Intellectual Property, Private Law and International Legislation

This edited volume inquires into the trans-border intellectual property jurisdiction, litigation and enforcement issues based in legal principles and frameworks deriving from the European Union, the United States and Japan.

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Introduction

Edited by Jürgen Basedow, Toshiyuki Kono and Axel Metzger, this collected volume, titled Intellectual Property in the Global Arena, explores legal principles and jurisprudence initiatives in the domain of the private international law of intellectual property. In recent decades, these topics have been much debated both in Europe and around the world. For instance, the Article 8 of the “Rome II” Regulation of 2007, which codifies a territorial approach to the instances of the infringement of intellectual property rights, has provoked an intensive discussion in Europe as to whether the lex loci protectionis principle, which enshrines the rights of the countries of protection, further anchored in the Rome II regulation, is still appropriate for intellectual property litigation in the age of worldwide networks. A condensed outcome of this debate is summarized in the »Principles for Conflict of Laws in Intellectual Property« (CLIP Principles) drafted by the European Max Planck Group on Conflict of Laws in Intellectual Property (CLIP), while being published as a second preliminary draft in 2009 and finalized in 2011. On the international scale, the American Law Institute’s »Intellectual Property: Principles Governing Jurisdiction, Choice of Law, and Judgments in Transnational Disputes« of 2007 (ALI Principles) are the focal point of the debate. In a similar fashion, a Japanese »Transparency Proposal« project has sought to provide information on Japanese law related to international business conducted in English, which was finalized in 2009. The aim of this edited book, thus, is to comment on the interpretation and gap-filling of international and domestic law in relation to these principles and proposals as models for national and international legislators. To achieve that aim, this volume provides a comparative analysis of the three proposals. As part of this, it compiles papers presented at an international conference held in Tokyo in May 2009.

Topical Spotlight

In his opening chapter to this book, Jürgen Basedow introduces the overarching topics it covers by highlighting that “[i]ntellectual property and the conflict of laws have developed as two separate bodies of law. Their mutual relation has been the object of occasional – though increasingly frequent – academic contributions, but not very often of statutory regulation. Only in recent times have conflict legislators given an eye to intellectual property: the Austrian Act on Private International Law of 1978 contains special provisions on rights in intangibles, and so do inter alia the Swiss Act of 1987, the Italian Act of 1995, the Korean Act of 2001, and the Belgian Act of 2004. In 2007, the European Union dealt with the infringement of intellectual property rights (IP rights) in Article 8 of its Rome II Regulation on the law applicable to non-contractual obligations” (Basedow, 2010, pp. 3-5).

In his chapter on ALI principles, intellectual property and cross-border litigation, François Dessemontet has added that, “[f]rom the inception of intellectual property, that is at the end of the XVth century for patents, XVIth century for copyright privileges and somewhat earlier for trademarks, each Sovereign has granted rights according to the best interests of his State. The aim was to promote industry and commerce within these national borders and these antique legislations were effective only within the domestic, often narrow borders. The paradigm changed in the mid XIXth century. Then great trading States such as England and France obtained through bilateral negotiations with less powerful partners like Russia, Belgium or Switzerland an extensive protection for their authors or inventors, sometimes even trademark owners” (Dessemontet, 2010, p. 32).

Likewise, in his chapter on the international enforcement of territorial rights, Christian Heinze has indicated that in relation to “the past, we have seen that a public-law-inspired territoriality approach has traditionally governed intellectual property law. For jurisdiction, the consequence of this strict territoriality concept has been that intellectual property, the most flexible and incorporeal form of property, has been treated essentially in the same manner as land, the most inflexible and corporeal form of property. In essence, each state claimed exclusive jurisdiction for disputes concerning its own intellectual property rights and declined any jurisdiction over foreign intellectual property rights” (Heinze, 2010, p. 54).

In their discussion of intellectual property (IP) cases, Shigeki Chaen, Toshiyuki Kono and Dai Yokomizo suggest that “[j]urisdictional issues are […] complicated given the fact that certain aspects such as registration and validity of intellectual property rights might be subject to exclusive jurisdiction of the courts of a granting country. The Legislative Proposal of the Transparency Project (hereinafter referred to as “the Transparency Proposal”) tries to strike the balance between the sovereignty considerations and efficient IP dispute resolution […] [in relation to which issues] peculiar to adjudication of cross-border intellectual property disputes” (Chaen, Kono and Yokomizo, 2010, pp. 78-79) can arise. In this context, Axel Metzger provides further background by focusing on “[t]erritoriality [that] has undoubtedly been the leading approach from the early days of protection of intellectual property. […] Some early voices pleaded in the 1970s for a universalist concept of intellectual property – at least for copyright law – pointing to the continental theory of copyright as a personal right on the one hand and to the practical problems arising from the territorial approach in multistate situations on the other hand. But these early universalists always kept their status as an endangered minority. Few lawmakers followed their ideas, and if courts applied one single law to multistate situations, they often corrected the consequences of the lex originis by reference to the public policy of the forum. Therefore, most authors rejected the universalists’ approach and stuck with the traditional territorial concept. According to the predominant theory, it was the state authority that created intellectual property rights, whether by individual decision of the state’s authorities, especially the trademark or patent office, or by general legislation granting property rights in the fields of arts and sciences” (Metzger, 2010, pp. 157-158).

