The text below represents commentary, not legal advice.
Return to: Paul Edward Geller, attorney.
Return to: Critical Copyright, and more.
Published in the Journal of Intellectual Property Rights,
vol. 10 (2005), p. 133, by NISCAIR, and, with a Chinese translation, in Intellectual Property Studies, vol. 17
(2005), p. 1, by the CASS IP Center. Copyright © Paul Edward Geller 2005. This version updates the version
published in the European Intellectual
Property Review, vol. 22 (no. 3) (2000), p. 125, as well as in French
translation in Les Cahiers de Propriété
Intellectuelle, vol. 12, (no. 1) (1999), p. 227, and in German translation
in GRUR Int. (2000), p. 659. The
initial version was published in Essays in Honour of
H. Cohen Jehoram (Kluwer, 1998), p. 29.
International Intellectual Property,
Conflicts
of Laws, and Internet Remedies
Paul Edward Geller
There are
strategic points at which legal theories are put to the test of practice. Some of these are the points in law suits at which
courts are asked to grant remedies, such as provisional injunctions and money
awards. It shall here be argued that, in
intellectual property, cross-border acts may best be localized, for purposes of
resolving conflicts of laws, by considering consequences for judicial
remedies. This method shall be tested by
applying it to the hard case of infringement in global networks.
The
Territorial Framework
Each
community lives by its own law. As transport
and media improve, transactions increase between distinct communities. As a result, conflicts tend to arise between
the respective laws of these communities.
For example, a judge may ask whether to apply the law of the forum
community, or that of another community, in a case where one of the parties is
from the other community or where a private transaction moves between the
communities. In the middle ages, these
communities were not necessarily territorial; they only became so with the
modern advent of the nation-state.[1]
The
nation-state arose as geographers were mapping the world in coordinates of
latitude and longitude.[2] National law was then asserted as sovereign
within territorial borders traced out in this geographical space. In the nineteenth century, von Savigny
conceived of each set of legal relations as having its focal point in one such
territory.[3] For example, rights of real property could be
seen as assuring the power of the owner of land to control trespass and like
behaviors of any and all legal subjects relative to that land. Such property claims, von Savigny concluded,
were subject to the law in effect at the situs of the land.[4]
Von Savigny
sought a method for choosing the same laws to govern the same legal claims, no
matter where suit was brought or who brought it.[5] His method may be encapsulated in the
following three steps: First, determine
the appropriate focal point, sometimes called a connecting factor or point of
attachment, for each category of legal claim.[6] Second, in order to know what points are
appropriate in a given case, characterize (qualifier)
each claim asserted in the case in terms of legal categories. Third, localize the corresponding point of
attachment in a given state whose law then applies to the claim at issue. For von Savigny, there could be no interplay
between characterization (qualification)
and localization for a simple reason. He
posited that legal relations developed inside, but without impacting on,
geographic space.[7]
For
broad-ranging torts like defamation or the infringement of intellectual
property, the analysis is less simple.
Nonetheless, the classic premise that geographic space is a fixed
framework for conflicts analysis has not been questioned in the field of
intellectual property. The Berne and
Paris Conventions, and later treaties, impose the principle of national
treatment supplemented by minimum rights, as well as the principle of the
independence of rights.[8] That is, foreign treaty claimants enjoy the
same rights as nationals of a treaty country, the so-called protecting country,
unless they are entitled to more extensive minimum rights, and the rights in
one state do not depend on those in others.
This approach corresponds to the classic conflicts rule in the field of
torts: the law of the place of
infringing acts governs resulting claims.[9]
The
Ambiguity of Territoriality
It is in this
sense that laws of intellectual property are territorial. The category at the heart of the classic
conflicts rule, the place of infringing acts, is territorial. In the nineteenth century, the meaning of
this category seemed self-evident to courts considering infringement claims at
home. They easily localized places where
copyright works were put on stage or published, where trademarked goods were
sold, and where patented inventions were used or made. Such acts took place where live performances,
hard copies or products, or factories were found, on one side or the other of
clear-cut borders, inside a patchwork of national markets.[10]
Unfortunately,
the key category here, the place of infringing acts, can be doubly
ambiguous. To start, before knowing what
place that is, a court must localize the acts in question, but authorities
differ about what law or laws provide terms in which to characterize infringing
acts.[11] In addition, the place of such acts can be
extended backwards to that of preliminary acts, like organizing the
infringement, or forwards to the place of damages. At the end of the twentieth century, the
meaning of this place, once apparently obvious in geographical space, is
becoming impossible to pin down in cyberspace.
