Intellectual Property and Private International Law

Comparative Perspectives

Toshiyuki Kono, Toshiyuki Kono

• Publisher: Hart Publishing
• Year: 2012
• ISBN:
  9781847319708
• Edition: 1
• Topic: Law
• Subtopic: Intellectual Property Law
• Index: Law

'Intellectual property and private international law' was one of the subjects discussed at the 18th International Congress of Comparative Law held in Washington (July 2010). This volume contains the General Report and 20 National Reports covering Canada, US, Japan, Korea, India and a number of European countries (Austria, France, Germany, UK, Spain etc). The General Report was prepared on the basis of National Reports. The national reporters not only describe the existing legal framework, but also provide answers for up to 12 hypothetical cases concerning international jurisdiction, choice-of-law and recognition and enforcement of foreign judgments in multi-state IP disputes. Based on their answers the main differences between legal systems as well as the shortcomings of the cross-border enforcement of IP rights are outlined in the General Report. The Reports in this volume analyse relevant court decisions as well as recent legislative proposals (such as the ALI, CLIP, Transparency, Waseda and Korean Principles). This book is therefore a significant contribution to the existing debate in the field and will be a valuable source of reference in shaping future developments in the cross-border enforcement of IP rights in a global context.

General Report

TOSHIYUKI KONO^* and PAULIUS JURčYS^**

Contents

Introduction

Part I General Overview

1 Intellectual Property and Private International Law: Legal and Institutional Background

1.1 IP and Private International Law: Legal Framework in Different States

1.2 The Hague Judgments Convention and Legislative Proposals

1.2.1 The ALI Principles

1.2.2 The CLIP Principles

1.2.3 The Transparency Principles and Joint Japanese–Korean Proposal (Waseda Principles)

1.3 Institutional Framework of Cross-Border Enforcement of IP Rights

1.3.1 Canada and the United States

1.3.2 European States

1.3.3 Asian States

2 The Principle of Territoriality of IP Rights and the Lex Protectionis

2.1 Main Principles of the Paris Convention

2.2 The Principle of the Protecting Country in the Berne Convention

2.3 Current Discussion concerning the Appropriateness of the Territoriality Principle

Part II Jurisdiction over Disputes Concerning Intellectual Property Rights

3 Personal Jurisdiction in IP Cases

3.1 Personal Jurisdiction in the Hague Judgments Convention

3.2 Personal Jurisdiction in North America

3.2.1 Canadian and US Law

3.2.2 Personal Jurisdiction in the ALI Principles

3.3 Personal Jurisdiction in European Countries

3.3.1 Defendant’s Domicile as the General Ground of Jurisdiction according to the Brussels/Lugano Regime

3.3.2 Jurisdiction based upon the Defendant’s Domicile in IP-Related Disputes

3.3.3 Third-Country Situations

3.3.4 Brussels I Reform Proposals

3.4 Asian Countries

3.4.1 General Grounds of Jurisdiction in India and Taiwan

3.4.2 The Main Principles of the Exercise of International Jurisdiction in Japan

3.4.3 Personal Jurisdiction in Korea

3.5 Comparative Observations

4 Exclusive/Subject-Matter Jurisdiction

4.1 Exclusive Jurisdiction Rules in the 2001 Draft of the Hague Judgments Convention

4.2 North American States

4.2.1 Subject-Matter Jurisdiction of Canadian and US Courts

4.2.2 Subject-Matter Jurisdiction in the ALI Principles

4.3 European States

4.3.1 Brussels/Lugano Regime: General Considerations

4.3.2 The ECJ Decision in the Case of GAT v LuK

4.3.3 Third-Country Situations

4.3.4 Exclusive Jurisdiction Rules in Commission Proposal (2010) and the CLIP Principles

4.4 Exclusive Jurisdiction in IP Disputes in Asian States

4.4.1 Exclusive Jurisdiction Rules in India and Taiwan

4.4.2 Exclusive Jurisdiction over IP Disputes in Japan

4.4.3 Exclusive Jurisdiction in IP Disputes according to Korean Law

