsky still enjoyed copyright protection. In 1939 the parties executed an agreement giving Disney rights to use the work in a motion picture.

In 1991 Disney released Fantasia in video cassette and laser disc format, and distributed the video on a worldwide basis (including throughout the United States). Boosey & Hawkes Music Publishers Ltd., the assignee of Stravinsky's copyright for The Rite of Spring, sued Disney in federal district court in New York, contending that the 1939 license did not authorize distribution in video format. Boosey sought damages for copyright infringement deriving from Disney's sales of videocassettes of Fantasia in at least eighteen foreign countries. The district court held that video distribution was not covered by the license and granted partial summary judgment to Boosey, but dismissed the complaint under the doctrine of forum non conveniens in so far as it sought relief for foreign copyright claims. The court concluded that these claims should be tried in each of the nations whose copyright laws were invoked. The district courts decision was wholly consistent with the conventional approach to transborder copyright claims in the U.S. courts. The principle of exclusive jurisdiction had, with only minor judicial exceptions and some scholarly objection, been followed in copyright litigation.

Although the Second Circuit vacated the summary judgment in Boosey's favor on whether the license covered video distribution, the court reversed the order dismissing the foreign copyright claims on forum non conveniens grounds and remanded to the district court for trial.

The Second Circuit criticized the district court for failing to consider whether there were alternative fora capable of adjudicating Boosey's copyright claims, as is generally required prior to making a forum non conveniens dismissal. For example, the lower court made no determination whether Disney was subject to jurisdiction in the various countries where the court anticipated that trial would occur and did not condition dismissal on Disney's consent to jurisdiction in those nations. In a footnote, the Second Circuit noted that it did need not decide whether forum non conveniens dismissal requires

the dismissing court to ascertain a single alternative court with jurisdiction over the claims.

The appeals courts also rejected the district courts analysis of the so-called public interests that are part of forum non conveniens analysis. The district court had reasoned that the trial would require extensive application of foreign copyright (and antitrust) jurisprudence, bodies of law involving strong national interests best litigated in their respective countries, and that these necessary inquiries into foreign law would place an undue burden on our judicial system. The Second Circuit stressed that while reluctance to apply foreign law is a valid factor favoring dismissal . . . , standing alone it does not justify dismissal and noted that: numerous countervailing considerations suggest that New York venue is proper: defendant is a U.S. corporation, the 1939 agreement was substantially negotiated and signed in New York, and the agreement is governed by New York law. The plaintiff has chosen New York and the trial is ready to proceed here. Everything before us suggests that trial would be more easy, expeditious and inexpensive in the district court than dispersed to 18 foreign nations.

As a result of the Second Circuits decision, the parties reached a global settlement. It is not uncommon that resolution of the private international law questions raised by multi-territorial intellectual property disputes proves sufficient to encourage the parties to reach a private settlement of all the separate national claims.

Indeed, although this departure from exclusive jurisdiction has since been followed by other U.S. courts in copyright cases, those cases have typically settled prior to trial of the foreign claims. The approach in Boosey & Hawkes has also been followed in copyright cases in the European Union, although the precipitating cause in Europe was the Brussels Convention on Jurisdiction and Recognition of Judgements, which governs the resolution of disputes in civil and commercial matters between persons domiciled in the parties to the Convention (essentially, countries of the European Union).

For example, although English courts have typically not entertained claims under foreign copyright laws, in 1999, the Court of Appeal permitted a claim for copyright infringement based upon conduct in Holland to proceed in the English courts.

The court acknowledged that because the acts of copying in that case (the unauthorized construction of a building conforming to the architectural work contained in the plaintiffs plans) took place in Holland, they could not constitute infringements of the plaintiff's U.K. copyright. The court concluded that rules of U.K. law that previously restricted the adjudication of foreign intellectual property claims had been overridden by the Brussels Convention (and other legislative developments) where the parties were from contracting states, and that the case for infringement of Dutch copyright could therefore proceed.

