INTERNATIONAL JURISDICTION AND RECOGNITION AND
ENFORCEMENT OF FOREIGN JUDGMENTS IN
INTELLECTUAL PROPERTY CASES
Marieke Germa Tonny Driessen
Submitted for the seminar
International and Comparative Protection of Intellectual Property
by Professor Jane C. Ginsburg
for the degree of Master of Laws
School of Law Columbia University
INTERNATIONAL JURISDICTION AND RECOGNITION AND
ENFORCEMENT OF FOREIGN JUDGMENTS IN
INTELLECTUAL PROPERTY CASES
CONTENTS
Acknowledgement
Foreword
Chapter 1.
Introduction
Chapter 2.
The Brussels Convention
2.1
Introduction
2.2
Contract
2.3
Tort
2.4
Exclusive Jurisdiction
2.5
Chapter 3.
2.4.1
Scope
2.4.2
Defense/Counterclaim/Incidental Question
2.4.3
Registration
Relationship with Other Conventions
The proposed Hague Convention
3.1
Introduction
3.2
Contract
3.3
Tort
3.4
Exclusive Jurisdiction
3.4.1
Scope
3.4.2
Exclusivity
3.4.3
Registered Rights
3.4.4
Defense/Counterclaim
2
Chapter 4.
3.4.5
Infringement
3.4.6
Patent/Trademark
3.4.7
Articles 12(5) and 12(6)
3.5
Interpretation
3.6
Relationship with Other Conventions
The proposed IP Treaty
4.1
Introduction
4.2
Scope
4.2.1. Patents
4.2.2. Domain Names
Chapter 5.
Chapter 6.
4.3
Contract
4.4
Tort
4.5
Exclusive Jurisdiction
4.6
Relationship with Other Conventions
4.7
Other Provisions
Public Policy and Applicable Law
5.1
Introduction
5.2
Brussels Convention
5.3
Hague Convention
5.4
IP Treaty
5.5
Desirability
Conclusions
Bibliography
3
ACKNOWLEDGEMENT
I am grateful to my supervisor, Professor Jane C. Ginsburg, for her valuable input and
comments on a preliminary draft of this paper. Also, I thank my fellow students of
Columbia Law School in the seminar of International and Comparative Protection of
Intellectual Property for discussing the topic of this paper with me.
4
FOREWORD
This paper focuses on intellectual property in relation to international jurisdiction and
recognition and enforcement of foreign judgments. Following the preliminary draft
Convention on Jurisdiction and the Recognition and Enforcement of Foreign Judgments
in Civil and Commercial Matters, as proposed by the Hague Conference on Private
International Law, this topic has received a lot of attention from intellectual property
owners, scholars and practitioners. For example, Special Committee Q153 of the
Association Internationale pour la Protection de la Propriete Intellectuelle (AIPPI) deals
with the impact of article 12(4) of the proposed convention on intellectual property
matters.1 Its chairman, Professor C.J.J.C. van Nispen, opened a meeting of the committee
with the following statement:
“I have to warn you: the interaction between intellectual property law and private
international law is generally considered to be a difficult subject. Ninety years
ago, in 1911, the famous French professor Pillet wrote: “l’etude que nous
entreprenons peut etre dite celebre par sa difficulte” [the study we are going to
undertake may be called famous because of its difficulty]. And as we all know,
things have got more and more complex since 1911.”2
1
Association Internationale pour la Protection de la Propriete Industrielle, Terms of Reference, at
http://www.aippi.org/tor/torq153.html.
2
Association Internationale pour la Protection de la Propriete Industrielle, Reports, Working Session, 12
April 2000, Question Q153, Extraordinary Session on Draft Hague Conference on Private International
Law (2000), at http://www.aippi.org/reports/q153/m-q153-e.htm
5
Indeed, studying the intellectual property related aspects of the proposed convention and
its subject matter was not easy. This was due partly to the scope of the proposed
convention (encompassing all areas of intellectual property law, including copyright,
trademark and patent law) and partly to the limited amount and fragmented nature of
information available. However, the process was facilitated by reports of meetings and
issues and position papers of organizations such as AIPPI, the Hague Conference on
Private International Law, the World Intellectual Property Organization and various
governmental agencies. This paper discusses the arguments made and positions taken to
date and aims to set out the discussions and difficulties surrounding intellectual property
related aspects of international jurisdiction and the recognition and enforcement of
judgments.
March 2001,
M.G.T. Driessen
6
CHAPTER 1. INTRODUCTION
Litigating parties in intellectual property cases with international aspects may encounter
difficult problems of private international law. For example, when the American owner
of an Italian patent wishes to bring infringement proceedings against an Australian
company that infringes the patent in Italy, she must consider where to sue the Australian
company. Another question is which law applies to the dispute. Suppose that the patent
holder obtained judgment against the Australian company and that she now wishes to
enforce this judgment in jurisdictions where assets of the Australian company are located.
The patent holder then comes across rules of recognition and enforcement of foreign
judgments.3
In general, matters of jurisdiction, applicable law and recognition and enforcement of
foreign judgments are subject to a country’s national rules of private international law,
unless treaties dealing with these issues have been concluded.4 An important example of
a multilateral treaty is the Convention on Jurisdiction and Enforcement of Judgments in
Civil and Commercial Matters, concluded among the member states of the then European
3
This example is based on a hypothetical problem formulated by Professor C.J.J.C. Van Nispen during the
Working Session of 12 April 2000 of the Association pour la Protection de la Propriete Industrielle
(“AIPPI”). Association Internationale pour la Protection de la Propriete Industrielle, Reports, Working
Session, 12 April 2000, Question Q153, Extraordinary Session on Draft Hague Conference on Private
International Law (2000), at 2, at http://www.aippi.org/reports/q153/m-q153-e.htm.
4
An example of a bilateral treaty is the Convention between the United Kingdom of Great Britain and
Northern Ireland providing for the Reciprocal Recognition and Enforcement of Judgments in Civil and
Commercial Matters, concluded on April 24, 1984. 1988 Gr. Brit. T.S. No. 74 (Cmnd. 519). See Louise
Lussier, A Canadian Perspective, 24 Brooklyn J. Int’l L. 31, 42 (1998).
7
Community in Brussels on September 27, 1968.5 Although such treaties provide some
relief for problems of international litigation, their scope or territorial application often
limit their practical importance. A need is felt for an international or global treaty dealing
with the issues mentioned above, especially in the field of intellectual property.6
In 1992, the United States proposed to the Hague Conference on Private International
Law7 to prepare an international treaty on recognition and enforcement of foreign
judgments and jurisdiction.8 That same year the proposal was discussed by the Special
Commission on General Affairs and Policy of the Hague Conference, where it was
concluded that an international treaty on jurisdiction and enforcement and recognition of
foreign judgments indeed was desirable.9
5
29 I.L.M. 1413. On September 16, 1988, a similar treaty was concluded between the member states of the
then European Community and the European Free Trade Association in Lugano. 28 I.L.M. 620. Both
treaties will be referred to as the “Brussels Convention”. Currently, the Brussels Convention is under
review of the European Commission. See Amended Proposal for a Council Regulation on Jurisdiction and
the Recognition and Enforcement of Judgments in Civil and Commercial Matters, July 1999, COM (1999)
348 final, 00/0154 (CNS) (July 14, 1999). See Paul R. Beaumont, A United Kingdom Perspective on the
Proposed Hague Judgments Convention, 24 Brooklyn J. Int’l L. 75, 83 (1998).
6
The territorial nature of intellectual property rights creates special problems in international litigation.
Also, infringement of intellectual property rights can take place in many countries simultaneously, so that
intellectual property owners wishing to remedy the situation may have to sue infringers in as many
countries. This could result in an increase in litigation costs for holders of intellectual property rights,
heavy burdens on courts in various countries and an increased risk of inconsistent judgments on intellectual
property rights. Rochelle C. Dreyfuss, An Alert to the Intellectual Property Bar: The Hague Judgments
Convention, (forthcoming) (on file with author) at 1.
7
The Hague Conference on Private International Law is an intergovernmental organization with the
purpose of unifying of the rules of private international law (article 1 of the Statute of the Hague
Conference, at http://www.hcch.net. The Hague Conference on Private International Law will be referred
to also as the “Hague Conference”.
8
Arthur T. Von Mehren, Recognition and Enforcement of Foreign Judgments: a New Approach for the
Hague Conference?, 57 L. & Contemp. Problems 271, 271 (1994).
9
Catherine Kessedjian, Report of the Hague Conference on Private International Law, Preliminary
Document no. 7, International Jurisdiction and Foreign Judgments in Civil and Commercial Matters (April
1997) at 10.
