Intellectual Property &Private International Law

International Jurisdiction (1): Main Principles

Jurisdiction over the parties

BACKGROUND: INTERNATIONAL IP PROTECTION (1)

• Privileges granted by kings

• Technological revolution • Adoption of IP Statutes

19th century: formal requirements for protection

• Paris Convention for the Protection of Industrial Property Rights (1883)

• Main principles: - Territoriality of IPRs- Independence of national IPRs

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INTERNATIONAL IP PROTECTION (2): Creation of Int’l Copyright Protection Regime

Victor Hugo (1802-1885)• 19th century: no

protection of literary works

• Bilateral treaties– National treatment principle

• Association Litteraire et Artistique Internationale

• Author’s rights (droit d’auteur vs ‘copyright’)

• Berne Convention for the Protection of Literary and Artistic Works (1886)10/22/12 IP-PIL-2 3

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INTERNATIONAL IP PROTECTION (3): Berne Convention

• Berne Union: States who signed to Convention • ‘Literary and Artistic works’• Recognition of copyright of works of foreign

authors • Automatic protection (additional registration

not required)• National treatment principle

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• Preamble of the Berne Convention:

The countries of the Union, being equally animated by the desire to protect, in as effective and uniform a manner as possible, the rights of authors in their literary and artistic works…

• What is the most efficient way of doing it?! – Legal as well as social legitimacy

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PRINCIPLE OF TERRITORIALITY of IPRs

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Article 5(2) of the Berne Convention: The enjoyment and exercise of these rights shall not be subject to any formality; such enjoyment and such exercise shall be independent of the existence of protection in the country of origin of the work. Consequently, apart from the provisions of this Convention, the extent of protection as well as the means of redress afforded to the author to protect his rights shall be governed exclusively by the laws of the country where protection is claimed.

‘Lex loci protectionis’ (the law of the protecting country) vs ‘country of origin’ Jurisdiction rule? Choice-of-law rule?

TERRITORIALITY PRINCIPLE (2)

Territoriality in PIL

‘Protecting state’

Territoriality in IP

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HAGUE JUDGMENTS CONVENTION

• Early 1990 Hague Judgments Project

• Initiated by the US • 1999 and 2001 Drafts • Global Convention on

1. Jurisdiction2. Recognition &

Enforcement‘Double Convention’

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LEGISLATIVE PROPOSALS

Int’l JurisdictionChoice-of-

LawRecognition

& Enforcement

ALI PRINCIPLE

S

TRANSPARENCY

PRINCIPLES

WASEDA PRINCIPLES

CLIP PRINCIPLE

S

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INTERNATIONAL JURISDICTION IN IP CASES: WHICH COURT DECIDES?

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iCloud

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SUBJECT-MATTER / EXCLUSIVE JURISDICTION:

Two legal traditions

Common-law countries

• In personam jurisdiction

• Subject-matter jurisdiction

Civil law countries

• General rule (domicile)

• Special jurisdiction rules

• Exclusive jurisdiction

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INTERNATIONAL JURISDICTION OVER THE PARTIES IN THE US

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Common law: in personam jurisdiction International Shoe Co v Washington, 326 US 310 (1945)

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Tax on employers in Washington State International Shoe:

Incorporated in Delaware, principal place of business in Missouri

11 Salesmen in Washington, but did not pay taxes

HELD1: in personam jurisdiction may be asserted if the defendant had sufficient minimum contacts with the forum and such exercise of jurisdiction did not offend traditional notions of fair play and substantial justice.

HELD2: The ‘minimum contacts’ requirement is met if the defendant purposefully availed himself of the privilege of conducting activities within the forum state thus invoking the benefits of protection of its laws.

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Forum non conveniens in the USGulf Oil Corp v Gilbert, 330 US 501 (1947)

• Plaintiff: resident in Virginia • Defendant: Pennsylvania corporation

qualified to do business in both Virginia and New York

• Dispute over a burning warehouse in Virginia

• Claim for damages before a NY Court• Could a NY court hear a case?

- Witnesses in VA- Damage in VA - But the Defendant has agents in NY

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Forum non conveniens in the USGulf Oil Corp v Gilbert, 330 US 501 (1947)

• Jurisdiction because both parties were US nationals. • BUT the case was dismissed on the grounds of • Forum non conveniens doctrine. 2 requirements:

1. Alternative forum must have jurisdiction to hear the case 2. (a) Examine which forum would be most convenient and (b)where the adjudication would best serve the ends of justice?

• The court must weight public and private interests:– access to proof– availability of witness– all other practical problems which would make the trial of

the case easy, expeditious and inexpensive.

• the fact that foreign law would have to be applied is not sufficient to dismiss the case.

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INTERNATIONAL JURISDICTION OVER THE PARTIES IN JAPAN

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JAPANESE LAW (1): Overview

• Meiji Restoration • Reception of French and German Law • CCP 1890, reforms in 1948 (US) and 1996• List of grounds of venue

(allocation of domestic jurisdiction )• Cross-border cases?

