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Cross-Border Intellectual Property Enforcement

Abstract and Keywords

This chapter identifies national and regional approaches adopted to ensure that intellectual property (IP) rights are enforceable in a global environment constituted by territorial rights that rely on local courts. It discusses reconsideration and recalibration of the private international law (PIL) rules that govern IP relationships in relation to jurisdiction, applicable law and recognition and enforcement. The chapter also explores the emergence of new fora for cross-border IP enforcement, through either trade or investment arrangements or privately designed alternative dispute resolution (ADR) mechanisms. It concludes by underscoring the continued relevance of the territoriality of IP rights, and the importance of coherence and mutual consistency between the different legal systems and regimes of cross-border IP enforcement.

Keywords: IP litigation, territoriality of IP rights, jurisdiction, applicable law, recognition and enforcement, Brussels I Regulation, Rome II Regulation, ALI Principles, CLIP Principles, alternative dispute resolution (ADR)

1. Introduction

*The series of lawsuits between Apple and Samsung in France, Germany, Italy, Japan, the Netherlands, the Republic of Korea, the United Kingdom (UK), and the United States (US) is one face of today’s multinational cross-border intellectual property (IP) litigation.1 IP infringement on the Internet, which occurs millions of times daily and leads to largely automated takedowns against anonymous avatars,2 is another.

IP rights are credible and effective only insofar as meaningful enforcement can be assured. The remedies available through civil proceedings are typically injunctions to desist from an infringement; compensation through payment of damages for the harm caused by the infringement; disposal of infringing goods and implements used for infringing activities outside the channels of commerce to deter further infringement; information on third persons involved in the supply chain of the IP infringing goods; and provisional measures to prevent infringement or to preserve evidence.3 As the volume of international trade grows and IP transactions increasingly take place transnationally, the challenge is to create effective (p. 688) enforcement mechanisms for the cross-border context through procedures that are both fair and equitable as well as reasonably time- and cost-efficient.4

Any reflection on cross-border IP enforcement must start from the territoriality principle, which is a product of the intimate connections between sovereignty, property rights, and territory.5 Territoriality in IP means that IP protection relies on national or regional legislation, and is limited to the territory of the sovereign State granting the right as part of its overall economic, social, and cultural policy. Territoriality provides predictability in IP relationships and legitimacy to IP protection. Territoriality also influences private international law (PIL) considerations, such as where an infringement action may be brought and under what law, which remedies may be sought, and with what territorial effect. It is from the territoriality principle that the global map of national IP systems emerges: a mosaic of independent, territorially limited exclusive rights, defined by the laws of each State, to be applied by the local courts.

The territoriality principle is, however, coming under pressure through developments such as the increasing interdependence among actors within the global economy, and the growing concern over the costs and perceived inefficiencies of cross-border IP enforcement.6 Such IP disputes typically involve the cross-border import, export, and transit of physical goods; the cross-border communication of copyrighted works through broadcasting or satellite transmissions; as well as through activities that take place on “ubiquitous” media, that is, media that transcend boundaries and can be accessed wherever technical prerequisites are met, the most prominent example being the Internet. The result is a growing tension between these two distinct features of IP: territoriality and mobility.7 On the one hand, IP relationships need a geographical locus and States continue to closely guard national sovereignty and territoriality in IP, particularly in IP enforcement. On the other hand, transnational IP exploitation involves multiple actors over complex global value chains and IP infringements routinely impact multiple jurisdictions, thus increasing the need for efficient cross-border enforcement options. Resolving this tension will necessarily require reconsideration of the principle of territoriality in the IP system, while safeguarding the goals of territoriality: sovereignty, legitimacy, and user predictability.

New approaches are explored to ensure that IP rights remain enforceable in a coherent and predictable manner in a global environment constituted by territorial rights that rely on local courts. Section 2 discusses reconsideration and recalibration of the PIL that governs (p. 689) IP relationships, and shows how transnational IP activities are interpreted and interposed into the territorial systems governing domestic court competence, choice-of-law, and recognition and enforcement of judgments. Under certain conditions, local laws are now applied “extra-territorially” and in exceptional circumstances deviations from territoriality are sought, with remedies that have transnational or even worldwide effect, in particular for infringements through ubiquitous media. Similarly, the players in IP enforcement are broadened from the traditional binary “right holder v infringer” formula to include actors previously regarded as auxiliary: in particular, the intermediaries in the global web of supply chains. Section 3 explores the emergence of new fora for cross-border IP enforcement, through either trade or investment arrangements or privately designed mechanisms. Section 4 provides concluding remarks.

2. Identification of Domestic IP Enforcement Structures through Private International Law

Private international law seeks to resolve questions that result from the presence of a foreign element in legal relationships by determining the court that has jurisdiction, by considering what national law or laws apply and to what territorial extent, and by addressing recognition and enforcement of judgments in States other than the State in which a judgment was issued. While there exists a body of unified PIL in some fields, to date there is no established comprehensive PIL regime for IP at the international level. As such, there are significant practical and legal challenges to navigating the jurisdictional and conflict-of-laws issues in cross-border IP proceedings. A brief overview of international, regional, and national instruments, as well as case developments, follows. A majority of these instruments do not address IP exclusively, but rather include an IP chapter or are understood to apply to IP in the absence of an explicit exclusion. The exceptions are the soft law instruments referred to later, which focus exclusively on IP.

Private international law is principally governed through domestic laws. Noteworthy legislative and case law developments have taken place in the last two decades in the codification and interpretation of PIL. There are also efforts to harmonize PIL at the regional level. In Europe, the Brussels I Regulation8 and the Rome II Regulation9 establish a framework for jurisdiction, applicable law, and recognition and enforcement of foreign judgments. In the Americas, under the auspices the Organization of American States, the Inter-American Specialized Conference on Private International Law has produced some 26 Inter-American conventions, protocols, and other instruments10; and the Montevideo Treaties of 1889 and (p. 690) 1940 and the Bustamante Code of Private International Law of 1928 reflect a longstanding tradition of harmonizing PIL in the relevant regions.11 At the multilateral level, the principal source of PIL rules is the Hague Conference on Private International Law (HCCH), an intergovernmental organization that works towards the progressive unification of the rules of PIL.12

Principally led by academics, soft law initiatives have flourished in the last decade, de lege ferenda. These initiatives endeavor to remove the gaps in the existing legal frameworks and to complement legislative efforts by proposing either normative frameworks for the adjudication of cross-border IP disputes, or by aiming to guide relevant legal processes. They include the American Law Institute (ALI) Principles Governing Jurisdiction, Choice of Law, and Judgments in Intellectual Property in Transnational Disputes of 2008;13 the European Max Planck Group’s Principles on Conflict of Laws in Intellectual Property (CLIP) of 2011;14 the Transparency Proposal on Jurisdiction, Choice of Law, Recognition and Enforcement for Foreign Judgments in Intellectual Property of 2009;15 and the Joint Proposal on the Principles of Private International Law on Intellectual Property Rights of 2010, which was drafted by Members of the Private International Law Association of Korea and Japan.16,17 The International Law Association (ILA) Intellectual Property and Private International Law Committee is currently working towards a set of Guidelines on IP and PIL.18 These initiatives are hereafter collectively referred as “IP and PIL reform projects.”

(p. 691) Private international law approaches will likely depend on how rigidly (or not) the territoriality principle is applied. This section considers whether the approaches towards jurisdiction, applicable law, and recognition of foreign judgments are shifting in the face of the increasingly transnational environment in which IP is exploited.

2.1 Jurisdiction

Jurisdiction addresses the authority of a State’s courts over the parties to hear and decide cross-border disputes. In simple terms, the general rule is that an action may be heard (i) at the defendant’s forum, where it is possible to obtain cross-border remedies (general jurisdiction); or (ii) where the infringement takes place, with remedies typically limited to the forum (special or specific jurisdiction). When the validity of an IP right is disputed, in particular in the case of registered IP rights, (iii) the court of the State that granted the IP right is often the only court with power to adjudicate validity (exclusive jurisdiction).19 The practical application of these general rules is, however, far from simple.20

2.1.1 General Jurisdiction—Defendant’s Forum

The general approach found in international, regional, and national instruments is in personam jurisdiction over a defendant in its own forum (ie, domicile, (habitual) residence, or place of business).21 Since general jurisdiction is based on the close relationship between the defendant and the forum, an additional link to a place where events take place or where damages arise is not required. Therefore, general jurisdiction allows for the possibility of consolidating in one jurisdiction multiple claims arising out of the defendant’s infringement of parallel IP rights in different States. In theory, the court hearing the case will apply the various (domestic or foreign) IP laws, and the scope of a resulting judgment and remedies would then cover all relevant territories, including for the harm occurring outside the forum (eg, damages arising from the foreign sales of the infringing product), and include cross-border injunctions. This option may nevertheless be overridden by the limitations placed by exclusive jurisdiction rules discussed in Section 2.1.5.

In 1992, the HCCH initiated a Judgments Project that explored the possibility of establishing a new multilateral instrument on the international jurisdiction of courts and the (p. 692) recognition and enforcement of their decisions, in the context of transnational disputes in civil and commercial matters, including IP. While several drafts of the new proposed instrument, entitled “Convention on Jurisdiction and Foreign Judgments in Civil and Commercial Matters” were tabled (the latest being the HCCH 2001 Interim Text),22 the Judgments Project was significantly scaled down in 2003, with disagreement on IP-related matters cited as one of the principal hurdles. This led to the adoption of the Hague Convention on Choice of Court Agreements of 30 June 2005 with a limited substantive coverage. The work on a more comprehensive instrument resumed in 2012, with the focus narrowed, however, to the recognition and enforcement of foreign judgments, thus excluding jurisdiction.23 The 2001 HCCH Interim Text reflected multilateral convergence on the defendant’s forum as a forum of general jurisdiction.24

General jurisdiction based on the defendant’s forum is also embodied in regional instruments, such as the Brussels I Regulation,25 the Bustamante Code of Private International Law,26 the Montevideo Treaties on International Civil Law and on International Commercial Terrestrial Law of 1889 and 1940;27 in national laws;28 and in IP and PIL reform projects.29

However, there is interest in recognizing other bases for general jurisdiction. With the growing number of Internet-related IP cases and attendant challenges localizing remedies for cross-border harm, there are proponents of applying forum actoris (the courts in the State where the injured party has its center of interests), as is seen in personality right cases,30 to IP disputes.31 Whereas such an extension may be plausible in certain areas of IP such as moral rights, which share commonalities with personality rights,32 in general, this appears to remain a minority view, found inapplicable primarily due to the procedural disadvantage that the defendant would face.33

(p. 693) 2.1.2 Infringement Jurisdiction

Jurisdiction may be found on an alternative basis: namely jurisdiction linked to the concerned action, as opposed to the general jurisdiction linked to the defendant. Special jurisdiction, referred to as specific jurisdiction in the US, is accorded at the choice of the plaintiff, when there is a “substantive connection” or “close link” between the State in which the court is located and the dispute (or in the US, between the State and the defendant’s activities), taking into account the public and private interests involved. Insofar as the “substantive connection” is with the dispute (or the actions of the defendant), the court’s power is limited to remedy harm within its own territory.

The Brussels I Regulation provides that, in addition to the defendant’s forum, jurisdiction may be grounded on a “close connection between the court and the action.”34 A somewhat analogous approach may be found in the US: Courts where the defendant has voluntarily acted can adjudicate claims foreseeably arising from its acts.35 The Private International Law Act (PIL Act) of the Republic of Korea provides for international jurisdiction in cases where a party or a dispute is “substantively related” to the Republic of Korea.36 This requirement of close or substantive connection is to enhance international procedural efficiency, to ensure legal certainty and to avoid the possibility of the defendant being sued in courts which could not reasonably have been foreseen.

The principles in torts jurisdiction generally apply to IP infringement, where they are adjusted to the principle of territoriality.37 Among the regional instruments, the Montevideo Trademark Treaty of 1889 foresees jurisdiction for trademark infringement in the courts of the State where the infringement was committed.38 In Europe, the Brussels I Regulation provides in matters relating to tort, for jurisdiction “in the courts for the place where the harmful event occurred or may occur.”39 In interpreting this provision, the CJEU has held that the harm “occurs” at the place where the harmful “act” is performed as well as the place where it produces “effect,” and jurisdiction exists in both places.40 This distinction is (p. 694) routinely referred to in IP infringement cases, including in relation to infringements that arise through the ubiquitous media discussed in Section As to the scope of infringement jurisdiction triggered by harmful “effects,” the CJEU has based its approach on its earlier decision in Shevill v Presse Alliance SA (a defamation case), where it held that the court of the place where the harm was suffered (place of “effect”) only has the power to grant remedies (damages or injunction) for local harm.42 Because the CJEU identifies the harmful effect with a potential IP infringement, the court’s resulting jurisdiction to grant remedies is limited to the damage occurring within the territory in which the IP right is protected.43

In Japan, a Japanese court will have jurisdiction in relation to a tort action when “the place where the tort took place is located in Japan, excluding the case where the result of a wrongful act committed in a foreign country occurred in Japan, and the occurrence of such result in Japan was ordinarily unforeseeable.”44 The Swiss Federal Act on Private International Law (Swiss PIL Act) has a chapter dedicated to IP and provides IP infringement jurisdiction to the courts at the place where the act or the result occurred.45

The IP and PIL reform projects have deviated from the here-described approaches. Under the CLIP Principles, infringement jurisdiction is with “the courts of the State where the alleged infringement occurs or may occur,” thus requiring the IP right to be protected within the forum. The CLIP Principles refer to “infringement” as a uniform concept and do not apply the distinction between the “act” and “effect” of infringement that is seen in the European and other legal systems. This CLIP approach is explained as “follow[ing] from the very nature of IP infringements that no meaningful distinction can be made between ‘act’ and ‘effect’ for the purpose of attributing jurisdiction.” In addition, under the CLIP Principles, the infringer is protected from being sued in a State when he “has not acted in that State to initiate or further the infringement and [his] activity cannot reasonably be seen as having been directed to that State” (“escape clause”).46 Therefore, if the plaintiff wishes to bring a single suit in relation to all acts of infringement occurring in multiple States, he needs to do so before a court of general jurisdiction, that is, in the State of the defendant’s domicile. This is intended to provide predictability to potential defendants, and to remove cases where the effect in the jurisdiction would be minimal or purely accidental.