Now transactions cross multiple borders simultaneously in global,
interactive networks.[12]
This
ambiguity arises out of the increasing efficacy of the media and
technology. Legal relations develop
within spaces in which, with increasing speed and power, subjects communicate
with each other and control objects at a distance.[13] To the extent that legal claims bear on
communication and control itself, as they will in fields such as defamation and
intellectual property, a principle of indeterminacy comes into play. Depending on what laws govern claimants'
rights in such fields, their respective positions of power will change in what
might be called social space, that is, in the relevant communication and
control networks. Thus characterization
and localization are not categorically independent of each other, but rather
tied together to the extent that they impact on the values at stake in the
overall resolution of any conflict of laws which they help to formulate. In these threshold inquiries to determine the
places of infringing acts, the public policies underlying conflicts analysis,
ultimately considerations of ordre public,
already come into play. Courts in the
United States may approach this cluster of issues functionally by following the
Second Restatement, which expressly
allows for resolving conflicts in the light of public policies.[14] Courts in Europe tend to approach these
issues in more categorically rule-bound analyses, although notions such as ordre public exceptionally allow for
taking account of underlying values.[15]
Localizing
acts taking place within the Internet dramatizes the policies at stake in
conflicts analysis. In localizing an
infringing act in one spot or another, a court might apply the law of one
country or another throughout any global network. That is, improper localization, especially of
Internet transactions, can lead to extraterritorially spilling the policy
effects of one country’s law over into another country. In particular, if the law of one country
provides too little protection, or another too much protection, applying one or
the other law can result in pirate havens or choke points for data flow in the
network. For example, what law should
govern transmitting raw data from a European database via the Internet to the
United States or China? Suppose, on the
one hand, that a court localizes the relevant acts in the United States or
China, where data is received but not strongly protected: then, to European
eyes, pirates may find havens in these countries, from which data might be more
or less freely retransmitted.[16] Suppose, on the other hand, that a court
localizes inside Europe all unauthorized transmissions of raw data from Europe:
then a European law granting property rights in the data[17]
might apply to the transmissions, even to the United States or China. That choice of law might well choke off data
flow to or at points within the Internet that policies in these countries would
still leave open.[18]
Typically,
while reasoning in terms of fixed territorial categories, courts vacillate in
localizing infringing acts and choosing applicable laws. Courts in the United States have not been
consistent in choosing copyright laws to apply to cross-border transactions,
often but not always avoiding the application of domestic law to foreign acts.[19] These same courts continue to apply domestic
trademark law more or less aggressively to cross-border transactions including
foreign acts, speaking of its "extraterritorial" application.[20] European courts had held that cross-border
broadcasts infringed copyright or neighboring rights in the countries where the
broadcasts were received.[21] A Community directive now compels
localization of satellite-relayed broadcasts in those countries where
transmissions are respectively initiated, but contemplates basing compensation
for cross-border transmissions on "the actual audience, the potential
audience, and the language version".[22] Decisions sounding in copyright and patent
laws have vacillated about localizing the infringing use of software across
borders.[23]
Resolving
the Ambiguity
Recall that
conflicts of laws arise as transactions increase in frequency between distinct
communities with different laws, while smaller communities tend eventually to
come together into larger communities.[24] Courts have a choice here: either they treat
conflicting laws as arising out of communities that are static and unchanging,
or they resolve conflicts in the light of the historical dynamics that have
been bringing communities together.
Under the static view, it is difficult to transcend the incoherence that
tends to arise when courts respectively follow their own established laws in
formulating conflicts of laws. Under the
dynamic view, it is possible to look to globalizing law that is emerging to
govern many smaller communities as they come together into larger
communities. The Internet has now
accelerated just such processes.[25]
Law may
emerge in many forms to bring communities together. Supranational law, like that of the European
Union, effectively recognizes a larger community as an autonomous law-making
entity. Public international law stops
short of this point, rather recognizing smaller communities, notably nation-states, as autonomously submitting to overriding law
that binds a group of such states, most clearly by virtue of treaty language.[26] Private international law, optimally
following such emerging law between communities, is subject at least to treaty
provisions and, more broadly, to considerations of international public policy,
ultimately to ordre public international.[27] Traditionally, only after conflicts analysis
resulted in possible choices of law would a court refer to ordering principles
or public policies, ultimately to ordre
public, as grounds for rejecting
any of these choices as objectionable.[28] Under the analysis proposed here, the court
is to take account of the policy goals of the international regime of intellectual
property at the very threshold of analysis, that is, as soon as it starts
localizing infringement.[29]
Fortunately,
a treaty regime rather systematically governs conflicts of law in the field of
intellectual property. Furthermore, it
is common ground that courts must interpret key legal terms consistently with
the treaties applicable in a given field.[30] This article will accordingly ask: What
remedial desiderata should guide
interpreting the notion of the "country where protection is sought"
in order to achieve the goals of the treaty regime in intellectual
property? The TRIPs Agreement has most
recently restated treaty goals for intellectual property as providing
"adequate standards" and "effective and appropriate means for .
