Private International Law and Intellectual Property

RightsTereza Kyselovská

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What are Intellectual Property Rights? Property rights over intangible assets: inventions, literary and

artistic works, symbols, names, images, and designs used in commerce..

Exclusive rights on use and exploitation Copyright or “droits d’ auteur”> “literary and artistic works”:

every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression (Art. 2 Berne Convention)

Trade marks > distinctive signs, used to differentiate between identical or similar goods and services offered by different producers or services providers (WIPO Treaty)

Justifications for IPRsWhy having property rights over intangible things..?Natural rights: expression of personality or right over

products of labour (“The Philosophy of Intellectual Property” by J. Hughes, 77 Geo. L.J. 287)

Reward for effort Too easy of a reward? There are other systems of reward

Incentive for creation and investment at an optimal level (“An economic analysis of copyright law” by W. Landes and R.Posner, 1989 Journal of Legal Studies 325)

- risk of market failure/ under-production- US Constitution: “exclusive right to promote the progress of science and

useful arts” Is there really a need for incentive? Are exclusive rights the right incentive? (cost) What incentive is optimal?- Lessig: “sufficient incentive is less than perfect control” Monetizing creativity.. Creators are not always the ones to benefit

Prevent free-ridding – “to reap where they have not sown” (trade marks)

Incentive for disclosure (patents) Facilitate consumer decision (trade marks)

Legal instruments Berne Convention on the Protection of Literary and

Artistic Works + Rome Convention WIPO Copyright Treaty + WIPO Performances and

Phonograms Treaty EU Copyright Directive

(Some) of the rights conferred Reproduction right = exclusive right to authorize or

prohibit direct or indirect, temporary or permanent reproduction by any means and in any form (EU Copyright Directive)

Distribution right = right to put into commercial circulation Communication right = exclusive right to authorize or

prohibit the making available to the public, by wire or wireless means, in such a way that members of the public may access it from a place and at a time individually chosen by them (ECJ Rafael Hoteles C-306/05)

Public performance right: presentation of the work

Exceptions? – JustificationsPublic interestCommon uses that would impose disproportional transaction costsUsers’ freedom of expression and information? Is there a conflict?- Copyright reflects balance: idea/expression, term of protection,

requirement of creativity Some restrictions reflect freedom of expression - e.g. Fair use in the US But have some rights gone one step too far?* Source: Law and the Internet (L. Edwards and C. Waelde)

Exceptions – types Berne Convention Art. 9(2): 3-steps: Exceptions only allowed in certain cases No conflict with normal exploitation No prejudice to the legitimate interests of the author

EU Copyright Directive Art. 5 – several exceptions (not mandatory!), e.g.: Private copying: reproductions for private use and for ends that are

neither directly or indirectly commercial Libraries..

Art 5(1) of Copyright Directive: temporary acts of reproduction

Temporary acts of reproduction which are transient or incidental (and) an integral and essential part of a technological process and whose purpose is to enable transmission by an intermediary or a lawful use

Infopaq Case C-5/08

TPMs and RMIsArt 6 of Copyright Directive: Member States shall provide legal protection

against the circumvention of any effective technological protection measures

Devices or component designed to restrict acts which are not authorized by right holder

When the person concerned carries out circumvention in the knowledge or with reasonable grounds to know that he or she is pursuing that objective

What is the problem with this provision? Art. 7 of Copyright Directive: Member States shall provide for adequate

legal protection against the removal or alteration of electronic rights-management information

If the person knows or has reasonable grounds to know that he is inducing, enabling or making available copyright material

ONLINE COPYRIGHT VIOLATIONS I: RAM COPIES Every time you open a webpage your computer makes a

copy in its RAMThis is a copy but it is exempted under article 5(1) of the

Copyright Directive

ONLINE COPYRIHGT VIOLATIONS II: UPLOADING/STREAMING Violation of communication right E.g.: Danish IFPI case V.L. B-0292-07 (Western High Court)

– user of file-sharing network was found liable for violating communication right Norwegian case TFRED-2006-177576 (Court of First Instance Fredrikstad) – user found liable for making available illegal copy of a movie by creating a link on Piratebay

What is different about the Internet? Free copies and distribution “In the digital world, life is subject to copyright law” (Lessig, in

Code)It has facilitated the production and dissemination of user

generated content, “amateur culture”- But all this is subject to copyright law - Lessig: Fair use exceptions were structured to help build an

intellectual and cultural commons – non-commercial creativity was left free of regulation in the physical world