8
On October 30, 1999, the Hague Conference adopted a preliminary draft Convention on
Jurisdiction and Foreign Judgments in Civil and Commercial Matters.10 Since then, the
effect of the Hague Convention on intellectual property matters has been the subject of
debate.11
According to the initial timetable, a final text of the Hague Convention was to be adopted
during a diplomatic conference in the autumn of 2000. However, given the stumbling
blocks12, the diplomatic conference was postponed until May 2001.13
10
The draft is available at http://www.hcch.net/e/conventions/draft36e.html and will in this paper be
referred to as the Hague Convention.
11
See, e.g., Association Internationale pour la Protection de la Propriete Industrielle, Reports, Working
Session, 12 April 2000, Question Q153, Extraordinary Session on Draft Hague Conference on Private
International Law (2000) at 4, at http://www.aippi.org/reports/q153/m-q153-e.htm; Masato Dogauchi,
Private International Law on Intellectual Property: a Civil Law Overview, WIPO Forum on Private
International Law and Intellectual Property, Geneva, January 30 and 31, 2001 (January 24,
2001)(WIPO/PIL/01/8), at 12, at http://www.wipo.org/pil-forum/en; Letter from Jeffrey D. Kovar,
Assistant Legal Adviser for Private International Law, United States Department of State, to Mr J.H.A. van
Loon, Secretary General of the Hague Conference on Private International Law (February 22, 2000) (on
file with author), at 4; American Law Institute, International Jurisdiction and Judgments Project, Report
(2000) at 10.
12
In February 2000, the United States Department of State notified the Hague Conference of its doubts
regarding the success of the Hague Convention and important U.S. objections. Major concerns for the U.S.
are the absence of “doing business” as a ground for jurisdiction and “tag” jurisdiction and the risk of
inconsistent application of the Hague Convention. Letter from Jeffrey D. Kovar, Assistant Legal Adviser
for Private International Law, United States Department of State, to Mr J.H.A. van Loon, Secretary General
of the Hague Conference on Private International Law (February 22, 2000) (on file with author), at 3 and 6.
See also Linda Silberman, Can the Hague Judgments Project Be Saved?: A Perspective from the United
States, (forthcoming)(on file with author); Patrick J. Borchers, A Few Little Issues for The Hague
Judgments Negotiations, 24 Brooklyn J. Int’l L. 157 (1998). However, it is also argued in the United States
that the Hague Convention will be advantageous to American intellectual property owners. See Letter from
Edward G. Fiorito, Chair Section of Intellectual Property Law American Bar Association to Q. Todd
Dickinson, Director, United States Patent and Trademark Office (January 10, 2001) (on file with author) at
3. Australia has also identified the absence of “doing business” jurisdiction and “tag” jurisdiction as an
issue. See Commonwealth Attorney-General’s Department, International Jurisdiction and the Recognition
and Enforcement of Foreign Judgments in Civil Matters, Draft Hague Convention, Issues Paper (1999) at 8,
at http://law.gov.au/publications/haguepaper/welcome.html. On Canada’s position as to giving up “doing
business” and “tag” jurisdiction, see Louise Lussier, A Canadian Perspective, 24 Brooklyn J. Int’l L. 31
(1998).
13
Arthur T. Von Mehren, Recognition and Enforcement of Foreign Judgments: a New Approach for the
Hague Conference?, 57 L. & Contemp. Problems 271, 280-281 (1994).
9
If the Hague Convention would fail to succeed or would not lead to a (desirable) result
for the intellectual property community, the Hague Convention may be used as a starting
point for a treaty geared specifically towards jurisdiction and recognition and
enforcement of judgments in intellectual property cases.14 Such a treaty may be
negotiated in the context of the World Intellectual Property Organization (WIPO)15 or the
World Trade Organization (WTO).16 On January 30-31, 2001, and in the context of
WIPO, Professors R.C. Dreyfuss and J.C. Ginsburg proposed a draft Convention on
Jurisdiction and Recognition of Judgments in Intellectual Property Matters.17
This paper investigates the intellectual property related aspects of international
jurisdiction and recognition and enforcement of foreign judgments in the context of the
14
The Hague Convention may also be an opportunity for the United States to amend its laws relating to
jurisdiction and the recognition and enforcement of judgments. See Michael Traynor, An Introductory
Framework for Analyzing the Proposed Hague Convention on Jurisdiction and Foreign Judgments in Civil
and Commercial Matters: U.S. and European Perspectives, 6 Ann. Surv. Int’l & Comp. L. 1, 10 (2000);
Andreas F. Lowenfeld and Linda Silberman, A different Challenge for the ALI: Herein of Foreign Country
Judgments, and International Treaty, and an American Statute, 75 Ind. L. J. 635 (2000); Andreas F.
Lowenfeld and Linda Silberman, Memorandum to The Council on the Proposal for Project on Jurisdiction
and Judgments Convention, November 30, 1998, http://www.ali.org/ali/1999_Lowen1.html; Linda
Silberman, Can the Hague Judgments Project Be Saved?: A Perspective from the United States,
(forthcoming)(on file with author); Kevin M. Clermont, Jurisdictional Salvation and The Hague Treaty, 85
Cornell L. Rev. 89 (1999).
15
Rochelle C. Dreyfuss, An Alert to the Intellectual Property Bar: The Hague Judgments Convention,
(forthcoming) (on file with author) at 4.
16
As to the respective suitability of WIPO and WTO, see Graeme B. Dinwoodie, A New Copyright Order:
Why National Courts Should Create Global Norms, 149 U. Pa. L. Rev. 469 (2000).
17
Rochelle C. Dreyfuss and Jane C. Ginsburg, Draft Convention on Jurisdiction and Recognition of
Judgments in Intellectual Property Matters, WIPO Forum on Private International Law and Intellectual
Property, Geneva, January 30 and 31, 2001, (January 24, 2001) (WIPO/PIL/01/7), at
http://www.wipo.org/pil-forum/en/. This draft convention will be referred to as the “IP Treaty”.
10
Brussels Convention, the Hague Convention and the IP Treaty.18 Since the Hague
Convention was modeled on the Brussels Convention19, Chapter 2 briefly deals with
articles 5(1), 5(3) and 16(4) of the Brussels Convention, these being provisions with
direct relevance for intellectual property matters. Articles 6, 10 and 12(4)) of the Hague
Convention, corresponding to the Brussels Convention provisions, will be discussed
extensively in Chapter 3. Chapter 4 shows how the IP Treaty addresses the issues that
arose in the Hague Convention.20 Chapter 5 sets out the relationship between applicable
law and recognition and enforcement of foreign judgments. Chapter 6 provides
conclusions to be drawn from the previous chapters.
18
Together, the Brussels Convention, the Hague Convention and the IP Treaty will be referred to as the
“Treaties”. For an overview of general issues of the Hague Convention, see Edward C.Y. Lau, Update on
the Hague Convention on the Recognition and Enforcement of Foreign Judgments, 6 Ann. Surv. Int’l &
Comp. L. 13 (2000); Arthur T. von Mehren, Recognition and Enforcement of Foreign Judgments: a New
Approach for the Hague Conference?, 57 L. & Contemp. Problems 271(1994); American Law Institute,
International Jurisdiction and Judgments Project, Report (2000); Andreas F. Lowenfeld and Linda
Silberman, A different Challenge for the ALI: Herein of Foreign Country Judgments, and International
Treaty, and an American Statute, 75 Ind. L. J. 635 (2000); Andreas F. Lowenfeld and Linda Silberman,
Memorandum to The Council on the Proposal for Project on Jurisdiction and Judgments Convention,
November 30, 1998, http://www.ali.org/ali/1999_Lowen1.html; Linda Silberman, Can the Hague
Judgments Project Be Saved?: A Perspective from the United States, (forthcoming)(on file with author);
Kevin M. Clermont, Jurisdictional Salvation and The Hague Treaty, 85 Cornell L. Rev. 89 (1999).
19
Peter Nygh and Fausto Pocar, Report of the Special Commission of the Hague Conference on Private
International Law, Preliminary Document no. 11, at 28; Catherine Kessedjian, Report of the Hague
Conference on Private International Law, Preliminary Document no. 8, Synthesis of the Work of the
Special Commission of June 1997 on International Jurisdiction and the Effects of Foreign Judgments in
Civil and Commercial Matters (November 1997) at no. 41.
20
This paper will mainly discuss the jurisdiction provisions of the Treaties. The jurisdictional provisions
determine whether judgments must be, must not be, or - in the case of the Hague Convention and the IP
Treaty - may be, recognized and enforced.