4.5 Comparative Observations

5 Jurisdiction in IP Infringement Disputes

5.1 Infringement Jurisdiction in the 2001 Draft of the Hague Judgments Convention

5.2 Jurisdiction over IP Infringements in North American Countries

5.2.1 Jurisdiction over IP Infringement Disputes of Canadian Courts

5.2.2 Jurisdiction of US Courts over Claims concerning IP Infringements

5.2.3 Jurisdiction over IP Infringements according to the ALI Principles

5.3 Jurisdiction over IP Infringement Disputes in Europe

5.3.1 Brussels/Lugano Regime: Infringement Jurisdiction

5.3.2 Application of Article 5(3) to Infringements of IP Rights

5.3.3 Jurisdiction over Internet-Related Infringements

5.3.4 Third-Country Situations

5.3.5 Infringement Jurisdiction in the CLIP Principles

5.4 Asian Countries

5.4.1 India and Taiwan

5.4.2 Jurisdiction over IP Infringements according to Japanese Law and Latest Legislative Proposals

5.4.3 Infringement Jurisdiction in Korea

5.5 Comparative Observations

6 Jurisdiction in Contract-Related Disputes

6.1 The 2001 Draft of Hague Judgments Convention

6.2 Jurisdiction in Contract Disputes in the ALI Principles

6.3 European Countries

6.3.1 The Brussels/Lugano Regime

6.3.2 The CLIP Principles

6.4 Asian Countries

6.4.1 Jurisdiction over Contractual Disputes according to Japanese Law

6.4.2 Legislative Proposals

6.5 Comparative Observations

7 Consolidation of Proceedings

7.1 Consolidation of Claims in the 1999 Draft of the Hague Convention

7.2 North American Countries

7.2.1 Canadian Approach to the Consolidation of Claims

7.2.2 Consolidation of Claims in the United States

7.2.3 Claims against Multiple Parties and Other Possibilities of Consolidation in the ALI Principles

7.3 Consolidation of Claims in European States

7.3.1 Brussels/Lugano Regime: General Considerations

7.3.2 The Early Practice of Domestic Courts in IP Infringement Cases

7.3.3 ‘Roche Nederland’ and its Aftermath

7.3.4 Third-Country Situations

7.3.5 Consolidation Possibilities according to the CLIP Principles

7.3.6 European Patent Litigation Scheme

7.4 Asian Countries

7.4.1 Consolidation of Claims in India and Taiwan

7.4.2 Consolidation of Claims according to Japanese Law

7.4.3 Consolidation of Proceedings in Korea

7.5 Comparative Observations

8 Parallel Proceedings in IP Disputes

8.1 Parallel Proceedings in the 2001 Draft of the Hague Judgments Convention

8.2 North American Countries

8.2.1 Parallel Proceedings According to Canadian Law

8.2.2 Parallel Proceedings in US law and the ALI Principles

8.3 European Countries

8.3.1 Parallel and Related Proceedings

8.3.2 IP Litigation Strategies

8.3.3 Third-Country Situations

8.3.4 Review of the Brussels I Regulation: Parallel Proceedings in the Commission Proposal and the CLIP Principles

8.4 Asian Countries

8.4.1 Parallel Proceedings according to the Laws of India and Taiwan

8.4.2 Parallel Proceedings according to Japanese Law and Recent Asian Legislative Proposals

8.5 Comparative Observations

9 Jurisdiction to Order Provisional or Protective Measures in IP Disputes

9.1 Provisional and Protective Measures in the 2001 Draft of the Hague Judgments Convention

9.2 Jurisdiction to Grant Provisional Measures and Interim Injunctions under the Laws of North American Countries

9.2.1 Legal Situation in Canada

9.2.2 Provisional and Protective Measures in the ALI Principles

9.3 Provisional and Protective Measures in the European Countries

9.3.1 Brussels/Lugano Regime

9.3.2 Provisional Measures and IP-Related Issues

9.3.3 Third State Situations

9.3.4 Provisional and Protective Measures in European Reform Proposals

9.4 Jurisdiction to Order Provisional and Protective Measures in Asian States

9.4.1 India and Taiwan

9.4.2 Japan

9.4.3 Korea

9.5 Comparative Observations

10 Choice of Court Agreements in Cross-Border IP Disputes

10.1 The 2005 Hague Choice of Court Convention

10.1.1 General Principles of the Hague Convention

10.1.2 Choice of Court Agreements in IP Disputes

