The text below represents commentary, not legal advice.
Return to: Paul
Edward Geller, attorney.
Return to:
Critical Copyright, and more.
Published in the Intellectual Property Law Newsletter,
vol. 18 (no. 4) (Summer 2000), p. 7, by the Section of Intellectual Property
Law of the American Bar Association. Copyright © Paul Edward Geller 2000. Note that the Brussels Convention referenced
below has been superseded, in most E.U. member states, by Council Regulation
(EC) No. 44/2001.
Mastering
Conflicts of Laws in
Intellectual Property Litigation
Paul Edward Geller
Conflicts
of laws arise more frequently in the field of intellectual property as works,
trademarks, and inventions are increasingly exploited across borders. This
article will sketch out a framework of analysis for dealing with the ambivalent
conflicts rulings that have been arising in cross-border cases. This framework
is only intended to sharpen issues and to suggest useful analyses for reaching
some solutions.
Jurisdictional versus Conflicts
Issues
In
cross-border cases, claimants shop for forums. The law of the court which a
claimant addresses, that is, forum law, will determine its jurisdiction, its
approach to conflicts of laws, and its remedies. Jurisdictional and conflicts
issues often overlap in that the law applicable to a case upon the resolution
of a conflict may form a ground of jurisdiction. For example, there is pressure
to plead infringement of federal rights inside the United States because, if a
federal law of intellectual property applies to a case, then a federal district
court will have jurisdiction.(1)
In
a cross-border case, there might be infringement in other countries, subject to
treaties and foreign laws. For example, a claimant from one country might have
to invoke the Berne or Paris Convention, or the TRIPs Agreement, to justify a
claim under the copyright, trademark, or patent law of another country. Note
that, in most countries outside the British and Scandinavian traditions, the
provisions of an intellectual property treaty may be largely self-executing and
form the basis for a foreigner's claim as if the provisions were part and
parcel of domestic law. U.S. federal courts have, however, been reluctant to
take jurisdiction over a case just because such a treaty is invoked, even
though federal jurisdiction lies for a case arising under a U.S. treaty, in
which the federal courts do have special expertise and concerns.(2)
Analytically
speaking, pleading foreign law before a U.S. court need not undermine federal
jurisdiction. There may be a self-standing basis for federal jurisdiction: for
example, on the basis of diversity, a U.S. federal court may consider claims of
infringement taking place abroad and arising under foreign laws.(3)
Similarly, where a composer alleged infringement by a recording of his song
exploited in interrelated transactions worldwide, his claim of infringement
taking place in the United States provided a basis for federal jurisdiction,
"potentially allowing the Court to exercise pendent jurisdiction over
claims arising under foreign law."(4) That said, some
U.S. courts might find a pretext in the doctrine of forum non conveniens
for clearing their calendars of cases largely based on foreign laws.(5)
In
some cross-border cases, it may be appropriate to consider suing in a foreign
court, for example, to strike more quickly with an injunction on the spot where
infringement occurs abroad. However, jurisdictional and conflicts analyses may
differ abroad: most notably, the Brussels or Lugano Convention will apply in
most European cases. These conventions may affect the availability of
injunctions enforceable in the forum country or across European borders,(6) as well as jurisdiction to award damages arising in the
forum country or in other European countries.(7)
The Basic Conflicts Rule
To
focus on conflicts exclusively, assume that a U.S. federal district court takes
jurisdiction over an entire cross-border case. How should it resolve conflicts
of laws that typically arise in such cases? The Second Restatement of
Conflict of Laws provides a framework from which to start analysis in most
states.(8) In its basic provision, it gives "the needs
of the interstate and international systems" as the first criterion to
consider in resolving conflicts where no statutory directive dictates a
solution.(9) Here lies the key to resolving conflicts in
the field of intellectual property, where the critical "international
system" is that established by the Berne and Paris Conventions and now
integrated into the TRIPs Agreement.