Doctrinally, the U.K. defendant could clearly be sued in the United Kingdom because place of domicile is the starting point for jurisdiction under the convention. The court accepted that the English courts had jurisdiction in relation to the claims against the non-U.K. defendants under article 6(1) of the Brussels Convention, which provides that a person domiciled in a contracting state may be sued, where he is one of a number of defendants, in the courts for the place where any one of them is domiciled.

Case 3: Microsoft v. Lindows

Microsoft filed a complaint in federal court in Seattle alleging that Lindows use of the term LINDOWS (for an open source Linux operating system with an interface that resembles Windows software) was an infringement of its trademark in the term WINDOWS for operating systems. The defendant argued, inter alia, that the term WINDOWS was generic, and the district court judge had indicated an initial receptivity to that argument. Having failed to obtain appellate review of the analysis on the question of generic status, and while the U.S. trial was pending, Microsoft initiated or threatened litigation against Lindows and its distributors in several other countries.

Consistent with the position of the British courts discussed above, the U.S. court declined to issue an antisuit injunction against Microsofts foreign litigation. Microsoft obtained preliminary injunctions in the Netherlands, Finland and Sweden, before settling the Dutch case. Initially, Lindows tried to maintain some use of the LINDOWS mark (at

least as part of its corporate name) in the United States, but eventually in July 2004, Microsoft settled its trademark suits against Lindows on a global basis with a $20 million payment to Lindows, which agreed to change its name to LINSPIRE. The inefficiencies of marketing a product, especially one heavily distributed online, under a different mark in different countries were not worth the marginal benefits of being able to use the more communicative mark LINDOWS.

As a result of the successful actions in Europe, and despite the possibility of an adverse decision in the United States, a single result was reached globally. The attack on U.S. rights, nominally independent of the separate European trademark registrations, was effectively rebuffed as a result of the foreign determinations. Microsoft officials defended their international strategy by noting that Microsoft must protect its trademarks or risk losing them and that a ruling in the U.S case would unlikely affect overseas trademarks. The resolution of the U.S. case doesnt necessarily bind any other country.

Lindows officials saw the new lawsuits differently, charging that its a tactic to make us spend money opening up all these new legal fronts. . . It makes no sense to launch all these lawsuits when in three months, this case will be decided in U.S. court and, if we lose, well change our name, and its a nonissue.Case 4: SArL Loius Feraud v. Viewfinder.

A principal subject of private international law is the recognition and enforcement of judgments. There is little developed case law on this topic in the intellectual property field, in part because the primary relief in intellectual property cases typically takes the form of injunctive relief, often preliminary injunctive relief. Such orders are rarely capable of direct recognition and enforcement.

Indeed, the limits of enforcing injunctive orders abroad may explain some of the motivation behind the decision of the U.S. Congress to include jurisdiction in rem against domain names as part of the Anti-Cybersquatting Consumer Protection Act (ACPA) in 1999. The paucity of decisions on enforcement may also reflect the fact that the United States has tended to enforce foreign judgements notwithstanding that the full faith and credit obligations imposed by the U.S. Constitution and federal legislation on state and federal courts do not extend to foreign judgments.

Although other countries, including within the European Union, are not so accommodating, foreign litigants frequently have sufficient assets in the United States such that foreign enforcement is not necessary.

The decision of a district court in Feraud v. Viewfinder thus represents the most extended judicial discussion in recent years of the enforceability of a foreign intellectual property judgement. In Feraud, the French plaintiffs, who design high-fashion clothing, had obtained a default judgment for one million francs from a French court against a Delaware corporation that maintains websites on which it posts photographs from fashion shows and other information about fashion events. The defendant had posted photographs of models wearing clothing of the plaintiffs design at various fashion shows in Paris, and the complaint filed in France alleged that this violated both French copyright and unfair competition law.

When the plaintiffs sought to enforce that judgment, the defendant argued that, under the New York recognition statute, the French judgment should not be enforced because the damages awarded bore no relation to actual damage sustained, because the underlying French law was inconsistent with U.S. intellectual property law, and because enforcement of the judgment would be inconsistent with the First Amendment.

