University Of Petroleum And Energy Studies, Dehradun

Conflict of Laws in
IPR
Private International Law

RIA TANDON
9/15/2014
 Conflict of Laws in IPR

UNIVERSITY OF PETROLEUM & ENERGY STUDIES

COLLEGE OF LEGAL STUDIES

BA.,LLB.(HONS). ENERGY LAWS

SEMESTER

ACADEMIC YEAR: 2014-15 SESSION: JULY-DECEMBER

PROJECT SUBMISSION: CONFLICT OF LAWS IN IPR
Private International Law
(LLBL 433)
Under the S’vision of: Ms. Anuradha Nayak

NAME: _____RIA TANDON_________________

SAP NO: ____500017689___________________

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

 Conflict of Laws in IPR

Acknowledgement

I would like to extend my gratitude to my teacher Ma’am Anuradha Nayak for giving such an
appropriate topic for Private International Law which helped me understand the aspect of
various laws which are present in different countries related to Intellectual Property Rights.
How the international scenario with respect to the infringement which takes place in different
countries are governed when taking into consideration the conflict of laws.
 Conflict of Laws in IPR

Index

Serial Number Subject

Abstract
1. Chapter 1: Why Intellectual Property Right?
1.1 Introduction: General Overview
1.2 Genre of Law Dealing With Intellectual Property
a) Private International Law

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

2.1 Territoriality
a) Introduction to Principle of Territoriality
b)Absence of Territoriality Principle:
c)Territoriality in today’s World and the Conflict of Laws
2.2 Extraterritoriality Rule/Principle
a) Introduction
b) Understanding the European Scenario

3. Chapter 3 Jurisdictional Roles

3.1 General Jurisdiction Framework
3.2 Types of Jurisdiction
3.3 Choices of law

4. Chapter 4 :
4.1 Conclusion
4.2 Recommendations
 Conflict of Laws in IPR

Conflict of Laws in IPR

ABSTRACT

Intellectual property is intangible in nature and is a human being creative brainchild .The legal
rights which protect it is IPR law. The topic deals with the conflict of laws in the ambit of
municipal legality and International.

The areas of concern with respect to Conflict of Laws in IPR deals with in the application law
side would be first detection of law and its relation with territoriality, ownership, infringement
and Commercial Dealing : In Article 8 of Rome II states that no choice of law persists and only
where the lex loci protectionist makes it universal law but choice of law factor is considered to
be protected under Contract law and Competition law which provides for the checks and balance
dimension. Secondly Personal Jurisdiction wherein which applies only to a particular person that
is the defendant this will be dealt especially with reference to Internet scenario as the effect of
this felt is not in the country of residence / domicile so here Minimum contact theory can be
understood and the aspect of forum non conveniens. Special Jurisdiction cases; This point
revolves around the aspect of whether the violation of foreign IPR laws can be tried in the
domestic courts but with the help of the Potter v. BHP case the aspect of that Foreign IPR and
foreign land there exist a prohibition.

The scheme of research for this paper is by analysis with respect to the Argumentative Scheme
with respect to the ideas and the doctrines and the Laws which are persisting.

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

Conflict of Laws
 Conflict of Laws in IPR

CHAPTER 1: Why Intellectual Property Right?

1.2 Introduction: General Overview

Understanding the word Intellectual Property and rights over it has been defined under the
Principles of Private International Law by ALI on IPR in Article 1011 as specially as the
intangible property which has been derived from the creative activities of the Human brain
including its invention, devices, industrial designs, works, trademarks, trade secrets and other
disclosed technical as well as business information.

The state makes law so that the creations are protected and there is a monopoly from the side of
the creator for certain time period. So as to exclude 2 others from encroaching upon the right of
the real creator or the owner . These are the fundamentals of the Intellectual Property and the
laws related to it.

When we consider the aspect of IPR then we see that it is not confined to national boundaries
since with the coming to the technology the imaginary demarcation of the boundaries is
subliming. Courts are now increasingly facing the conflict of laws in the field of Intellectual
property . Hence this problem can be solved by adopting the international regimes with respect to
the municipal laws3 .It is seen that the countries whose market are more vulnerable to these
attacks provide for best solution as to come to a consensual relief. There are number of problems
which at times can be solved on the case to case 4basis.

1
http://ec.europa.eu/justice/news/consulting_public/0002/contributions/civil_society_ngo_academics_ot
rs/european_max_planck_group_clip_en.pdf .

2
http://blog.ipleaders.in/important-issues-in-ipr-competition-law/.
3
See Laurence R Helfer and Graeme B Dinwoodie, Designing Non –National System: The case of the Uniform
Domain Name Dispute Resolution Policy, William and Mary Law Review, 43,2001, 141,
http://papers.ssrn.com/sol3/papers.cfm. Paul Edwards Geller, An International Patent Utopia? European Intellectual
Property Review, 2002, 515, http://www.rcf.,usc.edu/~pgeller/publications.html.

4
See Jan J Brinkhof, Internationalization of Patent Law, Trans border Injunctions and Summary Proceedings
in the Netherland, CEIPI Texts on Intellectual Property,1995, 1 ar 12-13(pointing out that Dutch courts may
decline to impose remedies not known to the foreign legal system of another protecting country).
 Conflict of Laws in IPR

1.2 Genre of Law Dealing With Intellectual Property

a) Private International Law
The main reason for understanding the concept of Intellectual Property Right with respect
to Private International is important because the issue no more confined to within the
ambit of the country but has become global in nature. It involves the element 5 which is
foreign in nature. The dispute with respect to the exploitation of the work takes place.

Like in United States there have been many international disputes with respect to the
choice of law and also scholarly debate with respect to theit wherein the dispute reached
beyond the borders of US6. Yet it is seen that most of the courts try these cases within the
ambit of their country. It is noted that if there is any event with respect to the domestic
dispute which is multistate has lead to the prevailing of the attention towards the point of
conflict which are there are in United States. It is seen that China is the main reason
behind the USA having its guard all up as it was noted in the Senate statement’s , ITC
report that China’s IP rights infringement has cost the American economy a whooping
$487 billion in 2009 alone.
Problems which have been faced with respect to Private International laws are many but
it was stated by a leading commentator 8 with respect to it that there is a need for the
construction of Private International Law with respect to the Intellectual Property. The
other point with respect to Private International Law is its uncertainty since it is practical
in nature; hence it makes sure that justice is provided, with respect to the conflict
involving foreign element by choosing the forum for the best interest of justice.