11
CHAPTER 2. THE BRUSSELS CONVENTION
2.1
Introduction
Article 2 of the Brussels Convention confers general jurisdiction upon the court of the
state where the defendant domiciles. Additional jurisdiction may be had for other courts
pursuant to articles 5 to 18 of the Brussels Convention. With respect to intellectual
property cases, articles 5(1), 5(3) and 16(4) are relevant.21
2.2
Contract
Article 5(1) of the Brussels Convention provides that in matters relating to a contract, the
place of performance of the obligation in question determines which courts have
jurisdiction. If the contract contains multiple obligations, a suit may be brought before
the courts of the place where the obligation that forms the basis of the legal proceedings
must be performed.22 If the basis of the legal proceedings consists of more than one
obligation, then the principal obligation on which the suit is based will be decisive.23 If
the obligations resulting from the contract must be performed in different member states
21
Article 6(1) of the Brussels Convention is also relevant and has played an important role in patent cases.
The article provides that, in case of multiple defendants, the plaintiff may choose to sue before the courts of
the place of domicile of one of them. The European Court of Justice has required that actions against
multiple defendants are related when the proceedings are instituted. Kalfelis/Schroder, ECJ, September 27,
1988, NJ 1990, 425. Dutch courts found such a connection whenever the defendants infringed the same
patent and issued injunctions that also regarded infringements abroad. However, the Court of Appeal of
The Hague considered that actions regarding patents stemming from the same European bundle of patents
are not necessarily related. The Court of Appeal considered that, where companies belong to the same
group and sell identical products in different national markets, there is joint action based on a joint business
plan, constituting a sufficient relationship among the defendants. EGP/Boston Scientific, Hof Den Haag
April 23, 1998, IER 1998, 170.
22
Case 14/76 Etablissements De Bloos v. Societe en Commandite par Actions Bouyer [1976] ECR 1497.
23
Case 266/85 Shevanai v. Kreischer [1987] ECR 239.
12
of the Brussels Convention, this results in a number of states on which jurisdiction is
conferred.24 This is especially a problem in intellectual property contracts involving
negative obligations, which are performable everywhere. Also, a defendant may use
article 16(4) of the Brussels Convention (to be discussed below) to frustrate a claim
resulting from a license contract by claiming invalidity of the intellectual property right
involved.25 Article 5(1) is currently under revision by the European Commission.26
2.3
Tort
On the basis of article 5(3) of the Brussels Convention, a defendant may be sued in
matters relating to tort, delict or quasi-delict in the courts of the place where the harmful
event occurred. According to the European Court of Justice, this means that a defendant
may, at the option of the plaintiff, be sued in the courts of the place where the damage
occurred or in the courts for the place of the event which gives rise to, and is at the origin
of, that damage.27 Article 5(3) was further interpreted by the European Court of Justice
in the matter of Shevill v. Presse Alliance. In that case the European Court held that the
courts of the state where the publisher of a defamatory publication is established have
jurisdiction to award damages for all the harm caused by the defamation, whereas other
courts can award damages only with respect to harm suffered in the state of the court
seized.28 Take as an example a German company that is confronted with an infringement
Peter North and James J. Fawcett, Cheshire and North’s Private International Law (13 th ed. 1999) at 208.
James J. Fawcett and Paul Torremans, Intellectual Property and Private International Law (1998) at 114.
26
Paul R. Beaumont, A United Kingdom Perspective on the Proposed Hague Judgments Convention, 24
Brooklyn J. Int’l L. 75, 93 (1998).
27
Handelskwekerij G.J. Bier B.V. v. Mines de Potasse d’Alsace SA [1976], 1976 CELEX LEXIS 1284.
28
Case C-68/93 Fiona Shevill v. Presse Alliance SA [1995], 1995 CELEX LEXIS 4862.
24
25
13
of its copyright by someone domiciled in the Netherlands suffering damages in Germany,
the Netherlands and Belgium. The defendant may be sued before the Dutch courts,
which may award damages for the harm suffered in Germany, the Netherlands and
Belgium. If the defendant is sued in Belgium or Germany, the Belgian or German courts
may award damages for injury suffered in their respective territories only on the basis of
article 5(3) of the Brussels Convention.
2.4
Exclusive Jurisdiction
Article 16(4) of the Brussels Convention provides for exclusive jurisdiction in matters
regarding intellectual property rights as follows:
“[t]he following courts shall have exclusive jurisdiction, regardless of domicile:
(…) in proceedings concerned with the registration or validity of patents,
trademarks, designs or other similar rights required to be deposited or registered,
the courts of the Contracting State in which the deposit or registration has been
applied for, has taken place or is under the terms of an international convention
deemed to have taken place.”
This attribution of exclusive jurisdiction aims to preserve the national sovereignty of each
contracting state in granting and assessing the validity of patents and registering
trademarks.29
29
Burgerlijke Rechtsvordering, loose-leaf, Verdragen A, 271.
14
2.4.1
Scope
The European Court of Justice in Duijnstee v. Goderbauer pointed out that “proceedings
concerned with the registration or validity of patents” should be interpreted
restrictively.30 With regard to patent disputes, article 16(4) of the Brussels Convention is
limited to disputes involving the validity, existence or termination of patents, or the claim
to a right of preference as a result of prior deposit. According to the European Court of
Justice, article 16(4) of the Brussels Convention does not cover a dispute between an
employee and an employer about their respective rights to a patent granted for an
invention by the employee in the course of his employment.31 Nor does the scope of
article 16(4) include unfair competition32 or patent infringement actions.33
2.4.2
Defense/Counterclaim/Incidental Question
The text “proceedings concerned with” of article 16(4) of the Brussels Convention is
relevant from another perspective.34 Whenever the issue of registration or validity of
intellectual property rights arises in proceedings, the court of the country of registration is
30
Duijnstee v. Goderbauer, ECJ 15 November 1983, case 288/82, Jur. 1983, p. 3662, NJ 1984, 695.
Burgerlijke Rechtsvordering, loose-leaf, Verdragen A, 271.
32
In such cases articles 2 and 5 of the Brussels Convention apply. See Rechtbank Amsterdam 15 juni 1977,
NJ 1979, 146.
33
Fritz Blumer, Patent Law and International Private Law on Both Sides of the Atlantic, WIPO Forum on
Private International Law and Intellectual Property, Geneva, January 30 and 31, 2001, at 11, at
http://www.wipo.org/pil-forum/en/.
34
Association Internationale pour la Protection de la Propriete Industrielle, Reports, WIPO – Standing
Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT), Third
Session, Geneva, November 8 to 12 1999 (2000), at http://www.aippi.org/reports/report-wipo-gfk-sct-3rd11-99.htm. Association Internationale pour la Protection de la Propriete Industrielle, Reports, Working
Session, 12 April 2000, Question Q153, Extraordinary Session on Draft Hague Conference on Private
International Law (2000), at 8, at http://www.aippi.org/reports/q153/m-q153-e.htm.
31
15
exclusively competent, whether the issue comes up as a defense, a counterclaim or an
incidental question.35 Article 19 of the Brussels Convention provides that when
proceedings are principally concerned with a matter over which courts of another
contracting state have exclusive jurisdiction by virtue of article 16, other courts shall
declare of their own motion that they have no jurisdiction. For example, if proceedings
mainly concern the validity of a French patent, the courts of states other than France must
decline jurisdiction in favor of the French courts. However, if the proceedings would
concern infringement of the French patent, the other courts may assume jurisdiction as to
the infringement, but not as to the validity of the French patent. As to validity, French
courts have exclusive jurisdiction. Therefore, the result in practice may be that one court
will decide on validity and another court on infringement of intellectual property rights.
This is not desirable.36
This result is avoided in the approach of English courts as adopted in Fort Dodge.37 In
that case, Akzo brought patent infringement proceedings in the Netherlands. Fort Dodge
sought to enjoin Akzo from pursuing these proceedings before the English court on the
ground that the proceedings involved the validity of English patents, which could be
assessed only by an English court on the basis of article 16(4) of the Brussels
Convention. The English court considered that the question whether an English patent is
35
Association Internationale pour la Protection de la Propriete Industrielle, Special Committee Q153,
Hague Conference on Private International Law, Questionnaire and Explanatory Memorandum (2000) (on
file with author) at 8-9.
36
The Hague Court of Appeals in EGP/Boston Scientific, Hof Den Haag April 23, 1998, IER 1998, 170.