. . enforcement" worldwide, while "taking into account differences in
national legal systems."[31] On the one hand, the goal of "effective
and appropriate means for . . . enforcement" implies a globally seamless
fabric of remedies in which neither pirates nor counterfeiters might find
havens. In particular, the TRIPs
Agreement provides for seizures of infringing copies and goods to stop them
from crossing borders to reach markets in geographical space.[32] The new WIPO treaties in the field of
copyright contemplate "effective" and "expeditious
remedies" to protect markets against pirates in cyberspace as well.[33] On the other hand, the goal of "taking
into account differences in national legal systems" implies a globally
coherent fabric of remedies. Here the
principle of national treatment comes into play.[34]
The first desideratum, a globally seamless fabric
of remedies, should lead courts to stop infringing transactions in their
tracks. A distinction may be drawn
between inward-bound and outward-bound transactions relative to any given
country, often but not always the forum country, which this article will call
the "home" country.[35] Inward-bound transactions commence outside
the home country, for example, with preparatory acts such as authorizing and
organizing infringement and fabricating infringing copies or products abroad,
but end up in acts of marketing inside the home country; outward-bound
transactions commence in the home country but are consummated in acts of
exploitation in foreign markets. The
case law provides instances of U.S. and European courts that, with jurisdiction
over parties abroad who are engaging in inward-bound infringing transactions
that threaten markets at home, localize these transactions as taking place in
the home country in that they enjoin them under that country's law.[36] By parity of reasoning, courts should
localize outward-bound transactions, not where they commence in the home
country, but in the other countries whose markets they target, and should apply
the laws of these foreign countries, respectively, to enjoin acts at home that
authorize or otherwise generate infringing exploitation abroad. Some cases fall outside this distinction,
notably where copies that are illicit under the law of the home country transit
that country's territory on their way to another country where they may be
marketed, perhaps legitimately. Special
provisions may still mandate seizure in the home country.[37]
Some or all
of these relations can operate across global, interactive networks at the same
time. To the extent that this takes
place, the inquiry into localization, as well as the fashioning of remedies,
becomes more complex. For example, in
the 1980s Playboy Enterprises had the Italian magazine Playmen enjoined from infringing its trademark in the United States.[38] In the 1990s, the Italian publisher set up a Playmen website in Italy, after having
registered that title as a trademark in Italy.
The Southern District of New York then ordered the publisher either to
stop access to the website in the United States or to shut down the site
entirely.[39] In imposing the latter alternative, the court
would seem to have lapsed into the questionably extraterritorial application of
domestic trademark law. One fact,
however, distinguishes the case: as the court noted, Playboy Enterprises had
succeeded in asserting its mark against Playmen
in European countries besides Italy.[40] Thus the website effectively also infringed
foreign marks, making the case one in which infringing transactions were
potentially inward-bound relative to many countries at once, although
infringement outside the United States was neither pleaded nor remedied as
such. It has been argued that, in such
cases where infringement ostensibly takes place in many jurisdictions at once,
the courts should apply the most protective of the laws effective in all these
possible protecting countries.[41] This argument has the merit of providing
grounds for a preliminary injunction to stop the unauthorized hemorrhaging of
protected materials into a global network, but it risks imposing the policy
effects of one country’s law on other countries.[42] Optimally, a court would explore more
differentiated solutions, for example, as the facts would have allowed in the Playmen
case, basing a wide-ranging injunction on law common to most of the overall
marketplace threatened by the infringing act.[43]
The second desideratum, a coherent web of remedies,
becomes critical as courts reach final judgment, specifically in granting
monetary awards. The international
regime of intellectual property is predicated on national treatment, so that
enterprises normally consult the law of a country before marketing in that
country.[44] To be coherent with this principle, the law
of a given country should apply to ascertaining monetary awards to remedy infringement
which prejudices or usurps the market for protected materials in that
country. Unfortunately, national courts
have not adopted fully consistent approaches to granting monetary awards in
cross-border cases, sometimes applying their own home laws in ascertaining
damages or profits incurred abroad.
Consider this pair of cases with similar holdings but not necessarily
consistent results across borders. In a
U.S. case, videos of the 1992 Los Angeles riots were copied in New York and
transmitted across the Atlantic for exploitation in Europe without consent, and
plaintiff was ultimately allowed to invoke U.S. law as a basis for sharing in
defendant’s profits from exploitation overseas.[45] In a Canadian case, a court followed a
similar approach, applying only Canadian law, indeed rejecting defenses akin to
U.S. fair use, while it awarded profit shares deriving from sales in the U.S.