In
this international system, the basic principle is national treatment.(10) The default position of national claimants is simple:
domestic law governs their claims against infringement at home. National
treatment then requires applying such domestic laws to foreigners' claims as
apply in the countries where protection is sought, that is, where infringement
takes place. The Second Circuit, in Itar-Tass, has equivocated on this
reasoning in opining that "Russian law determines the ownership and
essential nature of the copyrights alleged to have been infringed" in the
United States.(11) Following this misleading dictum in Itar-Tass,
the Southern District of New York, in Bridgeman, ruled one way and then
another, but ultimately granted national treatment in applying U.S. law to
determine whether copyright existed and was infringed in a British work in the
United States.(12) Thus, whatever vacillation the courts
may display, the basic principle normally results in resolving infringement
issues by applying the law of the country on whose territory infringement takes
place.(13)
Courts
have a pair of ways, however, to shrink or to stretch territoriality itself. First,
courts may localize infringement by referring to definitions of infringing acts
that intellectual property statutes set out but that can prove to be elastic.
For example, U.S. courts have construed infringement narrowly in finding it in
so-called completed acts that consummate transactions in single countries or
broadly in finding it in acts that stretch across transactions crossing
borders.(14) Second, courts sometimes step outside the
bounds of statutory and treaty provisions by creating exceptions that allow
them to apply domestic laws extraterritorially to clearly foreign acts. As we
shall see, U.S. courts sometimes justify such exceptions by invoking policies
that do not obviously meet the Restatement criterion of "the needs
of the interstate and international systems."(15)
To
sort out the cases and policies, it will prove useful to distinguish between
incoming and outgoing transactions relative to any given country. This might be
only one country, often the forum country, although it need not be; indeed,
infringement may sometimes be colorably alleged as taking place in a number of
countries at once, and this distinction may be applied to each country. In an
incoming transaction, preparatory or contributory acts take place abroad in a
foreign source country or countries and the ultimate exploiting acts occur in
the marketplace of the country in question. For example, authorization is given
abroad, infringing copies or products are made abroad, or infringing signals
transmitted from abroad, but the infringing materials are marketed or used in
the country in question. In an outgoing transaction, such preparatory or
contributory acts take place in the country in question and marketing or use occurs
abroad.(16)
There
is some worldwide consensus that, in the case of an incoming transaction, the
court should apply the law of the country whose market is targeted by the
infringement at issue.(17) For example, in Subafilms,
the Ninth Circuit en banc considered a two-million dollar award, about
half attributable to foreign marketing, and half to domestic marketing, of the
Beatles' Yellow Submarine.(18) Invoking "the
international regime for protecting intellectual property," the Ninth
Circuit held that U.S. copyright law could not support the award relative to
marketing abroad just by virtue of authorization at home.(19)
This
approach leaves open a gut issue in cross-border cases: Should this basic rule
be expanded? Will an outgoing transaction also support applying domestic law?
Should it suffice for infringing materials to be made in a given country, or
infringing signals sent out from there, for its domestic law to apply? It will
first be argued that the basic rule should not generally be expanded, or
exceptions made to it, for purposes of imposing compensatory monetary
liability. Then arguable exceptions will be considered, largely at the level of
injunctions.
When the Basic Rule Generally Applies
Consider,
for example, the facts in the L.A. News case:(20)
First, in Los Angeles, the L.A. News Service took videos of the riots of 1992.
Second, there, the L.A. News Service licensed N.B.C. to televise these videos,
but with a restriction to the United States. Third, N.B.C. transmitted its show
with the video footage to Reuters-related parties in New York. Fourth, some of
these parties in New York made hard copies of that footage. Fifth, it was
retransmitted via cable or satellite across the Atlantic. Sixth, it was
televised abroad, notably in Europe.(21)
The
infringing transaction here was outgoing relative to the United States insofar
as it targeted the European market. Hence the issue: To what extent should the
transaction suffice to support applying U.S. law? Or would only European laws
apply to it? Regarding monetary awards, the lower and higher courts differed.
The district court finally awarded statutory damages under U.S. law for
unconsented copying in New York City.(22) But it seemed to
follow Subafilms when it refused to make any further monetary award for
foreign reception, stating that plaintiff "can seek a remedy for this
infringement under the applicable foreign law."(23)
On appeal, the Ninth Circuit reversed the refusal by the trial court in L.A.