- Although for some, it has just allowed free consumptionDigital technologies could allow full control

Calls for reform..Lessig: “resist perfect control over use”

Creative Commons

Compulsory licensing

Insist on the distinction between commercial and non-commercial uses

Perceive the Internet as a new form of distribution

Communication from the Commission: Copyright in the Knowledge Economy

Links Chomseky

http://video.google.ca/videoplay?docid=7115798488607625935#Creative commonshttp://www.youtube.com/watch?v=1DKm96FtfkoLessig

http://www.youtube.com/watch?v=7Q25-S7jzgs&feature=related Keenhttp://www.youtube.com/watch?v=DHhfJv86XsIGaimainhttp://www.youtube.com/watch?v=0Qkyt1wXNlI

PIL and IPROne push of button -> a single copyrighted work can be

accessed by anyone across the world -> numerous exploitation and infringment of IPR

10 years ago – litigation involved national rightsNo treaty on PIL and IPR -> substantive (public)

international intellectual property law

PIL and IPRArt. 5/1 Berne Convention - „Authors shall enjoy, in

respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention.”

Principle of national treatment (principle of assimilation)

PIL and IPRConflict of law rule? No-> „the principle of national treatment is really not a

conflicts rule at all; it does not direct application of the law of any country. It simply requires that the country in which protection is claimed must treat foreign and domestic authors alike“ (Itar-Tass Russian News Agency v. Russian Kurier)

PIL and IPRBut – principle of national treatment – in Berne

Convention, Paris Convention, TRIPS 1994

PIL and IPRArt. 5/2 Berne Convention - „The enjoyment and the

exercise of these rights shall not be subject to any formality; such enjoyment and such exercise shall be independent of the existence of protection in the country of origin of the work. Consequently, apart from the provisions of this Convention, the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed.”

Specific conflict of law rule?Not necessarily application of lex foriNot a jurisdictional rule – the country of protection does

not have exclusive jurisdictionLex loci protections

Which is the country of protection in case when e.g. a Spanish copyrighted work has been uploaded without the author’s permission onto a website hosted through an U.K. internet service provider? Which law will decide whether this act constitutes an infringement?

PIL and IPR - problemsLex loci protectionisPrinciple of territoriality – „copyright is territorial in

nature, rights granted extend no further than the nations frontiers“ (Quality King Distributors, Inc v L’Anza Research International, Inc.) -> extraterritorial enforcement is quite narrow

PIL and IPR - problemslack of attention to choice of law because of the very few

cases involving multistate contacts?"paucity of global cases embedded concepts of

territoriality so deeply into intellectual property jurisprudence, it was rarely evident that choices were being made„ (Dreyfuss)

PIL and IPR - problemsLocalization – still todayItar-Tass Russian News Agency v. Russian Kurier, Inc.

copyright ownershipthe policy-based approach of the Second RestatementCourt applied the law of the place with the most significant

relationship to the parties and the transaction, giving particular weight to the nationality of the authors and the place of first publication

the lex loci delicti would determine infringement

PIL and IPR – core principlesDifferences between continental and common law

systemsCommon law – interest analysis and substantive policyContinental law – lex loci protectionis and choice of law

rules with fixed connecting factors

PIL and IPR – core principles1. Scope of lex loci protectionis (implementation of the

principle of territoriality)2. Exclusive jurisdiction and serial national litigations3. Independence of rights

PIL and IPR – core principles1. Scope of lex loci protectionis

Validity and scope of protectionRegistered and not registered rights (copyright)What ybout certain aspects of IPR – e.g. Validity of

contracts relating to transfer of IPR, allocation of rights between employer and employee…)

PIL and IPR – core principles2. Exclusive jurisdictionTo sue separately in every country in which infringment is

alleged

3. Independence of rights

PIL and IPRConflict of LawsJurisdictionNon-state initiatives, model laws, principles

Brussels I RegulationArt. 5/3 - A person domiciled in a Member State may, in

another Member State, be sued:in matters relating to tort, delict or quasi-delict, in the

courts for the place where the harmful event occurred or may occur

Brussels I RegulationArt. 5/3 – case law

Brussels I RegulationArt. 22 - The following courts shall have exclusive

jurisdiction, regardless of domicile:in proceedings concerned with the registration or validity of

patents, trade marks, designs, or other similar rights required to be deposited or registered, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of a Community instrument or an international convention deemed to have taken place.