Unlike the CLIP Principles, the ALI Principles do not require that the infringement occurs in the State where the IP right exists, but in essence allocate jurisdiction to the place where the act of infringement occurred, and to the place of damage if the defendant’s activities were directed to that State.47 Furthermore, the court’s jurisdiction is not limited to (p. 695) the claims occurring in the State, but extends also to claims relating to all injuries connected with the disputed conduct, wherever the injuries occur.48 This departure from territoriality is meant to facilitate consolidation and thus provide particular efficiencies, especially in the digital environment. The ALI Principles additionally provide for an alternative jurisdiction in any State to which activities are directed, or with which substantial contacts are maintained when an alleged infringer cannot be sued in a Member State of the WTO. This provision adds further flexibility in situations where defendants are “hiding” in fora whose procedural and substantive guarantees are deemed inconsistent with international norms. The approach adopted in the ALI Principles may more often lead to attributing jurisdiction in the plaintiff’s (right holder’s) forum.

2.1.3 Jurisdictional Specificities for Ubiquitous Infringement

In online IP infringement, the risk of widespread infringement is significant. Because localizing damages may be difficult, efficient enforcement may be seriously hampered. These characteristics present jurisdictional challenges that prompt special consideration. The oft-asked question is whether the (mere) accessibility of a website in the territory is a sufficient basis for finding jurisdiction, or whether something more is required.

In Europe, applying the “act” and “effect” definition of “harmful event,”49 the CJEU has ruled that the place where the potential infringer acted will be the jurisdiction where the technical process that made the contested material visible on a website was initiated—typically the infringer’s place of establishment.50 The place where the damage occurred is where the right in question is protected, for example, the State in which a trademark is registered.51 In the case of infringement of copyright, which is protected without registration, the CJEU has recently clarified that mere “accessibility” of the protected work on a website is sufficient to establish special jurisdiction.52 Since an IP right exists in that jurisdiction, an infringement is theoretically possible, and whether an infringing activity has actually taken place in that territory is a question of substantive law and considered irrelevant for determining jurisdiction.53 For trademarks, some national courts in Europe have also found jurisdiction based on mere accessibility online, but the case law in these courts appears to be evolving toward requiring “targeting” the State where jurisdiction is asserted.54

In the US, where the relationship between the defendant and the forum is crucial, the “accessibility” criterion has been clearly rejected in both copyright and trademark cases, with US courts holding that infringing activity must take place within a State for the State courts (p. 696) to have jurisdiction over the defendant.55 Nevertheless, a court has asserted specific jurisdiction over foreign defendants based on the situs of an injury.56 In Brazil, jurisdiction was found in a case involving a US domain name registrar and the use of a US server, on the basis that the “effects of the activity occurred” in Brazil.57

The “accessibility” criterion adopted by some courts, as described, may result in granting jurisdiction in virtually all countries, thus potentially allowing a claimant with deep pockets to sue the same defendant in multiple jurisdictions for essentially the same activity. This may appear as weakening the minimum points of contact requirements in PIL principles and diminishing predictability in court proceedings. In practice, however, obtaining jurisdiction may be a hollow victory for the claimant.58 Each court will respect the territorial limitation of the IP rights that create the basis of jurisdiction by limiting the remedies to the damage suffered within the State. Therefore, it may be more efficient for a right holder to sue in a forum of general jurisdiction in order to obtain a full recovery, rather than to combine a (potentially ill-fitting) mosaic of judgments of courts exercising limited (special or specific) infringement jurisdiction.

The IP and PIL reform projects explicitly restrict jurisdiction based on accessibility. The CLIP Principles provide a special jurisdiction rule for ubiquitous infringement. Thus, CLIP states that the court with infringement jurisdiction “shall also have jurisdiction in respect of infringements that occur or may occur within the territory of another State, provided that the activities giving rise to the infringement have no substantial effect in the State, or any of the States, where the infringer is habitually resident.”59 In addition, one of the following requirements must be met: Substantial activities in furtherance of the infringement must be carried out “in its entirety” in the State where the court is situated; or the harm caused by the infringement in the State of the court must be substantial in relation to the infringement in its entirety. This CLIP provision represents a departure from the territorial limitation of the underlying IP rights for cases of abusive conduct by the alleged infringer to evade enforcement actions, but its further requirements provide connecting factors which may serve to prevent abusive conduct on the part of the plaintiff. The ALI Principles, on the other hand, do not explicitly provide a special rule for ubiquitous infringement, but as seen in Section 2.1.2, attribute jurisdiction to the courts in the State where the defendant has substantially acted; additionally, jurisdiction may be attributed to the State in which the defendant’s activities give rise to an infringement claim if that person directed those activities to that State.60

The WIPO-commissioned 2015 Report on “Private International Law Issues in Online Intellectual Property Infringement Disputes with Cross-Border Elements—An Analysis of (p. 697) National Approaches”61 reviewed 56 cases from 19 jurisdictions dealing with cross-border online IP infringement, and concluded that for the type of IP disputes reviewed, jurisdiction was frequently asserted outside the domicile of the defendant (63 percent of the cases). It is unclear (and may require further empirical research) whether this can be interpreted as an indication that court practice is moving away from the principle that jurisdiction is generally based on the defendant’s domicile. The WIPO Report further found that a “typical” cross-border online infringement case will concern either online marketing using a trademark or online distribution of material in which copyright subsists. The “targeting approach” is observed mainly in those cases concerned with online marketing, and the “accessibility approach” in those with online distribution.62

2.1.4 Consolidating Actions with Multiple Defendants

As the actors in IP value chains become more numerous, disputes involving multiple defendants located in different States become more frequent. In Europe, the Brussels I Regulation deals with this scenario, and provides that “a person domiciled in a Member State may also be sued where he is one of a number of defendants, in the courts for the place where any of them is domiciled, provided the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.”63 This provision served as a basis for certain courts, especially in the Netherlands, to consolidate disputes in one forum and grant cross-border injunctions against non-domiciled defendants. It was applied in particular in situations where multiple defendant companies within the same group acted in different markets in an identical or similar manner in accordance with a common business policy elaborated by one of them (the so-called “spider in the web”).64 However, the practice was halted by the CJEU in Roche v Primus, where the twin requirements of “the same situation of law and fact” were introduced to determine whether there was a risk of irreconcilable judgments.65 The Roche decision practically ruled out the application of the multiple-defendants consolidation provision in the Brussels I Regulation to disputes involving parallel (national) IP rights, since individual IP rights, including the national parts of a European patent, are subject to different (not the “same”) national laws. The result will, however, be different for EU-wide IP rights that are subject to uniform EU-legislation (see Section 2.4). As a result, Roche has reinforced the principle of territoriality in IP jurisdiction. Nonetheless, this position appears to have become more nuanced over the years, and in Painer v Standard VerlagsGmbH, a copyright infringement dispute, the CJEU held that the requirement of identical legal bases “is only one relevant factor among others” and “not an indispensable requirement” for consolidation.66

(p. 698) The Japanese Civil Procedure Code provides for an approach similar to that of the Brussels I Regulation and Roche,67 whereas in the US, the Supreme Court has adopted a narrower approach that generally prohibits a plaintiff from hauling a non-resident defendant before a forum on the basis of its connection with a resident defendant.68

The IP and PIL reform projects set out a more flexible approach for consolidating disputes involving multiple defendants. The CLIP Principles follow the definition of the required connection adopted in Roche: “a risk of incompatible judgments requires a risk of divergence [ … ] which arises in the context of essentially the same situation of law and fact.” The CLIP provision, however, departs from Roche by clarifying that the “same law” requirement will be met when the relevant national laws are harmonized, as is the case within the EU for rights conferred by registered trademarks or certain aspects of copyright, or for patents issued by the European Patent Office.69 The ALI Principles similarly make “a risk of inconsistent judgments” a requirement for consolidation, but the scope of application is narrowed to actions against non-resident defendants which relate to the forum’s IP rights at issue; or, actions where “there is no forum that is more closely related to the entire dispute.” The latter scenario is intended to cover “spider in the web” situations, as well as “parallel activities, such as mirror websites, in which no particular actor is dominant.”70 The Joint Korean Japanese Principles follow the approach of the Brussels I Regulation and limit consolidation to “claims against co-defendants who have infringed the same IP right,” which further clarifies that claims subject to exclusive jurisdiction cannot be consolidated.71

2.1.5 How Exclusive is Exclusive Jurisdiction?

The territorial nature of IP suggests limits on the court’s authority to hear certain kinds of cases: In Europe and in civil law countries, exclusive jurisdiction is limited to the courts of the State granting IP registration; or in the US, a limit on the court’s “subject matter jurisdiction.” This is particularly so for disputes relating to (in)validity of registered IP rights, which are closely linked to the public policy domain of the State granting such registration (and thus implicate the Act of State Doctrine).72

At the multilateral level, the 2001 HCCH Interim Text, which provided for exclusive jurisdiction for IP, was the source of considerable controversy, with no consensus having been reached.73 Among the regional instruments, the Brussels I Regulation contains an exclusive jurisdiction rule in relation to certain aspects of IP rights: In proceedings concerned with validity of patents, trademarks, or designs, including cases where invalidity is raised in the context of a claim for infringement, the courts of the State of registration have exclusive jurisdiction regardless of defendant’s forum.74 In GAT v LuK, the CJEU held that a (p. 699) German court was not entitled to determine the consequences of an alleged patent infringement when the case required a determination of the validity of a French patent, regardless of whether the issue of a patent’s validity was raised by way of an action or merely by way of a plea in objection.75 This decision limits in practice the possibility of consolidating multiple claims through general jurisdiction in the defendant’s forum or through infringement jurisdiction, and (at least implicitly) emphasizes the territoriality of IP rights.76

In Japan, actions relating to “the existence or absence or effect” of a registered IP right are subject to exclusive jurisdiction. A Japanese court was nevertheless prepared to try actions relating to the infringement of foreign patents, and held that the decision finding a foreign patent invalid could only have limited inter partes effect.77 In the Republic of Korea, the Supreme Court held that actions concerning patent validity and cancellation are subject to the exclusive jurisdiction of the State that granted the rights, but that disputes that are not about validity or cancellation (such as disputes concerning patent assignment contracts) are not subject to exclusive jurisdiction.78

Common law courts follow a different approach. In the US, there is a distinction between jurisdiction over the defendant (“personal jurisdiction”) and jurisdiction to hear the dispute (“subject matter jurisdiction”). Even a court that has general jurisdiction over the defendant may not have authority to adjudicate the issues in a particular case, and this has proved particularly true in patent cases. Thus, in Voda v Cordis, a court with power over the defendant and over a domestic patent dispute79 nonetheless refused to adjudicate claims involving foreign patents, in part because it thought comity and act-of-state considerations prevented it from determining the validity of the foreign rights.80 Courts in copyright cases (which do not generally involve validity issues) have proved more willing to hear foreign claims.81 But in some cases, the concept of forum non conveniens has been used to refer cases to an alternative forum that is considered better suited to decide the dispute.82 Similarly, in South Africa, in Gallo Africa v Sting Music, a dispute over copyright infringement in 19 countries between (p. 700) two South African parties, the court held that South African courts do not have jurisdiction to decide claims regarding property located outside of South Africa.83

Nevertheless, some common law courts exhibit greater flexibility in deciding cases that concern the infringement of foreign IP rights, in particular copyright. In Lucasfilm Ltd v Ainsworth, the UK Supreme Court, finding in personam jurisdiction over a UK defendant, held US copyright claims justiciable in a UK court.84 Courts in New Zealand have similarly distinguished between claims in respect of validity or existence of IP rights and claims in respect of the infringement of “unchallenged” IP rights, and granted relief against infringement of foreign copyright.85 More recently, the New Zealand High Court held that “[t]here was an emerging trend towards the international enforcement of foreign intellectual property rights being appropriate where the validity of those rights was not challenged,” and established jurisdiction to determine an action for infringement of a US patent.86

Like US courts, the ALI Principles address exclusive jurisdiction in relation to validity of a registered right through the concept of subject-matter jurisdiction. In that context, an exception is provided whereby “a judgment holding registered rights granted under the laws of another State invalid is effective only to resolve the dispute between or among the parties to the action.”87 The CLIP Principles follow the approach of the Brussels I Regulation: that proceedings which result in a judgment on the validity of an IP right protected on the basis of registration must be brought exclusively in the courts in the State where the right has been registered.88 On the other hand, the CLIP Principles depart from the CJEU’s interpretation of the Brussels I Regulation, and specify that the exclusive jurisdiction provision does not apply where “validity or registration arises in a context other than by principal claim or counterclaim,” and hence allow one court to try both the infringement claim and the validity issue where validity is raised as a defense to infringement; as in the ALI Principles, the resulting judgment will be valid only between the parties.89 The Transparency Proposal would allow Japanese courts to hear actions concerning the existence, registration, validity, or ownership of foreign IP rights, if jurisdiction over the parties has been established on other grounds, with the effect of any resulting judgment limited to the parties.90

2.1.6 The Persistence of Territoriality

What we can perceive from this discussion is that territoriality persists as a robust pillar that defines cross-border IP relationships and draws boundaries to a State’s jurisdiction in transnational disputes. While some flexibility is apparent, the various approaches may appear rather incongruous. Courts with general jurisdiction accept the possibility of hearing foreign cases and provide remedies that address extra-territorial harm. In some countries, the sphere of exclusive jurisdiction may be retreating, which thereby enables the courts to hear disputes relating to non-registered IP rights, or infringement disputes where the validity of (p. 701) registered IP rights is not disputed or is raised only as incidental matter, although the CJEU has so far been reluctant to follow this approach. In cases where the defendant is not subject to general jurisdiction, infringement jurisdiction may be established alternatively by a “substantive” connection between the court and the dispute. When infringement takes place online, certain courts assert jurisdiction through mere accessibility, whereas other courts require targeting or actual injury in the forum. Courts that exercise jurisdiction more liberally do, however, recognize territoriality in that they require the existence of a local IP right; some limit the territorial reach of available remedies. Territoriality has re-emerged also in cases that involve multiple defendants, and thus sets limits on the jurisdictional creativity of certain EU courts, which had previously enabled the consolidation of disputes in one forum. The IP and PIL reform projects advocate limited departures from IP territoriality, in particular to address infringement through ubiquitous media or to avoid irreconcilable judgments in multi-defendant disputes that involve the same or parallel law and facts. These developments, by broadening bases for jurisdiction in fora alternative to that of the defendant’s forum, may provide efficiency gains through consolidation, but may facilitate forum shopping and favor the claimant over the defendant. The courts will undoubtedly continue to find mechanisms for striking an appropriate balance in the tension created by IP’s mobility and territoriality, but there is as yet only limited convergence of approaches towards greater international consistency.