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JAPANESE LAW (2): Malaysia Airlines case (16 Oct 1981)

• Japanese national bought tickets in Malaysia

• Domestic flight in Malaysia (Penang-Kuala Lumpur)

• Fatal crash action against a company in Tokyo

• JP SC: CCP does not contain rules on international jurisdiction

• Hence, jurisdiction rules have to be interpreted and applied according to jori principle

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JAPANESE LAW (3): Family case (SC: 11 Nov 1997)

Family Co: Japanese company

Shin MIYAHARA: A JP national living in Germany since

1965Transfer of 60M Yen to maintain

business

AGREEMENT TO IMPORT EUROPEAN

CARS TO JAPAN

CLAIM TO REPAY 20M Yen +

Interest

CAN A JAPANESE COURT HEAR THIS

CASE?

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JAPANESE LAW (4): Status quo after Family case

4 Steps in determining international jurisdiction:1. There is no customary international law nor rules

regarding adjudicatory jurisdiction in the CCP;2. The determination of int’l jurisdiction should be

made in accordance to principle of justice which requires that fairness is maintained between the parties and proper and prompt trial is secured;

3. One of the courts in Japan must have jurisdiction according to the rules of CCP;

4. Consideration of ‘special circumstances’

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JURISDICTION OVER THE PARTIES (5):‘Card Reader’ case

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JAPANESE LAW (6):Reform

• 1996 reform:Prepared rules were too vagueHague Judgments Convention negotiations

• MOJ working group formed in 2005 • Bill for Partial Revision of the CCP and Civil

Provisional Remedies Act (2011)• Structure almost identical to CCP

Art 3-3(v): introduction of ‘doing-business’ ruleArt 3-9: ‘Special circumstances’ test

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INTELLECTUAL PROPERTY & PRIVATE INTERNATIONAL LAW

INFRINGEMENT JURISDICTION

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INFRINGEMENT:Preliminary matters

What constitutes an infringement of an IPR?

What are the elements of infringement?

How do jurisdictional problems arise?

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INFRINGEMENT: Patents (1)

• Product patent / process patents• Unauthorised disclosure • Indirect infringement – enabling another party

to infringe • Territorial requirement

Direct infringement: only acts in the protecting state (eg sale of an infringing article abroad-no infringement)Indirect infringement

• Defenses: Acts done privately for non-commercial purposes Experimental use

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INFRINGMENT: Patents (2)

• What is the subject matter of a patent? Patent claims

• Gatnic Components v Hill & Smith; Improver v Remington Consumer Products :

• Purposive interpretation (not literal) of patent claims. The court should ask 3 questions in determining whether certain feature (variant) of an alleged infringement falls outside of the claim:

1. Does the variant have the material effect upon the way the variant works? If yes, the variant is outside of the claim. If no –

2. Would this (ie that the variant had no material effect) have been obvious at the date of the publication of the patent to a reader skilled in the art? If no, the variant is outside of the claim. If yes –

3. Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim.

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INFRINGEMENT: TMs

• Identical sign is used without authorisation Identical products/servicesSimilar products/services (likelihood of confusion)

Well known TMs (harm requirement)

• What kinds of acts? • Territorial limitations • Comparative advertising …

detriment to the repute/distinctiveness

• EU: Community trade mark 10/22/12

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INFRINGEMENT:

• Historically: © was a right to make copies

• Primary and secondary infringements

• Primary infringements:Acts without consent of the ©holder

• Secondary infringements: ‘knowledge’ requirement

• Territorial scope Copies made in Japan for the use abroad?Authorisation to print copies in the US?

Acts of primary infringement• Making copies• Issuing copies to the public

(also rent of recordings)• Performance, show,

broadcasting in public• Communication to the

public • Making adaptations

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INFRINGEMENT:Elements of infringement

• Act of infringement – territorial limitation of liability

• No requirement of damageNo need to show (evidence of) damageAny act of infringement is a wrongLoss of market share, business goodwill etc.

• Possible remedies:Action before infringement occurs injunctionEx post infringement action

• Actions for negative declarations – commercial practice (contract party, third parties)

• ‘Tort’ in substantive and procedural law10/22/12

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INFRINGEMENT:How jurisdiction problems arise? (1)

• Foreign IPRs, defendant with assets in the forum state

• Parallel IPRs in several states are infringed: can a court hear all claims? No need for defendant’s domicile in the forum state?

• Several infringers in different states infringe parallel IPRs

• Infringement in the forum state: can a plaintiff seek to serve the claim to a foreign co-defendant (search for vital evidence, etc)

• Multiple IPR holders vs multiple defendants 10/22/12

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INFRINGEMENT: How jurisdiction problems arise? (2)

What is the economic function of PIL rules on jurisdiction (and choice-of-law)?

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