As with most states, the New York recognition statute calls for the enforcement of foreign money judgments unless, doing so would be repugnant to the public policy of the state. Neither the amount of damages awarded, nor the differences between French and U.S. copyright law, satisfied this strict standard. The damage award was issued after the defendants failure to contest the amount in France, and the notion of an award not wholly reflecting actual damages is also found in U.S. copyright law and trademark law.

An enforcement analysis does not require a plaintiff to show that the actions in France would have violated American law; rather, the question is whether the judgment of the French court imposing liability under French law is repugnant to the public policy of the State of New York (and the French law did not approach that standard). The district court reasoned that:

Copyright and trademark law are not matters of strong moral principle. Intellectual property regimes are economic legislation based on policy decisions that assign rights based on assessments of what legal rules will produce the greatest economic good for society as a whole. Different countries will, at different times, reach different conclusions as to the types of creative endeavor that should receive the benefit of copyright protection and the extent of that benefit, and different conclusions as to the kinds of competitive activity that should be encouraged or discouraged by trademark law. If the United States has not seen fit to permit fashion designs to be copyrighted, that does not mean that a foreign judgment based on a contrary policy decision is somehow repugnant to the public policies underlying the Copyright Act and trademark law.

However, the court concluded that because the defendants activities fell within the purview of the First Amendment, to enforce a judgment based upon liability for engaging in those activities would violate the public policy of New York. In reading the provisions of the statute to preclude the enforcement of a foreign judgment that attached liability to conduct abroad that would have been protected by the First Amendment in the United States, the court was acting in line with several other U.S. courts.

However, intellectual property judgements (especially copyright and trademark judgments) will frequently implicate speech-like values. Such an approach to recognition, especially when activities forming the basis for the judgment occurred wholly or substantially abroad, would offer a potentially large exception to enforcement in cases where the laws of the rendering and enforcing court are different. Yet, that is precisely when enforcement obligations are of vital importance.

Conclusion- A brief note on possible solutions for the problems:

In light of the increasing frequency of these types of disputes, to what extent do we need to reform the principles of private international law that operate in intellectual property cases? In this Part of the paper, I will address the basic principles that need to be reformed. Most fundamentally, the principle of territoriality needs to be reviewed; our ability to develop a sophisticated system would benefit from the principle being broken down into its constituent propositions, and each proposition defended on its own terms. Territoriality needs to be explained and defended, not simply invoked.

First, territoriality is a principle that has always received excessive doctrinal purchase. One can adhere to the basic premises that underlie territoriality without supporting the full range of private international law rules that are said to reflect the principle. This divergence between the principle and its implementing devices continues to grow, as legal systems become less nationally-confined (even if they are still largely nationally-defined).

Second, the normative force of the principle has declined as units of social and commercial organization correspond less neatly with national borders, and as private ordering has weakened the capacity (and perhaps the claim) of the nation-state exclusively to determine the behavior of its citizenry.

Finally, many of the same values (e.g., diversity of legal regimes, tailoring of intellectual property to local needs, protecting rights on an international basis) that the public international intellectual property system sought to further through its promulgation of the principle of territoriality must still be pursued, but can now best be achieved by reconfiguring the principle. A few parameters are as follows: Territoriality as a disabling concept: The principle of territoriality will rarely be interpreted in this restrictive fashion, to be sure, the principle was used historically to deny authority to third party states to adjudicate or to prescribe. But giving territoriality this reading would reduce its application to cases where there was a false conflict because only one state had an interest in the application of its law. And, in the present environment of international exploitation, it would be far too disabling of jurisdiction. Today, a single state will rarely have an exclusive authority to prescribe. Thus, some less demanding notion of territoriality must be required to support a states prescriptive interest. Territoriality as an Enabling Concept: Having seen the disabling effects of reading territoriality strictly, one could adopt a much more liberal approach: any conduct or effect within the territory of a state is sufficient to sustain adjudicatory or prescriptive jurisdiction. However, here it is the excess of authority in todays world, rather than its shared nature, that causes problems. Information products that are exploited internationally are likely to touch upon the territory of many nations; particularly in the online context, where activity is ubiquitous, this is too generous a notion of territoriality. In effect, it will implement a philosophy of extra-territoriality rather than territoriality, leading to over-regulation (and the imposition of potentially inconsistent obligations). Or stated in less conclusive terms, this approach is too enabling of jurisdiction. Between Territoriality and Extra-Territoriality: A Philosophy of Restraint: The key to adapting to the realities of excess shared authority lies in restraint: the existence of prescriptive authority has to be distinguished from the exercise of that authority. The purest act of sovereignty is to foreswear from acting in circumstances where it is (descriptively and prescriptively) possible to do so. Territorial connections that are sufficient to sustain a nominal interest should not support the exercise of jurisdiction that effectively prescribes globally. In this climate, the important judicial tools become doctrines of abstention and systems of equilibrium rather than binary tests of the existence of jurisdiction.