2.2 Applicable Law

2.2.1 Should Courts Apply “Foreign” IP Laws?

Once the competent court has been established, it needs to determine which State’s laws govern the substance of the legal relationships, including those with a foreign element. Whereas in IP cases, jurisdiction and applicable law appear to be infrequently addressed as separate matters by courts, for the purposes of legal analysis they are distinct.91 Indeed, careful choice of applicable law could provide a way to respect the territoriality of IP rights while still achieving the efficiency benefits of consolidating foreign cases in a single court.

Traditionally, the reluctance especially among common law courts to assume subject matter jurisdiction over foreign IP rights (see Section 2.1.5) similarly manifested itself in a reticence to apply foreign IP law. But the situation is changing: Courts in common law States are increasingly prepared to apply foreign IP laws to decide issues of infringement, at least where the validity of the right in question is not in dispute92 and courts in civil law countries have been applying foreign IP laws since the early twentieth century.93

(p. 702) 2.2.2 Choice of Law and the Paris and Berne Conventions

A court determines the applicable law in accordance with the conflict-of-law rules within its jurisdiction. While there is little legislation on this issue, there is remarkable convergence internationally towards applying the law of the State for which protection is sought. This principle of lex loci protectionis is arguably derived from the basic international treaties in IP: the Paris and Berne Conventions.94 Article 2 of the Paris Convention and Article 5(1) of the Berne Convention establish the fundamental national treatment principle according to which foreigners are to be treated like nationals of the country in which they seek protection for their IP rights. Article 5(2) of the Berne Convention provides in addition that “the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed.” Article 5(2), which could be interpreted as clarifying the national treatment principle in Article 5(1), has also been interpreted as a choice-of-law rule.95 Article 5(2) designates “the laws of the country where protection is claimed,” and Article 5(1) limits the ability of States to regulate choice of law: Because foreigners must not be subjected to a different legal treatment than nationals, an argument can be made that it would be improper to apply the law of the country of origin to foreigners’ local claims. It is fair to say therefore that the Paris and Berne Conventions have an impact on choice-of-law, at least with regard to “the extent of protection, as well as the means of redress.” The term “country where protection is claimed” in Article 5(2) of the Berne Convention should not be understood as referring to the lex fori, that is, the law of the country where the right is actually enforced (since a court may apply a foreign IP law), but to the lex loci protectionis, that is, the law of the country for which protection is claimed.96 The national treatment obligation is also provided for in Article 3 of the TRIPS Agreement, which reinforces the international obligation to apply the lex loci protectionis for all “matters affecting the availability, acquisition, scope, maintenance, and enforcement of intellectual property rights as well as those affecting the use of intellectual property rights specifically addressed in this Agreement.”97

2.2.3 Lex Loci Protectionis and Lex Loci Delicti

Applying the lex loci protectionis as a choice-of-law rule means in practice that the applicable law is determined by the claimant.98 If the claimant alleges that a certain activity infringes (p. 703) his rights under the law of a certain State, the court will apply this law in order to determine whether this allegation is true. Hence, infringement is a matter of substantive law,99 not a factor to be taken into account when determining the applicable law.

Local and regional instruments on applicable law have widely adopted lex loci protectionis as the choice-of-law rule for IP cases. In the EU, the Rome II Regulation provides specifically for the lex loci protectionis principle for infringement of IP rights.100 Similarly, both Swiss and Chinese legislation provide for the principle of lex loci protectionis,101 and the ALI and CLIP Principles also adopt the lex loci protectionis as the basic rule for matters of choice of law.102

The Republic of Korea PIL Act provides that “the protection of intellectual property rights shall be governed by the law of the place where such rights are infringed.”103 The Japanese PIL Act does not contain a provision specific to IP, but provides for cross-border torts to be governed by the law of the place of injury; however, where the occurrence of the injury in such place is unforeseeable, the law of the place where the tortuous acts occurred applies.104 While there are few cases addressing the issue, Japanese courts seem to apply the lex loci protectionis for injunctions, whereas damages may be governed by the lex loci delicti, which allows some freedom to the parties to choose the applicable law.105

US statutory law does not explicitly regulate choice-of-law in IP matters and there are few court decisions addressing the issue. However, in a copyright infringement case, the court distinguished between ownership and infringement and found that, while the law of the country of origin determines ownership, the lex loci delicti applies to issues of infringement.106

The problem with approaches referring to the lex loci delicti in IP matters is that they mix issues of choice-of-law with substantive law questions that arise under the applicable law itself: Whether an infringement has taken place in a certain State can only be decided when the law of this State is actually applied. The practical consequences of applying the lex loci delicti in IP infringement cases will, however, be largely the same as under the lex loci protectionis principle. The place where the tort was committed can only be the place where the right for (p. 704) which protection is sought is protected. The IP right and the infringing activity must both be located in the same territory. Foreign rights cannot be infringed by local activity, and local rights cannot be infringed by (purely) foreign activity.107 This is a consequence of the inherent territorial limitation of IP rights.

2.2.4 Limiting the Effects of Territoriality Through Choice of Law?

Territoriality has a number of consequences which, at an international level, may lead to complications: (i) one person may hold a bundle of national or regional rights in identical subject matter (eg, in copyright, which emerges worldwide without formalities in all States where the requirements for protection are met); (ii) IP rights may be held by different persons in different territories (eg, in trademarks, where the same mark may be registered by different parties in different territories; copyright ownership may differ between jurisdictions due to the different treatment of employment relations); (iii) a certain activity may be considered infringing in one country, but legal in another (eg, it may be covered by an exception or a limitation that one country recognizes and the other does not).

These complications are compounded when IP rights are used in “ubiquitous” media. If a sign is used on the Internet, such use is visible around the world and may therefore be considered infringing in every jurisdiction in which the sign enjoys protection. Even if the user holds trademark rights in a certain country, the use may infringe elsewhere, for the mark could be protected by other owners. Internet use may thus expose a user to a considerable risk of liability and these complications could impede e-commerce. Ubiquitous use also raises the question of how different applicable laws are to be coordinated so that over-regulation (eg, double or multiple liability), under-regulation (no liability), as well as conflicting outcomes (liability for conduct with cross border effect that is considered legal where the defendant acted) can be avoided. Currently, this question is not addressed at the international level, but is left to individual jurisdictions.

A number of IP and PIL reform projects have developed specific choice-of-law rules that would limit the number of applicable laws in cases of ubiquitous infringement by identifying the law(s) with the closest connection to the dispute, and applying those laws beyond their “normal” territories. The ALI Principles provide in cases of ubiquitous infringement, where the laws of multiple States are pleaded, that the court may choose to apply the law of the State with close connections to the dispute, as evidenced by the parties’ residence, the center of the parties’ relationship, the extent of the activities and the investment of the parties, and the principal markets toward which the parties directed their activities.108 These factors are considered important because they point to the State in which the policy objective of IP rights is most affected. In practice, however, the approach tends to favor the right holder’s home State.109 At the same time, however, the ALI Principles leave room for different policy objectives of other jurisdictions to apply: Any party may demonstrate that the laws (p. 705) of certain States produce a different outcome from that under the law(s) chosen to apply to the case as a whole, and the court must then take the difference into account in shaping the remedy. For example, when the activity in question is not considered infringing in certain States, the court would reduce the monetary award. This means that, while the chosen law will be applied beyond its territory—and will therefore have extra-territorial effect—outright conflicts with other jurisdictions are avoided. A similar approach is adopted in the Transparency Proposal.110

A somewhat more cautious proposal is offered by the CLIP Principles, which also call upon the law of the State having the closest connection for ubiquitous infringement, provided that “the infringement arguably takes place in every State in which the signals can be received.”111 Unlike the ALI Principles, the CLIP Principles place greater emphasis on the infringer and its activity than on the right holder, providing that the closest connection be determined by taking into account, in particular, the infringer’s habitual residence, the infringer’s principal place of business, the place where substantial activities in furtherance of the infringement in its entirety have been carried out, and the place where the harm caused by the infringement is substantial in relation to the infringement in its entirety.112 On the other hand, like the ALI Principles, the CLIP Principles allow any party to prove that other laws may consider the activity differently than the law of the closest connection and call upon the court to take that into consideration when fashioning the remedy.113

While these approaches definitely deserve attention, they have not been transformed into national or international law. They may provide guidance to individual courts and thus lead to a certain convergence of approaches internationally, but courts will nevertheless have to follow a territorial approach, apply the law of each State where protection is sought, and coordinate the outcome at the level of the applicable substantive laws, especially when it comes to determining remedies. Examples are provided further on in the following sections.

2.2.5 “Extra-Territorial” Application of the Lex Loci Protectionis

When applying the lex loci protectionis as the applicable substantive law, there may be room for interpretation. A judge applying the individual norm that is relied upon to protect an IP right may consider an activity sufficiently “local” to find that there has been an infringement in the forum, although the activity itself was physically performed partly or totally outside the country of protection, or was carried out over a medium like the Internet, which easily transcends borders. What is to be considered an infringing activity is a legal question that is determined under the applicable law governing the specific right in question. Common law courts sometimes consider this question under the label of “subject matter jurisdiction,” but more often as an element of an infringement claim under the applicable IP law.114

(p. 706) These issues are sometimes, somewhat misleadingly, referred to as “extra-territorial application” of IP laws. However, most courts take great care to ensure that the application of IP laws is limited, by way of judicial interpretation, to the territory in which the IP right in question enjoys protection. There are, in essence, two ways of doing this: (i) by determining whether a certain activity produced a tangible effect in the State where protection is sought; or (ii) by deciding whether a certain activity was targeted at that State. In most cases, a combination of objective (effect) and subjective (targeting) criteria is employed. In addition, courts may limit the territorial effect of any remedies granted to the country (or countries) of protection.

The reasons for this caution are usually twofold and both result from the territoriality of IP: The defendant should not incur liability resulting from his conduct if he could not foresee the consequences, and enjoy the opportunity to take steps to avoid them. At the same time, courts may respect potentially diverging policy choices of foreign jurisdictions and try to avoid conflicts among (territorially limited) IP laws, especially if the activity in question is considered legal where it takes place. Such conflicts could lead to contradictory legal treatment of identical fact patterns, which might stifle international trade by undermining legal certainty.115 On the other hand, the regulatory interest of domestic legislation may be compromised if the activity in question has a tangible effect or was targeted at the jurisdiction where protection is sought; the legislation concerned may then be applied “extra-territorially” in order to close (real or perceived) enforcement gaps which might otherwise undermine its regulatory objectives.

2.2.6 “Foreign” Activities—Local Effects116

Addressing Internet cases, the CJEU has sought to identify relevant connecting factors that link an online activity to a certain territory. The CJEU has stated that the “mere fact that a website is accessible from the territory covered by the trade mark is not a sufficient basis for concluding that the offers for sale displayed there are targeted at consumers in that territory.” This is remarkably different from the CJEU’s approach regarding infringement jurisdiction where “mere accessibility” is considered sufficient for jurisdictional purposes (see Section 2.1.3). To find infringement under local law, the CJEU requires the court to find “relevant factors on the basis of which it may be concluded that an offer for sale … is targeted at consumers in [its] territory,” for example, information regarding the geographical areas to which the seller is willing to deliver goods. The CJEU has applied the same criteria to determine whether sending data via a website might infringe a sui generis database right.117 If actual sales have been concluded in the EU, this will be considered sufficient; (p. 707) in Blomqvist v Rolex, the CJEU ruled that for the purposes of the Customs Regulation,118 goods sold to a resident of a Member State from a website based in a non-Member State may be infringing a trademark merely by virtue of the sale, regardless of whether this website could be considered as targeting EU customers.119 Off the Internet, the CJEU follows a similar approach. In a copyright case, a trader was considered to infringe a copyright in another State because infringing products were delivered to that State and because members of the public in that State were targeted.120

The situation is different where goods have not been sold and the EU has not been targeted, especially in cases involving goods in transit. Here, the CJEU has been reluctant to find infringement. In Montex v Diesel, the CJEU ruled that mere transit of goods cannot constitute trademark infringement under EU law: The risk of diversion of products to the market where the trademarks enjoy protection is not sufficient to invoke local law.121 This was confirmed in the cases involving Nokia and Philips, where the CJEU held that any suspicion of diversion must be based on the facts of the case at hand, for example, by way of documents or correspondence showing that diversion to EU customers was envisaged.122 In these in-transit cases, the risk of policy conflicts with the countries of origin or destination is particularly high, and the legitimacy of enforcing the policy choices of the forum is rather limited in view of the weak territorial connection. Nevertheless, the situation may change with the 2015 EU Trade Marks Directive, which allows the release of goods in transit to be suspended, including when such goods are not intended to be placed on the market of the State concerned.123

The German Federal Supreme Court was similarly skeptical of applying local law to Internet activities. It adopted an objective approach in a trademark case concerning conflicts over the use of the trademark “Hotel Maritime” both on a website as well as in a domain name.124 In this case, the Court reasoned that not each and every use of a sign on the Internet should be treated as taking place in a given State, even if the sign was accessible to Internet users based there. Only where the use of the trademark had a “commercial effect” in a particular State, could the use be treated as having taken place in that State, and thus be relevant to an infringement claim under local law. In a subsequent decision, the German Federal Supreme Court denied commercial effect in a situation where the broadcasting of an (p. 708) Italian TV program was not targeted at Germany, but where the possibility of receiving it in Germany was an unavoidable technical consequence of the satellite transmission.125

