COVER PAGE

Name: Dhanvanth Kota

Roll No.: 2015060

Topic: INTERPLAY BETWEEN PRIVATE INTERNATIONAL LAW AND COPY

RIGHTS

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CHAPTERS

1. INTELLECTUAL PROPERTY UNDER PRIVATE INTERNATIONAL LAW

2. CHOICE OF LAW

3. ELECTRONIC RIGHTS AND THE PRIVATE INTERNATIONAL LAW OF

COPYRIGHT

LITERATURE REVIEW

ENFORCING COPYRIGHT INFRINGEMENTS ONLINE IN SEARCH OF

BALANCED PRIVATE INTERNATIONAL LAW RULES1

The author says that, the emergence of the Internet, the enforcement of cross-border
intellectual property (IP) infringements has become highly relevant, especially in the area of
copyright law. With the prevalence of online copyright "piracy", the efficient enforcement of
copyright has proven to be an especially challenging task for both the legislators' and the
courts.2 Private international law (PIL) issues raise some of the most difficult questions in
this area. First, it is necessary to decide which court has jurisdiction in EU-wide (and
worldwide) copyright infringement cases online. Secondly, once the court jurisdiction is
established, one needs to determine which law the court has to apply when establishing EU-
wide infringement and granting EU wide remedies. This so called "lex loci protectionis" rule
means that national copyright law applies only in respect of infringement occurring inside the
territory of a particular state. Therefore in order to get EU-wide remedies, the copyright laws
of each EU Member State (currently, 28 such laws) would need to be applied.

OWNERSHIP OF ELECTRONIC RIGHTS AND THE PRIVATE INTERNATIONAL

LAW OF COPYRIGHT2

The author says that , the emergence and development of global business activities, and the
inception of the Internet have resulted in the creation of a new field of legal studies concerning
cross-border enforcement of intellectual property (IP) rights. This novel area of law is known as

1
Rita Matulionyte, Enforcing Copyright Infringements Online in Search of Balanced Private International Law
Rules, 6 J. Intell. Prop. Info. Tech. & Elec. Com. L. 132 (2015).
2
Ginsburg, Jane C. 22 Colum.-VLA J.L. & Arts 165 (1997-1998)

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private international law and intellectual property. It has attracted much attention from lawyers
within the fields of both private international law and intellectual property law. Several landmark
decisions have caught the interest of legal practitioners as well as scholars engaged in deeper
research activities. So far, several edited books1 have been published, and a greater amount of legal
articles have been written on the subject. The object of private international law and intellectual
property is mainly related to the private enforcement of intellectual property rights. In this context,
‘private’ enforcement is understood to mean legal measures taken by private parties (eg, proprietors
of IP rights, persons exploiting IP rights with or without authorisation).

CHOICE OF LAW AND INTELLECTUAL PROPERTY RIGHTS3

The author says that, Intellectual property (IP) is a peculiar creation. It aims at providing
protection for immaterial intellectual efforts of different kinds, and the object of protection is
complex to define. Legal regulation in the area of intellectual property rights (IPRs) is
therefore specific and detailed in a way that distinguishes legislation in this area from
legislation as regards other property rights. It may be stated that IP is a kind of collective
good that has been made private by detailed legislation, which suggests that this property is
easily shared and hard to uphold with exclusivity. With the development of the information
society, this imbedded feature - the ease by which IP can be shared has increasingly given
rise to difficulties, and the fact that sharing is a borderless activity has made it crucial to find
solutions to a growing number of cross border disputes. The development unfolds in two
ways: the enhancement of legal initiatives as regards substantive IP protection, and an
increasing interest in private international law.

In 1992, a leading British commentator called for the development of a "much needed
private international law of intellectual property. 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. 4 Intellectual property is a peculiar creation. It aims
at providing protection for immaterial intellectual efforts of different kinds, and the object of

3
Annette Kur & Ulf Maunsbach, Choice of Law and Intellectual Property Rights, 6 Oslo L. Rev. 43 (2019).
4
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).