News to grant any further monetary relief and rather applied the old Sheldon
line of precedents based on equitable considerations.(24)
Sheldon had applied U.S. law to impose a constructive trust on money
earned from foreign exploitation of copies made at home.(25)
The
Sheldon precedents are not consistent with the Restatement
criterion, "the needs of the interstate and international systems."
Given the same set of facts of cross-border infringement, these precedents
invite a court on one side of a given border to apply its own law, not only to
exploitation at home, but as the basis for compensating claims for exploitation
abroad, even though a court on the other side of the border may well apply its
law to just such claims as arise in its own jurisdiction. For example, in the
case of an infringing book published in Canada but sold in the United States, a
Canadian court, applying only Canadian copyright law and rejecting U.S. law on
various issues, awarded profit shares deriving, not only from Canadian sales,
but from U.S. sales as well.(26) By contrast, on these
facts, a U.S. court could have applied U.S. law, at least to U.S. sales,
possibly reaching a different result with regard to compensatory liability for these
sales. Precedents extending copyright laws, each made for a domestic market, to
serve as bases for compensating losses in other markets, thus risk aggravating
tensions with other laws. As a result, such case law tends to undercut the
international system.(27)
Furthermore,
the consensus for applying the law of the country with the targeted market
corresponds to business practice. Attributing monetary liability under that
law, at least to impose compensatory damages, best corresponds to the
foreseeable risks of marketing in that country, since enterprises normally
consult that country's law before entering its market. In addition, if such
monetary liability were imposed under the laws of source countries for
infringing materials, rather than laws of countries with the targeted markets,
then enterprises would seek to operate from countries with the lowest levels of
protection, effectively from pirate havens.
This
argument might not always hold for statutory or treble damages. The TRIPs
Agreement generally contemplates such "remedies which constitute a
deterrent to further infringements."(28) Given the
global vocation of the TRIPs Agreement, its provisions would inform the Restatement
criterion of "the needs of the interstate and international
systems," including the rationale of fighting cross-border piracy. On that
premise, purely deterrent relief under forum law, statutory or treble damages
in appropriate U.S. cases,(29) could arguably apply to
outgoing transactions that target markets abroad.
Exceptions at the Level of Injunctions
Vary
the facts of L.A. News. Suppose that the claimant discovered that its
videos had just found their way into the hands of another party whose business
it was to market works in Europe. What law or laws would have provided bases
for enjoining that party's exploitation in Europe? There is authority for
enjoining acts that, in one country, prepare or contribute to exploitation in
another country, but only on the basis of the law of the country of ultimate
exploitation. For example, if infringing copies or products are made abroad,
say, in some pirate haven, U.S. law may support enjoining marketing in the
United States.(30) On that basis, European laws would have
to be applied to enjoin transmission of L.A. News footage from the United
States to Europe.(31) How many of such laws should suffice
as the basis for enjoining the transaction? Could the U.S. court, for which
this was an outgoing transaction, apply U.S. law to enjoin it?
Before
answering, consider a more complex case. This was a domain-name case, in which
infringement was potentially as worldwide as the web. In the 1980s, Playboy had
the Italian magazine Playmen enjoined from infringing its trademark by
using the title Playmen in the United States.(32)
In the 1990s, after registering this title as a trademark in Italy, the Italian
publisher set up a Playmen website in Italy, which marketed graphic
materials competitive with Playboy's in the United States. Upon a hearing to
enforce the prior judgment, the Southern District of New York issued the
following order in the alternative: either stop access to U.S. end-users or
shut the website down worldwide.(33) Under the facts,
although not the law of the case, the transactions were incoming, not only
relative to the United States, but to other countries where Playboy had succeeded
in asserting its mark against Playmen, notably England, France, and
Germany. Arguably, the threat of unlicensed reception in other large markets
would support an injunction beyond U.S. territory, at least in these markets if
not more broadly. However, the basic rule would still require pleading laws
reigning in foreign markets. But how many laws?