The Canadian Supreme Court, in a leading Internet case, has also adopted an objective approach. The Court held in a dispute involving the use of a copyrighted work on the Internet that a “real and substantial connection” with Canada must exist to support the application of the Canadian Copyright Act to Internet transmissions.126 Relevant connecting factors were said to include the situs of the content provider, the host provider, the intermediaries, and the end user. The Court confirmed that such a connection could exist both in the State of transmission (or uploading) as well as in the State of reception. US courts seem to have adopted a combination of factors with similar results. In trademark cases, courts require, in order to find infringement under local law, that Internet-based activities have a “substantial effect” on US commerce, “in light of the core purposes of the Lanham Act, which are both to protect the ability of American consumers to avoid confusion and to help assure a trademark’s owner that it will reap the financial and reputational rewards associated with having a desirable name or product.”127 Earlier case law suggests that US courts may apply US trademark law generally to foreign activities even if there has only been “some effect” on US commerce, at least when the defendant was a US citizen and the defendant’s conduct was not authorized in the foreign jurisdiction (no policy conflict).128 Similarly, in copyright cases, US courts have considered foreign acts as contributorily infringing if the “acts are intended to, and do, have an effect within the US.”129 In contrast, for direct copyright infringement, no specific intent is usually required as long as at least one complete act of infringement has taken place in the US; uploading a video from Canada to YouTube’s servers in California for display within the US was considered an act of direct copyright infringement under US copyright law, regardless of whether the defendant had actually intended the display to reach audiences in the US.130 In a similar vein, courts have held that selling and shipping goods to US consumers qualify as (direct) acts of copyright infringement, regardless of the location of the exporter (Canada), and where title passed (Canada—since goods were sold f.o.b.).131 However, there is no liability for contributory infringement unless the primary infringement can be situated in the US; authorization of acts that infringe a foreign copyright are not covered by US copyright law.132

Courts seem to be more restrictive in patent cases. The US Federal Circuit Court held that the use of a patented system, in this case an electronic mail system (“Blackberry”), could be considered infringing a US patent even though part of the claimed system was located in Canada. The Court reasoned that control of the system and its beneficial use could (p. 709) be localized in the US. At the same time, the Court did not find a related process patent infringed, holding that process claims can be infringed only when all the steps of the process are committed within the US.133 In Germany, courts have considered a patent infringed if at least part of the infringing activity took place in Germany and if the remaining parts could be attributed to the user, for example, because his activities are part of a broader scheme which can be considered directed at Germany.134 German courts are also more open to consider a process patent infringed if only part of the activities were carried out in Germany.135 The Japanese Supreme Court, in a case involving goods produced in Japan for export to the US, did not find infringement under Japanese law since the claimant (a Japanese national) held no patent in Japan. The Court refused to apply US law for reasons of territoriality.136

2.2.7 “Local” Activities—Foreign Effects137

While not required under the TRIPS Agreement, many jurisdictions, such as the EU,138 consider the export of infringing goods an infringement of an IP right protected in the exporting State, without regard to its possibly limited effect on the local market. The same applies in broadcasting and Internet cases. US courts have considered the broadcasting from the US to Canadian customers as an infringement of US copyright law.139 Similarly, the German Federal Supreme Court held that broadcasting emissions from Germany that were targeted at a French audience infringed a German copyright, even though the emissions could be received only by a very limited audience in Germany.140 As a consequence, infringement may be found both in the State of export, transmission, or uploading, as well as the State or countries of importation or receipt, at least if the activity produced an (objective) effect in or was targeted at these countries. This means that an actor may be held liable for one act in several countries.

In a rather far-reaching application of US copyright law, US courts have held that a copyright infringement inside the US (a “predicate act” or the making of a so-called “root copy”) (p. 710) which leads to further infringements outside the US can be remedied under US law—that is, monetary damage can be collected even on sales and distribution of the foreign-made copies.141 On the other hand, the US Supreme Court has considered, and rejected, a similar approach in a patent dispute.142

2.2.8 Balancing Territoriality with Effective Domestic Regulation

The mentioned cases demonstrate that courts tend to balance the interests underlying the territorial limitation of IP laws against the interest in preserving the effectiveness of the lex loci protectionis. While this may stretch the territorial boundaries of individual IP laws, their application is not strictly extra-territorial. The following trends can be observed: (i) the more clearly an activity is located in the State of protection, the more likely infringement under local law will be found, regardless of subjective (targeting) or objective (effect) criteria. Examples include the export cases and cases where the transmission or uploading has taken place in the forum; (ii) the more clearly a local effect can be demonstrated, the less important it will be to prove that the activity was targeted at the jurisdiction, or that an act was carried out in the State. An example is infringing products sold and delivered into the State; and (iii) targeting is required where neither a local act nor a local effect can clearly be found.

These trends are also reflected in the CLIP Principles, which require that, under the applicable IP law, infringement can only be found if the defendant acted, produced a substantial effect in, or directed an activity to the State where protection is sought. De minimis effects should not lead to a finding of infringement.143

Also of relevance in this context is the WIPO Joint Recommendation Concerning Provisions on the Protection of Marks, and other Industrial Property Rights in Signs, on the Internet (Joint Recommendation).144 The Joint Recommendation, intended to provide a link between the global Internet and territorial laws, states that the “use of a sign on the Internet shall constitute use in a Member State [ … ] only if the use has a commercial effect in that Member State.” Mere visibility on a computer screen will therefore not be sufficient in order to locate potentially infringing use in the territory where protection is sought. The Joint Recommendation further provides a detailed, but non-exhaustive, list of factors that can be relevant for determining commercial effect, many of which have been used by national courts in the cases referred to above.145

(p. 711) 2.2.9 Ensuring Balanced Remedies

The globalization of the IP value chain is prompting courts to explore remedies that address domestic IP enforcement interests, which may test the boundaries of IP territoriality. Remedies granted under lex loci protectionis may potentially have effects beyond the territory in which the right is protected. In principle, remedies should be limited, as far as possible, to the territory in which the IP right is legitimately protected. Any “extra-territorial” spill-over effects could be considered illegitimate, might lead to double liability if the same activity is sanctioned in several jurisdictions, or to policy conflicts with States that consider the activity in question legitimate (see Section 2.2.4). Territorial limitations can thus be a means to coordinate outcomes at the level of individual domestic courts. Similarly, the WIPO Joint Recommendation requires courts to limit the territorial scope of any remedy as much as possible to those territories where the infringing activity has produced a commercial effect.146 The CLIP Principles link the territorial scope of injunctions to the territory in which the IP right in question is protected; in Internet cases, Internet-wide injunctions may be possible, but not in States where the activity in question is not considered infringing.147 These soft-law approaches are indicative of a trend that provides for “extra-territorial” remedies only in limited circumstances, for example in relation to bad-faith conduct on the Internet, such as domain name suspension or transfer, website takedown or site blocking.

Another development witnessed in recent years involves the efforts to address IP infringement through remedies sought not directly from the infringer (often located in a distant jurisdiction) but from intermediaries that are easier to identify and more accessible. A number of high-profile actions have been filed in various States against Internet intermediaries, principally for contributory infringement. These actions are akin to consolidation because they aim to address large volume infringement, which frequently takes place in cross-border contexts and involves multiple foreign infringers.148 Suing intermediaries, sometimes considered “nodal points” in global infringement activities, may lead to efficiency gains over actions against dispersed parties making use of intermediaries’ services. At the same time, in most jurisdictions, intermediaries benefit from certain “safe harbor” provisions, provided they take remedial action as soon as they are notified of infringements.149 The CJEU has held that courts can order an online intermediary to take measures that contribute not only to bringing to an end IP infringement by users of the intermediary’s service, but also to prevent further infringements.150 Internet Service Providers (ISPs) may also be ordered to block their customers’ access to a copyright-infringing website.151 In Canada, one court awarded an (p. 712) interlocutory injunction against a foreign online intermediary. The intermediary, not a party to the underlying litigation, appealed arguing that “the injunction was beyond the jurisdiction of the court, that it improperly operated against an innocent non-party to the litigation and that it had an impermissible extraterritorial reach.” The appeal was rejected. The court reasoned that, because it had personal jurisdiction over the intermediary, it was permissible for the plaintiff to seek relief.152 Whereas the measures to be taken against intermediaries will vary, site-blocking injunctions are increasing, particularly in relation to online copyright infringement involving foreign infringers or foreign infringing activities.153 Other remedies include orders for intermediaries to disclose customer information or to limit or terminate infringing customers’ accounts.154

Initiatives introducing IP enforcement remedies with cross-border effect, in particular in the online context, have caused public debate on IP overreach and potential conflicts with fundamental rights.155 Courts granting blocking injunctions have emphasized that the injunctions and their enforcement must ensure a fair balance between the fundamental rights concerned,156 must be effective, proportionate, dissuasive, and must not create barriers to legitimate trade.157 The coordination of remedies in order to avoid over-regulation and double liability is, however, left to individual courts. In the absence of authoritative international guidance, the principle of territoriality continues to provide a general yardstick for determining the reach of remedies granted by courts; the soft-law initiatives may serve as focal points for international convergence regarding limited departures from territoriality.

2.3 Recognition and Enforcement

A favorable determination of jurisdiction and applicable law, and the rendering of a favorable judgment, are of little value to the prevailing party if the terms of the judgment cannot be enforced. The benefits of judgment are similarly eviscerated if the judgment is not recognized (given res judicata effect). When deciding where to sue and whether to consolidate several actions in one forum, a diligent plaintiff will consider the possibility that it will (p. 713) need to enforce the resulting judgment in other jurisdictions, for example, where the defendant has assets or is conducting infringing activities. The chronicle of a cross-border patent dispute litigated for the better part of the past decade is illustrative. The Supreme Court in the Republic of Korea rendered a judgment in LG v Obayashi Co. and Tanaka, a dispute that involved both US and Japanese patents. The judgment was recognized in the US on the basis of the doctrine of comity. The same judgment, however, was not recognized in Japan, where the court found that the Japanese courts have exclusive jurisdiction in matters concerning Japanese patents.158

IP Judgments are ordinarily subject to the general rules on recognition and enforcement of foreign judgments. A number of regional and bilateral conventions aim to facilitate, to the extent possible, the free movement of judgments among the States parties to those conventions.159 In the absence of such agreements, a court will apply its national rules on recognition and enforcement of foreign judgments, which are frequently based on international comity—a doctrine of deference that is based on the respect for the judicial decisions of foreign sovereignty, the desire to encourage international coordination, and the hope of reciprocal recognition by the foreign country of domestic judgments.160

While a court will typically refrain from reexamining the substance of a dispute when deciding on the recognition of a foreign judgment, it may require verification as to whether the foreign court was competent to decide on the substance of the dispute based on the jurisdictional rules of the recognizing forum. This may be particularly relevant in cases involving the consolidation of claims in a single forum. These cases may be regarded with suspicion in other States, especially if they consider the dispute subject to a rule of exclusive jurisdiction.161 In such cases, there is a risk that recognition of the judgment will be refused. The need to have a judgment recognized and enforced in other jurisdictions may therefore limit the attractiveness of consolidation and lead parties to pursue cases (somewhat inefficiently) on a country-by-country basis.

Most PIL rules also allow a State to refuse to recognize and enforce a foreign judgment when doing so would be contrary to its public policy.162 In relation to IP, the public policy (p. 714) defense may involve diverse questions. Where a court determines the validity of a foreign right, would the court of the State where the right is registered recognize the foreign judgment and authorize its enforcement? What if the IP for which protection is sought involves contentious aspects such as patenting genetic sequences, or enforcement is deemed to conflict with basic rights such as privacy or free speech and the standards for protecting these rights differ in the concerned States?163 The answer to these questions will largely depend on the views of the recognizing court, and as illustrated in LG v Obayashi Co. and Tanaka cited previously, outcomes may well vary.

It may be that a foreign court applies an IP norm that differs from the norm of the State where recognition is sought. Would the judgment be recognized? The answer is, generally, yes. In Europe, the CJEU case Renault v Maxicar164 involved the recognition of a French judgment in Italy. Car body parts were protected by IP in France, whereas Italy did not have equivalent protection. The CJEU ruled that the public policy exception could not apply in cases where there is a mere difference in terms of substantive law or where the law might have been wrongly applied. Similarly, in the US, in SARL Louis Féraud International v Viewfinder, a case involving designs protected under French but not under US law, the court held that the difference in substantive law was not a sufficient ground to allow the application of the public policy defense against the recognition of the French judgment in the US.165 Recourse to the public policy exception is generally envisaged only in extreme cases where the judgment constitutes a manifest breach of an essential rule of law or of a fundamental right.

Remedies are a different matter. Enforcement of judgments awarding non-compensatory damages may be challenged as a violation of public policy when such damages are not provided for in the State where recognition is sought.166 In an IP infringement case, the Spanish Supreme Court did not “consider US punitive damages as a concept that is completely counter to public policy.”167 In contrast, the Supreme Court of Japan has held that a foreign court’s order of punitive damages is contrary to the public order of Japan.168 Certain instruments on recognition and enforcement of foreign judgments contain provisions specific to IP-related matters. For example, the Swiss PIL Act defines the conditions for recognizing foreign decisions regarding IP infringement.169

(p. 715) Lastly, at the multilateral level, the HCCH Convention of 1 February 1971 on the Recognition and Enforcement of Foreign Judgments in Civil and Commercial Matters is in force, but with very limited membership. Further to the resumption of the HCCH Judgments Project in 2012, a Special Commission was established in 2016 to prepare a preliminary Draft Convention on the Recognition and Enforcement of Judgments in Civil and Commercial Matters. The preliminary text of the Draft Convention that results from the meetings of the Special Commission of June 2016 and February 2017, includes all IP matters in square brackets indicating the difficulties reaching consensus on which IP matters, if any, should come within the scope of the Convention.170

2.4 Special Private International Law Rules in Regional IP Systems

Over the last decades, there has been a movement to reconcile the countervailing strains of globalization and regionalization of trade by creating regional (unitary) IP rights that are protected uniformly in a territory that is composed of all of the States within the region. Early examples of regionalism in IP are the Montevideo Treaties of 1889, which dealt with patents and trademarks and involved Argentina, Bolivia, Brazil, Chile, Paraguay, Peru, and Uruguay. In Africa, the African Regional Industrial Property Organization (ARIPO) and the African Intellectual Property Organization (OAPI; Organisation Africaine de la Propriété Intellectuelle) each provide a mechanism for securing IP protection across the regional territory of its membership. The European Union (EU), a “supranational” organization, is currently the most fully integrated among the many regional arrangements around the world.