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protection is complex to define. Legal regulation in the area of intellectual property rights is
therefore specific and detailed in a way that distinguishes legislation in this area from
legislation as regards other property rights. It may be stated that IP is a kind of collective
good that has been made private by detailed legislation, which suggests that this property is
easily shared and hard to uphold with exclusivity. 5 The immaterial nature of IPRs is of
certain relevance since private international law is devoted to jurisdiction and choice of law,
and the mission to find courts and legal regimes that are closely connected to potential
disputes. Traditionally that mission is accomplished by the use of physical connecting factors.
A dispute regarding a physical object may usually be solved by courts where that object is
actually situated, under the law applying in that country. As regards immaterial IPRs, such
physical connecting factors may be lacking, which leads to a more complex assessment. 6 For
that kind of assessment to operate properly, it is necessary to take account of the prevailing
justification for the existence of IPRs. There is general agreement that promoting creative and
innovative activities is a matter of general interest. As an incentive, it is deemed appropriate
to provide a certain period of market exclusivity so as to allow for the recouping of
investments made by those engaging in the relevant activities.

THE PRINCIPLE OF TERRITORIALITY OF IP RIGHTS AND THE LEX

PROTECTIONIS

The roots of the territoriality principle, as it is known in IP law, can be found in the medieval
printing and manufacturing privileges. Such privileges were granted on a case-by-case basis
by sovereign seigneurs, princes and kings who thereby expected to increase their own
wealth. 7 The nineteenth and twentieth centuries were marked by the adoption of national IP
statutes across the European continent. However, the adoption of IP statutes posed further
complications. Namely, national statutes in different countries provided for different scopes
of protection. More importantly, the protection of IP rights in foreign countries was often not
available on the same terms as protection afforded to nationals of those countries where the
protection was sought. In order to overcome these differences, governments of different

5
A more developed discussion as regards the rationales behind intellectual property law may be found in
Annette Kur and Thomas Dreier, European Intellectual Property Law (1st ed, Edward Elgar 2013) 5.
6
Of course, in intellectual property law as well, physical aspects exist, such as the presence of persons acting
or infringing items located in particular territories. However, due to the immaterial nature of the rights, legally
relevant effects may also occur elsewhere. In that respect, IP has much in common with violation of
personality rights.
7
J Basedow, ‘Foundations of Private International Law in Intellectual Property’, in J Basedow, T Kono and A
Metzger (eds), above n 1, 3–29.

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countries started to conclude bilateral treaties, some of which are still currently valid. 8
Nonetheless, the protection of IP rights based on bilateral agreements proved to be
insufficient and therefore two landmark international treaties for the protection of IP rights
were concluded (1883 Paris Convention for the protection of industrial property and 1886
Berne Convention for the protection of literary and artistic works). Bilateral and international
treaties concluded at the end of the nineteenth century generally aimed, first, to establish
minimum standards of protection and, secondly, to assure that foreign proprietors of
intellectual property rights were treated in the same manner as domestic right-holders (so-
called ‘national treatment’ principle). Besides that, both the Paris and Berne Conventions
established Unions and administrative mechanisms responsible for the maintenance and
development of these international instruments.

GENERAL GROUNDS OF JURISDICTION IN INDIA AND TAIWAN

Indian Code of Civil Procedure of 1908 contains no specific rules establishing when Indian
courts have jurisdiction in cases with a foreign element. Nevertheless, according to their
National Report, Indian courts would assume international jurisdiction if the defendant
resides in India or is engaged in commercial activities there. ‘Residence’ in India means that
the defendant has to dwell permanently or for a considerable time, or have his home in India;
a person may have several dwellings concurrently. The nationality of the defendant is not
relevant to establishing jurisdiction of the Indian courts. As regards legal entities, Indian
courts have international jurisdiction over the defendant’s legal entities that are incorporated
in India under the Companies Act and have their principal or subordinate office in India. An
action may be filed against a foreigner who is engaged in commercial activities and has an
agent in India. 9 Indian courts may also assert international jurisdiction over actions against
foreigners if there is a cause of action determined in accordance with Indian laws. Taiwanese
courts also have international jurisdiction over actions brought against corporate defendants
who have their branch in Taiwan (Art 2 of the Civil Procedure Law). 10