5
Edward I Skyes and Michael Cpryles, Australian Private International Law 1, 3 rd ed. 1991 .
6
Refer to , e.g., Babcock v. Jackson, 12 N .Y.2d 473 (1963) (ado pting full-blown policybased analysis in the course
of deciding a conflict between the laws of New York and Ontario); Neumeier v. Kuehner, 31 N.Y.2d 121 (1972)
(endorsing the need to articulate certain general rules in guest statute cases in the course of deciding a conflict
between the law of New York and Ontario); Hurtado v. Superior Court, 11 Cal.3d 574 (1974) (conflict between the
laws of Mexico and California); Auten v. Auten, 308 N.Y. 155 (1954) (moving away from the traditional approach
to choice of law in deciding a conflict between the laws of New York and England); O’Connor v. O’Connor, 201
Conn. 632 (1986) (abandoning the lex loci delicti in course of deciding a conflict between the laws of Connecticut
and Quebec); Milkovich v. Saari, 295 Minn. 155 (1973) (a lead ing case on the use of Professor Leflar’s choice-
influencing considerations involving a conflict between the laws of Minnesota and Ontario).
7
http://www.legalservicesindia.com/article/print.php?art_id=1256.
8
Carter, PB (1990) 6 BYIL 400, 402.
 Conflict of Laws in IPR

When we try to understand the problems of private international law in context of IPR , then the
principle of territoriality9 comes into play. Like for say in Article 6 10 of the Paris Convention it
states that territoriality limited and granted independent of each other with respect to the
principles. It is seen from the United States Copyright Act that rights are granted within the
ambit of the nation’s border. It was found in the case of Plastus Kreativ A.B. v Minnesota
Mining and Manufacturing Co. the essence given below that

“Although patent actions appear on their face to be disputes between two parties, in reality
they also concern the public. A finding of infringement is a finding that a monopoly
granted by the state is to be enforced. The result is invariably that the public have to pay
higher prices than if the monopoly did not exist. If that be the proper result, then that
result should, I believe, come about from a decision of a court situated in the state where
the public have to pay the higher prices11.”

The importance of the private international law is mitigated by the public international law.
This can be seen, from the Court of Appeal of the ninth circuit court which used the public
international lawmaking used by the United States Government which shows the
reluctance12 of its involvement with respect to intellectual property litigation. The above
was noted with respect to the case of Subafilms, Ltd. v. MGM-Pathe Communications Co.
In this case there was an unauthorized distribution abroad of the Beatle’s Yellow
Submarine .This lead to the extraterritorial13 application of the municipal law with respect
to the protection of the work abroad. However after this many courts had refused to follow
the Ninth Circuit’s decision.

It is however seen that the International standards are basically the minimum standard ;
different states who have entered into the international agreements have different level
9
See Graeme W Austin, Social Policy Choices And Choice Of Law For Copyright In Cyberspace, __Oregon
Law Rev. __(2001) .
10
Automotive Network Exchange Trade Mark (1998) RPC 885, 887 (UK). For discussion in the context of
European Community Trade Marks, see Gordon Humphreys, Territoriality in Community Trade Mark
Matters: The British Problem [2000] EIPR 405. It is noteworthy that the Madrid Agreement Concerning the
International Registration of Marks (1891), the subsequent Protocol of 1989 and the Paris Convention on
Industrial Property of 1886 do not determine issues of jurisdiction. See further, Richard Garnett, The
Internet and Trademark Rights: Some Problems of Jurisdiction 39 Intellectual Property Forum 18 (1999).
11
[1995] RPC 438, 447.
12
Refer to Subafilms, Ltd. v. MGM-Pathe Comms. Co., 24 F.3d 1088, 1095-98 (9th Cir.1994).
13
K. Yu, Peter, Conflict of Laws Issues in International Copyright Cases.
 Conflict of Laws in IPR

with respect to the protection14. Hence notwithstanding anything with respect to the
international treaties provision being in consensus with the minimum standards, these
states 15differ with respect to their national law persists. There is much latitude provided to
these member states with respect to make changes in their municipal laws so as to suit their
social and economic priorities. This idea is also complementing to the principle of
territoriality16 based on which the transnational border protection takes place. The only
relief which the parties involved in intellectual property dispute is that the authors and
producer’s rights are protected in other countries in same way as that to the local authors
and the producers17.

14
15
Refer to TRIPS Agreement, supra note 27, art. 1(1). The harmonization efforts of the EU seek to effect more
tightly-controlled commonality, sometimes imposing ceilings on the degree of variation that member states
may permit. See Dinwoodie, supra note 19, at 497 (discussing copyright directives); DINWOODIE ET AL.,
supra note 20, at 222 (discussing the limited room for variation permitted by the trademark harmonization
directive).
16
Refer to See Carter, supra note 3 (attributing the lack of attention to conflicts matters in intellectual property
law in part to the “territorial approach” of private international lawyers but noting that the situation had
barely improved in the era of policy-based conflicts methodologies); see also Vanity Fair Mills v. T. Eaton &
Co., 234 F.2d 633, 640-41 (2d Cir. 1956) (linking national treatment principle and territoriality).
17
Refer to TRIPS Agreement, supra note 27, art. 3.
 Conflict of Laws in IPR

CHAPTER-2 Principles with respect to Conflict of Laws

2.1 Territoriality

a) Introduction to Principle of Territoriality

Each community has its own laws .It is but natural for conflict to arise between the
communities . Territoriality generally means the approach which is from the national perspective
with respect to the international protection which is granted independently as well as with respect
to territory by territory as well as the objects which fall within its intellectual property law. It is
important to note that these were not exactly territorial when we try to understand the territorial
aspect, they became only so with the coming of the nation state 18 concept. In the concept of the
nation state at that time the concept of latitude and longitude 19was being developed during that
time. It was within this geographical are wherein the territorial border concept was drawn. It was
Von Savigny who in the 19 th century came up with concept that legal relations had their focal
point 20within the stated concept of territory. It was claim that like for say that the owners claim
or rights over his land was considered to be subject to the law which was in effect to that of situs
of the land21. Von Savigny had set up three methods with respect to choosing of the same laws
that governed the same legal claims and it did not matter where the suit was brought 22. Firstly to
have a connecting factor with respect to the legal claim 23 which was raised, secondly appropriate
qualifying claims and thirdly with respect to application of that state where there is a point of
attachment. His views were with respect to the aspect that legal relation had developed but it had
not affected with respect to the mentioned geographic space24.