In Europe, each EU-wide unitary IP right has its own jurisdictional regime. They are all based on the provisions in the Brussels I Regulation, but depart from it in a number of aspects. The EUTM Regulation (EUTMR), which establishes the European Union Trade Mark (EUTM)—an EU-wide right that enjoys EU-wide protection—provides for a hybrid legal and court system.171 The EUTMR, a lex specialis vis-à-vis the Brussels I Regulation, grants international jurisdiction to certain specified courts (EUTM courts), which are national courts situated in the Member State in which the defendant is domiciled or, in the absence of a domicile, has a business establishment. In the absence of such a court, the EUTMR recognizes the courts of the Member State in which the claimant is domiciled or has a business establishment. If neither the defendant nor the plaintiff is domiciled or has a business establishment within the EU, the EUTM court is a court of the State in which the European Union Intellectual Property Office (EUIPO) has its seat.172 The courts that are based on “domicile” have central competence, and their decisions in principle have effect throughout the EU. Jurisdiction may be given to the courts in the Member State where the act of infringement has been committed or threatened (place of infringement), but only to adjudicate acts of infringement committed or threatened within the territory where the (p. 716) court is situated.173 One key advantage of the EUTM is its potential for allowing a court to issue an EU-wide injunction. Thus the CJEU has held that a prohibition against further infringement or threatened infringement must, as a rule, extend to the entire area of the EU (since an EUTM is protected throughout the EU), but that in certain circumstances (eg, where the infringement is limited to a single State or to a part of the territory of the EU) the territorial scope of the injunction may be restricted.174 The EUTMR also includes an article on applicable law which provides that where matters are not covered by the Regulation, the EUTM courts shall apply the applicable national law.175

For patents, the European Patent Convention (EPC) has introduced a unitary system for the administration of patents within Europe.176 An emerging Unitary Patent Protection (UPP) system,177 building on the EPC, will make it possible to acquire unitary effect for a European patent in the 25 EU Member States that have so far signed the Agreement on a Unified Patent Court 2013 (UPC).178 This Agreement aims to establish a court system composed of a central chamber as well as regional chambers, which, unlike the EUTM courts, are separate from national court systems. The UPC will, as a general rule, have exclusive competence in civil litigation on matters (including infringement, provisional and protective measures and injunctions, damages or compensation derived from provisional protection and/or prior use, and revocation or non-infringement) related to: European patents with unitary effect; classical European patents (initially optional, with transitional period of seven years and opt-out for patent holder); supplementary protection certificates issued for a product covered by such a patent; and European patent applications. The hope is that the UPC will unify jurisprudence throughout the signatory states, that it will increase predictability and eliminate parallel litigation, that it will issue judgments (injunctions, damages) affecting 25 Member States of the EU, and that proceedings will be efficient and conclude more rapidly than in many of the individual Member States.179 However, concerns (p. 717) have been voiced that the UPP and UPC may in practice lead to further fragmentation of patent protection, of applicable rules, and of jurisprudence.180

3. Other Cross-Border IP Enforcement Fora

Cross-border IP enforcement primarily relies on State courts. Yet, international IP players are increasingly focusing on other, potentially cost-effective, options for enforcing their IP rights, including tribunals created under regional or multilateral agreements. The inclusion of IP in the structure of the WTO Agreement signaled the growing role of IP in international trade regulation, and that recognition led to the utilization of trade dispute settlement fora as cross-border IP enforcement mechanisms. The greatest deviation from IP territoriality is, however, probably observed in enforcement actions that rely on alternative dispute resolution (ADR) and private enforcement mechanisms, in particular, online enforcement facilitated by voluntary agreements among online platform operators and IP rights holders. These raise substantial public policy considerations.

3.1 Trade and Investment-Related Dispute Settlement Fora

Trade fora are increasingly taking on a prominent role in protecting and enforcing IP rights. Philip Morris’s endeavors to protect its trademark rights in the context of Australia’s plain packaging measures have included not only court proceedings in Australia,181 but also two investment treaty arbitrations182 and a WTO dispute.183

Two aspects of the TRIPS Agreement are worth highlighting with respect to cross-border enforcement. First, the TRIPS Agreement embodies the current multilateral consensus on IP enforcement, and contains considerably detailed provisions on civil, administrative, criminal procedures and remedies, and border measures.184 Second, the TRIPS compliance tool enabled by the WTO Dispute Settlement mechanism allows IP trade disputes to be settled under the multilateral WTO trade rules, which creates an alternative, quasi-judicial forum for international IP dispute resolution.185 WTO TRIPS disputes take the form of one State challenging another State’s compliance with the TRIPS Agreement, which thus follows (p. 718) a traditional “diplomatic” approach of resolving disputes among States. While these cases do not deal with private disputes and do not yield private remedies, individual IP right holders’ efforts to enforce their IP will frequently be implicated, as seen in the WTO Dispute China—Measures Affecting the Protection and Enforcement of Intellectual Property Rights, which was largely prompted by IP right holders’ frustrations regarding requirements in local IP enforcement procedures.186

The shift in IP rulemaking and enforcement toward trade fora is continuing through the growing number of regional and bilateral trade arrangements (RTAs)187 that provide for dispute settlement of claims, including IP claims. For example, bilateral investment treaties (BITs) include chapters that envision binding investor-state dispute settlement (ISDS) before an international arbitration panel. These agreements typically define IP as an “investment,” which thus gives investors a private right of action against a country that directly or indirectly expropriates their IP (for example, by using it without authority or by enacting laws that do not respect IP obligations), or which otherwise denies them fair and equitable treatment.188 With the growth of RTAs witnessed in the last two decades, it can be expected that recourse to the dispute settlement mechanisms will increase. It should, however, be emphasized that the ISDS system is rarely a direct tool for IP enforcement, but allows recourse against a State, not a private party. Furthermore, it is criticized as giving investors too much power over the structure of national laws and might be considered a threat to the core principle of territoriality. Indeed, these provisions are becoming exceedingly contentious in the negotiation of trade agreements.189

3.2 Alternative Enforcement Mechanisms

The challenges inherent in addressing increasingly international IP transactions with territoriality-rooted enforcement mechanisms, with the non-negligible risk of having to deal with a multitude of procedures in different jurisdictions and potentially inconsistent outcomes, are driving many parties to opt for private dispute resolution procedures as an (p. 719) alternative to going to court.190 Alternative dispute resolution can range from procedures that assist the parties to achieve a negotiated resolution of their dispute (such as mediation), to various types of independent determinations as to the merits of the dispute or certain aspects of it (such as arbitration or expert determination). Following are two examples of ADR procedures that play a role in cross-border enforcement of IP.191

3.2.1 Arbitration

Arbitration, a procedure in which a dispute is submitted, by agreement of the parties, to one or more arbitrators who make a binding decision on the dispute, may allow IP disputes to be resolved in ways that better meet the needs of the disputing parties, particularly in cross-border cases. Like court proceedings, arbitration requires localization and identification of the local laws applicable to the dispute, including the issues of infringement and validity. But in arbitration, these laws are generally chosen by the parties themselves. Thus, any impediment presented by the territorial nature of IP can be negotiated and overcome relatively easily.

Traditionally, there were concerns that disputes involving registered industrial property rights affected the public interest and thus could not be resolved through a private arbitration procedure. These public policy arguments were, however, voiced less frequently vis-à-vis the arbitrability of IP rights such as copyright, know-how, and trade secrets, which are not subject to a public registration system. Increasingly, however, States have come to accept that disputes relating to all types of IP rights are arbitrable.192

Remedies granted through arbitration include most of those rendered by courts, such as damages, injunctions, infringement declarations, as well as measures for the preservation of confidentiality of evidence, the provision of a security, the production of data, and the delivery of goods. The difference between arbitral awards and court judgments is that the former generally carry inter partes and not erga omnes effect. While remedies can have an indirect effect on non-parties, remedies with a direct effect (such as cancellation of a right from the public IP register) are generally not available in these proceedings. When arbitral awards are not followed voluntarily, the 1958 New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards, currently in effect in more than 150 States, helps their enforcement. As such, international arbitration can facilitate the consideration (p. 720) of infringement and validity of multiple parallel IP rights in different States, effectively consolidating what would have been multiple court proceedings into a single action that produces a single award. The parties can thereby avoid the expense and complexity of multi-jurisdictional litigation.193 Arbitration of IP does, however, have its limitations, the most important of which is the requirement that the parties need to consent to its application. This consensual nature makes the process unsuitable for deliberate and intentional acts of infringement.

3.2.2 Privatized Mechanisms of Online IP Enforcement

The digital environment accentuates the challenges of cross-border IP enforcement: application of territorial rights in a largely borderless medium; absence of harmonized legal standards resulting in legal uncertainty; online, transnational, low value, high volume transactions; and quasi-anonymous, geographically-distant participants. Whereas PIL rules aim to address these challenges through the use of concepts like ubiquitous infringement (see Sections 2.1.3, 2.2.6, and 2.2.9), international litigation for large-volume online IP disputes may nevertheless remain economically inaccessible and time-consuming, with inherent jurisdictional risks and legal uncertainty. In order to address the needs and interests of the concerned parties, new enforcement options are developing, which rely particularly on the contractual framework governing privately-managed online spaces, and which range from the domain name system to other online platforms, such as search engines, auction sites, social media platforms, and virtual worlds.194 This Internet infrastructure-based approach operates without reference to the physical location of any of the parties involved, and thus avoids any PIL hurdles. It represents a growing role of privatized enforcement facilitated by private schemes and agreements, with parties opting for contractual certainty and rapid resolution over jurisdictional risk and the cumbersome traditional approach of relying on local law and local courts for territorially-restricted remedies.195

The Uniform Domain Name Dispute Resolution Policy (UDRP) is a prime example. It provides a system, which transcends territoriality by relying on the contractual framework within the Domain Name System.196 Through the UDRP, over 60,000 trademark-based, so (p. 721) called “cybersquatting” disputes, with parties from over 175 countries, have been resolved since 1999.

The infrastructure-based enforcement mechanisms do not replace court proceedings but present efficiencies that are unavailable in the conventional enforcement mechanisms, and offer an attractive alternative to elusive options of enforcing a court judgment against quasi-anonymous parties in distant jurisdictions. Decisions are speedy and quasi-automated, and operate, virtually instantaneously, on anyone in any corner of the planet. Yet, important due process and legitimacy considerations remain outstanding. The relationship between these privately-managed environments and the public legal systems conventionally associated with IP enforcement are not always clear. However, unlike arbitration, recourse to the courts system is typically not excluded, which allows at least for a minimum level of public control. Some of these systems are promoted by, and include some involvement of, public entities. The UDRP, for example, is the product of the First WIPO Internet Domain Name Process and allows for decisions to be challenged in court;197 the online copyright-enforcement mechanisms were largely driven by the US and EU safe harbor provisions and other similar national legislation; and the agreements reached between the IP right holders and Internet intermediaries have been actively facilitated by public entities.198 Nonetheless, the mosaic seen in the application of PIL rules is being replicated in the digital environment.199 And questions abound: What is the limit to delegating adjudicatory roles to private online service providers, which award remedies outside any judicial or administrative process? How can the public guarantee the legitimacy and institutional competence of this essentially private process? What are the review mechanisms to ensure rule of law, fairness, and transparency? Is there a danger that the focus on efficient enforcement will tip the balance in favor of IP owners through easy, quick presumptions concerning rights and infringement?

4. Concluding Remarks

Cross-border IP enforcement in the twenty-first century is a reflection of uncoordinated converging and conflicting views regarding the right approach to the territoriality of IP rights. The issues play out at the national, regional, and international levels, with IP actors seeking the most efficient venue to obtain desired remedies while the judiciary and policy makers endeavor to provide justice, meaningful enforcement, predictability, and legal certainty in cross-border settings. Territoriality nonetheless persists as a robust pillar defining IP relationships in the global and digital environment.

In terms of PIL, a multilateral consensus has been elusive, but the deliberations at the renewed HCCH Judgments Project will be a marker of evolution. Developments in regional (p. 722) and national instruments and jurisprudence mostly clarify the application of existing principles to the new environment and remain closely tied to territorial boundaries. The IP and PIL reform projects, on the other hand, have an aspirational character particularly in addressing circumstances that test the boundaries of IP’s territoriality, such as ubiquitous infringement or disputes involving multiple defendants, and propose rules on jurisdiction and applicable law that depart fairly significantly from traditional notions of PIL. They may provide guidance to courts for more modest departures from strict territoriality and may eventually serve as focal points for international convergence. Careful choice of applicable law(s) may provide a way to respect the territoriality of IP rights while still achieving the benefits of consolidating foreign cases in a single court. Along with PIL, substantive IP law determines where an IP infringement has occurred, and to what extent any foreign element will form part of the substantive claim. Concerns about the effectiveness of individual IP laws in a globalized marketplace may advocate for more expansive approaches, but in the absence of authoritative international guidance, territoriality provides a general yardstick for determining the legitimate reach of local laws in a way that avoids overregulation and international policy conflicts. Further harmonization of IP laws would be helpful, but is currently elusive. Notions of IP law are [re-]interpreted in the cross-border setting, and in the enlarged IP value chain the role of intermediaries, both as enforcers and potential contributors to infringement, is becoming more prominent. As the IP transactional space expands and IP exploitation becomes more instantly global, balancing IP enforcement—cross-border enforcement in particular—with the interests of legitimate users and third parties, and calibrating the (perceived) tension between IP and other basic rights, will be a constant challenge.