37
Fort Dodge Animal Health v. Akzo Nobel N.V., 1998 Fleet Street Reports of Industrial Property Cases
222, confirming Coin Controls Ltd v. Suzo International (UK) Ltd, (1997) 3 All ER 45, (1997) FSR 660.
The Fort Dodge case was brought before the European Court of Justice was not decided on the merits.
16
infringed necessarily involves an assessment of the scope and validity of the English
patent. Thus, in the English view, also a patent infringement claim must be brought
before the court of the place where the patent is registered. This is the wrong
interpretation of article 16(4) of the Brussels Convention.38
2.4.3
Registration
The phrase “the Contracting State in which the deposit or registration has been applied
for, has taken place or is under the terms of an international convention deemed to have
taken place” intends to include disputes over rights to intellectual property that are
granted with or without prior review by governmental agencies.39 For example, in the
Netherlands, a patent for the duration of six years may be obtained upon application,
whereas a patent for the duration of twenty years will be granted only after review of the
application.40 Pending the application for a twenty year patent, disputes regarding the
patent must be brought before the court of the Netherlands according to article 16(4) of
the Brussels Convention.
With respect to trademarks, the Madrid Agreement and the Madrid Protocol provide that
a trademark deposited with the International Bureau in Geneva will be protected in all the
countries that are a party to the Madrid Agreement or Madrid Protocol as though the
38
James J. Fawcett and Paul Torremans, Intellectual Property and Private International Law (1998) at 203.
Burgerlijke Rechtsvordering, loose-leaf, Verdragen A, 271.
40
Rijksoctrooiwet 1995 (National Patent Act of 1995), Stb. 1995, 51.
39
17
trademark was deposited in those countries.41 Deposit of the trademark in each
individual member state of the Madrid Agreement or Madrid Protocol is not necessary.42
Thus, on the basis of article 16(4) of the Brussels Convention, the courts of each member
to the Madrid Agreement or Madrid Protocol have exclusive jurisdiction in proceedings
concerning the registration or validity of trademarks deposited with the International
Bureau.
The other side of the coin is the Regulation regarding the Community Trademark of the
European Community. On the basis of this regulation, the Office for the Harmonization
of the Internal Market (OHIM) in Alicante, Spain, assesses applications for a community
trademark that is valid for the whole of the European Union. According to Title IX of the
Regulation, proceedings concerning the validity of a community trademark may be
brought before the courts of all member states. Since these provisions supersede the
Brussels Convention (on the basis of article 57 of the Brussels Convention), litigation
concerning the validity of the community trademark does not have to be brought before
the courts of Spain only.43
41
L.Wichers Hoeth, Kort Begrip van het Intellectuele Eigendomsrecht (Ch. Gielen & N. Hagemans eds.,
8th ed. 2000) at 171.
42
However, mere deposit of a trademark may not be sufficient. For example, the Benelux countries have
exercised their right of article 3bis of the Madrid Agreement to require an additional request for protection
of a trademark in the Benelux territory. See L.Wichers Hoeth, Kort Begrip van het Intellectuele
Eigendomsrecht (Ch. Gielen & N. Hagemans eds., 8th ed. 2000) at 168.
43
Regulation no. 40/94 of December 20, 1993, PBEG nr. L 11.
18
2.5
Relationship with other conventions
According to article 57 of the Brussels Convention, other conventions concluded between
member states of the European Union governing jurisdiction or the recognition and
enforcement of judgments, take preference over the Brussels Convention. For example,
the Regulation on the Community Trademark and the European Patent Convention of
1973 take preference over the Brussels Convention. The European Patent Convention of
1973 was accompanied by a Protocol on Jurisdiction and the Recognition of Decision in
Respect of the Right to the Grant of a European Patent. Articles 2 and 5 of the Protocol
provide that an applicant for a European Patent must be sued in the country where the
applicant has his residence or principal place of business, unless the parties concluded an
agreement in writing or with written confirmation that the courts of a particular state shall
decide on the dispute, in which case this court has exclusive jurisdiction. If the Protocol
does not apply, article 16(4) of the Brussels Convention comes into play again. Article
16(4) might be understood as providing that only the courts of the state in which the
European Patent was requested have jurisdiction. However, according to article V
quinquies of the Protocol belonging to the Brussels Convention, exclusive jurisdiction is
conferred upon the courts of every contracting state in which the European Patent is
considered to have been granted.44
44
Burgerlijke Rechtsvordering, loose-leaf, Verdragen A, 273.
19
CHAPTER 3. THE PROPOSED HAGUE CONVENTION
3.1
Introduction
In 1997, during the second meeting of the Special Commission of the Hague Conference,
it was considered whether intellectual property should be included in the scope of the
draft convention. In spite of initial reluctance45, it was concluded that actions in
intellectual property cases were intimately linked. Considering the difficulty to
distinguish between cases involving intellectual property and cases not involving
intellectual property, the Special Commission decided not to exclude intellectual property
matters from the scope of the Hague Convention.46 Today, there is again disagreement
on the inclusion of industrial property rights in the Hague Convention. Opponents point
out that industrial property matters are too complicated and too specific47; proponents
stress that intellectual property matters are closely linked with matters such as contracts
and should be dealt with in one convention.48
45
Catherine Kessedjian, Report of the Hague Conference on Private International Law, Preliminary
Document no. 7, International Jurisdiction and Foreign Judgments in Civil and Commercial Matters (April
1997) at 17.
46
United States Department of State, Conclusions of the Second Special Commission Meeting on the
Recognition and Enforcement of Foreign Judgments in Civil and Commercial Matters, at
http://www.state.gov/www/global/legal_affairs/judgments_96.html.
47
Association Internationale pour la Protection de la Propriete Industrielle, Special Committee Q153,
Hague Conference on Private International Law, Questionnaire and Explanatory Memorandum (2000) (on
file with author) at 15. Especially the American corporate world seems opposed to inclusion of intellectual
property in the Hague Convention. See, e.g., Letter from Ronald Abramson, Chair, The Association of the
Bar of the City of New York, to the Director of the United States Patent and Trademark Office (December
11, 2000) (on file with author); Letter from Michael K. Kirk, Executive Director, American Intellectual
Property Law Association to Q. Todd Dickinson, Director, United States Patent and Trademark Office
(December 8, 2000) (on file with author).
48
Permanent Bureau of the Hague Conference of Private International Law, Report of the Experts Meeting
on the Intellectual Property Aspects of the Future Convention on Jurisdiction and Foreign Judgments in
Civil and Commercial Matters, Geneva – 1 February 2001 (unpublished, on file with author) at 1 and 7.
20
This paper focuses on articles of the Hague Convention with direct relevance for
intellectual property.49 Under article 3 of the Hague Convention, a defendant may be
sued in the courts of the state where the defendant is habitually resident. Article 6 of the
Hague Convention confers additional jurisdiction in contract cases, e.g. cases involving
licensing contracts. Article 10 deals with additional jurisdiction in cases of torts or
delicts, such as infringement of intellectual property cases. Article 12(4) confers
exclusive jurisdiction on courts of the contracting states where intellectual property rights
are deposited or registered.50
3.2
Contract
Article 6 of the Hague Convention provides that actions in contract may be brought in the
courts of a state in which performance of the principal obligation took place in whole or
in part. In case of supply of goods, or provision of services, the courts of the state where
49
Obviously, other articles of the Hague Convention are relevant for litigation in intellectual property cases
as well. For example, under article 12(1) of the Hague Convention, proceedings which have as their object
rights in rem in immoveable property, must be brought before the court of the state where the property is
situated. If a domain name would be considered to be an immoveable property situated in the state where
the domain name holder has his residence, proceedings must be brought in that state. This result is not
consistent with article 43(d)(2)(A) of the Lanham Act, which would grant jurisdiction to U.S. courts. See
Letter from Kimbley L. Muller, President, International Trademark Association, to Q. Todd Dickinson,
Director, United States Patent and Trademark Office (December 1, 2000) (on file with author) at 5; Letter
from Thomas M.T. Niles, President, United States Council for International Business to Madeleine K.
Albright, Secretary, Department of State (October 30, 2000) (on file with author) at 2.
50
These articles were modeled on the Brussels Convention. Differences between the Hague Convention
and the Brussels Convention are a result of efforts to combine various legal traditions, for example with
respect to forum non conveniens and lis pendens. See Andreas F. Lowenfeld and Linda Silberman, A
different Challenge for the ALI: Herein of Foreign Country Judgments, and International Treaty, and an
American Statute, 75 Ind. L. J. 635 (2000); Michael Traynor, An Introductory Framework for Analyzing the
Proposed Hague Convention on Jurisdiction and Foreign Judgments in Civil and Commercial Matters:
U.S. and European Perspectives, 6 Ann. Surv. Int’l & Comp. L. 1 (2000). Given the fact that the Hague
Convention is currently under negotiation and that the Brussels Convention is being reviewed, the two texts
might converge. See Paul R. Beaumont, A United Kingdom Perspective on the Proposed Hague Judgments
Convention, 24 Brooklyn J. Int’l L. 75, 82 (1998).