CHOICE-OF-LAW ISSUES IN INTELLECTUAL PROPERTY DISPUTES

One of the primary questions which arise in multi-state disputes is related to the nature of the
IP rights at stake. The court must first of all determine whether IP rights exist, who is the

8
F Dessemontet, ‘The ALI Principles: Intellectual Property in Transborder Litigation’, in J Basedow, T Kono and
A Metzger (eds), above n 1, 31–48.
9
Indian Report, section 1.3
10
Taiwanese Report, answers to HC 1

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legitimate right-holder of the IP rights and what is their content and limitations. For instance,
in contractual as well as non-contractual controversies the court must first determine whether
the rights exist and whether a party who claims protection is actually entitled to such
protection. These issues of initial title, creation, existence, contents, limitations and
exceptions as well as transferability have been often described as ‘matters pertaining to the IP
right itself’ or ‘proprietary matters’ of IP rights. Although several issues such as the protected
subject matter as well as the formalities of protection have, to a certain extent, been
harmonised by the adoption of international treaties and conventions, a number of
controversial problems concerning the interpretation of these international instruments still
exist. For instance, as regards the initial title to unregistered IP rights such as copyrights,
Article 5(2) of the Berne Convention was subject to different interpretations as to the
meaning of ‘country of origin’. A reconsideration of these conventional notions appeared to
be necessary in the advent of the development of the digital environment.

AGENCY V RUSSIAN KURIER, INC.583 In this case a dispute arose between a major
publisher of Russian-language newspapers in Russia and Israel, and the defendant Kurier, a
Russian-language weekly newspaper published in the New York area. An extensive number
of articles, headlines, pictures and graphics were copied from the plaintiffs’ publications and
appeared in Kurier without the permission of the plaintiffs. The district court granted a
preliminary injunction and awarded damages. The United States Court of Appeals for the
Second Circuit upheld the decision of the lower instance court and further elaborated on the
choice-of-law issues pertaining to copyright ownership and infringement. The Court in
particular noted that the Berne Convention itself does not establish any choice-of-law rule for
initial ownership. The Court therefore held that initial ownership of a copyright should be
determined according to ‘the law of the country with the closest relationship’. In the case at
hand the Court found that the ownership of illegally copied works had to be determined
according to the law of the country of first publication (lex originis).

The ALI Principles: The general choice-of-law rule established in the ALI Principles is
based on the territoriality of IP rights. Section 301 inter alia stipulates that the law applicable
to determine the existence, validity, duration, attributes, and infringement of registered IP
rights is the law of each state of registration; and for other IP rights the law of each state for
which protection is sought. The drafters of the ALI Principles intended to create a set of
choice-of-law rules which would maintain the principle of territoriality and incorporate only
those modifications necessary to adapt the exploitation of IP rights to the demands of the

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global economy. As regards the law governing the determination of initial title, the ALI
Principles distinguish choice-of-law rules for three different groups of IP rights: registered
rights; unregistered trademarks and trade-dresses; and IP rights that do not arise out of
registration. As for registered rights, the ALI Principles contain a two-pronged rule. On the
one hand, the initial title to registered rights is still subject to the territoriality principle, which
means that the initial title to the patent will be determined pursuant to the law of the country
where the patent is registered. In the comments to the provision cited above, the commentary
to the ALI rules indicates that it is important to follow conventional wisdom and apply the
same law which determines the existence and scope of the registered right. On the other hand,
the ALI principles introduce an important modification to the principle of territoriality for
situations where the creation of a registered right is based on the pre-existing contractual
relations between the parties. Section 311(2) of the ALI Principles entrenches the rule that the
initial ownership shall be determined pursuant to the law which governs their contractual
relationship.