While IP enforcement remains largely the domain of domestic courts, which—in the absence of authoritative international coordination—must deal with increasingly complex issues with traditional territorial tools, other fora are emerging. These range from dispute settlement mechanisms in the WTO and regional and bilateral trade arrangements, to alternative dispute resolution mechanisms including arbitration and online administrative procedures facilitated by the contractual web governing the Internet platforms. While the options for cross-border enforcement continue to grow, developments are largely occurring “bottom up”: They are driven by right holders as well as by individual courts.

The landscape of cross-border IP enforcement today is an interface between these various layers of enforcement structures, which comprise fragmented and contextualized sets of rules. Achieving coherence and mutual consistency between the different legal systems and between the distinct regimes of cross-border of IP enforcement is crucial to cross-border commerce: But who is in charge?


(*) Eun-Joo Min and Johannes Christian Wichard have asserted their moral rights to be identified as the authors of this Contribution. The views expressed in this chapter are those of the authors. All websites were last accessed in February 2018, unless otherwise specified.

(1) Apple and Samsung have been embroiled in more than 50 lawsuits around the globe, resulting, unsurprisingly, in conflicting decisions.

(2) See, eg, the Google Transparency Report (<>), accessed on 22 April 2016, which noted that 91,134,421 requests for URL removal had been made in the previous month on the basis of alleged copyright infringement.

(3) See WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (opened for signature 15 December 1993, entered into force 1 January 1995) 1869 UNTS 299 (hereafter TRIPS) arts 44–50.

(4) See TRIPS, preamble and arts 7, 41 and 42.

(5) P Drahos, “The Universality of Intellectual Property Rights: Origins and Development” in WIPO (ed), Intellectual Property and Human Rights (Geneva 1999) 16.

(6) See, eg, D Chisum, “Normative and Empirical Territoriality in Intellectual Property: Lessons from Patent Law” (1997) 37 Virginia Journal of International Law 603 (predicting that territorialism will become an unacceptable obstacle to international trade).

(7) A trademark-based dispute over the domain name <> between Hewlett Packard, US-based trademark holder, and Kim Yong Hwan, the domain name registrant in the Republic of Korea, while unusual in the complexity of the judicial process implicated, is illustrative of the challenges in cross-border IP enforcement. The dispute, initially submitted in August 2000 to the Uniform Domain Name Dispute Resolution Policy (UDRP), resulted in three separate Supreme Court Decisions in the Republic of Korea over the subsequent 11 years: in relation to jurisdiction in 2005 (Case No 2002Da59788), applicable law for tort in 2008 (Case No 2005Da75071), and applicable law for unjust enrichment in 2011 (Case No 2009Da15596).

(8) 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) [2012] OJ L351/1 (hereafter Brussels I Regulation).

(9) Regulation (EC) No 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations [2007] OJ L199 (hereafter Rome II Regulation).

(10) S Symeonides, Codifying Choice of Law Around the World (OUP 2014) 32.

(11) Eight treaties and a protocol were adopted in Montevideo in 1889, including the Treaty on International Civil Law, International Commercial Law and International Procedural Law. The Treaties were revised in 1940. The Montevideo Treaties of 1889 apply to Argentina, Bolivia, Colombia, Paraguay, Peru, and Uruguay; the Montevideo Treaties of 1940 apply to Argentina, Paraguay, and Uruguay; and the Bustamante Code of 1928 applies to 15 States in the Americas. The Bustamante Code is considered the most important Pan-American private international law legislative document of the twentieth century: see A Schulz, A Tuñón, and R Villanueva, “The American Instruments on Private International Law,” HCCH Prel Doc No 31 (2005) 5–13.

(12) The HCCH administers a number of Conventions of relevance for IP proceedings, such as the 1965 Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters, the 1970 Convention on the Taking of Evidence Abroad in Civil or Commercial Matters, and the 2005 Convention on Choice of Court Agreements.

(13) ALI, Intellectual Property: Principles Governing Jurisdiction, Choice of Law and Judgments in Transnational Disputes (ALI Publishers 2008) (hereafter ALI Principles).

(14) European Max Planck Group on Conflict of Laws in Intellectual Property (CLIP), Principles on Conflicts of Laws in Intellectual Property (2011) in Conflict of Laws in Intellectual Property—The CLIP Principles and Commentary (OUP 2013) (hereafter CLIP Principles).

(15) Transparency Proposal on Jurisdiction, Choice of Law, Recognition and Enforcement of Foreign Judgments in Intellectual Property (2009) (hereafter Transparency Proposal) in J Basedow, T Kono, and A Metzger (eds), Intellectual Property in the Global Arena (Mohr Siebeck 2010) 394–402.

(16) Waseda University Global-COE Project, Joint Proposal on the Principles of Private International Law on Intellectual Property Rights (2010) 24 The (Waseda GCOE) Quarterly Review of Corporation and Law and Society (hereafter Joint Korean Japanese Principles).

(17) The influence of these IP and PIL reform projects may be seen in court judgments that make specific reference to them. See, eg, Lucasfilm Ltd v Ainsworth [2011] UKSC 39 [93]–[94]; Case C-170/12 Pinckney v KDG Mediatech AG [2013] ECDR 15, Opinion of AG Jääskinen, para 59; Rundquist v Vapiano SE 798 F Supp 2d 102 (District Court (Columbia) 2011).

(18) Information on the work of the ILA Intellectual Property and Private International Law Committee is available at <>.

(19) Under US law structure and parlance, “personal jurisdiction” requires that the defendant has sufficient contacts with the place where the court is located, and “subject matter jurisdiction” requires that a court has jurisdiction over the legal issues in dispute; both personal jurisdiction as well as subject matter jurisdiction are required for a US court to exercise jurisdiction over the dispute.

(20) Justice Hugh Laddie referred to the complexity of applying private international law in IP proceedings in Sepracor Inc v Hoechst Marion Roussel Limited ea [1999] All ER (D) [80]: “A less sensible system could not have been dreamt up by Kafka.”

(21) In some States with a common law tradition, a broader understanding of general jurisdiction based on the defendant’s presence in the forum may apply, expanding to the courts of a State where the defendant entertains such systematic and continuous activities that it can be said to be “at home” or where the defendant has been served with process. These broader bases of jurisdiction are in practice narrowed through the doctrine of forum non conveniens, thus reaching similar outcomes to the general jurisdiction as applied in civil law States. See the discussion in CLIP Principles (n 14) para 2:101.N02.

(22) Interim Text, Summary of the Outcome of the Discussion in Commission II of the First Part of the Diplomatic Conference 6–20 June 2001 in (2002) 77 Chicago-Kent L Rev 1015 (hereafter Interim Text); cf RC Dreyfuss, “An Alert to the Intellectual Property Bar: The Hague Judgments Convention” (2001) University of Illinois L Rev 421.

(23) See HCCH Judgments Project <> and in Section 2.3.

(24) Interim Text, art 3 and n 16.   

(25) Brussels I Regulation, recital 15 and art 4(1).

(26) Bustamante Code, art 318.

(27) Montevideo Treaty on International Civil Law, art 56; Montevideo Treaty on International Commercial Law, art 10.

(28) Swiss PIL Act 1987, art 109(1) and (2); Japanese Code of Civil Procedure (2012) art 3–2.

(29) ALI Principles, § 201; CLIP Principles, art 2:101; Transparency Proposal, art 101; Joint Korean Japanese Principles, art 201.

(30) Joined Cases C-509/09 eDate Advertising GmbH v X and C-161/10 Martinez v MGN Ltd [2011] ECR I-10269, para 52.

(31) E Treppoz, “Jurisdiction in internet-related intellectual property disputes” (Conference on Jurisdiction and Dispute Resolution in the Internet Era, Geneva, 17–18 June 2015) <>; E Treppoz, “Jurisdiction in the Cyberspace” (2016) 26 Swiss Review of International and European Law 273.

(32) See also Case No 32/2015 Galí c Estado de Qatar (Barcelona Provincial Court of Appeal 2015), where the Court found that a Spanish court had jurisdiction over the infringement of a Spanish citizen’s copyright (moral rights of disclosure, paternity and integrity) by a Qatari entity and the State of Qatar that commissioned the construction of an infringing lamp model and its installation on a street in Qatar. For a discussion of moral rights in general, see Jane Ginsburg’s chapter in this volume.

(33) CLIP Principles, para 2:203.C04; J Fawcett and P Torremans, Intellectual Property and Private International Law (2nd edn, OUP 2011) paras 5.63–5.64. See also Case C-220/88 Dumez France SA v Hessische Landesbank [1990] ECR I-49, paras 19–22; Case C-364/93 Antonio Marinari v Lloyds Bank plc [1995] ECR I-2719, para 21; Case C-523/10 Wintersteiger AG v Products 4U Sondermaschinenbau GmbH [2012] ETMR 31, paras 22–25 (limiting the option for the plaintiff to sue in his domicile). See also ALI Principles, § 207 (listing “the presence of the plaintiff in that State” as one of the “Insufficient Grounds for Jurisdiction over Transnational Disputes”).

(34) Brussels I Regulation, recital 16; Case C-360/12 Coty Germany GmbH v First Note Perfumes NV [2014] ETMR 49, para 47; Wintersteiger (n 33) para 18; Case C-441/13 Hejduk v EnergieAgentur.NRW GmbH [2015] ECDR 10, para 19.

(35) International Shoe v Washington 326 US 310 (1945) 316.

(36) Republic of Korea PIL Act 2001, art 2. See also Case No 2009Da19093 (Republic of Korea Supreme Court 2011).

(37) At the multilateral level the relevant negotiations during the HCCH Judgments Project did not result in any consensus language on torts jurisdiction, and the 2001 HCCH Interim Text remained bracketed with the explanation that “the draft provision would have to remain under consideration in light of e-commerce and IP issues.” See Interim Text, art 10 and ns 66–70.

(38) Montevideo Trademark Treaty 1889, art 4. This Treaty has been ratified by Argentina, Bolivia, Brazil, Paraguay, and Uruguay. While its practical value has been questioned, reference to the Treaty has been made, for example, in De Estrada, Martina María Injunction Proceedings Case No D.38.XLVI CSJN Revista No 78 (Supreme Court of Argentina 2011).

(39) Brussels I Regulation, art 7(2).

(40) Case C-21/76 Handelskwekerij GJ Bier BV v Mines de potasse d’Alsace SA [1976] ECR 1735, para 19.

(41) For criticism see, eg, Fawcett and Torremans (n 33) paras 5.42–5.114; P Torremans, “Jurisdiction for Cross-Border Intellectual Property Infringement Cases in Europe” (2016) 53 Common Market L Rev 1630–1636; C Heinze, “A Framework for International Enforcement of Territorial Rights: The CLIP Principles on Jurisdiction” in J Basedow, T Kono, and A Metzger (eds), Intellectual Property in the Global Arena (Mohr Siebeck 2010) 62–69.

(42) Case C-68/93 Shevill v Presse Alliance SA [1995] ECR I-415, paras 30–33.

(43) Hejduk (n 34) para 36; Pinckney (n 17) para 45.

(44) Japanese Code of Civil Procedure (2012) art 3-3(viii); Case No H22 (ne)10001 (Japanese IP High Court 2010).

(45) Swiss PIL Act 1987, art 109.

(46) CLIP Principles, arts 2:202 and 2:203(1) and paras 2:202:C01-2:202.N20; Fawcett and Torremans (n 33) paras 11.155–11.157; Torremans (n 41) 1635; Heinze (n 41) 65.

(47) ALI Principles, § 204.

(48) A Kur and B Ubertazzi, “The ALI Principles and the CLIP Project: A Comparison” in S Bariatti (ed), Litigating Intellectual Property Rights Disputes Cross-Border: EU Regulations, ALI Principles, CLIP Project (CEDAM 2010) 103–104.

(49) See Section 2.1.2.

(50) Wintersteiger (n 33) para 38; Hejduk (n 34) para 25.

(51) Wintersteiger (n 33) paras 27 and 29.

(52) Pinckney (n 17) para 44; Hejduk (n 34) para 34.

(53) Hejduk (n 34) para 35.

(54) In the trademark case of Hotel Maritime, the Hamburg District Court asserted jurisdiction based on mere accessibility, while the German Federal Supreme Court adopted an additional requirement that the website be directed at the German public: see (2003) International Litigation Procedure 297 and (2005) International Litigation Procedure 550; also Fawcett and Torremans (n 33) paras 10.64–10.78 and RM Janal, Europäisches Zivilverfahrensrecht und Gewerblicher Rechtsschutz (Mohr Siebeck 2015) 339.

(55) For copyright see, eg, Mavrix Photo Inc v Brand Techs Inc 647 F 3d 1218 (9th Circuit 2011); ALS Scan, Inc v Digital Service Consultants, Inc 293 F 3d 707 (4th Circuit 2002). For trademarks see, eg, McBee v Delica 417 F 3d 107, 124 (1st Circuit 2005).

(56) Penguin Group (USA) Inc v American Buddha 640 F 3d 497 (2nd Circuit 2011) (responding to a certified question on the scope of New York’s long arm jurisdiction).

(57) Appeal No 9235751-09.2003.8.26.0000 (Brazil TJSP São Paulo State Court of Appeals Superior).

(58) P Torremans, “Jurisdiction in intellectual property cases” in P Torremans (ed), Research Handbook on Cross-Border Enforcement of Intellectual Property (Edward Elgar 2015) 386.

(59) CLIP Principles, art 2:203(2) and paras 2:203.C09–2:203.C13.

(60) ALI Principles, § 204(1) and (2).

(61) A Christie, “Private International Law Issues in Online Intellectual Property Infringement Disputes with Cross-Border Elements—An Analysis of National Approaches” (2015) <>.

(62) See Christie (n 61) paras 2.51–2.55.

(63) Brussels I Regulation, art 8(1).

(64) See Fawcett and Torremans (n 33) para 5.125; Janal (n 54) 362.