21
the goods were supplied, or the services were provided, have jurisdiction.51 The practical
problem of article 6 is that it may be impossible for a seller to determine where goods
were supplied, or where services were provided. In such a case, the seller delivers goods,
or services, without knowing to what jurisdiction she may be subject.52 For example, if
goods or services are delivered via the internet, the seller may be sued in a number of
countries. The practical importance of article 6 may be limited when parties to a contract
have agreed to a choice of court clause. According to article 4 of the Hague Convention,
any suits in connection with contracts containing a choice of court clause must be brought
before the chosen court.
3.3
Tort
Article 10(1) of the Hague Convention provides an additional basis of jurisdiction for
courts of the state (a) in which the act or omission that caused the injury occurred or (b)
in which the injury arose, unless the defendant establishes that the person claimed to be
responsible could not reasonably have foreseen that the act or omission could result in an
injury of the same nature in that state. Article 10(1)(b) contains the “reasonably
foreseeable” test53, which has been criticized as being too vague.54 Also, questions may
51
WIPO Electronic Commerce, Primer on Electronic Commerce and Intellectual Property Issues, at 12, at
http://ecommerce.wipo.int/primer/primer.html.
52
Software & Information Industry Association, Comments on the Preliminary Draft Convention on
Jurisdiction and Foreign Judgments in Civil and Commercial Matters submitted to the U.S. Patent and
Trademark Office (January 12, 2001) (on file with author), at 5.
53
The purpose of the “reasonably foreseeable” test is to take away the fears of the United States delegation
to the Hague Conference that the ground for jurisdiction of article 10(1)(b) might otherwise not comply
with constitutional due process requirements. Standing Committee on the Law of Trademarks, Industrial
Designs and Geographical Indications, Third Session, Geneva, 8 to 12 November, 1999, Information on the
Preliminary Draft Convention on Jurisdiction and the Effects of Judgments in Civil and Commercial
Matters, Memorandum prepared by the International Bureau (September 28, 1999) (SCT/3/3), at 10, at
22
arise as to where the infringement occurred or injury arose, especially in case of
transnational torts, such as the tortuous use of trademarks on the internet. In such cases it
is often difficult to determine where infringement will occur and where the injury will
arise.55
With regard to trademarks, the claim is made that article 10(1)(a) and (b) may point to the
same state in which infringement proceedings should be brought. Given the territorial
nature of trademarks, infringement can only take place in the state in which the trademark
is protected and, accordingly, the injury can only arise in that state.56 The result is as
http://www.wipo.org/news/en; Catherine Kessedjian, Report of the Hague Conference on Private
International Law, Preliminary Document no. 9, Synthesis of the Work of the Special Commission of
March 1998 on International Jurisdictions and Effects of Foreign Judgments in Civil and Commercial
Matters, (1998) at 34; Ronald A. Brand, Due Process as a Limitation on Jurisdiction in U.S. Courts and a
Limitation on the United States at the Hague Conference on Private International Law, February 1998, at
http://www.state.gov/www/global/legal_affairs/brand.html.
However, it is by no means certain that the “foreseeable test” satisfies constitutional requirements. See
Letter from Jeffrey D. Kovar, Assistant Legal Adviser for Private International Law, United States
Department of State, to Mr J.H.A. van Loon, Secretary General of the Hague Conference on Private
International Law (February 22, 2000) (on file with author), at 7; Letter from Michael K. Kirk, Executive
Director, American Intellectual Property Law Association to Q. Todd Dickinson, Director, United States
Patent and Trademark Office (December 8, 2000) (on file with author), at 3; Linda Silberman, Can the
Hague Judgments Project Be Saved?: A Perspective from the United States, (forthcoming)(on file with
author), at 15.
54
Edward C.Y. Lau, Update on the Hague Convention on the Recognition and Enforcement of Foreign
Judgments, 6 Ann. Surv. Int’l & Comp. L. 13, 17 (2000); Linda Silberman, Can the Hague Judgments
Project Be Saved?: A Perspective from the United States, (forthcoming)(on file with author), at 15.
55
Rochelle C. Dreyfuss, An Alert to the Intellectual Property Bar: The Hague Judgments Convention,
(forthcoming) (on file with author) at 17; Association Internationale pour la Protection de la Propriete
Industrielle, Special Committee Q153, Hague Conference on Private International Law, Questionnaire and
Explanatory Memorandum (2000) (on file with author) at 5; Standing Committee on the Law of
Trademarks, Industrial Designs and Geographical Indications, Third Session, Geneva, 8 to 12 November,
1999, Information on the Preliminary Draft Convention on Jurisdiction and the Effects of Judgments in
Civil and Commercial Matters, Memorandum prepared by the International Bureau (September 28, 1999)
(SCT/3/3), at 10, at http://www.wipo.org/news/en; Standing Committee on the Law of Trademarks,
Industrial Designs and Geographical Indications, Second Session, Geneva, June 7 to 12, 1999, Study
concerning the Use of Trademarks on the Internet, prepared by the International Bureau (April 8, 1999)
(SCT/2/9 Prov.), at 22, at http://www.wipo.org/news/en.
56
Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, Fourth
Session, Geneva, March 27 to 31, 2000, Provisions of the Preliminary Draft Convention on Jurisdiction and
23
follows. If country A does not protect a trademark from country B, then there can be no
infringement of the trademark in country A and there can be no injury to the owner of the
trademark. In terms of the Hague Convention this means that the owner of the trademark
cannot invoke ground (a) or ground (b) of article 10(1) as a basis of jurisdiction. In the
reverse, if it is assumed that infringement of a trademark and injury resulting from such
infringement can only occur in the place where the trademark is protected, this means
that there is a de facto exclusive jurisdiction for the courts of the state from which the
trademark originates.57 This result would likely be the subject of debate, given the
discussion surrounding inclusion of proceedings relating to infringement in the exclusive
jurisdiction provision of article 12(4) of the Hague Convention.
If the grounds for jurisdiction in article 10(1)(a) and (b) lead to the same courts in cases
involving infringement of trademarks, the relevance of 10(1)(b) is probably reduced,
since jurisdiction on the basis of 10(1)(b) is subject to two limitations. First, article 10(4)
limits the jurisdiction of courts on the basis of article 10(1)(b) to the injury that occurred
or may occur in the state of that court58, unless the injured person has his or her habitual
Foreign Judgments in Civil and Commercial Matters, prepared by the International Bureau (December 20,
1999)(SCT/4/3), at http://www.wipo.org/news/en; Standing Committee on the Law of Trademarks,
Industrial Designs and Geographical Indications, Second Session, Geneva, June 7 to 12, 1999, Study
concerning the Use of Trademarks on the Internet, prepared by the International Bureau (April 8, 1999)
(SCT/2/9 Prov.), at http://www.wipo.org/news/en.
57
Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, Third
Session, Geneva, 8 to 12 November, 1999, Information on the Preliminary Draft Convention on
Jurisdiction and the Effects of Judgments in Civil and Commercial Matters, Memorandum prepared by the
International Bureau (September 28, 1999) (SCT/3/3), at 10, at http://www.wipo.org/news/en.
58
Article 10(4) of the Hague Convention stipulates that if an action is brought before a court on the basis
that the injury “arose or may occur” in the state of the court, then that court’s jurisdiction is limited to the
injury that “occurred or may occur” in that state. Strictly speaking the jurisdiction is not limited to the
injury that “arose” in that state. This could lead to problems of interpretation of article 10. See Letter from
24
residence in that state. Second, applicability of article 10(1)(b) is subject to the
“reasonably foreseeable” test. Given the choice, a plaintiff will prefer to get around the
limitations of jurisdiction on the basis of article 10(1)(b) and sue on the basis of article
10(1)(a). This possibility defeats the relevance article 10 paragraph 1 subparagraph b.