With respect to concepts like torts and that of intellectual property the analysis is not simple. The
Paris and Berne Convention imposed the principle of national which is supported by the aspect
of independence of the rights25. This in another words means that the foreign claimants are not
18
Lipstein, Kurt, Principles of the Conflict of laws, National and International, The Hague, Nijhoff.
19
Bromley, Nicholas K, Law, Space , and the Geographies of Power, New York, Guilford Press, 1994, ch 3.
20
Savigny, Freidrich Carl Von, A treatise on the Conflict of Laws .
21
See ibid, 174-181
22
See ibid, 70 (Art 348).
23
See ibid, 221-233 passim.
24
See ibid, 56-57.
25
Sources of International Uniform Law, Leiden, Sijthoff, 1973, vol 3, 129; Berne Convention for the
Protection of Literary and Artistic Works, 9 Sept 1886, as last revised at Paris, 24 July 1971, Art 5(1), ibid,
21; also Agreement on Trade-Related Aspects of Intellectual Property Rights, including Trade in Counterfeit
 Conflict of Laws in IPR

discriminated when it comes to the minimum rights. This idea is somewhat similar to that of the
torts wherein the law of that state applies where the infringing26 act took place.

b)Absence of Territoriality Principle:

The conflict of laws which arises with respect to the different states or communities having
different laws , the communities which are smaller in nature tend to become a bigger aspect with
respect to communities27 which are larger nature. Courts in such cases have no way out as such
so they have two option either they can adopt the conflicting laws as to be unchanging and not
dynamic in nature or that they can adopt the aspect of historical dynamism of the history which is
present and brings the communities together.
There are a number of laws. Supranational Laws as that of the European Union tries to bring in
autonomous laws with respect to the larger community as like that of EU while the Public
international laws recognizes the smaller community that is basically the nation state concept
with respect to overriding of the laws which takes place as the states are bounded by the
language28 of the treaty.
Private international Law which follows such of the laws being emerged in the communities , is
subjected to fall within the the ambit of the treaty provision as it is stated above that is the treaty
language especially with respect to the public policy considerations which are persisting, that is
ordre public international29. After the conflict which is persisting is referred, only then seeking
the choice of law by the court is possible then the court may regard these principles with respect
to ordre public as the ground for rejecting any of these to be objectionable 30 in nature. It is the
duty of the court to make sure that the goals of the policy with respect to the international rules or
laws as that of intellectual property is kept in mind as soon as the localization of the

Goods, 15 April 1994, GATT Doc MTN/FA II-A1C, Art 3, reprinted in International Review of Industrial
Property and Copyright Law (IIC), 25, 1994, 209.
26
Refer to Eugen Ulmer, Intellectual Property Rights and the Conflict of Laws, Deventer, Kluwer, 1978, 11-
14; also Paul Edward Geller, Conflicts of Laws in Copyright Cases: Infringement and Ownership Issues,
Journal of Copyright Society USA, 51, 2004, 315, 325-355, available at
http://www-rcf.usc.edu/~pgeller/publications.html.
27
Refer to Kurt Lipstein, Principles of the Conflict of Laws, National and International, The Hague, Nijhoff,
1981, 3-12.
28
Reuter, Paul,, Introduction to the Law of Treaties, London, Kegan Paul, 2d English ed, 1995, 32-33; also
Brownlie, Ian, Principles of Public International Law, Oxford, Clarendon Press, 4th ed, 1990.
29
Wolff, Martin,Private International Law, London, Oxford Univ Press, 2d ed, 1950, 153-166 (favouring lex
causae), with Ernst Rabel, The Conflict of Laws: A Comparative Study, Ann Arbor, University of Michigan
Press, 2d ed, 1958, vol 1, 47-56
30
Refer to Kegel, note 11 , 324-336; Loussouarn and Bourel, , 392-414.
 Conflict of Laws in IPR

infringement31 takes place. Provisions, like that of TRIPS helps in bridging the gap with respect
to the differences which are persisting in the national 32 laws of various countries. TRIPS
agreement has provided with respect to provisions like seizure of the infringing copies and to
cease the goods from reaching the trans border markets with respect to the geographical space33.
The things which needs to be kept in mind is firstly with respect to the inward bound and the
outward bound with respect to any country but the focus here will be on the home country 34 or
the country of the forum. In the aspect of the inbound aspect the whole aspect of authorization
and organizing of the infringement takes place and the fabrication to that of the copies infringed
but these activities entered into the markets of the home country. While on the other hand out
bound recommences from the home country but the exploitation happens in the markets abroad.
There are a number of instances with respect to inbound taking place which has been noted by
the US and European courts , the jurisdiction over the parties who have a settlement abroad and
are involved in the inbound infringing activities which poses a great threat to the home market
leads to , then it is considered to be localized 35 and comes under the country’s law. To stop the
problems it should be kept in mind to localize the activities involving the outward – transaction
which takes place in the home country. Sometimes the cases fall outside as to what has been
mentioned above , under these cases there are copies which are considered to be illicit under the
law of the home country, when passes through another country is considered to be legitimate.
While there can be some restrictions with respect to the home country 36 under its laws. In the
case of Playboy which had an Italian magazine with the name Playmen, which had its
infringement act done in the US 37. In the year of 1990 the Italian publishers had also set up a
website of the same magazine in Italy . This website was registered with the same title in Italy.
The District Court in New York had ordered the publisher of the Italian magazine to cease the