market.[46] However, in cases of infringement in both the
United States and Canada, such precedents could allow courts in both countries
to grant overlapping awards, or they could allow a court in one country to
apply its approach to establishing and assessing monetary liability to
prejudice actually incurred in the other country.[47] Now consider a pair of cases with globally more
consistent approaches to awards. Faced
with an award of about two million dollars, half due to exploitation in the
United States and half outside, one U.S. court, with an eye on the
"international regime", refused to apply home law as the basis for awarding
monetary relief for marketing abroad.[48] More emphatically, a French court rejected
the argument that French law should apply to imposing damages just because the
claimant was headquartered in France, and it rather applied Swedish, Dutch, and
British laws, respectively, to award damages incurred in each of these
countries.[49] Following such precedents, courts would grant
monetary awards more coherently by applying, respectively, the law of each
country where damages were sustained or undue profits gained.[50]
This analysis
then localizes the place of infringement in the country of the targeted
market. Thus the law of this country
will generally apply to incoming transactions to the extent that these threaten
or actually prejudice this country's market, but this law will not normally
apply to outgoing transactions aiming at foreign markets. In Internet cases where many markets are
targeted at once, the court may find it sufficient to base a provisional
injunction on law common to most of the overall marketplace being threatened;
however, the court should base final monetary awards on the law of each country
whose market is prejudiced.[51] In extreme cases, it might be possible to
argue for exceptions to this general approach by invoking international public
policy, the ordre public international,
that underlies the treaty regime of intellectual property. Such policy is most authoritatively manifest
in the TRIPs Agreement, which provides for specific injunctive remedies to stop
cross-border piracy, while it generally contemplates "remedies which
constitute a deterrent to further infringements."[52] Thus, in a case where no other remedy is
available to stop proliferating cross-border infringement, this policy could be
invoked to support applying home law which specifically contemplates relief
against outgoing transactions that target foreign markets.[53] Sparse case law imposes special awards, such
as statutory or punitive damages, under the law of a single country in order to
adjust monetary liability for prejudices incurred in other countries.[54] However, following the analysis proposed
here, a court would better impose any such special award under one country’s
law by looking only to the impact of the transaction at issue in that country. Where special awards apply country by country
in cross-border cases, they may accumulate, with globally deterrent effects.[55]
Remedial
anomalies complicate matters here. To
start, the lex fori determines the
procedures for obtaining injunctions and establishing monetary awards. Where suit is brought in one court for
infringement in many countries, this court's procedures might lead to results
different from those otherwise resulting in the courts and under the laws of
these other countries.[56] Further, courts may well differentiate
cross-border remedies when digital content is protected in one country but not
in another, but there is no assurance that computers routing such content
within global networks can always be easily reprogrammed to comply with such
differentiated relief. Still other
problems will arise as computerized systems are introduced to manage or police
digital content.[57]
Conclusion
Courts will
increasingly encounter difficult conflicts of laws in the field of intellectual
property. Many difficulties may be resolved
by localizing infringing acts with an eye to satisfying the remedial desiderata of the international
regime. Accordingly, the laws of the countries whose markets are respectively
targeted or prejudiced by the transactions at issue in a case will most often
best provide bases for relief. Other
difficulties, however, arise out of basic disharmonies, some substantive and
some procedural, and courts will have to exercise their ingenuity to resolve
them as equitably as they can from case to case.[58] Progress toward a systematic international
code of intellectual property, or toward globalized dispute-resolution regimes
in the field, would eventually help us transcend such difficulties.[59]
[1] See Kurt Lipstein, Principles
of the Conflict of Laws, National and International, The Hague, Nijhoff,
1981, at 3-12; Ferenc Majoros, Le droit international privé, Paris,
Presses Univ. de France, 3d ed., 1990, at 20-25.
[2] See Paul Alliés, L'invention
du territoire, Grenoble, Presses Univ. de Grenoble, 1980, part 2; Nicholas
K. Bromley, Law, Space, and the
Geographies of Power, New York, Guilford Press, 1994, ch. 3.
[3] See Friedrich Carl von Savigny, A Treatise on the Conflict of Laws, Wm. Guthrie (trans.), Edinburgh,
T.&T. Clarke, 2nd ed., 1880, at 132-142 (§§ 360-361).
[4] See ibid., at 174-181
(§§ 366).
[5] See ibid., at 70 (§
348).
[6] See ibid., at 221-233 passim (§§ 372-373).
[7] See ibid., at 56-57 (§
345).
[8] Paris Convention for the Protection of Industrial Property, 20
March 1883, as last revised at Stockholm, 14 July 1967, art. 2(1), reprinted in
K. Zweigert and J. Kropholler (eds.), Sources
of International Uniform Law, Leiden, Sijthoff, 1973, vol. 3, at 129; Berne
Convention for the Protection of Literary and Artistic Works, 9 Sept. 1886, as
last revised at Paris, 24 July 1971, art. 5(1), ibid., at 21. See also Agreement on Trade-Related
Aspects of Intellectual Property Rights, including Trade in Counterfeit Goods,
15 April 1994, GATT Doc. MTN/FA II-A1C, art. 3, reprinted in (1994) 25 I.I.C.
209 (requiring "treatment no less favourable" than nationals
receive).
[9] See Eugen Ulmer, Intellectual
Property Rights and the Conflict of Laws, Deventer, Kluwer, 1978, at
11-14. See also Paul Edward Geller,
"Conflicts of
Laws in Copyright Cases: Infringement and Ownership Issues", (2004) 51 J.
Copyright Society USA 315, 325-355 (reviewing cases and commentary on point and
recasting the argument that national treatment leads to applying the law
effective at the place of infringement).