PIL RULES GOVERNING IP RELATIONSHIPS

International treaties Several international PIL instruments touch upon cross-border IP

litigation. The Hague Conference on Private International Law (HCCH) has addressed the
intersection between IP and PIL in the Hague Convention on Choice of Court Agreements
and the Hague Principles on Choice of Law in International Commercial Contracts. While not
all countries are parties to these PIL instruments, and may therefore not be bound by them,
they may provide useful guidelines. The 2005 Hague Convention on Choice of Court
Agreements (Choice of Court Convention) aims at ensuring the effectiveness of choice of
court agreements between parties to international commercial transactions, as well as the
enforceability of judgments resulting from such agreements. As a non-binding instrument, the
2015 Hague Principles on Choice of Law in International Commercial Contracts (Hague
Principles) provide a comprehensive blueprint to guide users in the creation, reform or
interpretation of choice of law regimes at the national, regional or international level. The
Hague Principles endorse party autonomy by giving practical effect to the choice made by
parties to a commercial transaction as to the law governing their contractual relationships.
They are relevant to international contracts concerning IP rights, such as IP licensing

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contracts and IP transfer contracts11. Regional treaties A number of regional instruments have
been concluded among States sharing a common legal tradition or geographic proximity.
These instruments treat IP differently. Some instruments do not contain any specific rules for
IP disputes so their general PIL rules apply to IP disputes. While certain disputes are subject
to exclusive jurisdiction, parties may agree on a chosen court in other cases. The Regulation
also sets out which other jurisdiction rules apply by default. The general rule determines that
the defendant shall be sued in the Member State where he or she is domiciled, regardless of
nationality. The defendant may also be sued in the courts of another Member State, based on
a close connection between the court and the action or in order to facilitate the sound
administration of justice.

The Rome I Regulation deals with the law applicable to contractual obligations in civil and
commercial matters connected with two or more States. The parties’ freedom to choose the
applicable law is one of thekey principles of the Regulation. In the absence of a choice of
law, the applicable law rules take into account the particular type of contract. The applicable
law is typically the law of the State in which the party who is required to effect the contract’s
“characteristic performance” has his or her habitual residence, except where the contract is
more closely connected to another State or it is not possible to identify the contract’s
“characteristic performance”. The Rome II Regulation deals with the choice of law rules on
the law applicable to non contractual obligations.

PIL RULES IN IP INSTRUMENTS

1. PIL rules in IP treaties The international IP system aims to facilitate IP protection across
borders, by combining multiple approaches. These include affirmation of the territorial nature
of IP rights, harmonization of national IP laws through the establishment of minimum
standards, and granting equal treatment to IP owners, whether they be national or foreign.
The territoriality of IP rights is underscored in international IP treaties through the principle
of independence of rights. The Paris Convention for the Protection of Industrial Property
provides for the mutual independence of patents and trademarks, establishing that patents
obtained for the same invention in multiple countries are independent of each other (Article
4bis) and that trademarks registered in a State are independent of those registered in other
States (Article 6). In the case of copyright, the Berne Convention for the Protection of

11
Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on
jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast), OJ L
351/1, 20/12/2012, p. 1-32.

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Literary and Artistic Works equally sets out the independence of copyright both in terms of
enjoyment and exercise, distinct from the existence of copyright protection for the same work
in other States including the State of origin of the work (Article 5(2)). IP rights, once granted,
remain independent and unaffected by the fate of registrations of the same subject matter in
other States and operate within the territorial boundaries of local protection.