Article 10 of the Hague Convention differs from article 5(3) of the Brussels Convention
as interpreted by the European Court of Justice in the Shevill case.59 As a consequence of
the Shevill decision, a plaintiff may bring action before the courts of the state in which
the injury arose, provided that these courts have jurisdiction only with respect to the
injury that occurred or may occur in that state. Thus, a plaintiff who has suffered injuries
in different countries has to bring suit in each of these countries.60 To avoid this, article
10(4) of the Hague Convention provides that the limitation of recovery to injury that
arose in the state where suit is brought, does not apply when the injured person has his or
her habitual residence in that state. 61 If the injured person habitually resides in the state
Michael K. Kirk, Executive Director, American Intellectual Property Law Association to Q. Todd
Dickinson, Director, United States Patent and Trademark Office (December 8, 2000) (on file with author)
at 4.
59
Shevill v. Press Alliance SA, Case 68/93, Rep. 1995, p. I-415. See Rochelle C. Dreyfuss, An Alert to the
Intellectual Property Bar: The Hague Judgments Convention, (forthcoming) (on file with author) at 17;
WIPO Electronic Commerce, Primer on Electronic Commerce and Intellectual Property Issues, at 10, at
http://ecommerce.wipo.int/primer/primer.html.
60
It is suggested that the Brussels Convention be amended in this respect. See Andre Lucas, Private
International Law Aspects of the Protection of Works and of the Subject Matter of Related Rights
Transmitted Over Digital Networks, WIPO Forum on Private International Law and Intellectual Property,
Geneva, January 30 and 31, 2001 (December 17, 2000)(WIPO/PIL/01/1 Prov.), at 24, at
http://www.wipo.org/pil-forum/en.
61
For the United States the exception for “habitual residence” is not far-reaching enough as it would place
excessive burdens on plaintiffs. Letter from Jeffrey D. Kovar, Assistant Legal Adviser for Private
International Law, United States Department of State, to Mr J.H.A. van Loon, Secretary General of the
Hague Conference on Private International Law (February 22, 2000) (on file with author) at 8.
25
where action is brought on the basis of article 10(4), the courts of that state can decide
that action, also with respect to damages caused in other states.62
This is of particular importance for cases involving infringement of intellectual property
rights, e.g. trademarks on the internet.63 In theory, infringement of trademarks on the
internet and the resulting injury can be considered to have taken place in every country of
the world. This means that action may be brought in every country, which increases the
risk of contradictory judgments and decreases litigation efficiency.64 An example of the
operation of article 10(4) is a German manufacturer advertising its products on a website.
The website displays trademark “X”, registered in Germany and owned by the German
manufacturer. An Argentine manufacturer is the owner of the same trademark “X”
registered in Argentina. The Argentine manufacturer sues the German manufacturer in
Germany for trademark infringement and demands an injunction against use of trademark
“X” on the website of the German manufacturer.65 Under article 10(4) of the Hague
Convention, a German judgment would be limited to Germany. However, if the action is
62
Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, Third
Session, Geneva, 8 to 12 November, 1999, Information on the Preliminary Draft Convention on
Jurisdiction and the Effects of Judgments in Civil and Commercial Matters, Memorandum prepared by the
International Bureau (September 28, 1999) (SCT/3/3), at 11, at http://www.wipo.org/news/en.
63
Advisory Committee on Enforcement of Industrial Property Rights, First Session, Geneva, October 19
and 20, 2000, Comments submitted by: United States Patent and Trademark Office, Office of Legislative
and International Affairs, Proposal by the Delegation of the United States of America (October 19, 2000)
(ACE/IP/1/5), at 4, at http://www.wipo.org/news/en/index.html.
64
Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications,
Second Session, Geneva, June 7 to 12, 1999, Study concerning the Use of Trademarks on the Internet,
prepared by the International Bureau (April 8, 1999) (SCT/2/9 Prov.), at 14, at
http://www.wipo.org/news/en. Linda Silberman, Can the Hague Judgments Project Be Saved?: A
Perspective from the United States, (forthcoming)(on file with author) at 18.
65
This example was inspired by the hypothetical in Standing Committee on the Law of Trademarks,
Industrial Designs and Geographical Indications, Third Session, Geneva, 8 to 12 November, 1999, Use of
Trademarks on the Internet: Summary of Responses to Questionnaire, prepared by the International Bureau
(October 20, 1999) (SCT/3/2), Annex 2 at 2, at http://www.wipo.org/news/en.
26
based on the fact that injury was suffered in Argentina, the Argentine court has
jurisdiction with respect to injury that occurred in Argentina and other states, since the
Argentine manufacturer has its habitual residence in Argentina.
3.4
Exclusive Jurisdiction
Article 12(4) of the Hague Convention attributes exclusive jurisdiction as follows:
“In proceedings which have as their object the registration, validity, [or] nullity[,
or revocation or infringement,] of patents, trademarks, designs or other similar
rights required to be deposited or registered, the courts of the Contracting State
in which the deposit or registration has been applied for, has taken place or,
under the terms of an international convention, is deemed to have taken place,
have exclusive jurisdiction. This shall not apply to copyright or any neighbouring
rights, even though registration or deposit of such rights is possible.”66
3.4.1
Scope
This provision reflects article 16(4) of the Brussels Convention and incorporates a system
which is familiar and in regular use.67 It has been doubted whether an exclusive
jurisdiction clause for disputes regarding intellectual property rights should be included
66
The text between square brackets indicates that its wording is proposed, but not yet adopted. See
Association Internationale pour la Protection de la Propriete Industrielle, Reports, Working Session, 12
April 2000, Question Q153, Extraordinary Session on Draft Hague Conference on Private International
Law (2000), at 6, at http://www.aippi.org/reports/q153/m-q153-e.htm.
67
Peter Nygh and Fausto Pocar, Report of the Special Commission of the Hague Conference on Private
International Law, Preliminary Document no. 11, at 67.
27
in the Hague Convention. Such exclusive jurisdiction is regarded as too restrictive for
registered rights68, and disputes involving intellectual property rights may be adjudicated
on the basis of article 3, or article 6 (if they relate to contracts), or article 10 (should they
relate to torts).69 Finally, in article 12(3) of the Hague Convention, exclusive jurisdiction
for disputes relating to the validity and effects of entries in public registers, including
registers of patents and copyrights, is granted to the courts of the state in which the
register is kept.70 However, article 12(3) of the Convention only relates to the validity of
registrations itself, not to actions violating intellectual property rights.71 Many countries
are of the opinion that disputes regarding registration, validity, nullity and revocation of
registered rights should be subject to exclusive jurisdiction, so as to avoid an obligation
to recognize or enforce a judgment regarding the registration, validity, nullity and
revocation of registered rights created pursuant to their national laws.72
68
Rochelle C. Dreyfuss, An Alert to the Intellectual Property Bar: The Hague Judgments Convention,
(forthcoming) (on file with author) at 25; Permanent Bureau of the Hague Conference of Private
International Law, Report of the Experts Meeting on the Intellectual Property Aspects of the Future
Convention on Jurisdiction and Foreign Judgments in Civil and Commercial Matters, Geneva – 1 February
2001 (unpublished, on file with author); Patrick J. Borchers, A Few Little Issues for The Hague Judgments
Negotiations, 24 Brooklyn J. Int’l L. 157, 165 (1998).
69
Peter Nygh and Fausto Pocar, Report of the Special Commission of the Hague Conference on Private
International Law, Preliminary Document no. 11, at 64.
70
Catherine Kessedjian, Report of the Hague Conference on Private International Law, Preliminary
Document no. 7, International Jurisdiction and Foreign Judgments in Civil and Commercial Matters (April
1997) at 28.
71
Catherine Kessedjian, Report of the Hague Conference on Private International Law, Preliminary
Document no. 8, Synthesis of the Work of the Special Commission of June 1997 on International
Jurisdiction and the Effects of Foreign Judgments in Civil and Commercial Matters (November 1997) at
41.
72
The United States hold the opposite view. Permanent Bureau of the Hague Conference of Private
International Law, Report of the Experts Meeting on the Intellectual Property Aspects of the Future
Convention on Jurisdiction and Foreign Judgments in Civil and Commercial Matters, Geneva – 1 February
2001 (unpublished, on file with author) at 2.
28
The Special Commission of the Hague Conference decided to exclude copyright and
neighbouring rights from the scope of article 12(4) of the Hague Convention, since a
deposit or registration for these rights is not always required. This would cause
difficulties in applying the rule such as problems with localizing the copyright.73 In
general, there is no support to include copyright in article 12(4) of the Hague
Convention.74 Geographical indications, trade names and names are also excluded.75
The argument that these rights should be excluded from article 12(4) since their deposit
or registration is not always required, is not convincing. Trademarks, which do not
necessarily have to be registered either, are included in article 12(4).76
The same result may be obtained by deleting exclusive jurisdiction for intellectual
property rights, so that jurisdiction for intellectual property disputes must be sought in
articles 3, 6 or 10 of the Hague Convention, and instead creating an additional exception
to the obligation to recognize and enforce foreign judgments on limited grounds.77 For
73
Peter Nygh and Fausto Pocar, Report of the Special Commission of the Hague Conference on Private
International Law, Preliminary Document no. 11, at 67; Permanent Bureau of the Hague Conference of
Private International Law, Report of the Experts Meeting on the Intellectual Property Aspects of the Future
Convention on Jurisdiction and Foreign Judgments in Civil and Commercial Matters, Geneva – 1 February
2001 (unpublished, on file with author) at 5.