A Singular Law, instead of Territoriality: An implicit practical problem with adhering too strictly to the territorial model is that it results in the need to apply a multiplicity of laws to a multi-territorial dispute. Often the selection of a single law is seen as a rejection of the demands of full territoriality. However, even in the face of territoriality one can conform to the basic principle of territoriality and effectuate the objective of applying a single law to a worldwide dispute by designating a single point as the relevant place. That is, the localization sub-rule allows us to get the practical benefits of a single law without nominally departing from territoriality. Indeed, where courts and scholars are desirous of achieving a single applicable law without appearing to violate the principle of territoriality, that consideration may inform the choice of law rule that is selected. For example, in copyright cases, the lex originis is often supported as the choice of law rule for initial ownership because it produces a single owner on a worldwide basis. Use of the lex loci protectionis, on the other hand, to determine infringement will tend to result in the application of numerous laws to a multi-territorial dispute.

In the present era, where the interest forms the crux of most activities, plenty of issues come to fore, leaving scholars of law world over, to decide solutions that would be sub-servient to the interests of society at large. While many of these issues might be solved by establishing clear rules on burden of proof, plenty other require more in-depth attention. The existent systems are nugatory and insufficient. Sound substantive principles are critical to this, and efficient procedural mechanisms are equally essential. Graeme B. Dinwoodie, The International Intellectual Property Law System: New Actors New Institutions, New Sources 2006 Marquette Intellectual Property Law Review [Vol. 10:2]

Considering the development of the Lex Fori Rule as an example- Phillips v Eyre (1870) L.R. 6 Q.B. 1,28-29; Boys v Chaplin [1971] AC 356; Red Sea Insurance Co v Bouygues SA [1995] AC 190, See further, Dicey & Morris, The Conflict Of Laws, (13th ed., Lawrence Collins (ed), 2000)1512-13; Pearce v Ove Arup Partnership Ltd [1999] 1 All ER 769; Tolofson v Jensen [1994] 3 SCR 1022; John Pfeiffer Pty Limited v. Rogerson [2000] HCA 36 (21 June 2000)

Dicey and Morris, Above n.2, pp 7 & 8.

David Goddard, Conflict of Laws: Jurisdiction and Foreign Judgments in The Laws of New Zealand (Wellington, Butterworths, 1996)

http://www.thestandard.com/article/display/0,1151.20320,00.html?partner=law.

British South Africa Co v Companhia de Moambique [1893] AC 602; Hesperides Hotel Ltd v

Muftizade [1979] AC 508.

Huntington v Attrill [1893] AC 150 (PC); Re Vissar [1928] Ch 877.

Graeme W Austin, Social Policy Choices And Choice Of Law For Copyright In Cyberspace, 79 Oregon L. Rev. 101 (2001)

Automotive Network Exchange Trade Mark (1998) RPC 885, 887 (UK); Gordon Humphreys, Territoriality in Community Trade Mark Matters: The British Problem [2000] EIPR 405; Richard Garnett, The Internet and Trademark Rights: Some Problems of Jurisdiction 39 Intellectual Property Forum 18 (1999).

523 US 135 (1998)

[1995] RPC 438, 447.

P.B. Carter, Decisions of British Courts During 1990, 61 British Yearbook of International Law 386, 402 (1991) (noting the need for the development of such a body of law in response to the decision of the U.K. courts in Tyburn Productions v. Conan Doyle).