DETAILED CASE ANALYSIS

PLAYBOY ENTERS. INC. V. CHUCKLEBERRY PUBLISHING, INC.,12

FACTS OF THE CASE: In 1981, plaintiff obtained a permanent

injunction enjoining defendant, which published an Italian-based “male sophisticate”
magazine under the name PLAYMEN, from using the mark PLAYMEN “as part of
any trademark, service mark, brand name, trade name or other business or commercial
designation in connection with the sale, offering sale, or distributing in the United States,
importing into or exporting from the United States, English language publications and related
products.” Plaintiff was unsuccessful, however, in its attempts to enjoin defendant’s use of
PLAYMEN in Italy.

In January 1996, plaintiff discovered that defendant operated an Italian-based Internet site
(located at “playmen.it”) advertising its PLAYMEN magazine and providing sexually
explicit images and associated merchandise. Internet users, regardless of their physical
location, could access electronic versions of the PLAYMEN magazine by contacting
defendant and obtaining a user name and password. Soon thereafter plaintiff charged
defendant with contempt of the 1981 injunction.

ISSUES OF THE CASE: “Whether the Defendant distributed or sold the PLAYMEN
magazine in the United States when it established an Internet site containing pictorial images
under the PLAYMEN name.”?

REASONING: Initially, defendant argued that the fifteen-year-old injunction was not “clear
and unambiguous” because when drafted it did not contemplate uses on the Internet. The
court noted that, although this type of online use was unlikely to be foreseen in 1981,
the injunction could still apply to mediums and technologies not explicitly mentioned so as to
uphold the purpose of the injunction to restrict defendant’s ability to distribute its
PLAYMEN product in the United States.

12
939 F. Supp. 1032 (S.D.N.Y. 1996)

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Next, considering whether defendant actually violated the injunction, the court made three
findings. First, defendant’s use of PLAYMEN constituted a “trade name or business or
commercial designation” because the website’s URL was “www.playmen.it” and the word
PLAYMEN was prominently displayed on the home page. Second, as to whether
the website was an “English language publication or related product,” the court held
that uploading pictures onto an Internet site could perhaps constitute a “publication,” but in
any event was definitely a “related product” covered by the injunction. Third, the court
analyzed whether defendant’s use constituted a “distribution” and, if so, whether this
distribution took place in the United States. Defendant argued that it was
merely posting images on a computer server in Italy.

CONCLUSION: Accordingly, defendant’s actions violated the 1981 injunction, even though
its website was based in Italy. Declaring that “cyberspace is not a ‘safe haven’ from which
[defendant] may flout the Court’s injunction,” the court ordered defendant to: (1) either shut
down its site completely or refrain from accepting any new subscriptions from U.S.
customers; (2) cancel accounts of all U.S. customers and refund the unused portion of their
subscriptions; (3) remit to plaintiff all gross profits received from U.S. customers; (4) indicate
on its website that U.S. customers will be denied subscriptions; and (5) reimburse plaintiff its
costs and attorney’s fees incurred in this contempt action.

NTP, INC. V. RESEARCH IN MOTION, LTD.13

FACTS OF THE CASE : NTP, Inc. (NTP) (plaintiff) owned patents disclosing a system and
method for integrating email systems with wireless communication networks, enabling users
to receive email on handheld mobile devices. NTP sued Research in Motion, Ltd. (RIM)
(defendant), claiming RIM’s BlackBerry system infringed the patent’s system and method
claims. RIM’s BlackBerry system allowed mobile users to send and receive emails using a
handheld device. In each available BlackBerry solution, emails were copied and routed to the
BlackBerry “Relay,” located in Canada. The messages were then delivered to the user’s
mobile device. RIM moved for summary judgment, contending the geographic requirements
for infringement under 35 U.S.C. § 271(a) were not met because the BlackBerry Relay
component of the system was located outside of the United States in Canada. The district
court disagreed and instructed the jury that the Relay’s location in Canada did not preclude
infringement of the patent. The jury found RIM liable for infringement. RIM appealed.

13
US District Court for the Eastern District of Virginia - 261 F. Supp. 2d 423 (E.D. Va. 2002)

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ISSUES: whether certain documents found in a Norwegian library should be considered
"publications" and would therefore anticipate the claims of the patents.?