[10] See generally Alois Troller, Das
internationale Privat- und Zivilprozeßrecht im gewerblichen Rechtsschutz und
Urheberrecht, Basel, Verlag für Recht u. Gesellschaft, 1952, at 45-47
(noting that rights of intellectual property, protecting potentially ubiquitous
subject matters, are territorial to the extent that remedies can only be
enforced at specific points in geographical space).
[11] Compare Yvon Loussouarn and Pierre Bourel, Droit international privé, Paris, Dalloz, 3d ed., 1988, at 289-290
(favouring lex fori), and Martin
Wolff, Private International Law,
London, Oxford Univ. Press, 2d ed., 1950, at 153-166 (favouring lex causae), with Ernst Rabel, The Conflict of Laws: A Comparative Study,
Ann Arbor, Univ. of Michigan Press, 2d ed., 1958, vol. 1, at 47-56 (criticizing
both approaches as methodologically unsound and proposing to characterize facts
in terms common to forum law and to all arguably applicable foreign laws in any
given case). See also Gerhard Kegel, Internationales Privatrecht, Munich,
C.H. Beck, 6th ed., 1987, at 208-215 (adopting Rabel's "breakthrough"
because it allows conflicts analysis to become independent both of lex fori and, progressively, of lex causae).
[12] See Paul Edward Geller, "Conflicts of Law in Cyberspace:
International Copyright in a Digitally Networked World", in P.B.
Hugenholtz (ed.), The Future of Copyright
in a Digital Environment, The Hague, Kluwer, 1996, at 27, also in revised
forms in (1996) 20 Columbia-VLA J. of Law & Arts 571, (1996) 44 J.
Copyright Society USA 103, (1997) 31/1 UNESCO Copyright bull. 3; Richard G.
Fentiman, "Conflicts of Law in Cyberspace", paper given at the
Symposium held by the International Federation of Computer Law Associations,
Brussels, 27-28 June 1996.
[13] See generally Harold A. Innis, Empire
and Communications, Oxford, Oxford Univ. Press, 1950 (seminal study
correlating media and technology history with social and legal development).
[14] See American Law Institute, Restatement,
Second, Conflict of Laws, St.
Paul, American Law Institute, 1971, vol.
1, at 412-413. See generally Brainerd Currie, "Notes on
Methods and Objectives in the Conflict of Laws", in Selected Essays on the Conflict of Laws, Durham, N.C., Duke Univ.
Press, 1963, at 177; Albert A. Ehrenzweig,
"Characterization in the Conflict of Laws: An Unwelcome Addition to
American Doctrine", in K.H. Nadelmann, A.T. Von Mehren, and J.N. Hazard
(eds.), XXth Century Comparative and
Conflicts Law: Legal Essays in Honor of Hessel E. Yntema, Leyden, Sythoff,
1961, at 395 (critiquing characterization insofar as it is used to avoid
untoward results of categorical choice-of-law rules without admitting policy
reasons for seeking different results).
[15] See generally Jean-Sylvestre Bergé, La protection internationale et communautaire du droit d'auteur: Essai
d'une analyse conflictuelle, Paris, L.G.D.J., 1996, at 206-226
(distinguishing characterization and the resolution of conflicts as distinct
phases of analysis). See, for example,
James J. Fawcett and Paul Torremans, Intellectual
Property and Private International Law, Oxford, Clarendon Press, 1998, at
236-237, 646-647 (localizing Internet infringement categorically at points of
input into network).
[16] Compare National Basketball
Assoc. v. Motorola, Inc., 105 F. 3d 841, 848-853 (2d Cir. 1997) (U.S.)
(opining that raw data may be protected against misappropriation as hot news
under U.S. law), with Guangxi
Broadcasting and T.V. Newspaper v. Guangxi Coal Worker's Newspaper, [1996] China Law Rep. 843 (Intermediate People's Court, Liuzhou
Prefecture) (China) (not protecting television-program data under copyright law
and awarding conditional relief under tort law), translated and commented by Zheng
Chengsi, Intellectual Property
Enforcement in China, Hong
Kong, Sweet & Maxwell Asia, 1997, at
34-42.
[17] Council Directive 96/9 of 11 March 1996 on the legal protection of
databases, arts. 7-11, [1996] O.J. L077, reprinted in (1996) 27 I.I.C. 821.
[18] See generally J.H. Reichman
and Pamela Samuelson,
"Intellectual Property Rights in Data?", (1997) 50 Vanderbilt L. Rev.
51, available at http://eprints.law.duke.edu/archive/00000455/ (critiquing E.C.
directive along with other initiatives and presenting policy arguments against
granting property rights in raw data).
[19] Compare Allarcom Pay Television, Ltd. v. General Instrument Corp., 69 F.3d 381, 387 (9th Cir.
1995) (not applying U.S. copyright law to the unauthorized unscrambling of
satellite transmissions only received in Canada), with Nat’l Football League
v. PrimeTime 24 Joint Venture, 211 F.3d 10 (2d Cir. 2000), cert. denied, 532 U.S. 941 (2001)
(applying U.S. law to the capture and retransmission of signals in the United States,
though reception only occurs in Canada).