10.2 Choice of Court Agreements in North American Countries

10.2.1 Canada

10.2.2 Choice of Court Agreements according to the ALI Principles

10.3 European Countries

10.3.1 Choice of Court Agreements according to the Brussels/Lugano Regime

10.3.2 Choice of Court Agreements in IP Disputes

10.3.3 Choice of Court Agreements according to the CLIP Principles

10.4 Choice of Court Agreements in Asian Countries

10.4.1 Choice of Court Agreements in India and Taiwan

10.4.2 Choice of Court Agreements in IP Disputes according to Japanese Law and other Asian Legislative Proposals

10.5 Comparative Observations

Part III Choice-of-Law Issues in Intellectual Property Disputes

11 Applicable Law to Proprietary Matters of IP Rights

11.1 Applicable Law to Proprietary Aspects of IP Rights in North American Countries

11.1.1 The United States

11.1.2 The ALI Principles

11.2 European Countries

11.2.1 Early European Proposals

11.2.2 European States

11.2.3 The CLIP Principles

11.3 Applicable Law to Proprietary Aspects of IP Rights in Asian Countries

11.3.1 India and Taiwan

11.3.2 Japan

11.3.3 Korea

11.4 Comparative Observations

12 Applicable Law to Infringement of IP rights

12.1 North American Countries

12.1.1 Applicable Law to Infringements of IP Rights in Canada

12.1.2 Applicable Law to Infringements of IP Rights in the United States

12.1.3 Applicable Law to Infringements of IP Rights in the ALI Principles

12.2 European Countries

12.2.1 Rome II Regulation on the Law Applicable to Non-Contractual Obligations: General Rules

12.2.2 Special Choice-of-law Rules for Infringements of IP Rights (Art 8)

12.2.3 Prohibition of the Choice of Law

12.2.4 Ubiquitous Infringements

12.2.5 Law Governing the Liability of ISP

12.2.6 Infringements of IP Rights according to Swiss and Croatian Laws

12.2.7 The CLIP Principles

12.3 Asian Countries

12.3.1 India and Taiwan

12.3.2 Japan

12.3.3 Korea

12.4 Comparative Observations

13 Applicable Law to the Contracts for the Transfer of IP Rights

13.1 North American Countries

13.1.1 Canadian Law

13.1.2 The United States

13.1.3 Law Governing Transfers of Title and Grants of Licenses under the ALI Principles

13.2 European Countries

13.2.1 Rome I Regulation: General Principles

13.2.2 Problems Related to IP-Contracts

13.2.3 Law Governing Contractual Obligations according to Swiss and Croatian Law

13.2.4 Applicable Law to Contracts according to the CLIP Principles

13.3 Asian Countries

13.3.1 Applicable Law to IP Transfer Agreements in India and Taiwan

13.3.2 Japan

13.3.3 Korea

13.4 Comparative Observations

14 Applicable Law to IP Rights Created in the Course of Employment Relationship

14.1 North American Countries

14.1.1 Canada

14.1.2 The ALI Principles

14.2 European Countries

14.2.1 Overview of the Law in Different Countries

14.2.2 The CLIP Principles

14.3 Asian Countries

14.3.1 Japan

14.3.2 Korea

14.4 Comparative Observations

15 Applicable law to Securities in IP

16 Recognition and Enforcement of Foreign Judgments

16.1 Recognition and Enforcement in the 2001 Draft of the Hague Judgments Convention

16.2 North American Countries

16.2.1 Recognition and Enforcement of Foreign Judgments in IP Disputes according to Canadian and US Law

16.2.2 Recognition and Enforcement of Foreign Judgments in the ALI Principles

16.3 European Countries

16.3.1 Recognition and Enforcement of Foreign Judgments according to the Brussels/Lugano Regime

16.3.2 The Recognition and Enforcement of Third-country Judgments

16.3.3 Brussels I Reform Proposals

16.4 Asian Countries

16.4.1 Recognition and Enforcement of Foreign Judgments in Taiwan

16.4.2 Recognition and Enforcement of Foreign Judgments in Japan

16.4.3 Recognition and Enforcement of Foreign Judgments in Korea

16.5 Comparative Observations

CONCLUDING OBSERVATIONS

Introduction