REASONING: First, the court remanded for additional determinations in light of the
corrected construction for “originating processor.” Second, RIM argued “that because the
BlackBerry Relay is located in Canada, as a matter of law RIM cannot be held liable for
infringement under 35 U.S.C. § 271.”The territorial reach of a patent right is limited, so that
section 271(a) is only actionable against patent infringement that occurs within the United
States. . . . This case presents an added degree of complexity, however, in that: (1) the
“patented invention” is not one single device, but rather a system comprising multiple distinct
components or a method with multiple distinct steps; and (2) the nature of those components
permits their function and use to be separated from their physical location. . . . RIM’s Relay
operates to translate and route email messages from the processors in the user’s email system
to the partner wireless networks in the BlackBerry system. NTP alleges that the Relay
component satisfies the “interface” of the “interface switch” limitation

CONCLUSION: The Court recognizes the rights of a patent holder whose patents have been
infringed. Indeed, the essence of patent protection is that a party legally deemed to have infringed
one or more patents shall be liable to the patent holder for damages. when two domestic users
communicate via their BlackBerry devices, their use of the BlackBerry system occurs “within the
United States,” regardless of whether the messages exchanged between them may be transmitted
outside of the United States at some point along their wireless journey. Even though one of the
accused components in RIM’s BlackBerry system may not be physically located in the United States,
it is beyond dispute that the location of the beneficial use and function of the whole operable
system assembly is the United States.

BOOSEY & HAWKES MUSIC PUBLISHER, LTD. V. THE WALT DISNEY

COMPANY14

FACTS OF THE CASE: In 1939, The Walt Disney Company (Disney) (defendant) executed a
copyright licensing agreement (the agreement) with Igor Stravinsky to use the composition
for Stravinsky’s song The Right of Spring (the song) in Disney’s new animated

14United States Court of Appeals for the Second Circuit

145 F.3d 481 (1998)

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film, Fantasia. The agreement stated that Disney could record the song, in any manner or
form, in one motion picture. The agreement reserved any non-specified rights to
Stravinsky. Fantasia was initially released in movie theaters, but as technology progressed, it
was eventually played on television and released on home-video formats, including VHS and
laser disc. In 1993, Boosey & Hawkes Music Publisher, Ltd. (Boosey) (plaintiff) was the
assignee for Stravinsky’s copyright interests in the song. Boosey sued Disney for copyright
infringement. Boosey alleged that Disney’s use of the song in home-video formats
of Fantasia exceeded the scope of the agreement, and infringed Boosey’s copyright interest in
the song. The district court granted partial summary judgment in favor of Boosey, finding
that Disney’s use of the song in home-video versions of Fantasia was not authorized by the
license. Disney appealed the decision.

ISSUES: Whether the motion picture license covers video format.?

REASONING: When looking at technologies in the future, should you prefer to interpret it
in the favor of the grantor, and say that if you want to reserve anything, you make it precisely
clear as to what the other guy gets, or do you put the burden over on the grantee, licensee,
that if they want anything further they msut expressly state it.

CONCLUSION: The court held that

(a) music licensing agreement authorized distribution of the motion picture in videoformat;
(b) evidence raised genuine issue of material fact as to whether licensee knew that agreement
permitted use of composition only in motion picture theaters licensed by performing rights
licensing organization, precluding summary judgment;
(c) doctrine of forum non conveniens did not warrant dismissal of foreign copyright
infringement claims;
(d) fact issues precluded summary judgement on breach of contract claims; and
(e) licensee did not violate Lanham Act's false advertising provision.
Affirmed in part and reversed in part.