This phenomenon on the public international side of the picture has already received scholarly attention. Laurence R. Helfer, Regime Shifting: The TRIPS Agreement and New Dynamics of International Intellectual Property Lawmaking, 29 Yale Journal of International Law 1 (2004) (discussing regime-shifting); John Braithwaite & Peter Drahos, Global Business Regulation (1st ed., 2000) 564 (suggesting different forms of forum-shifting); Graeme B. Dinwoodie, The Institutions of International Intellectual Property Law: New Actors, New Institutions, and New Sources, in Proceedings Of The 98th Annual Meet of The American Society of International Law 213 (2004) (discussing the proliferation of institutions on both the public and private side).

Graeme B. Dinwoodie, The International Intellectual Property System: Treaties, Norms, National Courts, and Private Ordering [at 21-23] in Intellectual Property, Trade And Development: Normative And Institutional Aspects (Gervais ed., Oxford 2007)

Nor does the national treatment obligation found in treaties mandate any different approach. See Bonzel v.Pfizer, Inc., 439 F.3d 1358 (Fed. Cir. 2006) (upholding forum non conveniens dismissal of patent action and noting that these treaties require a nation's courts to give equal treatment to nationals of other nations; they do not establish jurisdiction or require a nation's courts to receive litigation that it reasonably believes would be better conducted in another nation.)

See Computer Associates Intl, Inc. v. Altai, Inc., 126 F.3d 365 (2d Cir. 1997) (separate French and U.S.

copyrights implicated by proceedings in France and the United States).

1972 OJEC (L299) 32

1988 OJEC (L319) 9

Playboy Enterprises Inc. v Webworld, Inc. 991 F.Supp. 453 (N.D. Tex. 1997); Playboy Enterprises inc. v. Chuckleberry Pubg, Inc. 939 F.Supp. 1032 (SDNY 1996); Coca Cola Co v All-Fect Distributing Co [1999] FCA 1721.

International Shoe Co. v Washington, 326 US 310 (1945).

Professor Ginsburg, Private International Law Aspects of the Protection of Works and Objects of Related Rights Transmitted Through Digital Networks, (1st ed. , 2000), Update, 2-4.

Bensusan Restaurant Corp. v King, 937 F.Supp. 295 (SDNY 1996), affd on other grounds, 126 F.3d 25 (2d Cir 1997).

J. Fawcett (ed.), Declining Jurisdiction In Private International Law: Reports To The XVI Congress Of The International Academy Of Comparative Law: Athens, August 1994, (1995).

Gulf Oil Corp. v. Gilbert, 330 US 501 (1947) (US); Spiliada Maritime Corp. v Cansulex Ltd. [1987] AC 460 (UK); Wendell v Club Mediterranee NZ [1989] 1 NZLR 216 (NZ).

John Adams, Industrial Property in a Globalised Environment in Rickett & Austin (eds.) International Intellectual Property And The Common Law World 259 (2000).

GW Austin, The Infringement of Foreign Intellectual Property Rights (1997) 113 LQR 321, 323.

London Film Productions Ltd v Intercontinental Communications Inc 580 F.Supp 47 (SDNY 1984); Professor Dinwoodie Affirmation of Territorial Limits of United States Copyright Protection: Two Recent Decisions [1992] EIPR 136; STV Prod. Inc v California Authority of Racing Fairs 785 F. Supp 854, 866 (ED Cal 1992), reversed on other grounds 3 F3d 1289 (9th Cir 1993); Creative Technology, Ltd. v Aztech System Pte., Ltd., 61 F.3d 696 (9th Cir. 1995); Compare Murray v British Broadcasting Corp., 906 F. Supp 858 (SDNY 1995) affd 81 F.3d 287 (2d Cir. 1996).

See generally, Dicey & Morris, , Above n.2. Part Seven Law of Obligations

See generally, Ricketson, Copyright, Designs & Confidential Information, Supplement No 1 75 (2000)

Berne Convention for the Protection of Literary and Artistic Works, Art. 5(2).

[1905] VLR 612; (1906) 3 CLR 479. See also Norbert Steinhardt & Sons Ltd v Meth (1961) 105 CLR 440.