74
Permanent Bureau of the Hague Conference of Private International Law, Report of the Experts Meeting
on the Intellectual Property Aspects of the Future Convention on Jurisdiction and Foreign Judgments in
Civil and Commercial Matters, Geneva – 1 February 2001 (unpublished, on file with author) at 5.
75
Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications,
Second Session, Geneva, June 7 to 12, 1999, Study concerning the Use of Trademarks on the Internet,
prepared by the International Bureau (April 8, 1999) (SCT/2/9 Prov.), at 14-17, at
http://www.wipo.org/news/en.
76
Examples are the common law trademarks, which come into existence by mere use, rather than
registration. In some countries, registration of trademarks has mere declaratory effect. L.Wichers Hoeth,
Kort Begrip van het Intellectuele Eigendomsrecht (Ch. Gielen & N. Hagemans eds., 8th ed. 2000) at 164.
77
Letter from Jeffrey D. Kovar, Assistant Legal Adviser for Private International Law, United States
Department of State, to Mr J.H.A. van Loon, Secretary General of the Hague Conference on Private
International Law (February 22, 2000) (on file with author) at 8.
29
example, a Japanese company owns a Japanese patent that is used without authorization
by a Swedish company. The Swedish company wishes to avoid a lawsuit for damages by
the Japanese company and sues the Japanese company for a declaration of non-validity of
its patent in Sweden on the basis of article 10 of the Hague Convention. When the
Swedish company obtains a favorable judgment, it subsequently seeks recognition of that
judgment in Japan. The Japanese courts are obliged to recognize the Swedish decision as
to the validity of the Japanese patent. To avoid this, an additional basis to refuse
recognition would have to be included in article 28(1) of the Hague Convention.
3.4.2
Exclusivity
Article 12(4) of the Hague Convention may not be deviated from, not even if both parties
to the dispute are habitually resident in the same member state.78 Also, parties may not
agree to a choice of court clause that derogates to article 12 of the Hague Convention.
This means that the contracting parties are less certain of where they may be sued, since –
under certain circumstances considered below – a suit may be brought in several
jurisdictions.79 The Hague Convention does not make clear whether article 12(4) applies
to a dispute among contracting states regarding an intellectual property right that is
registered in a non-contracting state.80
78
Peter Nygh and Fausto Pocar, Report of the Special Commission of the Hague Conference on Private
International Law, Preliminary Document no. 11, at 37.
79
Peter Nygh and Fausto Pocar, Report of the Special Commission of the Hague Conference on Private
International Law, Preliminary Document no. 11, at 44; Letter from Sarah B. Deutsch, Vice President and
Associate General Counsel, Verizon, to the Director of the United States Patent and Trademark Office
(November 30, 2000) (on file with author) at 4.
80
Permanent Bureau of the Hague Conference of Private International Law, Report of the Experts Meeting
on the Intellectual Property Aspects of the Future Convention on Jurisdiction and Foreign Judgments in
30
In general, the advantage of granting exclusive jurisdiction is that holders of intellectual
property rights can be “made whole” on litigated claims and that they save litigation costs
and expenses and that there may be a possibility to consolidate claims. Another
advantage is that forum shopping will be limited.81
3.4.3
Registered rights
An example of intellectual property rights that are not required to be deposited or
registered is the common law trademark, which may come into existence by mere use.82
For example, if a Mexican company infringes an American common law mark in the
U.S., the U.S. corporation owning the mark may sue the Mexican company in the U.S.
However, if the U.S. corporation claims to have a trademark which is identical to the
common law trademark and which is registered in Mexico, the Mexican courts have
exclusive jurisdiction. This would prejudice protection of U.S. common law marks.83 If
the U.S. company wishes to initiate proceedings against the Mexican company that
infringes the common law trademark in the U.S., it cannot do so on the basis of article
12(4) of the Hague Convention, since the trademark is not registered. Perhaps the
contract or tort provisions of articles 6 or 10 of the Hague Convention may provide a
Civil and Commercial Matters, Geneva – 1 February 2001 (unpublished, on file with author); Louise
Lussier, A Canadian Perspective, 24 Brooklyn J. Int’l L. 31, 64 (1998).
81
Rochelle C. Dreyfuss, An Alert to the Intellectual Property Bar: The Hague Judgments Convention,
(forthcoming) (on file with author) at 9, 15 and 18.
82
Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, Third
Session, Geneva, 8 to 12 November, 1999, Information on the Preliminary Draft Convention on
Jurisdiction and the Effects of Judgments in Civil and Commercial Matters, Memorandum prepared by the
International Bureau (September 28, 1999) (SCT/3/3), at 9, at http://www.wipo.org/news/en.
83
Letter from Sarah B. Deutsch, Vice President and Associate General Counsel, Verizon, to the Director of
the United States Patent and Trademark Office (November 30, 2000) (on file with author) at 3-4.
31
forum in the U.S. If they do not, the U.S. company has to sue in Mexico on the basis of
article 3 of the Hague Convention.84
Examples of intellectual property rights that are not required to be registered, i.e. for
which registration has merely a declaratory effect, are foreign trademarks85 and famous
trademarks86 that may be registered in the United States pursuant to sections 44 and 43(3)
respectively of the Lanham Act.
3.4.4
Defense/Counterclaim
Whereas article 16(4) of the Brussels Convention relates to “proceedings concerned
with” the registration or validity of registered intellectual property rights, article 12(4) of
the Hague Convention deals with “proceedings which have as their object” registration,
validity, nullity or revocation or infringement of registered intellectual property rights.
The Hague Convention does not make clear how the “object” of proceedings should be
determined. Thus, it is likely that different courts will apply different standards. The
“object” of proceedings could be understood as the “main” or “principal” issue in
proceedings. The obvious difficulty with this standard is that the main or principal issues
84
In the absence of the Hague Convention, the U.S. corporation can possibly sue the Mexican company in
the U.S. on the basis of tag or doing business jurisdiction. Letter from Kimbley L. Muller, President,
International Trademark Association, to Q. Todd Dickinson, Director, United States Patent and Trademark
Office (December 1, 2000) (on file with author) at 4.
85
Sheldon W. Halpern, Craig A.Nard and Kenneth L. Port, Fundamentals of United States Intellectual
Property Law: Copyright, Patent and Trademark (1999) at 280.
86
Permanent Bureau of the Hague Conference of Private International Law, Report of the Experts Meeting
on the Intellectual Property Aspects of the Future Convention on Jurisdiction and Foreign Judgments in
Civil and Commercial Matters, Geneva – 1 February 2001 (unpublished, on file with author) at 3.
32
in proceedings are not always clear.87 Another suggested standard is that the “object” of
proceedings should be determined by the claim brought before the court.88
Assuming that the “object” of proceedings must be determined in accordance with the
claim, then the practical consequence is that the court before which the claim is brought
will have jurisdiction to assess the validity of registered intellectual property rights
whenever that issue is brought up as a defense or incidental question.89 For example, if a
matter concerning infringement of a Spanish patent is brought before a Chinese court
under article 16(4) of the Hague Convention and the defendant argues that the patent is
invalid, the Chinese court will assess the validity of the Spanish patent. If the Chinese
court finds in favor of the defendant and the defendant wishes to have the decision of the
Chinese court recognized in Spain, the Spanish courts must recognize the judgment on
the basis of article 25(1) of the Convention.90 The desirability of this result will be
discussed later.
87
Association Internationale pour la Protection de la Propriete Industrielle, Special Committee Q153,
Hague Conference on Private International Law, Questionnaire and Explanatory Memorandum (2000) (on
file with author) at 10. Peter Nygh and Fausto Pocar, Report of the Special Commission of the Hague
Conference on Private International Law, Preliminary Document no. 11, at 67-68.
88
Association Internationale pour la Protection de la Propriete Industrielle, Special Committee Q153,
Hague Conference on Private International Law, Questionnaire and Explanatory Memorandum (2000) (on
file with author).at 11. In the case of EGP v. Boston Scientific, the The Hague Court of Appeals assumed
that the jurisdiction issue of article 16(4) of the Brussels Convention should be decided on the basis of the
claim stated in the writ of summons.
