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Intellectual Property and Private International Law: Faculty of Law, University of Cambridge, Saturday 12 March 2011

Chair: Mr Justice Richard Arnold.

Speakers included Mr Richard Fentiman (University of Cambridge), Professor Rochelle Dreyfuss (New York University), Professor Jane Ginsburg (Columbia University), Judge Rian Kalden (Netherlands), Professor Annette Kur (MPI), Professor Axel Metzger (Hannover University), Michael Silverleaf QC, Professor Paul Torremans (University of Nottingham) and Dr Mireille van Eechoud (University of Amsterdam).

The interaction of private international law and intellectual property is often regarded as one of the most esoteric aspects of IP law. But no-one doubts its importance both practically and in terms of policy. With huge global distribution of products (some of which might be infringing IPRs in some countries), the growth of Internet advertising and commerce, as well as international collaboration on the generation of works and inventions, the questions as to where an action can be brought, and which law governs its determination are of first rank importance. PIL issues have arisen in the last year in prominent UK cases such as Lucasfilm, Crosstown, Football Dataco, and there has been recent references to the CJEU from the Dutch court in Solvay, as well as in Wintersteiger.

The time is thus right to review these critical issues. European harmonization (the Brussels Regulation) had led to a different approach being taken as to jurisdiction depending on whether “unregistered” or “registered” rights are at stake. In the case of unregistered rights, it has become clear that courts are obliged to hear actions which are brought in the place where the Defendant resides, even though the acts have occurred elsewhere and infringe foreign laws (Pearce v Ove Arup). However, the exact sphere of operation of the Brussels rules has become a source of contention: does it apply whenever the Defendant is domiciled in an EU country, or is its operation in some sense limited to “European rights”? (cp. Lucasfilm v Ainsworth, now on appeal to the Supreme Court). Actions might also be brought in the courts of the place where the act occurred or damage was incurred, and rules restrict the possibilities of bringing subsequent actions with respect to the same subject matter in different jurisdictions.

In relation to distribution of copyright works over the Internet, these facets have raised questions as to where an act of reproduction, authorisation and/or making available occurs (an issue most recently considered in Football Dataco). A reference to the CJEU on the same issue has recently been made in relation to infringement of trade marks by keyword advertising: C-523/10 Wintersteiger (pending). Where national rights are registered and issues of validity are raised, different rules apply: the courts of the country of registration have exclusive jurisdiction. The implication of the Court of Justice decisions in GAT v LUK and Roche v Primus, which affirmed the rigour of this principle, were regarded by many as a serious setback to the conduct of cost-effective transnational enforcement of patents, leading to a strong push for a European Patent Litigation Agreement, or a Community-wide patent. The position with Community-wide rights, such as trade marks and designs, is that the possibility of Community-wide relief is explicitly provided for. The appropriate limits on the grant of such relief are currently being considered by the CJWU in the DLA case.

The exact scope of the GAT and Roche judgments are likely to be reviewed in the Solvay reference. Related, but distinct, difficulties have arisen determining the applicable law. Although the tradition has been that IP rights are “territorial”, that has not meant that the only acts which infringe are ones which emanate from the country in question: courts have frequently been willing to hold that acts which occur abroad but which are in some way targeted at a domestic audience infringe domestic rights – either primarily or through some extended notion of authorisation or joint tortfeasance. Other questions have arisen in relation to disputes over ownership, contract and title. Here it is unclear how far the parties are usually permitted to select the relevant law (See, e.g., Crosstown (2010).

The issues are particularly difficult in relation e.g. to moral rights waivers, rights to remuneration or to limitations on contracting designed to protect creators remains largely unresolved. Ultimately, questions of jurisdiction and applicable law raise similar questions. Should IPRS be regarded as “essentially a local matter involving local policies and local public interest and [thus]... be left to local judges” (as Jacob LJ stated in Lucasfilm and Crosstown? Or are there good reasons to abandon this sort of territorial-thinking and fashion new rules of PIL for IP?

Given the amount of substantive harmonization of IPRs at international level, is the assumption that local policies, and local public interests, are at stake real?

Should not all courts feel comfortable with deciding matters of foreign law? Or should courts work towards a notion of “transnational” or “supranational” applicable law, distinct from particular national laws?

The conference concluded with discussion of two reform proposals: one emanating from the America Law Institute (Intellectual Property: Principles Governing Jurisdiction, Choice of Law, and Judgments in Transnational Disputes (2001-2008) by Ginsburg & Dreyfuss) and one (now in its 3rd draft, 2010) from the European Max-Planck-Group on Conflicts of Law for Intellectual Property (CLIP).