Tyburn Productions v Conan Doyle (1990) 19 IPR 455; Def Lepp Music v Stuart-Brown [1986]

RPC 273 (obiter) (UK); Atkinson Footwear Ltd v Hodgskin International Services Limited (1994) 31 IPR 186 (NZ); Bikram Chaudhrys Copyright Claim, Kedar Nath Gupta v J.K. Organization [1998 PTC 189 (Delhi)]; Malnak v. Yogi [592 F.2d 197, 197-98 (3d Cir. 1979)]

Pearce v Ove Arup Partnership Ltd [1999] 1 All ER 769.

Ibid.

Berne Convention, art. 5(1) (providing that authors shall enjoy, in respect of works for which they are

protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention)

Case C-28/04, Tods SpA v. Heyraud SA, [2005] 3 C.M.L.R. 28 (ECJ 2005) (suggesting that as is

apparent from Article 5(1) of the Berne Convention, the purpose of that convention is not to determine applicable law).

Itar-Tass, 153 F.3d at 89 n.8. See also Phillip Johnson, Which Law Applies: A Reply to Professor Torremans, 1 Journal of Intellectual Property Law and Practice, 71, 72 (2005); Sam Ricketson And Jane C. Ginsburg, International Copyright And Neighbouring Rights: The Berne Convention And Beyond 20.08 (2d ed. 2005)

Graeme B. Dinwoodie, Trademarks and Territory: Detaching Trademark Law From the Nation-State,

41 Houston Law Review 885, 891-92 (2004); Graeme B. Dinwoodie, Conflicts and International Copyright Litigation: the Role of International Norms, in Intellectual Property In The Conflict Of Laws 195, 201 (Basedow, Drexl, Kur and Metzger eds. 2005)

Above, n.31.

(1995) AC 190

A.16(4) and 19, Brussels Convention.

Adams v Cape Industries plc [1990] Ch 433

Sirdar Gurdyal Singh v Rajhah of Faridkote [1894] AC 670.

Above, n.40.

This jurisdictional approach also had the effect of assimilating the lex loci protectionis to the lex fori.

Nor does the national treatment obligation found in treaties mandate any different approach. See Bonzel v. Pfizer, Inc., 439 F.3d 1358 (Fed. Cir. 2006) (upholding forum non conveniens dismissal of patent action and noting that these treaties require a nation's courts to give equal treatment to nationals of other nations; they do not establish jurisdiction or require a nation's courts to receive litigation that it reasonably believes would be better conducted in another nation.)

Computer Associates Intl, Inc. v. Altai, Inc., 126 F.3d 365 (2d Cir. 1997) (separate French and U.S.

copyrights implicated by proceedings in France and the United States).

See generally Jane C. Ginsburg, Private International Law Aspects of the Protection of Works and Objects of Related Rights Transmitted Through Digital Networks, WIPO Doc. GCPIC/2 (Nov. 30, 1998) (copyright); Graeme B. Dinwoodie, Private International Aspects of the Protection of Trademarks (Jan. 31, 2001) WIPO Doc. No. WIPO/PIL/01/4 (trademark)

Abkco Music & Records, Inc. v Music Collection International Ltd. [1995] RPC 657, 660

Graeme W. Austin, Intellectual Property Politics and the Private International Law of Copyright

Ownership, 30 BROOK. J. INTL L. 899, 920-21 (2005) (defending attention to the important social policy choices reflected in the law of the place where a work was first created)

Spielbankaffaire, 30 I.I.C. 227 (1999) ; Show Format Case (2003), 35 I .I.C. 987 (2004).

Paul Torremans, Authorship, Ownership of Rights and Works Created by Employees: Which Law

Applies?, 27 EUR. INTELL. PROP. REV. 220, 222 (2005) (discussing Belgian law).

Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82, 89 (2d Cir. 1998)

Cf. Films by Jove, Inc. v. Berov, 154 F.Supp. 2d 432 (E.D.N.Y. 2001), motion for reconsid. den., 250.

F.Supp.2d 156 (E.D.N.Y. 2003), later proceeding, 341 F.Supp.2d 199 (E.D.N.Y. 2004). On the question of subsistence of copyright (e.g., the standards of originality), the U.S. courts have applied the lex loci protectionis.