Go
back to our hypothetical based on L.A. News. Suppose the claimant knew
that the videos were to be transmitted abroad but did not know where they were
headed. Under the basic rule, the claimant would have to plead the laws of a
multiplicity of possibly receiving countries. The claimant might try to lighten
its burden by citing the Restatement criterion, "the needs of the
interstate and international systems," which would buttress any argument
for an injunction. One such need is to nip piracy in the bud before it spreads
to other countries: for example, the TRIPs Agreement provides for seizing
infringing goods at borders on the basis of domestic law irrespective of where
the goods are going.(34) Thus, invoking the need to fight
piracy globally, the claimant could appeal to the court's equitable discretion
in pleading, as a basis for an injunction, impending infringement under the laws
of a few countries with major markets, such as were targeted in Playmen.
Effectively, the claimant would be arguing that, to obtain a preliminary
injunction rapidly with global impact, it should suffice for it to make its
case relative to infringement in the lion's share of the global marketplace
that the laws of a few countries cover. A much more daring argument would
invoke the need to fight global piracy as the policy grounds for applying forum
law alone as a sufficient basis for enjoining a global pattern of infringement
originating in the forum jurisdiction.(35)
Further Anomalies
Trademark
case law, however, does not fall neatly within this framework. If a foreign transaction,
say, in Mexico or Canada, has requisite effects in the United States, U.S.
courts may apply our trademark law to find the transaction infringing, although
the circuits apply the "effects" test somewhat differently.(36) This case law deviates from the territorial approach
followed in other fields of intellectual property: for example, in one case,
U.S. trademark law was applied to sales of sport shoes in Canada because of
tenuous effects in the United States, but U.S. design patents were not
applicable to the same transactions.(37)
In
a seminal case, the claimant had a combination patent on a shrimp-cleaning
device. At issue was a kit of pieces that, once assembled, constituted the
device, but the kit made in the United States was only marketed abroad. The
U.S. Supreme Court precluded liability under U.S. patent law for lack of a
completed act of infringement in the United States, but the U.S. Patent Act was
then amended to overrule this decision.(38) A comparable
case arose in Germany, where it was held infringing to offer such almost-ready,
German-patented devices for sale in Germany, even if only for export.(39) Now, the TRIPs amendments have put such
"offering" language into the U.S. Patent Act, but case law is only
beginning to crystallize on point.(40)
Conclusion
Clearly,
the case law is ambivalent. In copyright, Subafilms precludes applying
U.S. law as a basis for monetary liability for exploitation abroad, but L.A.
News relies on a questionable judge-made exception. More dramatically, U.S.
trademarks are applied extraterritorially, albeit in case law far from
consistent from circuit to circuit, while patents are applied with strict
territoriality, save for a few statutory exceptions. For now, it seems
advisable to consider pleading both U.S. and foreign laws, sometimes in the
alternative, in many cross-border cases. Such pleading has to be appropriate
and artful for various reasons, most notably to assure jurisdiction and to
forestall any motion to dismiss for forum non conveniens. In any event,
the Restatement criterion of "the needs of the interstate and
international systems" may best guide conflicts analysis.(41)
2.
28 U.S.C. § 1331 (2000). See, e.g., Peter Starr Production Co. v. Twin
Continental Films, 783 F.2d 1440, 1443 n.3 (9th Cir. 1986) (mooting attempt to
base jurisdiction over the case as arising under U.C.C.); De Bardossy v. Puski,
763 F. Supp. 1239, 1245-46 (S.D.N.Y. 1991) (rejecting such an attempt upon
failure to argue federal concerns).
3.
28 U.S.C. § 1332 (2000). See, e.g., London Film Productions Ltd. v.
Intercontinental Communications, Inc., 580 F. Supp. 47, 50 (S.D.N.Y. 1984)
(exercising diversity jurisdiction over claims for acts of infringement that
were alleged to have taken place only in Latin America).
4.
Armstrong v. Virgin Records, Ltd., 91 F. Supp. 2d 628, 630-31, 635-38 (S.D.N.Y.