See
also the Tariff 22 decision, SOCAN v.
Canadian Assoc. of Internet Providers, 2004 SCC 45 (Supreme Court)
(Canada), available at http://www.lexum.umontreal.ca/ (equivocating
about where to localize Internet transmissions that cross borders).
[20] Compare Reebok
International, Ltd. v. Marnatech Enter., Inc., 970 F. 2d 552, 553-557 (9th
Cir. 1992) (applying broad test to effects of Mexican transactions and applying
U.S. trademark law), with Sterling Drug,
Inc. v. Bayer, 14 F. 3d 733, 744-747 (2d Cir., 1994) (applying narrow test
relative to retailoring an injunction of trademark use outside the United
States). See also Babbit Electronics, Inc. v. Dynascan Corp., 828 F. Supp. 944,
958-959 (S.D. Fla. 1993), affirmed,
38 F. 3d 1161, 1166-1172, 1182-1183 (11th Cir. 1994) (awarding treble damages,
under U.S. law, for marketing with infringing trademarks in specific Latin
American countries). But see Aerogroup International, Inc. v. Marlboro
Footworks, Ltd., 955 F. Supp. 220, 229-232 (S.D.N.Y. 1997) (applying U.S.
trademark law to one Canadian defendant but not another and refusing to apply a
U.S. design patent to either). See
generally Curtis A. Bradley, "Territorial Intellectual Property Rights in
an Age of Globalism", (1997) 37 Virginia J. of International Law 505
(reviewing and critiquing application of U.S. trademark law to foreign
transactions).
[21] See, for example, Radio Monte
Carlo c. SNEP, Cour d'appel, 1e ch., Paris (France), 19 Dec. 1989, [1990]
144 RIDA 215 (localizing in France broadcasts from Monte Carlo since they were
received in France); the Directsatellitensendung
case, Oberlandesgericht Vienna (Austria), 30 Nov. 1989, [1990] GRUR Int.
537 (localizing broadcast via satellite in Austria, the receiving country, to
discourage transmission from states with inadequate protection), affirmed, Oberster Gerichtshof, 16 June
1992, [1992] GRUR Int. 933,
excerpts translated in (1993) 24 I.I.C. 665; Landesgericht Stuttgart (Germany),
21 April 1994, [1995] GRUR Int. 412 (localizing in Germany a Swiss broadcast
relayed by satellite into Germany). See
generally Roberto Mastroianni, Diritto
internazionale e diritto d'autore, Milan, Giuffrè, 1997, at 413-425
(suggesting that the rule applying the laws of receiving countries remains
generally valid in cases of satellite-relayed broadcasts, as well as in cases
of on-line dissemination).
[22] E.C. Council Directive 93/83 of 27 September 1993 on the
coordination of certain rules concerning copyright and rights related to copyright
applicable to satellite broadcasting and cable retransmission, Recital 17 and
art. 1.2, [1993] O.J. L248/15, reprinted in (1994) 25 I.I.C. 887. See, for example, the Felsberg decision, Bundesgerichtshof
(Germany), 7 Nov. 2002, [2003] GRUR 328 (applying German
law to a
broadcast made from Germany, but addressed to a French public
and possibly received by some Germans, on the basis that "control" of the broadcast was exercised at the point of broadcasting in Germany,
but mandating the court on remand to assess royalty claims in the light of the
legal situation in France, where much of the audience was located).
[23] Compare Quantitative Fin. Software, Ltd. v. Infinity Fin. Tech.,
Inc., 47 U.S.P.Q.2d 1764 (S.D.N.Y. 1998) (U.S.) (refusing to localize copyright
infringement in the United States where, ostensibly from off-shore, a foreign
software module "will control huge volumes of trades" in New York
City), with Menashe Business Mercantile, Ltd. v. Willliam Hill Org., Ltd.,
[2003] 1 All E.R. 279 (C.A. 2003) (U.K.) (finding patent infringement in the
United Kingdom because the patented computer system was interactively used
there, that is, the end-users worked the system in the United Kingdom, even
though the server was abroad).
[24] See text accompanying n. 1 above.
[25] See Paul Edward Geller, "From Patchwork to Network: Strategies for
International Intellectual Property in Flux", (1998) 31
Vanderbilt J. Transnational Law 553
at 567-574, also in (1998) 9 Duke J. Comparative &
International Law 69 at 82-90.
[26] See Paul Reuter, Introduction
to the Law of Treaties, London, Kegan Paul, 2d English ed., 1995, at 32-33;
also Ian Brownlie, Principles of Public
International Law, Oxford, Clarendon Press, 4th ed., 1990, at 4-31 passim (explaining other sources of
public international law besides treaties).
[27] Compare Lipstein, n. 1 above, at 63-81 (exploring relations between
public and private international law), with Loussouarn and Bourel, n. 11 above, at 65-66 (taking the
position that public international law has no control over private
international law).