Mount Albert Borough Council v Australasian Assurance Society Ltd [1938] AC 224, 240; Hamlyn v Talisker Distillery [1894] AC 202, 207.

Jane C Ginsburg, The Private International Law of Copyright in an Era of Technological Change, 1998 Recueil Des Cours De LAcademie Internationalle De La Haye (1999); Jane C. Ginsburg, Copyright without Borders? Choice of Forum and Choice of Law for Copyright Infringement (1997) 15 Cardozo Arts & Entertainment Law Journal; Jane C Ginsburg, Global Use/Territorial Rights: Private International Law Questions on the Global Information Infrastructure, 42 Journal of Copyright Society USA 318; Paul E Geller, The Universal Electronic Archive: Issues in International Copyright (1994) 25 IIC 54; Andreas Reindl, Choosing Law in Cyberspace: Copyright Conflicts on Global Networks (1998) 19 Michigan Journal of International Law 799.

Jane C Ginsburg, International Copyright: From a Bundle of National Copyright Laws to a Supranational Code? 47 Journal of the Copyright Society of the USA 265 (2000).

Article 14bis of the Berne Convention

Dicey & Morris, para 22R-023.

Dicey & Morris, para. 22-051

C. Wadlow, The Law of Passing Off (2d ed.) 1st supplement 25 (1997).

[1970] 2 All ER 106

Modus Vivendi (Ronson) v Keen (Lightman J, July 5, 1995); Merklermedia Corp v DC Congress GmbH [1998] Ch 40.

British Telecommunications v One in A Million Ltd [1998] 4 All ER 475, 486 (UK).

Laurette Barnard, Choice of Law in Equitable Wrongs: A Comparative Analysis [1992] CLJ 476.

Attorney-General (UK) v Heinmann Publishers Australia Pty Ltd (1988) 165 CLR 30

Sheldon v Metro-Goldwyn Pictures Corp 106 F.2d 45, 52 (2d Cir 1939), affid, 309 US 390 (1940)

Oggi Advertising Ltd v McKenzie [1999] 1 NZLR 631; New Zealand Post Limited v Leng High Court, Auckland Williams J 17/12/98 CP 573/98.

Macquarie Bank Ltd v Berg [1999] NSWSC 526 (June 2 1999)

New Zealand Post Limited v Leng High Court, Auckland Williams J 17/12/98 CP 573/98.

NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005) , replacing 392 F.3d 1336 (2004). The litigation settled last year. See Richard Waters and Chris Nuttal, Threat to Blackberry is Ended By $612m Deal, FIN. TIMES, Mar. 4, 2006 at 1.

See Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1251 (Fed. Cir. 2000) (requiring that in order to violate the patent holders exclusive right to offer its patented invention for sale, the allegedly infringing offer must occur within the United States); Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342 (Fed. Cir. 1998).

Search of global QPAT database, March 2, 2006; [cf. ICraveTv.com]

Patent rights are the most explicitly territorial of the primary forms of intellectual property. See Donald S.Chisum, Normative and Empirical Territoriality in Intellectual Property: Lessons from Patent Law, 37 VA. J. INTL L. 603, 605 (1997) ; see also 35 U.S.C. 271(a) (whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefore, infringes the patent) (emphasis added).

See Deepsouth Packing Co. v. Laitram Corp., 408 U.S. 518 (1972).

U.S. courts in copyright cases have gravitated to that same test (as have Canadian courts). See Itar-Tass

Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82 (2d Cir. 1998); Society of Composers, Authors & Music Publishers of Canada v. Canadian Assn. Of Internet Providers (Tariff 22"), 2004 SCC 45, 32 C.P.R. (4th) 1 (Supreme Court 2004) (Canada). Although sometimes, as with the NTP court in patent, that consideration may simply have informed what the cour t frames as an interpretation of substantive copyright law. [See National Football League v. T.V. RadioNow Corp., 53 U.S.P.Q.2d 1831 (E.D. Pa. 2000); National Football League v. Primetime 24 Joint Venture, 211 F.3d 10 (2d Cir. 2000); Playboy Enters. v. Chuckleberry Pub. Inc., 939 F. Supp. 1032 (S.D.N.Y. 1996).]