The emergence and development of global business activities, and the inception of the Internet have resulted in the creation of a new field of legal studies concerning cross-border enforcement of intellectual property (IP) rights. This novel area of law is known as private international law and intellectual property. It has attracted much attention from lawyers within the fields of both private international law and intellectual property law. Several landmark decisions have caught the interest of legal practitioners as well as scholars engaged in deeper research activities. So far, several edited books¹ have been published, and a greater amount of legal articles have been written on the subject.

The object of private international law and intellectual property is mainly related to the private enforcement of intellectual property rights. In this context, ‘private’ enforcement is understood to mean legal measures taken by private parties (eg, proprietors of IP rights, persons exploiting IP rights with or without authorisation). Such legal measures taken by private parties would usually be determined by the law of the country where the protection is sought. In this report the private enforcement of IP rights refers to legal actions brought before national judicial or administrative authorities. Hence, public administrative acts upon which certain preventive acts are taken (eg, customs control, seizure of counterfeited goods etc) are not analysed here. Private international law and intellectual property could also be considered a special area of private international law dealing particularly with the enforcement of IP rights. Accordingly, legal problems which arise in the course of the enforcement of IP rights are mainly related to the exercise of international jurisdiction of the court seised, the applicable laws, and the recognition and enforcement of foreign court judgments rendered in disputes over IP rights.

This General Report draws upon 21 national reports received from countries with very divergent legal traditions. National reports were collated from three continents: North America (Canada and the United States), Europe (14 EU Member States, Switzerland and Croatia) and Asia (India, Taiwan, Korea and Japan). The national reports were drafted on the basis of a questionnaire² containing two main sections. The first section required national reporters to provide a general legal and institutional framework concerning the enforcement of IP rights in their respective countries. National reporters were then asked to indicate: a) international and regional legal instruments which have been ratified or are applicable in their countries, and b) national statutory instruments pertaining to the enforcement of IP rights.

The second section of the questionnaire was based on hypothetical cases. Instead of providing a list of questions asking for a description of certain legal matters, it was decided to incorporate those questions into hypothetical cases in order to provide a better illustration of their legal situation. Such methodology, whereby the questionnaire is partly based on hypothetical cases, was inspired by the recent initiatives to draft the European Civil Code (eg security rights in immovable property or condominiums in European private law). However, given that the scope of the project is related to international aspects of IP, national reporters were asked to consider these hypothetical cases as mere examples, so as to not restrict possible answers to questions posed. Hence, reporters were encouraged to provide further analysis of any issues not covered in the hypothetical case. In the same vein, national reporters were also asked to provide analysis of IP rights other than those addressed in a particular hypothetical case (eg, if the hypot...

Table of contents

• Cover
• Title
• Copyright
• Series Editors’ Preface
• Contents
• General Report
• Austria
• Belgium
• Canada
• Croatia
• France
• Germany
• Greece
• Hungary
• India
• Italy
• Japan
• Korea
• Netherlands
• Portugal
• Slovenia
• Spain
• Sweden
• Switzerland
• United Kingdom
• United States
• Appendix I
• Appendix II
• Index