31
Geller, Conflicts of Laws in Copyright Cases .
32
Refer to TRIPS Agreement, note 8 above, Preamble.
33
Refer to Art 15-60 of TRIPS Agreement, also Art 9of Paris Convention, and Art 16 of Berne Convention.
34
Refer to Max Planck Institute, Stellungnahme des Max-Plank-Instituts für ausländisches und internationales
Patent and GRUR Int, 1985, 104 at 105-107 .
35
Refer to Spindelfabrik Suessen-Scurr v. Schubert & Salzer, 903 F 2d 1568,1578 (Fed Cir 1990) (US); BBC
Enterprises Ltd v. Hi Tech Xtravision Lt (1992( 9 R P C 167 at 170-183 (Chancery Division ).
36
Refer to Grammophone Co of India Ltd v Pandey, AIR 1984 SC 667, (1985) Fleet St Rep 136 , Dalal,
Praveen, The Long Arm Jurisdiction of Courts Regarding Copyright Law in India, Journal of
Intellectual Property Rights, 9, 2004, 557 564-565.

37
Playboy Enterprises Inc v Chuckleberry Publ Inc, 687 F 2d 563 (2d Cir 19820 .
 Conflict of Laws in IPR

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

In this case it was seen that the court talked with reference to the extraterritoriality principle as
that of the domestic trademark law. This case is a distinguished one as the court noted, in this
case that Playboy was successful with respect to its win against Playmen in the countries of
Europe except Italy39. The website has infringed the foreign marks, this infringing transaction
was inward-bound in nature even though the infringement was not pleaded outside the ambit of
US. The general statement which is made in cases like these is to apply the laws of all the states
where the action of infringement takes place so as to come up laws of the all the possible
countries40. This argument with respect to the above solution is complex in nature as the problem
of the posing the policy of one country over to another is a problem. Generally when such
problem arises then the same like how it was done in the case of Playmen, then wide-ranging
solution of injunction was adopted which is common for all with respect to the threat of
infringement41.
In the cases of IPR generally the laws of the country whose market it is . The monetary award
which is provided in the case as that of infringement apply the law of that country whose market
it is . When it comes to the national courts, it is seen that in the monetary awards involving cross
border issues have not reached consistence approach and the domestic laws are only taken into
consideration. In the case of Los Angeles News Service v. Reuters Television International it was
seen that 1992 Log Angeles riots which took place was videoed and this video was copies in
New York and then was transferred across the Atlantic where it was exploited in the Europe and
the law of the US was applied here with respect to the damage which happened overseas42.
In the cases with respect to the infringement both in the US and Canada we can see that , the
above mentioned precedents can make it possible with respect to the grant of the award which
can be overlapping in nature .

The court can be allowed to gage the monetary liability with respect to the other country 43. In the

38
Ibid, 939 F Supp 1032 (S D N Y 1996)
39
Ibid, 1034 .
40
Ibid, 1034.
41
See François Dessemontet, Internet, le droit d'auteur et le droit international privé, Revue suisse de
jurisprudence, 1996, 285and refer to Stellungnahme des Max-Plank-Instituts, note 35 above, 105-107 .
42
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=416263.
43
Compare National Basketball Assoc v Motorola, Inc, 105 F 3d 841, 848-853 (2d Cir 1997) (US),
http://eprints.law.duke.edu/archive/00000455/,http://papers.ssrn.com/sol3/papers.cfm?abstract_id=416263.
 Conflict of Laws in IPR

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

billion dollar award which was to be given as an award with respect to exploitation which took
place partially in the US and the other outside, so here applying of the home law was denied with
respect to providing the relief abroad. Yet another provision a French Court had refused to
entertain the argument with respect to the application of the French law , just because the person
was stationed at France. So it was decide that the laws as like of countries 45 such as Britain,
Sweden should be applied with respect to the place where the damage took place. Looking at
such precedents the courts in future will be likely to apply the laws with respect to the place
where the damage46 took place.
The analysis above has more of localization with respect to the place where the infringement
takes place or the targeted country market. This law is more focused more to that of country
whose market has been targeted and not who’s where the transaction to that of foreign market
takes place. The law with respect to any infringement attack which happens via the internet
sources it leads to the injunction provision of the law which is common to all but with respect to
the monetary award the country where the infringement47 takes place is considered.
Lex Fori helps in determining the procedure involving the in junction and also the monetary
award aspect.

When the aspect of the suit with respect to infringement in the countries is considered, the
procedure which follows in another court of the different countries 48 will be different. The court
also differentiates with respect to the digital content involving different countries and their
protection in one but not in another. It is though not sure that the computing routing content with
respect to the global network can be reprogrammed without any problems. There are other
problems which crop up like since the computerized system is brought in so as to manage or with

44
Subafilms, Ltd v MGM-Pathe Communications Co, 24 F 3d 1088, 1094-1099 (9th Cir 1994) (en banc), cert
denied, 513 US 1001 (1994).
45
SISRO c Sté Ampersand Software, Cour d'appel, 4e ch, Paris, 8 Feb 2002, Expertises 2002, 230, affirmed
Cass civ I, 5 March 2002, JCP 2002 II, 10082, 994, excerpts translated in IIC, 34, 2003, 701.
46
Geller, Conflicts of Laws in Copyright Cases .
47
Geller, Conflicts of Laws in Copyright Cases
48
S Chisum, Donald, Normative and Empirical Territoriality in Intellectual Property: Lessons from
Patent Law, Virginia Journal of International Law, 37, 1997, 603, 614; also Dieter Stauder, Einheitliche
Anknüpfung der Verletzungssankionen im Gemeinschaftspatentüberein-kommen , GRUR Int, 1983, 586.
 Conflict of Laws in IPR

that of the policing the digital content49.