Conclusion

In their article on territoriality-based applicable laws, Ryu Kojima, Ryo Shimanami, Mari Nagata summarize the topics upon which this volume touches by exploring applicable legal principles in the United States, the European Union and Japan, while stressing that “[a]pplicable law to various aspects of cross-border exploitation of intellectual property rights has been at the center of recent discussions among private international law and intellectual property law scholars” (Kojima, Shimanami, and Nagata, 2010, p. 181). Similarly, in his contribution on  IP litigation and its enforcement, Pedro A. de Miguel Asensio concludes that “[l]itigating multinational infringements in the courts of a single country or even suing an alleged infringer in a country other than where her or his assets are located creates situations in which rights and duties are determined in judgments that may require recognition in foreign jurisdictions. Hence, the development of appropriate principles in the area of recognition and enforcement of foreign judgments is essential for an effective protection of IP rights in the international sphere” (de Miguel Asensio, 2020, p. 240).


Published by Mohr Siebeck in 2010, Intellectual Property in the Global Arena, edited by Jürgen Basedow, Toshiyuki Kono and Axel Metzger, has become available in Open Access at the Open Research Library in early 2020, as part of the KU Select 2019: HSS Backlist Books collection.


References

Basedow, Jürgen. Foundations of Private International Law in Intellectual Property. In Basedow, Jürgen, Toshiyuki Kono, and Axel Metzger, eds. Intellectual Property in the Global Arena: Jurisdiction, Applicable Law, and the Recognition of Judgments in Europe, Japan and the US, 3-30. Mohr Siebeck, 2010. Accessed December 10, 2020. https://openresearchlibrary.org.

Chaen, Shigeki, Toshiyuki Kono and Dai Yokomiz. Jurisdiction in Intellectual Property Cases: The Transparency Proposal. In Basedow, Jürgen, Toshiyuki Kono, and Axel Metzger, eds. Intellectual Property in the Global Arena: Jurisdiction, Applicable Law, and the Recognition of Judgments in Europe, Japan and the US, 77-145. Mohr Siebeck, 2010. Accessed December 10, 2020. https://openresearchlibrary.org.

de Miguel Asensio, Pedro A. Recognition and Enforcement of Judgments in Intellectual Property Litigation: The CLIP Principles. In Basedow, Jürgen, Toshiyuki Kono, and Axel Metzger, eds. Intellectual Property in the Global Arena: Jurisdiction, Applicable Law, and the Recognition of Judgments in Europe, Japan and the US, 239-340. Mohr Siebeck, 2010. Accessed December 10, 2020. https://openresearchlibrary.org.

Dessemontet, François. The ALI Principles: Intellectual Property in Transborder Litigation. In Basedow, Jürgen, Toshiyuki Kono, and Axel Metzger, eds. Intellectual Property in the Global Arena: Jurisdiction, Applicable Law, and the Recognition of Judgments in Europe, Japan and the US, 31-48. Mohr Siebeck, 2010. Accessed December 10, 2020. https://openresearchlibrary.org.

Heinze, Christian. A Framework for International Enforcement of Territorial Rights: The CLIP Principles on Jurisdiction. In Basedow, Jürgen, Toshiyuki Kono, and Axel Metzger, eds. Intellectual Property in the Global Arena: Jurisdiction, Applicable Law, and the Recognition of Judgments in Europe, Japan and the US, 53-76. Mohr Siebeck, 2010. Accessed December 10, 2020. https://openresearchlibrary.org.

Basedow, Jürgen, Toshiyuki Kono, and Axel Metzger, eds. Intellectual Property in the Global Arena: Jurisdiction, Applicable Law, and the Recognition of Judgments in Europe, Japan and the US. Mohr Siebeck, 2010. Accessed December 10, 2020. https://openresearchlibrary.org.

Ryu Kojima, Ryo Shimanami, Mari Nagata. Applicable Law under the CLIP Principles: A Pragmatic Revaluation of Territoriality. In Basedow, Jürgen, Toshiyuki Kono, and Axel Metzger, eds. Intellectual Property in the Global Arena: Jurisdiction, Applicable Law, and the Recognition of Judgments in Europe, Japan and the US, 179-228. Mohr Siebeck, 2010. Accessed December 10, 2020. https://openresearchlibrary.org.

Metzger, Axel. Applicable Law under the CLIP Principles: A Pragmatic Revaluation of Territoriality. In Basedow, Jürgen, Toshiyuki Kono, and Axel Metzger, eds. Intellectual Property in the Global Arena: Jurisdiction, Applicable Law, and the Recognition of Judgments in Europe, Japan and the US, 157-178. Mohr Siebeck, 2010. Accessed December 10, 2020. https://openresearchlibrary.org.


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WIPO International Conference on Intellectual Property and Development – Session 3, Sécheron, Genève, Canton de Genève, Switzerland, May 20, 2019 | © Courtesy of Emmanuel Berrod/World Intellectual Property Organization/Flickr.

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