[28] See generally Kegel, n. 11 above, at 324-336; Loussouarn and
Bourel, n. 11 above, at 392-414 (both unpacking policies that fall under ordre public, which exceptionally
justifies not applying foreign rules otherwise applicable pursuant to normal
conflicts analysis). See, for example, Bragance c. Michel de Grèce, Cour
d'appel, Paris (France), 1e ch., 1 Feb. 1989, [1989] 142 RIDA 301 (refusing to apply a contractual
waiver of French moral right concluded in the United States because it was
contrary to ordre public international).
[29] See text accompanying ns. 13-18 above. See generally Geller, "Conflicts of Laws
in Copyright Cases", n. 9 above, at 321-341 (showing how policy goals
enter into both U.S. and European conflicts analyses).
[30] See generally Brownlie, n. 26 above, at 36 ("there is a
general duty to bring internal law into conformity with obligations under
international law"); Majoros, n. 1 above, at 14-17 (expanding the
principle in favor of interpreting and prioritizing laws and treaties
consistently with optimizing their goals).
See, for example, Rickless v.
United Artists Corp., [1987] Fleet St. Rep. 362 at 371 (Court of Appeal)
(U.K.) (interpreting U.K. Performers Protection Act 1963 to give effect to Rome
obligations).
[31] TRIPs Agreement, n. 8 above, Preamble.
[32] TRIPs Agreement, n. 8 above, arts. 51-60. See also Paris Convention, n. 8 above, art.
9, and Berne Convention, n. 8 above, art. 16 (providing for seizure of
infringing goods or copies on importation).
[33] WIPO Copyright Treaty, arts. 11, 12, and 14, and WIPO Performances
and Phonograms Treaty, arts. 18, 19, and 23, both adopted by the Diplomatic
Conference in Geneva on 20 Dec. 1996 and reprinted in (1997) 28 I.I.C. 208.
[34] See Hans Ullrich, "Technology Protection According to TRIPs:
Principles and Problems", in F.-K. Beier and G. Schricker (eds.), From GATT to TRIPs, Weinheim, VCH
Verlagsgesellschaft, 1996, 357 at 366-369 (noting that national treatment
leaves countries free to fashion laws of intellectual property pursuant to
national policies).
[35] See generally Max Planck Institute, "Stellungnahme des
Max-Plank-Instituts für ausländisches und internationales Patent-, Urheber- und
Wettbewerbsrecht zum Entwurf eines Gesetzes zur Ergänzung des internationalen
Privatrechts (außervertragliche Schuldverhältnisse und Sachen)", [1985]
GRUR Int. 104 at 105-107 (elaborating this distinction in applying it to
hypothetical cases).
[36] See, for example,
Spindelfabrik Suessen-Schurr v. Schubert & Salzer, 903 F. 2d 1568, 1578
(Fed. Cir. 1990) (U.S.) (enjoining preparatory acts in Germany leading to
patent infringement in the U.S.); The
Doors case, Bundesgerichtshof
(Germany), 18
Feb. 1993, [1993] GRUR Int. 699, excerpts translated in (1995) 26 I.I.C. 305
(confirming application of German law as basis of injunction against the
importation of sound recordings legally fabricated abroad).
[37] See n. 32 above and accompanying text. See, for example, Grammophone Co. of India Ltd. v. Pandey, AIR 1984 SC 667, [1985]
Fleet St. Rep. 136 (Supreme Court) (India), excerpts in (1987) 18 I.I.C. 139
(ordering seizure of copies in India on their way to Nepal), commented by
Praveen Dalal, "The Long Arm Jurisdiction of Courts Regarding Copyright
Law in India", (2004) 9 Journal of Intellectual Property Rights (CSIR)
557, at 564-565.
[38] Playboy Enterprises, Inc. v.
Chuckleberry Publ. Inc., 687 F. 2d 563 (2d Cir. 1982).
[39] Ibid., 939 F. Supp. 1032
(S.D.N.Y. 1996).
[40] Ibid. at 1034.
[41] See François Dessemontet, "Internet, le droit d'auteur et le
droit international privé", [1996] Revue suisse de jurisprudence 285. But see "Stellungnahme des
Max-Plank-Instituts", n. 35 above, at 105-107 (critiquing project to codify
application of the most protective law in cases of cross-border
infringement).
[42] For a hypothetical example, see text accompanying ns. 16-18
above. See generally Lawrence B. Solum
and Minn Chung, "The Layers Principle: Internet Architecture and the
Law", 79 Notre Dame Law Review 815
(2004), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=416263
(exploring the spillover effects of transterritorial injunctions of Internet
transmissions).
[43] See Geller, "Conflicts of Laws in Copyright Cases", n. 9
above, at 342-346, 352-355.
[44] See Henri Desbois, André Françon, and André Kéréver, Les conventions internationales du droit
d'auteur et des droits voisins, Paris, Dalloz, 1976, at 153.
[45] Los Angeles News Service v.