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

 Conflict of Laws and the Rome Regulation provisions:

With respect to the territoriality aspect of the intellectual property the analysis with
respect to the development in the private international law in context of the European Union can
be considered by understanding the Rome second 50 regulation. This further can be understood
under the head of rigid territoriality aspect and the private international law with respect to the
European origin.
o Rigid approach to that of Rome II – Rome II is something which provides for specific
provision with respect to intellectual property, unlike that of Rome I Regulation51, this is
provided under Article 8 of the IPR.
“Article 852 – Infringement of intellectual property rights
1. The law applicable to a non-contractual obligation arising from an infringement of an
intellectual property right shall be the law of the country for which protection is claimed.
2. In the case of a non-contractual obligation arising from an infringement of a unitary
Community intellectual property right, the law applicable shall, for any question that is not
governed by the relevant Community instrument, be the law of the country in which the act of
infringement was committed.
3. The law applicable under this Article may not be derogated from by an agreement pursuant to
Article 14.”
The above provision which has been defined here is strictly confined to the territorial approach
of the infringement of the Intellectual property rights 53. The first part of the article is not clear
with respect to the protection which is claimed under a number of the territories, so a number of

49
http://www.wipo.int/eng/meetings/1999/osp/index.htm, also Geller , Duke Journal of Comparative and
International Law.
50
Regulation (EC) 864/2007 of the European Parliament and Council dated on the law applicable to
contractual obligations, supra .
51
Regulation (EC) 593/2008 of the European Parliament and Council on the law applicable to contractual
obligations, JOUE 2008, No. L177 .
52
Refer to Article 8 of IPR in Rome -2Regulation.
53
For an in-depth analysis of Article 8 of the RomeII Regulation, see É. Treppoz “La lex loci protectionis et
l’article 8 du règlement Rome II” D. 2009, p. 1643. Also, see the presentation by Nicolas Bouche, supra.
 Conflict of Laws in IPR

laws are involved. The second part should be read along to that with Article 4.1 54 as to that with
the regulation , although in some of the cases the favor is given to that of the infringement which
occurs in the various territories . Thirdly the Article 14 55 is set aside that has provided with the
choice of law than normally the provisions with respect to the conflict of laws.

These solutions with that of the application with respect to the jurisdiction matters . Where there
is an infringement with respect to the number of countries , the court of the justice has come up
with the interpretation with respect to the resolution 44/2001 56 with the view to put limitation to
that of the reparation with respect to the damage seen in the national territory 57. With respect to
the intellectual property the title of the defendant as that of ( be it trade mark, design or patent),
the country which issues the title is taken into consideration which has an exclusive
jurisdiction58. The private international law which is adopted in European origin is fully in favor
of the territoriality even though there are many problems or diversions with respect to it.

When it comes to Article 8 of the regulation it is considered that it affects the conflict in law but
it is contrary to the idea with respect to the specialized texts which are there within the Union
(Article 27) , Member States (Article 28) and the international convention which are present.
Like for say the provision in Directive (EC) No. 93/83 59 wich talks with reference to the satellite
broadcasting of the authorship works, the country where the broadcast happens has the
application60 of its rules. The solution is a clear violation with respect to that of the Article 8 the
Rome II Regulation, Which talks with respect to the application of a number of laws where the
public receives a the work. The international convention which are present is the one providing
the provisions with respect to the conflict of laws rule 61. Hence the fluctuation provisions62 of the

54
Refer to Article 4.1 of the IPR in Rome-2 Regulation.
55
Refer to Article 14 of the Rome -2 Regulation.
56
Article 5.3 of Regulation (EC) No. 44/2001 of the Council on jurisdiction and the recognition and
enforcement of judgments in civil and commercial matters, JOCE 2001, L12 .
57
ECJ 7 March 1995, C-68/93, Shevill, Rec. I-415. For a recent example: Civ., 1014; Revue Procédures,
comm. 151 obs. By C. Nourissat; Rev. Crit. DIP, 2009.580, note by É. Treppo .
58
The solution results from the famous “GAT” case: ECJ,case C-4/03, Rec. I-6509. On this point, see J.
Raynard, supra.
59
Directive (EC) No. 93/83 of the Council, 27 , JOCE 1993, L248 .
60
Art. 1.2.B of the transposed Directive, in particular Articles L122-2-1 and 2 of the French Intellectual
Property Code.
61
For example, Art. 1(2) of the Paris Convention (supra), Art. 5(2) and 7(8) of the Berne Convention (supra) .
 Conflict of Laws in IPR

interpretation makes it even incompatible to that of the heading with respect to Rome -2
regulation.
When it come to the bypassing with respect to the Article 8 that of the Rome II Regulation when
the conflict if the law provision is being considered: Article 6 63 when talking with to the
competition law and the defining of the conflict of laws part. The provisions which has been
discussed above are somewhat complementary to that rules of the competition law, especially to
that of the unfair competition or the monopoly 64 in the market. This leads to the ignoring of the
traditional rules with respect to IPR and the solutions which are there in the Article 8 of the
Rome II Regulation.
Since Rome regulation is not successful with respect to the inclusion of the conflict which is
present in the international domain. It is only the territorial idea which is in really a binding
force.

In one of the French case to that of the criminal case65 the offences which are committed on
Internet makes the phenomena clear, wherein the courts avoid the aspect of their competency too
easily. This can be understood by the European example, where the provision to that of the Court
of Justice in criminal matters66 can be understood, especially with respect to the ubiquity to that
of the digital networks.