2000) (holding that foreign parties may be held contributorily or vicariously
liable for direct infringement in the U.S., predicating pendent jurisdiction
over infringement abroad on such infringement at home, and noting diversity as
among the parties in any event).
5. Compare
Boosey & Hawkes Music Publ., Ltd., v. Walt Disney Co., 145 F.3d 481, 492
(2d Cir. 1998) ("While reluctance to apply foreign law is a valid factor
favoring dismissal . . . . District courts must weigh this factor along with
the other relevant considerations."), with World Film Services,
Inc. v. RAI Radiotelevisione Italiana S.p.A., 50 U.S.P.Q.2d 1187 (S.D.N.Y.
1999) (refusing to dismiss claims that "arise under both U.S. and Italian
intellectual property law," while noting that "[t]here is no reason
to believe that this Court will be unable to apply Italian copyright law as
necessary").
6. See
generally Christopher Wadlow, Enforcement of Intellectual Property in
European and International Law 14-44, 141-49 (1998) (analyzing conditions
on which Brussels Convention, in article 24, allows for provisional,
cross-border injunctions).
7. See,
e.g., Shevill v. Presse Alliance S.A., E.C. Court of Justice, March 7,
1995, Case C-68/93, [1995] All E.R. (EC) 289 (holding that, in action for
defamation by a French newspaper distributed in several countries, French court
would have jurisdiction to award damages incurred in all these countries, while
each court in each of these other countries would have jurisdiction only
relative to damages in the country where it sits); Wegman c. Sté. Elsevier
Science, Cass. Civ. I (Supreme Court, France), July 16, 1997, 176 Rev. Int'le
du Droit d'Auteur 403 (1998) (holding that, where U.K. defendant starts
publication, Brussels Convention allows for jurisdiction in France over
infringement only to the extent of damages in France).
8. See
generally Klaxon Co. v. Stentor Electric Manufacturing Co. of North
America, 313 U.S. 487 (1941) (applying, in diversity case, conflicts law of
forum state).
9. 1
American Law Institute, Restatement (Second) of Conflict of Laws, §
6(2)(a) (1971).
10.
See Berne Convention for the Protection of Literary and Artistic
Works, Sept. 9, 1886, as last revised at Paris, July 24, 1971, art. 5,
828 U.N.T.S. 221; Paris Convention for the Protection of Industrial Property,
March 20, 1883, as last revised at Stockholm, July 14, 1967, arts.
2-3, 21 U.S.T. 1583, 828 U.N.T.S. 305; Agreement on Trade-Related Aspects of
Intellectual Property Rights, including Trade in Counterfeit Goods, April 15,
1994, art. 3, in Marrakesh Agreement Establishing the World Trade
Organization, Annex 1C, Legal Instruments-Results of the Uruguay Round
vol. 31, 33 I.L.M. 81 (1994) [hereinafter TRIPs Agreement].
11.
Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82, 84 (2d Cir.
1998). The quoted assertion was dictum here in that it was not necessary to
resolve the critical issue of standing. This writer further questions whether,
as the Second Circuit seemed to think, standing necessarily turns on ownership
and the law of the country of origin should necessarily determine ownership.
For these considerations, somewhat tangential to the present analysis, see Paul
Edward Geller, International Copyright: An Introduction, §§ 6[2]-6[3]
[hereinafter Geller, Introduction], in 1 International
Copyright Law and Practice, INT-221 to INT-253 passim (Paul
Edward Geller & Melville B. Nimmer eds., 2001).
12.
See Bridgeman Art Library, Ltd., v. Corel Corp., 25 F. Supp. 2d 421, reconsidered,
36 F. Supp. 2d 191 (S.D.N.Y. 1999). Both the Itar-Tass and Bridgeman
courts erred in invoking section 104(c) of the U.S. Copyright Act, which
purports to preclude Berne self-execution. As the Bridgeman Court
finally seems to have realized (id. at 195-196), that provision simply
compels applying U.S. copyright law, that is, national treatment, to Berne
works within the United States.
13.
See, e.g., Shaw v. Rizzoli Int'l Pubs., Inc., 51 U.S.P.Q.2d 1097
(S.D.N.Y. 1999) (citing Itar-Tass, disentangling ownership from
infringement issues, and applying U.S. law to alleged U.S. infringement).