In two recent cases, the ECJ has held that cases concerning the validity and infringement of
European patents should be brought before national courts. GAT v LuK and Roche v
Primus challenged the basis for cross- border jurisdiction under the Brussels Convention

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 ROCHE NEDERLAND BV AND OTHERS V FREDERICK PRIMUS

AND MILTON GOLDENBERG15

FACTS OF THE CASE: Drs. Primus and Goldenberg own a European patent. In 1997 they
brought proceedings before the Dutch courts against Roche Nederland BV, a company
established in the Netherlands, and eight other companies in the Roche group established in
the US, UK, France, Sweden, Switzerland and Germany, Austria and Belgium, for
infringement of their European patent in various other countries. The alleged infringement
related to the placing on the market of products in each company’s territory. The Roche
group companies established outside the Netherlands contested the jurisdiction of the
Netherlands courts.

ISSUES: Drs. Primus and Goldenberg own a European patent. In 1997 they brought
proceedings before the Dutch courts against Roche Nederland BV, a company established in
the Netherlands, and eight other companies in the Roche group established in the US, UK,
France, Sweden, Switzerland and Germany, Austria and Belgium, for infringement of their
European patent in various other countries. The alleged infringement related to the placing on
the market of products in each company’s territory. The Roche group companies established
outside the Netherlands contested the jurisdiction of the Netherlands courts.

REASONING: Article 6(1) of the Convention provides that where a defendant, domiciled in
a Contracting State, is one of a number of defendants, he may be sued in the courts in a
jurisdiction where any one of them is domiciled. For Article 6(1) of the Convention to apply
there must be a connection between the various actions brought by the plaintiff against the
different defendants which makes it expedient to try the actions together in order to avoid the
“risk of irreconcilable judgements” resulting from separate proceedings. The ECJ held that
there would be no risk of irreconcilable decisions being given in European patent
infringement cases; that even where the same facts apply, the legal situation would not be the
same as European patents are subject to national laws, and, realistically, the invalidity of the
patent will be claimed bringing the case within GAT v LuK above. Therefore, Article 6(1) of

15
ROCHE NEDERLAND BV AND OTHERS V FREDERICK PRIMUS AND MILTON GOLDENBERG 126
F.3d 365, 371-72

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the Convention does not apply to cases concerned with infringement of European patents and
these actions must be brought in each Contracting State where the infringement occurs.

CONCLUSION: The result of these two cases is that patent validity and infringement cases
in Europe must be initiated country-by-country, a result which highlights the need for a single
central patent enforcement system for European patents. Following these judgements support
is growing among practitioners, the judiciary and the European Commission for the
implementation of the European Patent Litigation Agreement that would create a single
unified judicial system for infringement and validity cases which would issue decisions
binding across the contracting states.

A.K.A GAT V LUK16

FACTS OF THE CASE: GAT and LuK are both German companies competing in the field
of motor vehicle technology. GAT offered to supply a German motor vehicle manufacturer
with mechanical damper springs. LuK alleged, before the German courts, that the springs
infringed two of its French patents. The Dusseldorf Higher Regional Court referred the
interpretation of Act 16(4) of the Convention to the ECJ.

ISSUES: whether the rule in Article 16(4) applies in all proceedings concerning the
registration or validity of a patent, irrespective of whether the question is raised by way of an
action or a plea in objection, or whether it applies solely to cases where the question of
validity is raised by way of an action.?

REASONING: Article 16(4) of the Brussels Convention provides that the exclusive
jurisdiction in proceedings concerning the registration or validity of patents rests with the
courts of the Contracting State in which the patent was registered, regardless of domicile. In
reaching the decision, the ECJ reasoned that Article 16 is justified by the fact that the courts
of the Contracting States in which the patent is registered are best placed to adjudicate upon
cases concerning the validity of the patent, that the issue of patents necessitates the
involvement of national administrative authorities, and that Article 16 is exclusive and
mandatory in nature.

CONCLUSION: Therefore, the ECJ concluded that the rule of exclusive jurisdiction laid
down in Article 16(4) concerns all proceedings relating to the registration or validity of a
16
40 VA. J. INTL L. 331

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patent, irrespective of whether the issue is raised by way of an action or a plea in objection.
This means the German courts did not have jurisdiction to determine the validity of the
French patents.

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