62
For example, for an equivocal interpretation of Art. 5(2) of the Berne Convention, see: Civ, JCP ed. G , II,
No. 10082, note by H. Muir Watt, p. 2998, note by N. Bouche, D. 2003, p. 58, note by M. Josselin-Gall;
Cass. 1st civ. , Rev. crit. DIP 2007, 769 note by T. Azzi; JDI (Clunet) , 163 note by M.-É. Ancel, GP 2008,
No. 128, p. 27 note by É. Treppoz, JCP E , 5, 22, note by H.-J. Lucas, TGI Paris, , SAIF versus Stés Google
France and Google Inc., Comm. Comm. Elec. , Étude 22, Y. Gaubiac.
63
Refer to Article 6 of the Rome -2 Regulation.
64
Dessemontet, François, Conflict of laws for Intellectual Property in Cyber Space.
65
In relation to recent case law, see: J. Passa “Propriété intellectuelle et droit pénal international: incompétence
de la loi et du juge français à l’égard d’actes accomplis à l’étranger – À propos de Cass. Crim. 19 juin 2007”,
JCP E 2007 2504. C. Caron “Compétence du juge pénal pour sanctionner une atteinte à un droit d’auteur sur
site Internet étranger .
66
Sevill judgment, supra.
 Conflict of Laws in IPR

2.2 Extraterritoriality Rule/Principle

a) Introduction
In the current years it has been noticed that the US government with respect to its IPR interest
has increased . There is an urgent need with respect to the protection of the trade agreement in
that of the infringement taking place in the other countries. Attempts are being made with respect
to enforcement of the US IPR laws wherein the rights can be protected abroad67. While when we
see the scenario in European Union68 we can zero down to three basis on which the
extraterritoriality principle basis, Firstly the unitary laws enforcement, secondly on the basis of
enforcement of the rights parallel to the rights in other countries and thirdly rights provided
under the national law with that of the activities in other countries.

b) Understanding the European Scenario

 Unitary law enforcement

The rights which are provided under the EU is considered to be great success with respect
to the IPR rights being harmonized. It is an easier way so as to enforced the rights .
Harmonization of the law with respect to the laws began from the year 1980s 69 in the
field of trademark and the copyright. When we consider patent then the activity was
limited as European Patent Organization is International in nature which was created
outside the ambit of the EU at the time of 1970s so it was the only primary means for the
facilitation70. The only cases with respect to the enforcement of the rights 71 as well as of

67
Refer to Kramer, Larry, Vestiges of Beale: Extraterritorial Application of American Law,1991 Sup. Ct. Rev.
179,181 & n.9.
68
Council Directive 87/54/EEC of 16 December 1986 on the legal protection of topographies of
semiconductor products; First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws
of the Member States relating to trade marks.
69
Council Directive 87/54/EEC on the legal protection of topographies of semiconductor products; First
Council Directive 89/104/EEC to approximate the laws of the Member States relating to trade marks.
.
70
Convention on the Grant of European Patents, 1973, 13 I.L.M. 276.
71
.Case C-316/05, Nokia Corp. v. Joacim Wärdell, Court of Justice of the European Union;
Case C-235/09, DHL Express (France) SAS v. Chronopost SA, Court of Justice of the European Union. Other cases
that have reached the CJEU concern issues of validity of Community trademarks or designs, registration
issues, and issues of implementation by member countries (failure to communicate lists of courts). See
Judgments of the Court of Justice of the European Union, OHIM, available at
http://oami.europa.eu/ows/rw/pages/CTM/caseLaw/judgements ECJ.en.do.
 Conflict of Laws in IPR

the their enforcement in various countries72. It is confirmed that these rights are available
only in some European countries73. Notwithstanding the benefit with respect to the rights
which are present in unitary aspect EU, it has not been successful in removing the
national rights74 of intellectual property which is persisting. In the scenario that of the
unitary instruments it is seen that holders of the right have no other way out but go for the
national rights; the European patent convention does not provide for unitary patent they
rather go for a patent on the country basis 75.

 Rights Parallel to Rights in other Countries

When there is an absence with respect to the rights which are not universal in the EU, the
rights holder have a great problem not just inside the country but also outside. The
provision in such cases followed is that of the national country. When the provision
comes with respect that of outside of EU then it depends whether conflict of laws which
are prevalent in a country allows for the infringement under the head of the substantive
right of the other country or that again it is on the basis of the country to country basis. It
was earlier thought upon that the situation with respect to that of the Brussel I
Regulation76 that scenario will be different for the jurisdiction and its enforcement aspect
in the EU . Since the wordings with respect to exclusive jurisdiction for the registered
rights 77
. There is a difference in opinion with respect to the jurisdiction where the
infringement takes place. At one place the provision is with respect to the action of
invalid in nature should be under exclusive jurisdiction while other state that there should

72
DHL Express (France) SAS v. Chronopost SA, supra note 14.
73
Id., par. 48. The preliminary ruling also addressed issues of enforcement of injunctions
that are effective throughout the European Union. Id.,¶. 52 ff.
74
See, e.g., Statistics on National, International and Community Trade Mark Applications
in 2010, Office for Harmonization in the Internal Market, for trademarks available at
http://oami.europa.eu/ows/rw/resource/documents/OHIM/statistics/ctm_stats2010.pdf (last visited
October 9, 2014); for designs available at http://oami.europa.eu/ows/rw/resource/
documents/OHIM/statistics/rcd_stats2010.pdf (last visited October 9, 2014) .
75
Convention on the Grant of European Patents, 13 I.L.M. 276.
76
Council Regulation on jurisdiction and the recognition and enforcement of judgments in civil and
commercial matters [hereinafter Brussels I Regulation] (EC) .

77
Id. at Art. 22(4).
 Conflict of Laws in IPR

be a nexus between the infringement and the valid rights for the exclusive jurisdiction 78
qualification. The first provision allows the exclusive jurisdiction as to that of
infringement proceedings and the rights in different multiple laws of the municipal ,
while later excluded such scenario.

 Rights provided under the national law with that of the activities in other countries
Since there is no universal rule with respect to the infringement proceedings , hence the
municipal laws is considered to be de facto and not enforceable in nature. This is the
problem which is faced by a number of right holders not just in one country but a number
79
of them.

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

CHAPTER -3 Jurisdictional Roles

3.1 General Jurisdiction Framework

Jurisdiction has two sides to its coin first is with respect to the defendant and the other is with
respect to the adoption of the foreign IPR laws this is referred to as the subject matter. It is
important to understand the jurisdictional provisions as to understand conflict of laws can be best
understood with respect to practical sense in this way.

To understand the general framework when we talk with respect to the Jurisdictional part with
respect to Conflict of laws in the area of IPR can be understood by considering the International
efforts which have taken place. The main regulation is that of Brussel 1 of 2000 80 it deals with
respect to IP matters. It is applicable to the persons who are domiciled in the Member State of
the European Union. The next development was with respect to Lugano Convention of 1988
which has three contracting states like Liechtenstein, Norway and Iceland as that of EFTA and
they do are part of the European single market but are not actually member of EU 81. This
principle is same as that of the Brussels Convention.