Reuters Television Int'l, 340 F.3d 926 (9th Cir. 2003), modifying 149 F. 3d 987, 991-993
(9th Cir. 1998), cert. denied, 119 S.
Ct. 1032 (1999), reversing 942 F. Supp. 1265, concl., 942 F. Supp. 1275 (C.D. Cal. 1996)
[46] Hager v. ECW Press Ltd., (1998) 85 C.P.R. (3d) 289.
[47] For other examples, see text accompanying ns. 16-18 and 42 above.
[48] Subafilms, Ltd. v. MGM-Pathe
Communications Co., 24 F. 3d 1088, 1094-1099 (9th Cir. 1994) (en banc), cert. denied, 513 U.S. 1001 (1994).
[49] SISRO c. Sté. Ampersand Software, Cour d'appel, 4e ch., Paris, Feb. 8,
2002, Expertises 2002, 230, affirmed Cass.
civ. I, 5 Mar. 2002, JCP 2002 II, 10082, 994, excerpts translated in (2003) 34 I.I.C. 701.
[50] See Geller, "Conflicts of Laws in Copyright Cases", n. 9
above at 346-349, 352-355.
[51] See text accompanying ns. 35-50 above.
[52] See text accompanying n. 32 above; also TRIPs Agreement, n. 8
above, art. 41(1). See generally Thomas
Dreier, "TRIPs and the Enforcement of Intellectual Property Rights",
in From GATT to TRIPs, n. 34 above,
at 248 (examining these provisions in context).
[53] See, for example, AT&T Corp. v. Microsoft Corp., 71
U.S.P.Q.2d 1118 (S.D.N.Y. 2004) (U.S.) (applying section 271(f) of the U.S.
Patent Act as a basis for relief against exporting software information for
installation in computers made abroad for marketing to foreign end-users); BBC
Enterprises Ltd. v. Hi-Tech Xtravision Ltd., [1992] 9 R.P.C. 195 (House of
Lords) (U.K.) (invoking section 298 of U.K. Copyright, Designs and Patents Act
to enjoin the illicit marketing of decoders abroad; otherwise, the law could
"readily be bypassed by decoders being made" in one country and sold
in another).
[54] See, for example, Nat’l
Football League v. PrimeTime 24 Joint Venture, 131 F. Supp. 2d 458,
479 (S.D.N.Y. 2001) (U.S.) (finding that infringement by capturing
work-carrying signals in the United States and transmitting the works abroad
was "knowing or at least reckless" and awarding statutory
damages for such acts under U.S. law), on
remand from 211 F.3d 10 (2d Cir. 2000),
cert. denied, 532 U.S. 941 (2001); Regina
v. AFC Soccer, 22 C.P.R. (4th) 369 (Man. Prov. Ct. 2002) (Canada)
(assessing a fine under domestic law by taking account, inter alia, of the extent of illicit sales abroad, some via the
Internet).
[55] By parity of reasoning, we would not follow the commentary that
contemplates attenuating monetary liability by applying the law of the home
country of an infringer who, on the basis of that law and comparable laws
elsewhere, could not have reasonably foreseen that his acts would have
constituted infringement abroad. See André Lucas, "Private International Law Aspects of the Protection
of Works and of the Subject Matter of Related Rights Transmitted over Digital
Networks," paras. 89-90, 101, in WIPO
Forum on Private International Law and Intellectual Property, WIPO Doc.
PIL/01/1 Prov., 17 Dec. 2000, available at http://www.wipo.int/pil-forum/en/documents/doc/pil_01_1p.doc.
[56] See Donald S. Chisum, "Normative and Empirical Territoriality
in Intellectual Property: Lessons from Patent Law", (1997) 37 Virginia J.
of International Law 603 at 614. See
also Dieter Stauder, "Einheitliche Anknüpfung der Verletzungssankionen im
Gemeinschaftspatentübereinkommen", [1983] GRUR Int. 586 (asking how to
overcome differences between national remedies in a unified European patent
system).
[57] See Geller, "From Patchwork to Network", n. 25 above, at
561-566, also in (1998) 9 Duke J. Comparative and International
Law at 76-82;
for examples, WIPO Workshop on Service Provider Liability, 9 Dec. 1999, at
http://www.wipo.int/eng/meetings/1999/osp/index.htm.
[58] See generally Jan J. Brinkhof, "Internationalisation of Patent
Law, Transborder Injunctions and Summary Proceedings in the Netherlands",
[1995] 1 CEIPI Texts on Intellectual
Property 1 at 12-13 (pointing out that Dutch courts may decline to impose
remedies not known to the foreign legal system of another protecting country).
[59] See, for example, Laurence R. Helfer and Graeme B. Dinwoodie,
"Designing Non-National Systems: The Case of the Uniform Domain Name
Dispute Resolution Policy" (2001) 43 William and Mary Law Review 141,
available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=275468
(explaining such a regime for domain-name disputes); Paul Edward Geller, "An
International Patent Utopia?", [2003] 11 European Intellectual
Property Review 515 (contemplating such a regime for patent disputes).