14.
Compare Allarcom Pay Television Ltd. v. General Instrument Corp., 69
F.3d 381, 387 (9th Cir. 1995) (holding that U.S. law copyright does not apply
to the unauthorized unscrambling of satellite transmissions only received in
Canada), with National Football League v. Primetime 24 Joint Venture,
50 U.S.P.Q.2d 1461 (S.D.N.Y. 1999) (localizing capture and retransmission of
signals in the U.S. as infringing acts, even though reception only takes place
in Canada). Cf. Quantitative Financial Software, Ltd. v. Infinity
Financial Technology, Inc., 47 U.S.P.Q.2d 1764 (S.D.N.Y. 1998) (refusing to
localize infringement in the U.S. where a foreign software module "will control
huge volumes of trades" in New York City).
15.
See infra text accompanying notes 24-27 and 36-37.
16.
Of course, a court may resort to its own notions of contributory or vicarious
liability in analyzing a cross-border transaction. See, e.g., Metzke
v. May Dep't Stores Co., 878 F. Supp. 756, 760-62 (W.D. Pa. 1995) (raising
issue whether a party is contributorily liable under U.S. law for having had
infringing copies made in Taiwan with scienter that such copies might
be sold in the U.S.). However, at the threshold of inquiry, where the court is
merely localizing infringing acts prior to resolving conflicts, the law or laws
applicable to liability issues as such are not yet determined.
17.
See generally Geller, Introduction, supra note 11, §
3[1][b], at INT-47 to INT-61 passim (elaborating frame of analysis).
18.
Subafilms, Ltd. v. MGM-Pathe Communications Co., 24 F.3d 1088 (9th Cir. 1994), cert.
denied, 513 U.S. 1001 (1994).
20.
Los Angeles News Service v. Reuters Television Int'l, 942 F. Supp. 1265, concl.,
942 F. Supp. 1275 (C.D. Cal. 1996), rev'd, 149 F.3d 987 (9th Cir.
1998), cert. denied, 119 S. Ct. 1032 (1999).
21.
There was a companion case, in which the L.A. News Service sued a Canadian
broadcaster for spill-over into the United States: Los Angeles News Service v.
Conus Communications Co., 969 F. Supp. 579 (C.D. Cal. 1996).
22.
Los Angeles News Service v. Reuters, 942 F. Supp. at 1282-83.
23.
Id., 942 F. Supp. at 1269.
25.
See Sheldon v. Metro-Goldwyn Pictures Corp., 106 F.2d 45, 52 (2d Cir.
1939); also Update Art v. Modiin Publ., 843 F.2d 67, 73 (2d Cir. 1988)
(following Sheldon).
26.
Hager v. ECW Press Ltd., 85 C.P.R. (3d) 289 (1998).
27.
It is therefore at best ingenuous to justify reliance on the Sheldon
precedents by stating: "Were it otherwise in a global marketplace, our
[emphasis added] copyright laws would be pointless." Richard Feiner &
Co. v. Turner Entertainment Co., 47 U.S.P.Q.2d 1539 (S.D.N.Y. 1998). There are
other copyright laws elsewhere, not to mention the international treaties.
28.
TRIPs Agreement, supra note 10, art. 41(1).
29.
See, e.g., 17 U.S.C. § 504(c)(2) (2000) (copyright); 15 U.S.C. §
1117(b), (c)(2) (2000) (trademark); 35 U.S.C. § 284 (2000) (patent).
30.
See, e.g., Spindelfabrik Suessen-Schurr v. Schubert & Salzer, 903
F.2d 1568, 1577-78 (Fed. Cir. 1990) (enjoining preparatory acts in Germany
"for use" that would infringe patent in U.S.); The Doors
case, Feb. 18, 1993, BGH (Federal Court, Germany), 1993 GRUR Int. 699, excerpts
translated in 26 Int'l Rev. Indus. Prop. & Copyright L. [I.I.C.] 305
(1995) (confirming application of German law as basis of injunction against the
importation of sound recordings legally fabricated abroad).