With respect to those Defendants who do not fall within the EU or the EEA , but still they are
governed under it. On basis of the above the Dutch82 now has incorporated the principles of that
of the Brussels regulation within its Civil Procedure but it has not fully committed itself to it.

The other provision with respect of recent years is the ILA committee 83 which has organized four
intensive meeting with respect to examining the status quo of the current legal framework with
respect to the protection of IP rights present in the international sphere which can be
comprehended by the lawyers all around84. Proposals have been set up to promote the guidelines
with respect to promote efficient cross border disputes which take place. The meetings which
have taken place so far are Lisbon during 2012, second at Sofia , third at Amsterdam and Fourth

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

at Paris. This committee has drafted such principles that it has covered all the various
provisions85 which are available in various regions.

3.2 Types of Jurisdiction

a) Transnational Jurisdiction

In IPR issues it is seen that the rights are mostly confined to that of the national rights and has
not claim with respect to a supranational 86 IPR this is where the conflict of interest as well as the
laws arise. This is a great problem since the person has to deal with the infringement at a global
level. It was noted in the case of Focus Veiling v. Lincoln Electric87 that the Dutch private
international law shouldn’t be limited within its own territory .It was argued by the court in this
case that the tort which was committed in different jurisdiction means that the trade mark laws of
separate states applied was considered to be not appropriate. Then in the case of Philips v.
Postech88 it was stated by the Dutch , Supreme Court that if its court has jurisdiction it has the
right to issue injunction orders in the cross border jurisdiction This reversed the decision with
respect to the preliminary injunction which was not allowed earlier against the Swiss and
Taiwanese defendants. When cross border injunctions, the court have to apply the national law of
the place where the infringement took place since lex loci delciti and lex loci protectionis. This is
the reason as to why injunction in the transnational borders is given with respect to the patent
cases. So it can be stated that there is no opposed condition with respect to patent as compared to
trademarks or copyright89. While when we see the case of Safeway v. Kedge 90
, which was
decided by the District Court at the Hague it was found out that cross border relief were denied
in the Patent case since the national patent law differed , like for say with respect to the use of
85
T he American Law Institute, Intellectual Property: Principles Governing Jurisdiction, Choice of Law and
Judgments in Transnational Disputes (Chestnut, ALI Publishers, 2008); European Max Planck Group on
Conflict of Laws in Intellectual Property, Conflict of Laws in Intellectual Property: The CLIP Principles and
Commentary (Oxford University Press, Oxford, 2013); Japanese Transparency Principles available in J.
Basedow, T. Kono, and A. Metzger (eds.), Intellectual Property in the Global Arena: Jurisdiction, Applicable
Law, and the Recognition of Judgments in Europe, Japan and the US (Tübingen, Mohr Siebeck, 2010); and
the Joint Japanese-Korean Proposal, se Commentary on Principles of Private International Law on
Intellectual Property Rights (Joint Proposal Drafted by Members of the Private International Law Association
of Korea and Japan)’ (2011) 2(6) Kigyō to Hōsōzō, available at
www.globalcoe-waseda-lawcommerce.org/activity/pdf/28/08.pdf.
86
Engelen, C.J.A, Jurisdiction and Applicable Law in Matters of Intellectual Property .
87
Refer to IEPT19891124, HR, Focus Veilig v. Lincoln Electric.
88
Refer to IEPT20040319, HR, Philips v. Postech .
89
Refer to Section 6 of European Patent Convention.
90
Refer to IEPT20100310, Rb Den Haag, Safeway v. Kedge.
 Conflict of Laws in IPR

the history and use of the doctrine of equivalence. Before this recent judgment it was of thought
that since all the jurisdiction are being followed under the Article 69 with respect to the
European Patent Convention, so there was no need to look after the differences which were
persisting under the National Patent laws.

b) Defendant’s Jurisdictional Matter

When we see beyond the provision of the Brussel as well as the Lugano Convention, then we see
that in the Anglo common law tradition there is a provision of personal jurisdiction to be
followed. It is of the general view that if the defendant who has have been served the documents
with respect to the proceeding will be covered under the jurisdiction. The person who is present
within the jurisdiction shall be considered to be within the jurisdiction as this can be proved by
the permanent place with respect to the business in the forum91.

At times the defendant is not present within the jurisdiction of the forum so this raises the
question as to the law of which country will apply. So here it is seen as to where the cause of
action took place, like for say where the tort or the damage 92took place wherein this resulted into
an act which was considered to have been committed in the home forum93.

91
Refer to Companies Act 1993, ss 334 and 2(1) (NZ).
92
Some difficult questions may arise with respect to whether passive availability of a material on a website
comprises a tort committed in the forum. In the United States America, it is reasonably clear that making a
work available to the public is regarded as a breach of the copyright owner’s bundle of rights in the territory
in which the relevant public is situated. See eg, Playboy Enterprises Inc. v Webworld, Inc. 991 F.Supp. 453
(N.D. Tex. 1997). For a similar analysis in the trade marks context, see Playboy Enterprises inc. v.
Chuckleberry Pub’g, Inc. 939 F.Supp. 1032 (SDNY 1996) (operator of an Italian website effected a
distribution of copies. In the United States of America in violation of Playboy Enterprises’ United States
trade marks). In the trade mark context, an issue may arise as to whether mere “use” of a trade mark on a
website is “use in a trade mark sense.” However, the notion of trade mark use appears to be expanding: see,
eg, Coca Cola Co v All-Fect Distributing Co [1999] FCA 1721. In addition, expansive notions of passing off
may also assist in showing that a tort has been committed within the jurisdiction. See Part III, infra.
93
See e.g., ord. 11, r.1(1)(f) Rules of the Supreme Court (United Kingdom). In this aspect, ord. 11 parallels
Art 5.3 of the Brussels Convention, as interpreted by the European Court of Justice in Shevill and Others v
Presse Alliance S.A. Case 68/93 [1995] ECR 415. In New Zealand, service may be effected as of right
“where any act or omission for or in respect of which damages are claimed was done or occurred in New
Zealand”: High Court Rules R 219(a). Where a case does not fit within the rules permitting service on a
foreign defendant as of right, application must be made to the Court to serve the defendant, and the plaintiff
must satisfy the Court that the New Zealand Court is the forum in which the case can most suitably be tried
for the interests of all the parties and for the ends of justice. Within the scope of the Brussels Convention,
application may be made to the Courts of a Contracting State for such provisional measures as may be
available under the laws of that State: Art. 24. This rule applies notwithstanding the fact that a different
forum may have jurisdiction over the substance of the claim.
 Conflict of Laws in IPR