Brussels I RegulationArt. 22 – case law - GAT v. LUK (C-4/03, Gesellschaft für

Antriebstechnik mbH & Co. KG v. Lamellen und Kupplungsbau Beteiligungs KG)

Patent dispute, Brussels Conventionto ascertain the scope of the exclusive jurisdiction of the

courts of the place of deposit or registrationDeclaratory action to establish no infringementQuestion of the patent’s validity raised indirectly

Brussels I Regulationwhether that rule concerns all proceedings concerned with

the registration or validity of a patent, irrespective of whether the question is raised by way of an action or a plea in objection, or whether its application is limited solely to those cases in which the question of a patent’s registration or validity is raised by way of an action

Brussels I RegulationIn practice the issue of a patent’s validity is frequently

raised as a plea in objection in an infringement action, the defendant seeking to have the claimant retroactively denied the right on which the claimant relies and thus have the action brought against him dismissed.

The issue can also be invoked, as in the case in the main proceedings, in support of a declaratory action seeking to establish that there has been no infringement, whereby the claimant seeks to establish that the defendant has no enforceable right in regard to the invention in question.

Brussels I Regulationthe rules of exclusive jurisdiction seek to ensure that

jurisdiction rests with courts closely linked to the proceedings in fact and law

those courts are best placed to adjudicate upon cases in which the dispute itself concerns the validity of the patent or the existence of the deposit or registration

the courts of the Contracting State on whose territory the registers are kept may rule, applying their own national law, on the validity and effects of the patents which have been issued in that State

Brussels I Regulationthe exclusive jurisdiction should apply whatever the form

of proceedings in which the issue of a patent’s validity is raised, be it by way of an action or a plea in objection, at the time the case is brought or at a later stage in the proceedingsOtherwise it would undermine the binding nature of the

rule of jurisdictionmultiplying the heads of jurisdictionmultiplying the risk of conflicting decisions

Brussels I RegulationArt. 6/1A defendant domiciled in a Contracting State] may also

be sued:where he is one of a number of defendants, in the courts

for the place where any one of them is domiciled

Brussels I RegulationArt. 6/1 – case law Roche Nederland (C-539/03, Roche

Nederland BV and Others v. Frederick Primus and Milton Goldenberg)More than one defendant Jurisdiction of the courts of the place where one of the defendants is

domiciledAction for infringement of a European patent Defendants established in different Contracting States Infringements committed in a number of Contracting StatesThe Convention on the Grant of European Patents (The Munich

Convention)

Brussels I Regulation… must be interpreted as meaning that it is to apply to

European patent infringement proceedings involving a number of companies established in various Contracting States in respect of acts committed in one or more of those States and, in particular, where those companies, which belong to the same group, have acted in an identical or similar manner in accordance with a common policy elaborated by one of them (the spider in the web doctrine)

Brussels I Regulationwhere infringement proceedings are brought before a

number of courts in different Contracting States in respect of a European patent granted in each of those States, against defendants domiciled in those States in respect of acts allegedly committed in their territory, any divergences between the decisions given by the courts concerned would not arise in the context of the same legal situation

Brussels I RegulationArt. 6/1 must be interpreted as meaning that it does not

apply in European patent infringement proceedings involving a number of companies established in various Contracting States in respect of acts committed in one or more of those States even where those companies, which belong to the same group, may have acted in an identical or similar manner in accordance with a common policy elaborated by one of them

-> spider in the web doctrine refused

Rome II RegulationArt. 8 – intellectual property rights

1. The law applicable to a non-contractual obligation arising from an infringement of an intellectual property right shall be the law of the country for which protection is claimed.

2. In the case of a non-contractual obligation arising from an infringement of a unitary Community intellectual property right, the law applicable shall, for any question that is not governed by the relevant Community instrument, be the law of the country in which the act of infringement was committed.

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Rome II RegulationIPR = for instance, copyright, related rights, the sui

generis rights for protection of databases and industrial property rights

Rome II Art. 8/1 – „for which portection is claimed“Berne Convention Art. 5/2 – „where protection is

claimed“

PIL and IPRMax Planck Institute

CLIP – Principles on Conflict of Laws in Intellectual PropertyWIPOALI PrinciplesHague Conference

CLIPMax Planck InstituteModel lawTo interpret and supplement international and domestic

lawInternational jurisdiction, applicable law, enforcement of

judgments

ALI PrinciplesAmerican Law InstituteSoft law principlesChoice of law and jurisdiction

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Thank you for your attention

PROJECT „THEORY – SKILL – EXPERIENCE“reg. No. CZ.1.07/2.2.00/15.0198, Operational Program Education for Competitiveness