31.
Note that this analysis may change in the E.C. See, e.g., Council
Directive 93/83/EEC of 27 September 1993 on the coordination of certain rules
concerning copyright and rights related to copyright applicable to satellite
broadcasting and cable retransmission, recitals 9-15 and art. 1.2, 1993 O.J. (L
248/15) 15, 16, 18 (localizing satellite-relayed broadcasts in E.C. countries
from which uplinking takes place, but conditioning this approach with safeguard
rules).
32.
Playboy Enterprises, Inc. v. Chuckleberry Publ. Inc., 687 F.2d 563 (2d Cir.
1982).
33.
Id., 939 F. Supp. 1032 (S.D.N.Y. 1996).
34.
TRIPs Agreement, supra note 10, arts. 51-60.
35.
Cf. Mike Curb v. MCA Records, Inc., 898 F. Supp. 586, 593-96 (M.D.
Tenn. 1995) (refusing to ignore acts in the U.S. initiating infringement abroad
because of the need to control cross-border infringement, but reserving
judgment on choice of laws); also 17 U.S.C. § 512(j)(1)(B)(ii) (2000)
(empowering U.S. courts to block access from off-shore, but without expressly
predicating any showing that U.S. audiences access the materials at issue).
36.
Compare Sterling Drug, Inc. v. Bayer, 14 F.3d 733, 744-48 (2d Cir.,
1994) (applying narrow test to guide tailoring an injunction of trademark use
outside the U.S.), with Reebok Int'l, Ltd. v. Marnatech Enter., Inc.,
970 F.2d 552, 553-57 (9th Cir. 1992) (applying broad test to effects of Mexican
transactions and applying U.S. trademark law). See generally Curtis A.
Bradley, Territorial Intellectual Property Rights in an Age of Globalism,
37 Va. J. Int'l L. 505 (1997) (reviewing and critiquing application of U.S.
trademark law to foreign transactions).
37.
Aerogroup Int'l, Inc. v. Marlboro Footworks, Ltd., 955 F. Supp. 220, 229-32
(S.D.N.Y. 1997), aff'd per curiam, 1998 U.S. App. LEXIS 7733 (2d Cir.
Apr. 13, 1998) (Gajarsa, J., dissenting with regard to the extraterritorial
application of trademark law in the case), cert. denied, 525 U.S. 948
(1998).
38.
Deepsouth Packing Co., Inc. v. Laitrem Corp., 406 U.S. 518 (1972). See
35 U.S.C. § 271(f) (2000). Cf. Johns Hopkins Univ. v. CellPro, Inc.,
152 F.3d 1342, 1367 (Fed. Cir. 1998) (citing Deepsouth while vacating portions
of order to repatriate exported substances absent showing that the substances
abroad would contribute to patent infringement in the U.S.).
39.
Cross-Seamed Sacks case, BGH, March 29, 1960, 1960 GRUR 423, commented and
partially translated by Dieter Stauder, Patent Infringement in Export
Trade, 3 I.I.C. 491 (1972).
40.
35 U.S.C. § 271(a) (2000). Compare 3D Systems, Inc. v. Aarotech
Laboratories, Inc., 160 F.3d 1373, 1378-79 (Fed. Cir. 1998) (finding offer in
the sending of price quotes to California residents), with Rotec
Industries, Inc. v. Mitsubishi Corp., 36 F. Supp. 2d 810, 815-18 (C.D. Ill.
1998), aff'd, 2000 U.S. App. LEXIS 13563 (Fed. Cir. June 13, 2000)
(distinguishing 3D Systems because offer at issue was completed abroad). Cf.
Halmar Robicon Group v. Toshiba Int'l Corp., 53 U.S.P.Q.2d 1501
(W.D. Pa. 1999) (distinguishing some offers as taking inside, and some outside,
the U.S.).
41.
For the theoretical basis of the foregoing analysis, see Paul Edward Geller, International Intellectual Property,
Conflicts of Laws, and Internet Remedies, 22 Euro. Intell. Prop.
Rev. 125 (2000).