When we consider the Anglo common law , then we see that there was rigid attitude with respect
to the jurisdiction which involves the foreign intellectual property rights. So it can be understood
the reluctance with respect to court’s forum non conveniens94. Jurisdictional prohibition acts as a
stoppage with respect to non conveniens .When we see the above statement the best way to
support the upper assertion is by understanding the US courts experience with respect to forum
non conveniens with respect to the copyright context. United States has been more reluctant
when it comes with respect to applying the foreign laws95 when the US courts agree to apply the
foreign copyright laws96. Though there have been occasions at times when forum non
conveniens97 was ignored totally. US courts are not empathetic towards the statement that foreign
copyright laws are too exotic98 with respect to executing or ascertaining.

94
The Eleftheria (Owners) [1970] P 94; Primesite Outdoor Advertising Ltd v City Clock (Australia) Ltd
(1991) 4 PRNZ 472.
95
Refer to Worldfilm v RAI, 50 USPQ2d 1187 (SDNY 1999); Armstrong v Virgin Records, 91 F.Supp. 2d
628 (SDNY 2000) .
96
Refer to Dicey & Morris, Part Seven “Law of Obligations”.
97
Refer to Ricketson, Copyright, Design & Confidential Information, Supplement No 1 75 (2000).
98
[1905] VLR 612; (1906) 3 CLR 479. See also Norbert Steinhardt & Sons Ltd v Meth (1961) 105 CLR 440.
 Conflict of Laws in IPR

3.3 Choices of law

This is one of the problem with respect to the Conflict of laws as there are many Cross- border Ip
related problems. With the introduction of the global market so came the problem of the IP
protection with respect to the content online .The committee which is ILA was set up to deal
with the aspects like firstly originality, secondly infringement issues and the ownership aspect.

 Ownership
The ownership came up in the case of Itar-Tass Russian News Agency v. Russian
Kurie99r, Inc.- In this case a Russian Journalist had went onto suing a New York based
news paper which was accused to have committed infringement with respect to copyright
in their newspaper as well as in the magazine articles which were stated to have been
published in reality in Russia. When the interpretation with respect to the two countries
were studies , it was found out that the U.S court of the appeal for the second circuit
stated that the national treatment cannot be considered to be a choice of law aspect. The
court came up with common laws so as to fill up the gaps which existed under the U.S.
Copyright Act. The Second Circuit court was of the opinion that important relationship to
that of the copyright work and the parties, in this case the Russian law would be regarded
as the applicable law to that of the state.
 Infringement
Here in this case the principle of lox loci deliciti which means that wherever the
100

infringement happened . For determination of the substantive law aspect governing the
infringement process, generally related to torts101 conflict of law has lex loci delicti
applies.

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

 Originality
In the case of Feist Publications, Inc. v. Rural Telephone Service Co 102.- In this case US
Court in the year of 1991 made it a point that the aspect of the originality will be
considered as the constitutional requirement, so the U.S court were not allowed or able to
apply lenient process involving the originality aspect or the standard of a foreign country
in the copyright case. This aspect was explained in the case of case of Bridgeman Art
Library, Ltd. v. Corel Corp103. In this case earlier the British law was applied but then it
was seen whether the subject matter has nexus with that of the originality requirement for
the copyright aspect.. Upon the reconsideration then U.S court stated that U.S law will
rule with respect to the originality issue.

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

CHAPTER-4

4.1 Conclusion

Intellectual property is intangible in nature and is a human being creative brainchild .The legal
rights which protect it is IPR law. The topic deals with the conflict of laws in the ambit of
municipal legality and International.

The areas of concern with respect to Conflict of Laws in IPR deals with in the application law
side would be first detection of law and its relation with territoriality, ownership, infringement
and Commercial Dealing : In Article 8 of Rome II states that no choice of law persists and only
where the lex loci protectionist makes it universal law but choice of law factor is considered to
be protected under Contract law and Competition law which provides for the checks and balance
dimension. Secondly Personal Jurisdiction wherein which applies only to a particular person that
is the defendant this will be dealt especially with reference to Internet scenario as the effect of
this felt is not in the country of residence / domicile so here Minimum contact theory can be
understood and the aspect of forum non conveniens. Special Jurisdiction cases; This point
revolves around the aspect of whether the violation of foreign IPR laws can be tried in the
domestic courts but with the help of the Potter v. BHP case the aspect of that Foreign IPR and
foreign land there exist a prohibition.

There are a number with respect to the conflict of laws with respect to IPR issues. Since it is seen
that many of the ideas are developed in the global market now so there is an aspect of for choice
of law which is present . Even then we see a number of problems that many countries are rarely
accepting the foreign judgment with respect to this. In the United States there is a conflict with
respect to the copyright act even among the federal courts of the country so not much can be
said.

4.2 Recommendations

Courts are the main key player since they encounter a number of problem with respect to the
conflict of laws with respect to IPR. The problems can be resolved if there is localization of the
acts which have been infringed by satisfying the desiderata of that of the international regime
which persists. Hence the markets of the country which get affected because of the infringement
 Conflict of Laws in IPR

will be able to put the municipal law in better perspective. The other problem which seemed to
have been visible is that of the disharmony which persists from countries to countries like that is
in European Union even though it is one in nature but still there persists a number of the
variation. The courts in such cases cannot go for a uniform aspect . They will have to adopt the
aspect of case to case basis scenario. If there is set up of a international code then it will help in
narrowing down the problems which seems to be persisting.