(65) Case C-539/03 Roche Nederland BV and Others v Frederick Primus and Milton Goldenberg [2006] ECR I-6535, paras 26 and 41. For criticism, see Fawcett and Torremans (n 33) paras 11.06–11.10; Torremans (n 41) 1636–1642; Janal (n 54) 339.

(66) Case C-145/10 Eva-Maria Painer v Standard VerlagsGmbH [2011] ECR I-12533, paras 80–81. See Torremans (n 58) 392; Torremans (n 41) 1642; Janal (n 54) 352.

(67) Japanese Civil Procedure Code (2012) arts 3–6 and 38 (requiring the “same legal and factual grounds”).

(68) Asahi Metal Industries Co v Superior Court 480 US 102, 113 (1987) and other cases cited in CLIP Principles, para 2:206.N03, n 71.

(69) CLIP Principles, art 2:206; Heinze (n 41) 72.

(70) ALI Principles, § 206(1) and cmt d (2).

(71) Joint Korean Japanese Principles, art 208 and accompanying explanatory notes. See also art 110 (on subjective joinder).

(72) Torremans (n 58) 394.

(73) Interim Text, art 12.

(74) Brussels I Regulation, art 24 (4). M Pertegás Sender, Cross-border Enforcement of Patent Rights (OUP 2002) paras 4.06–4.80.

(75) Case C-4/03 Gesellschaft für Antriebstechnik mbH & Co KG (GAT) v Lamellen und Kupplungsbau Beteiligungs KG (LUK) [2006] ECR I-6509, para 25.

(76) Heinze (n 41) 56; M Vicente, La propriété intellectuelle en droit international privé (Brill 2009) 400; Torremans (n 41) 1643–1644; Torremans (n 58) 395–404; Janal (n 54) 372. On the other hand, the CJEU has recognized the jurisdiction of a court to issue provisional measures relating to a “foreign” patent even if an invalidity defense had been raised, on the basis of Brussels I Regulation, art 35, which allows provisional measures to be obtained from a national court, even if the courts of another State have jurisdiction as to the substance of the matter; see Case C-616/10 Solvay SA v Honeywell Fluorine Products Europe BV [2012] All ER (D) 127, paras 36, 40, and 50.

(77) Japanese Code of Civil Procedure (2012) arts 3–5(iii); KK Coral Corp v Marine Bio KK Case No 1943(wa)/2002 (Tokyo District Court 2003).

(78) Case No 2009Da19093 (Republic of Korean Supreme Court 2011).

(79) 28 USC § 1338.

(80) Voda v Cordis Corp 476 F 3d 887, 899 (Federal Circuit 2007); Mars Inc v Nippon Conlux Kabushiki-Kaisha 24 F 3d 1368 (Federal Circuit 1994).

(81) Boosey & Hawkes Music Publishers v The Walt Disney Co 145 F 3d 481 (2nd Circuit 1998); London Film Prods v Intercontinental Comms 580 F Supp 47 (District Court (Southern District of New York) 1984).

(82) See, eg, Murray v British Broad Corp 81 F 3d 287 (2nd Circuit 1996); the doctrine is no longer applicable in the EU if a court has general jurisdiction under Brussels I Regulation, art 4: Case C-281/02 Andrew Owusu v NB Jackson [2005] ECR I-1383, paras 37–46.

(83) Gallo Africa v Sting Music [2010] ZASCA 96.

(84) Lucasfilm (n 17). See also Crosstown Music Co 1 LLC v Rive Droite Music Ltd [2010] EWCA Civ 1222.

(85) KK Sony Computer Entertainment v Van Veen (2007) 71 IPR 179 (NZHC); Jedis Limited v Vodafone New Zealand Limited [2012] NZHC 2448.

(86) Stewart v Franmara Inc [2012] NZHC 683.

(87) ALI Principles, § 211.

(88) CLIP Principles, art 2:401(1).

(89) CLIP Principles, art 2:401(2); Heinze (n 41) 61.

(90) Transparency Proposal, art 103.

(91) The ALI Principles specifically address the distinction between jurisdiction and applicable law, stating (in § 103) that “[c]ompetence to adjudicate does not imply application of the forum State’s substantive law.”

(92) Lucasfilm (n 17) (UK Supreme Court overruling the Court of Appeal’s decision); London Film Productions Ltd v Intercontinental Communications, Inc 580 F Supp 47 (District Court (Southern District of New York) 1984); Rundquist (n 17); KK Sony Computer Entertainment v van Veen (2006) 71 IPR 179 (NZHC).

(93) See A Peukert, “Territoriality and Extra-territoriality in Intellectual Property Law” in G Handl, J Zekoll, and P Zumbansen (eds), Beyond Territoriality: Transnational Legal Authority in an Age of Globalization (Queen Mary Studies in International Law 2011) 194.

(94) Paris Convention for the Protection of Industrial Property 1883 and Berne Convention for the Protection of Literary and Artistic Works 1886, discussed in detail by Sam Ricketson in his chapter in this volume.

(95) See J Basedow, “Foundations of Private International Law in Intellectual Property” in Basedow, Kono, and Metzger (n 41) 9; J Drexl, “Internationales Immaterialgüterrecht” in J Säcker, R Rixecker, and H Oetker (eds), Münchener Kommentar zum Bürgerlichen Gesetzbuch, Vol 11 (6th edn, CH Beck 2015) paras 70–74; Fawcett and Torremans (n 33) para 13.43; J Ginsburg, “Private International Law Aspects of the Protection of Works and Objects of Related Rights Transmitted Through Digital Networks,” WIPO Doc GCPIC/2 (1998) <>.

(96) ALI Principles, Reporters’ Notes 120–21; Drexl (n 95) para 70; Basedow (n 95) 12–13; Fawcett and Torremans (n 33) paras 12.25–12.26; E Ulmer, Die Immaterialgüterrechte im Internationalen Privatrecht (Carl Heymanns 1975) 11.

(97) TRIPS Agreement n 3 accompanying art 3; see Fawcett and Torremans (n 33) paras 12.66–12.68.

(98) Peukert (n 93) 201–202; Drexl (n 95) para 12.

(99) Hejduk (n 34) para 35.

(100) Rome II Regulation, recital 26 and art 8(1).

(101) Swiss PIL Act 1987, art 110; People’s Republic of China Laws Applicable to Foreign-Related Civil Relations 2010, art 50 (“Liability for infringing intellectual property rights is governed by the law of the place where protection is sought. The parties may also choose to apply the law of the forum after the infringement occurs;” translated by S Lu, “Law of the People’s Republic of China on the Laws Applicable to Foreign-Related Civil Relations (full text)” (2013) 1(1) Chinese Journal of Comparative Law (2013) (185).

(102) ALI Principles, § 301, para 1; CLIP Principles, arts 3:102 and 3:601. The Transparency Principles, by contrast, refer in art 301 to the law of the place of the results of the exploitation (“market impact”); see R Kojima, R Shimanami, and M Nagata, “Applicable Law to Exploitation of Intellectual Property Rights in the Transparency Proposal” in Basedow, Kono, and Metzger (n 41) 179–227. For a general discussion, see also R Matulionyté, “IP and Applicable Law in Recent International Proposals: Report for the International Law Association” (2012) 3 Journal of Intellectual Property, Information Technology and Electronic Commerce Law 263.

(103) Republic of Korea PIL Act 2001, art 24 (concerning the protection of IP); contrast art 32 (“[a] tort shall be governed by the law of the place where it occurred”). See also Case No 2007Na80093 (Seoul High Court 2008).

(104) Japanese PIL Act 2006, art 17.

(105) Kojima et al (n 102) 182–184; T Kono, “Cross-border infringement of intellectual Property in Japan” in Torremans (n 58) 125–129.

(106) Itar-TASS v Russian Kurier 153 F 3d 82 (2nd Circuit 1998); see also M Leaffer, “Cross-border enforcement of intellectual property rights in U.S.” in Torremans (n 58) 37–38.

(107) Peukert (n 93) 193; A Metzger, “Applicable Law under the CLIP Principles” in Basedow, Kono, and Metzger (n 41) 171; Ulmer (n 96) 13–15.

(108) ALI Principles, § 321(1) and (2). F Dessemontet, “The Law Applicable under the ALI Principles: Choice of Law in Transborder Litigation” in Bariatti (n 48) 39.

(109) This approach has been criticized by Drexl (n 95) para 334 as tending to favor the application of laws of larger markets.

(110) Transparency Proposal, art 302 calls upon “the law of the place where the results of the exploitation of intellectual property are to be maximized,” unless this leads to an “extremely unreasonable” result with regard to a specific State: Kojima et al (n 102) 199–200.

(111) CLIP Principles, art 3:603(1); Metzger (n 107) 173–176.

(112) CLIP Principles, art 3:603(2).

(113) CLIP Principles, art 3:603(3).

(114) See, eg, Litecubes, LLC v Northern Light Products, Inc 523 F 3d 1353, 1366 (Federal Circuit 2008) (“whether the allegedly infringing act happened in the United States is an element of the claim for patent infringement, not a prerequisite for subject matter jurisdiction”); Shropshire v Canning 809 F Supp 2d 1139, 1143 (District Court (Northern District of California) 2011) (noting a lack of consensus on whether to treat the extraterritorial reach of the Copyright Act as a matter of subject matter jurisdiction or an element of the claim).

(115) The WTO dispute brought by India and Brazil in European Union and a Member State—Seizure of Generic Drugs in Transit (WTO Disputes DS408 and DS409) regarding seizures on patent infringement grounds of generic drugs originating in India but transiting through ports and airports in the Netherlands to Brazil and other third country destinations, reflects the sensitivities surrounding any “extra-territorial” effect of cross-border enforcement.

(116) See Peukert (n 93) 203–210 (concerning “inbound regulation”).

(117) Case C-324/09 L’Oréal SA v eBay International AG [2011] ECR I-6011, paras 64–65; Case C-173/11 Football Dataco Ltd v Sportradar GmbH [2013] 1 CMLR 29, paras 36–39; the approach is also applied by English courts: see, eg, Omnibill (Pty) Ltd v Egpsxxx Ltd [2014] EWHC 3762 (IPEC) (deciding that copyright infringement occurs in the UK if the website containing the infringing material is targeted at the public in the UK).

(118) Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights [2003] OJ L 196/8.

(119) Case C-98/13 Martin Blomqvist v Rolex SA [2014] ECDR 10, paras 34–35; see also O Vrins and M Schneider, “Cross-border enforcement of intellectual property: The European Union” in Torremans (n 58) 289–293.

(120) Case C-5/11 Titus Alexander Jochen Donner [2015] ECDR 22, paras 26–30.

(121) Case C-281/05 Montex Holdings Ltd v Diesel SpA [2006] ECR I-10881, paras 23–27.

(122) Joined Cases C-446/09 Koninklijke Philips Electronics NV v Lucheng Meijing Industrial Company Ltd and C-495/09 Nokia Corporation v Her Majesty’s Commissioners of Revenue and Customs [2011] ECR I-12435, paras 61, 71, and 78; see also Vrins and Schneider (n 119) 277–285.

(123) Directive (EU) 2015/2436 of 16 December 2015 to approximate the laws of the Member States relating to trade marks [2015] OJ L 336 (hereafter Trade Marks Directive) recital 22 and art 10.4.

(124) Hotel Maritime (n 54).

(125) [2012] GRUR 621 (German Federal Supreme Court).

(126) Society of Composers, Authors and Music Publishers of Canada v Canadian Association of Internet Providers 2004 SCC 45, paras 1 and 60–63.

(127) McBee (n 55), referring also to the “substantial effects” test developed by the US Supreme Court in Hartford Fire Insurance Co v California 509 US 764 (1993).

(128) Steele v Bulova Watch Co, Inc 344 US 280 (1952). See also M Leaffer, “Cross-border enforcement of IP rights in US Law” in Torremans (n 58) 9–15.

(129) GB Marketing USA v Gerolsteiner Brunnen GmbH & Co 782 F Supp 763, 773 (District Court (West District of New York) 1991).

(130) Shropshire (n 114).

(131) Litecubes, LLC (n 114).

(132) Subafilms, Ltd v MGM-Pathe Communications Co 24 F 3d 1088 (9th Circuit 1994). But see Curb v MCA Records, Inc 898 F Supp 586 (District Court (Middle District of Tennessee) 1995).

(133) NTP v Research in Motion 418 F 3d 1282 (Federal Circuit 2005). See also 35 USC § 272(f) (providing for contributory infringement or inducement of infringement when direct infringement occurs outside the US but supply of the components of a patented invention for assembly abroad takes place in the US).

(134) Prepaid Cards [2010] GRUR 122 (Düsseldorf Court of Appeals).

(135) I Haupt, “Territorialitätsprinzip im Patent- und Gebrauchsmusterrecht bei grenzüberschreitenden Fallgestaltungen” (2007) GRUR 187; Peukert (n 93) 209–210.

(136) Card Reader (2002) 56 Minshu 1551 (Supreme Court of Japan); cf Kojima et al (n 102) 183, 188. See also Case No 2014Da42110 (Republic of Korean Supreme Court 2015) (involving the production in Korea of components that had no use other than producing the patented product, which took place abroad, and deciding that an act of direct infringement must take place in Korea).

(137) See Peukert (n 93) 210–223 (concerning “outbound regulation”).

(138) Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights [1994] OJ L 227/1, art 13(2)(e); Regulation (EU) 2015/2424 of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark [2015] OJ L341/21, art 9(3)(c); Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs [2002] OJ L 3/1, art 19(1); Trade Marks Directive, art 10(3)(c); Directive 98/71/EC of the European Parliament and the Council of 13 October 1998 on the legal protection of designs [1998] OJ L 289/28, art 12.

(139) National Football League v PrimeTime 24 Joint Venture 211 F 3d 10 (2nd Circuit 2000).

(140) Sender Felsberg [2003] GRUR 328 (German Federal Supreme Court, I ZR 175/00) (stating that, when calculating damages, the court in the country of transmission should take into account whether damages can also be claimed in the country of reception).