See Vanity Fair Mills v. T. Eaton & Co., 234 F.2d 633 (2d Cir. 1956) ; see also Graeme B. Dinwoodie,

Remarks, 30 BROOK. J. INTL L. 885, 887 (2005) (noting comments of Graeme Austin).

145 F.3d 481 (2d Cir. 1998).

See, e.g., London Film Prods. Ltd. v. Intercontinental Communications, Inc., 580 F. Supp. 47 (S.D.N.Y. 1984).

See Griggs Group v. Evans, 2005 Ch D. 153 (H. Ct. 2004), later proceeding, 2005 F.S.R. 31 (Court of Appeal (2005) (UK); see, e.g., Tyburn Productions Ltd. v. Conan Doyle, [1990] 1 All ER 909 (rejecting plaintiffs request to declare that the defendant had no rights under U.S. copyright and trademark laws); see also Austin,

The Pearce court noted that it was not necessary to decide whether . . .an action for alleged infringement of a foreign copyright by acts done outside the United Kingdom in a state not party to the Brussels Convention, in a case where no question as to the validity or registration of the right was in issue, was . . . justiciable in an English court. But see Griggs Group v. Evans, 2005 Ch D. 153 (H. Ct. 2004), later proceeding, 2005 F.S.R. 31 (Court of Appeal 2005)

(UK).

319 F.Supp.2d 1219 (W.D. Wash. 2004).

Microsoft-Lindows Battle Expands in Europe, CNet News.com, Dec. 8, 2003.

Pro Swing Inc. v. ELTA Golf Inc.; 2006 CarswellOnt 7203; 2006 SCC 52 (2006).

See Richard L. Garnett, Trademarks and the Internet: Resolution of International IP Disputes by Unilateral Application of U.S. Laws, 30 BROOK. J. INTL L. 925, 937 (2005).

See 15 U.S.C. 1125(d)(2)

See Hilton v. Guyot, 159 U.S. 113, 163-64 (1895); see also Dreyfuss, Why Invite Conflicts, supra, at 822

(discussing enforcement practices)

See Yahoo!, Inc. v. La Ligue Contre le Racisme et l'Antisemitisme, 169 F.Supp.2d 1181 (N.D.Cal.2001),

rev'd on other grounds, 379 F.3d 1120 (9th Cir.2004), revd, 433 F.3d 1199 (9th Cir.2006) (en banc); Bachchan v. India Abroad Publ'ns Inc., 585 N.Y.S.2d 661 (Sup.Ct.1992); Telnikoff v. Matusevitch, 702 A.2d 230, 244 (Md.1997) (rejecting enforcement of English libel judgment).

See Mark D. Rosen, Exporting the Constitution, 53 EMORY L.J. 171 (2004).

See Fauntleroy v. Lum, 210 U.S. 230 (1908) (domestic state-to-state recognition under the Full Faith and

Credit Clause).

Cf. Graeme B. Dinwoodie, Commitments to Territoriality in International Copyright Scholarship, Report

of the Neuchtel Study Session of ALAI 74 (2002) (characterizing different approaches to territoriality in copyright law as regressive or nationalistic, reformed, pragmatic and internationalist).

Cf. Andrew T. Guzman, Choice of Law: New Foundations, 90 GEO L.J. 883, 909-12 (2002) (arguing that where countries cannot (or do not) apply their laws extraterritorially there will be under-regulation).

See Dinwoodie, New Copyright Order, supra note 50, at 572 (noting problem of too many loci delicti): Guzman, supra note 132, at 906-08.

Cf. McBee v. Delica Co. 417 F.3d 107 (1st Cir. 2005)

Austin, Valuing Self-Determination, supra note 4, at 1157 (critique of root copy theory).

Dinwoodie, The Role of International Norms, at 203

Andreas Reindl, Choosing Law in Cyberspace: Copyright Conflicts on Global Networks, 19 MICH J.

INTL L. 799 (1998); RESTATEMENT 6 (ease of application).

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