(141) Los Angeles New Service v Reuters Television International, Inc 149 F 3d 987 (9th Circuit 1998); Tire Engineering & Distribution, LLC v Shandong Linglong Rubber Co, Ltd 682 F 3d 292 (4th Circuit 2012).

(142) Microsoft Corp v AT&T Corp 550 US 437 (2007) (distinguishing patent and copyright disputes).

(143) CLIP Principles, art 3:602(1). Art 3:602(1) shares underlying motivations with CLIP Principles, art 2:202, discussed above: see paras 3:602:C01–3:602:C04; Metzger (n 107) 173.

(144) The Joint Recommendation was adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of WIPO in September 2001. While the Joint Recommendation lacks the force of an international treaty, it has strong persuasive authority as an expression of international consensus, as demonstrated by the express reference to it in, eg, Hotel Maritime (n 54) and L’Oréal v eBay (n 117), Opinion of the Advocate General Jääskinen, para 129. See also Drexl (n 95) paras 327–30; JC Wichard, “The Joint Recommendation Concerning Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet” in J Drexl and A Kur (eds), Intellectual Property and Private International Law (Hart 2005) 257–264.

(145) WIPO Joint Recommendation, arts 2 and 3.

(146) WIPO Joint Recommendation, arts 13–15, referred to, eg, by the German Federal Supreme Court in Hotel Maritime (n 54).

(147) CLIP Principles, arts 2:604.1, 2:604.2 and 3:603.3.

(148) See, eg, Louis Vuitton Malletier v eBay Inc (2009) 40 IIC 611 (Commercial Tribunal of Paris 2008); Tiffany Inc v eBay Inc 600 F 3d 93 (2nd Circuit 2010); Case No 2010Ma817 (Republic of Korean Supreme Court 2012); cf S Neumann, Die Haftung der Intermediäre im Internationalen Immaterialgüterrecht (Nomos 2014).

(149) See, eg, US Digital Millennium Copyright Act (DMCA) 1998 § 512; Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market [2000] OJ L178, art 14.

(150) L’Oréal v eBay (n 117) paras 125–144.

(151) Case C-314/12 UPC Telekabel Wien GmbH v Constantin Film Verleih GmbH and Wega Filmproduktionsgesellschaft mbH [2014] ECDR 12, para 64.

(152) Equustek Solutions Inc v Morgan Jack et al 2014 BCSC 1063 (Canada); Equustek Solutions Inc v Google Inc 2015 BCCA 265 (Canada); Google has filed an appeal before the Supreme Court of Canada.

(153) Copyright, Designs and Patents Act (CDPA) 1988 s 97A (UK); Twentieth Century Fox Film Corp v British Telecommunications Plc [2011] EWHC 1981 (Ch); 1967 Limited v British Sky Broadcasting Limited [2014] EWHC 3444 (Ch); Twentieth Century Fox v Sky UK Limited [2015] EWHC 1082 (Ch); Cartier International v BSkyB [2016] EWCA Civ 658 (ordering site-blocking injunctions in trademark action). Goldesel [2015] (German Federal Supreme Court, I ZR 174/14), cf M Schaefer, “ISP Liability for Blocking Access to Third-Party Infringing Content” (2016) EIIR 633–638. See also Singaporean Copyright Act 2014; Australia Copyright Amendment (Online Infringement) Act 2015.

(154) In Dallas Buyers Club LLC v iiNet Limited [2015] FCA 317, the Federal Court of Australia ordered major ISPs to disclose details of their respective customers to copyright holders for alleged illegal movie downloads. In doing so, the Court imposed conditions to safeguard users’ privacy and prevent potential speculative invoicing by the copyright holders.

(155) See, eg, R Arnold, “Website-blocking Injunctions: The Question of the Legislative Basis” (2015) 37 European Intellectual Property Rev 623; A Marsoof, “The Blocking Injunction—A Critical Review of Its Implementation in the United Kingdom Within the Legal Framework of the European Union” (2015) 46 IIC 632.

(156) UPC Telekabel Wien (n 151) paras 62–64.

(157) L’Oréal v eBay (n 117) paras 135–144.

(158) Case No 2009Da19093 (Republic of Korean Supreme Court), appealed from Case No 2007Na96470 (Seoul High Court). Case No 2007Na96470 is of interest also for the reference made by the Court to The Hague Convention on Choice of Court Agreements, following the reference by the Seoul District Court to the Interim Text. See also LG Display Co, Ltd v Obayashi Seikou Co, Ltd 919 F Supp2d 17 (District Court (Columbia) 2013); M Pertegás, “HCCH and Intellectual Property” (WIPO-ILA Seminar on IP and Private International Law, 16 January 2015) <>.

(159) The Inter-American Convention on Extraterritorial Validity of Foreign Judgments and Arbitral Awards 1979, Convention on Legal Assistance and Legal Relations with Respect to Civil, Family, and Criminal Matters 1993, Montevideo Treaty on International Procedural Law 1940, Riyadh Arab Agreement for Judicial Cooperation 1979, and Brussels I Convention would appear to regard IP as falling within their scope.

(160) In LG Display (n 158), the US District Court stated that “[international comity] remains a complex and elusive concept [ … ] more an aspiration than a fixed rule, more a matter of grace than a matter of obligation.”

(161) See, eg, Brussels I Regulation, art 45(1)(e)(ii); German Code of Civil Procedure (2005) § 328(1) n 1, as well as the 2015 Proposed Draft Text of the HCCH Working Group on the Judgments Project (hereafter 2015 HCCH Proposed Draft Text) art 5 para 3, all allowing the refusal of enforcement for lack of jurisdiction. Cf the discussion on exclusive jurisdiction in Section 2.1.5.

(162) See, eg, Brussels I Regulation, art 45(1)(a); Japanese Code of Civil Procedure (2012) art 118; Swiss PIL Act 1987, art 27; German Code of Civil Procedure (2005) § 328(1) n 4.

(163) P Asensio “Recognition and enforcement of judgments in intellectual property litigation: the CLIP principles” in Basedow, Kono, and Metzger (n 41) 282–283.

(164) Case C-38/98 Régie nationale des usines Renault SA v Maxicar SpA [2000] ECR I-2973, paras 30, 33–34.

(165) SARL Louis Féraud International v Viewfinder 406 F Supp2d 274 (District Court (Southern District of New York) 2005) 281. Nevertheless, on appeal the defense succeeded on the basis of free speech, where the court accepted that the lower level of protection for free speech under the French law was manifestly incompatible with US public policy: see SARL Louis Féraud International v Viewfinder 489 F 3d 474 (2nd Circuit 2007), from Fawcett and Torremans (n 33) para 19.20.

(166) Fawcett and Torremans (n 33) para 19.02; cf 2015 HCCH Proposed Draft Text, art 9 para 1 (“Recognition or enforcement of a judgment may be refused if, and to the extent that, the judgment awards damages, including exemplary or punitive damages, that do not compensate a party for actual loss or harm suffered”).

(167) Miller Import Corp v Alabastres Alfredo SL STS 13 November 2001, Exequatur 2039/1999; from Fawcett and Torremans (n 33) para 19.46.

(168) Japanese Supreme Court Judgment of 11 July 1997, cited in CLIP Principles, para 4:402.C05.

(169) Swiss PIL Act 1987, art 111.

(170) 2017 HCCH Preliminary Draft Convention, arts 2, 5, 6, 7, and 9bis.

(171) Regulation (EU) 2015/2424 of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark [2009] OJ L341/21 (hereafter EUTMR).

(172) EUTMR, art 97.

(173) EUTMR, art 98. In Coty Germany (n 34) paras 24–38, the CJEU observed that jurisdiction for EUTM infringement and non-infringement actions must be established on the sole basis of the EUTMR provisions.

(174) Case C-235/09 DHL Express France SAS v Chronopost SA [2011] ECR I-2801, paras 44–48. In Enterprise v Europcar [2015] EWHC 300 (Ch), the territorial scope of an injunction for EUTM infringement was addressed by the UK court, which held that, even though the case involved an EUTM, the injunction (as well as the inquiry as to damages) should be limited to the UK in the absence of extensive evidence to justify an EU-wide injunction.

(175) EUTMR, art 101.

(176) The EPC is legally independent from the EU and forms an international organization in its own right with membership beyond EU Member States.

(177) Regulation (EU) No 1257/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection [2012] OJ L 361/1; Council Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements [2012] OJ L 361/89.

(178) OJ C175/01. To date the Agreement covers all EU Member States except Spain, Poland, and Croatia.

(179) Select Committee of Unitary Patent Protection and the Preparatory Committee of the Unified Patent Court, “An Enhanced European Patent System” (2014) <>; cf A Plomer, “A Unitary Patent for a (Dis)United Europe: The Long Shadow of History” (2015) 46 IIC 508; H Ullrich, “The European Patent and Its Courts: An Uncertain Prospect and an Unfinished Agenda” (2015) 46 IIC 1; F Baldan and E van Zimmeren, “The Future Role of the Unified Patent Court in Safeguarding Coherence in the European Patent System” (2015) 52 Common Market L Rev 1529.

(180) See, eg, Max Planck Institute for Intellectual Property and Competition Law, “The Unitary Patent Package: Twelve Reasons for Concern” (2012) <>.

(181) JT International SA v Commonwealth of Australia [2012] HCA 43.

(182) See the arbitration between Philip Morris Asia Limited (PMA) and the Australian Government under the Hong Kong–Australia BIT (under UNCITRAL Rules of Arbitration, seat of arbitration—Singapore and the Permanent Court of Arbitration, decided in December 2015); and the arbitration between Philip Morris and Uruguay under the Uruguay and Switzerland BIT (ICSID arbitration, decided in July 2016).

(183) Australia—Certain Measures Concerning Trademarks and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging (WTO Disputes DS434, DS435, DS441, DS458, and DS467).

(184) TRIPS, arts 41–61.

(185) A Taubman, A Practical Guide to Working with TRIPS (OUP 2011) 20–28.

(186) China—Measures Affecting the Protection and Enforcement of Intellectual Property Rights (WTO Dispute DS362). To date, 37 TRIPS-related cases have been disputed under the WTO dispute settlement system: see <>.

(187) In the period 1948–1994, the GATT received 124 notifications of RTAs, and since the creation of the WTO in 1995, over 400 additional arrangements have been notified: see <>.

(188) F Abbott, T Cottier, and F Gurry, International Intellectual Property in an Integrated World Economy (2nd edn, Wolters Kluwer 2011) 51. An example is the International Centre for Settlement of Investment Disputes (ICSID) arbitration in AHS Niger v Republic of Niger (ICSID Case No ARB/11/11), where infringement of domestic IP rights was one of the allegations made by the claimant. The Tribunal found Niger in violation of the Investment Agreement, but rejected the claimants’ allegations regarding IP infringement. See also H Grosse Ruse-Khan, “Litigating Intellectual Property Rights in Investor-State Arbitration: From Plain Packaging to Patent Revocation,” Max Planck Institute for Innovation & Competition Research Paper No. 14-13.

(189) See, eg, “Trans-Pacific Partnership Seen as Door for Foreign Suits Against US” New York Times (New York, 25 March 2015) (“This transatlantic trade deal is a full-frontal assault on democracy”); “Opinion” The Guardian (London, 4 November 2013) (describing ISDS as “the remarkable ability it would grant big business to sue the living daylights out of governments”).

(190) The WIPO International Survey on Dispute Resolution in Technology Transactions (2013) shows a generally perceived trend towards out-of-court dispute resolution mechanisms. While court litigation remains the most common stand-alone dispute resolution clause (32 percent) in technology-related agreements, arbitration followed closely behind (30 percent).

(191) There are numerous other examples of the use of ADR for IP enforcement, including the self-regulation of trade fairs, the regulation of trading names, etc. For an overview, see T Cook, “Alternative Dispute Resolution as a Tool for Intellectual Property Enforcement” WIPO/ACE/9/3 (2014) <>.

(192) Belgium (Patent Act 1997, art 73) and Switzerland (Decision of the Swiss Federal Institute for Intellectual Property (IGE)) allow, among other things, the revocation of a patent through arbitration and the entry of such revocation in the Register. The US Patent Act (35 USC §294) also stipulates the arbitrability of patent validity, enforceability and infringement issues. Australia and the UK have taken the middle ground by allowing a challenge to patent validity to be raised and pursued in an arbitration while limiting the effect of the award as between the parties (inter partes) with no effect on the national register: T Cook and A Garcia, International Intellectual Property Arbitration (Wolters Kluwer 2010) ch 4.

(193) The WIPO Arbitration and Mediation Center provides examples of arbitration as a means of cross-border IP enforcement at <>.

(194) See DG Post, “Internet Infrastructure & IP Censorship” IP Justice Journal (1 August 2015) <>; J de Werra, “Alternative Dispute Resolution in Cyberspace: The Need to Adopt Global ADR Mechanisms for Addressing the Challenges of Massive Online Micro-Justice” (2016) 26 Swiss Review of International and European Law 289–306.

(195) A study presented at the WIPO Advisory Committee on Enforcement reviewed 16 voluntary enforcement mechanisms, adopted by ten different online platforms, to address counterfeiting, piracy, and other IPR infringements. The review found that voluntary mechanisms are prevalent and cover all traditional IPR infringements. The core remedy provided by the mechanisms is some version of “take-down,” including removing or blocking access to infringing material. Enterprise-level mechanisms utilize an in-house procedure that provides little, or no, transparency of operation or outcome. See A Christie, “Voluntary Mechanisms for Resolving IP Disputes” WIPO/ACE/8/10 (2012) <>.

(196) For information on the establishment of the UDRP, see “Final Report of the First WIPO Domain Name Process,” WIPO Publication No 439 (1999) <>.

(197) UDRP, para 4(k).

(198) See, eg, J Bergevin, “Preventive Actions being Developed by the European Commission to Complement Ongoing Enforcement Measures with a View to Reducing the Size of the Market for Pirated or Counterfeit Goods” WIPO/ACE/9/20 (2013).

(199) T Schultz, “Carving up the Internet: Jurisdiction, Legal Orders, and the Private/Public International Law Interface” (2008) 19 European Journal of International Law 799; de Werra (n 194) 304–306.