89
Association Internationale pour la Protection de la Propriete Industrielle, Special Committee Q153,
Hague Conference on Private International Law, Questionnaire and Explanatory Memorandum (2000) (on
file with author), at 11.
90
See also Masato Dogauchi, Private International Law on Intellectual Property: a Civil Law Overview,
WIPO Forum on Private International Law and Intellectual Property, Geneva, January 30 and 31, 2001
(January 24, 2001)(WIPO/PIL/01/8), at 12-13, at http://www.wipo.org/pil-forum/en.
33
The current wording of article 12(4) of the Hague Convention results in a distinction
between invalidity of an intellectual property right as a defense and as a counterclaim. If
the issue of invalidity is raised as a defense and the relevant court decides the issue as an
incidental matter in deciding on the claim, its judgment has effect only between the
parties. 91 With respect to third parties, the status of the intellectual property right is not
affected. If the issue of invalidity is brought up in a counterclaim, the proceedings
relating to the counterclaim will have as their “object” the validity of intellectual property
rights.92 That means that exclusive jurisdiction is conferred upon the court where the
relevant intellectual property right is registered. If that court upholds the counterclaim,
then the judgment as to the invalidity of the intellectual property right is not only binding
on the litigating parties, but also on others.93 This could mean that proceedings in which
a counterclaim as to validity is brought, might have to be conducted by a different court
than the court that adjudicates the original claim. Therefore, it is of significant practical
importance whether the validity of intellectual property rights is challenged by way of
defense or by way of counterclaim.94 By contrast, article 16(4) of the Brussels
91
Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, Fourth
Session, Geneva, March 27 to 31, 2000, Report, prepared by the International Bureau (September 19,
2000)(SCT/4/6), at 16, at http://www.wipo.org/news/en.
92
Assuming that a counterclaim is regarded as a separate action. Association Internationale pour la
Protection de la Propriete Industrielle, Special Committee Q153, Hague Conference on Private
International Law, Questionnaire and Explanatory Memorandum (2000) (on file with author) at 12.
93
Association Internationale pour la Protection de la Propriete Industrielle, Reports, Working Session, 12
April 2000, Question Q153, Extraordinary Session on Draft Hague Conference on Private International
Law (2000), at 8-9, at http://www.aippi.org/reports/q153/m-q153-e.htm.
94
In some countries validity of an intellectual property right can be challenged by counterclaim only.
Association Internationale pour la Protection de la Propriete Industrielle, Special Committee Q153, Hague
Conference on Private International Law, Questionnaire and Explanatory Memorandum (2000) (on file
with author) at 12.
34
Convention does not distinguish between the issue of validity of registered intellectual
property rights as a defense, a counterclaim or an incidental question.
3.4.5
Infringement
The inclusion of infringement claims in article 12(4) of the Hague Convention concerns a
proposed text that is not yet adopted. If infringement claims are taken out of article 12(4)
of the Hague Convention, then intellectual property right holders may sue on the basis of
article 10 or 3 of the Hague Convention.95 This may not amount to an amelioration of the
current situation in which litigation costs and expenses are considered a problem.96 Also,
in such cases, the court of the state in which the rights are registered does not necessarily
assess intellectual property rights.97 This would be an argument in favor of adoption of
the proposal to include infringement claims in article 16(4).98 On the other hand, it is
argued that inclusion of infringement cases in the exclusive jurisdiction clause would
result in multiple forums with exclusive jurisdiction to assess infringement of intellectual
property rights registered in more than one country. 99 This would cause enormous
95
This outcome seems to be in accordance with the national laws of a number of countries. As shown by an
investigation by WIPO’s Standing Committee on the Law of Trademarks, Industrial Designs and
Geographical Indications among 36 states. See Standing Committee on the Law of Trademarks, Industrial
Designs and Geographical Indications, Third Session, Geneva, 8 to 12 November, 1999, Use of
Trademarks on the Internet: Summary of Responses to Questionnaire, prepared by the International Bureau
(October 20, 1999) (SCT/3/2), at 2-3, at http://www.wipo.org/news/en.
96
Rochelle C. Dreyfuss, An Alert to the Intellectual Property Bar: The Hague Judgments Convention,
(forthcoming) (on file with author) at 9 and 22.
97
This is deemed unacceptable for U.S. patents. See Letter from Edward G. Fiorito, Chair Section of
Intellectual Property Law American Bar Association to Q. Todd Dickinson, Director, United States Patent
and Trademark Office (January 10, 2001) (on file with author).
98
Rochelle C. Dreyfuss, An Alert to the Intellectual Property Bar: The Hague Judgments Convention,
(forthcoming) (on file with author) at 22.
99
Association Internationale pour la Protection de la Propriete Industrielle, Special Committee Q153,
Hague Conference on Private International Law, Questionnaire and Explanatory Memorandum (2000) (on
file with author) at 13.
35
problems in the context of trademark infringement via the internet.100 Also, in some
countries it is possible to refer disputes regarding infringement of intellectual property
rights to arbitration, so that the courts of the country where the intellectual property rights
are registered are deprived of jurisdiction.101 By the same token, exclusive jurisdiction
for foreign courts should be accepted. These are arguments against the proposal to
include infringement actions in article 12(4). The debate has not yet led to consensus on
the issue of whether infringement should be included in article 12(4) of the Hague
Convention.102
3.4.6
Patents/Trademarks
Currently, trademarks and patents are treated on the same footing in article 12(4) of the
Hague Convention. It can be argued that trademarks deserve separate treatment from
patents since they are more territorial in scope and need more, and more complex,
examination.103 Also, when assessing a patent infringement claim, a court must in
100
Association Internationale pour la Protection de la Propriete Industrielle, Special Committee Q153,
Hague Conference on Private International Law, Questionnaire and Explanatory Memorandum (2000) (on
file with author) at 13.
101
Permanent Bureau of the Hague Conference of Private International Law, Report of the Experts Meeting
on the Intellectual Property Aspects of the Future Convention on Jurisdiction and Foreign Judgments in
Civil and Commercial Matters, Geneva – 1 February 2001 (unpublished, on file with author).
102
Permanent Bureau of the Hague Conference of Private International Law, Report of the Experts Meeting
on the Intellectual Property Aspects of the Future Convention on Jurisdiction and Foreign Judgments in
Civil and Commercial Matters, Geneva – 1 February 2001 (unpublished, on file with author) at 3.
Americans argue that for them there is not as much need for article 12(4) of the Hague Convention in
patent cases. Letter from Ronald Abramson, Chair, The Association of the Bar of the City of New York, to
the Director of the United States Patent and Trademark Office (December 11, 2000) (on file with author) at
2. It seems that in current U.S. practice a patent infringer is usually doing business in the U.S., so that there
is jurisdiction, and also, a patent owner has extensive possibilities to sue in the U.S. on various bases.
103
Rochelle C. Dreyfuss, An Alert to the Intellectual Property Bar: The Hague Judgments Convention,
(forthcoming) (on file with author) at 23, and Association Internationale pour la Protection de la Propriete
Industrielle, Reports, Working Session, 12 April 2000, Question Q153, Extraordinary Session on Draft
36
general examine the validity of the patent. In cases involving trademark infringement,
validity of the trademark is generally presupposed.104 Finally, the granting of patents is
subject to public policy considerations.105 On the other hand, patents and trademarks
infringement cases encounter similar problems and it is not clear how differently
trademarks should be treated from patents.106
If trademarks would remain to be included in article 12(4) of the Hague Convention, the
result is that multiple courts have exclusive jurisdiction, since most trademarks are
registered in several countries. The same result is encountered in the context of
trademarks registered pursuant to the Madrid Agreement or Madrid Protocol or a
community trademark. This would encourage forum shopping and prevent consolidation
of claims.107 Also, since article 21 of the Hague Convention provides that subsequent
Hague Conference on Private International Law (2000), at 7, at http://www.aippi.org/reports/q153/m-q153e.htm.
104
Association Internationale pour la Protection de la Propriete Industrielle, Reports, Working Session, 12
April 2000, Question Q153, Extraordinary Session on Draft Hague Conference on Private International
Law (2000), at 7, at http://www.aippi.org/reports/q153/m-q153-e.htm.
105
Permanent Bureau of the Hague Conference of Private International Law, Report of the Experts Meeting
on the Intellectual Property Aspects of the Future Convention on Jurisdiction and Foreign Judgments in
Civil and Commercial Matters, Geneva – 1 February 2001 (unpublished, on file with author) at 2.
106
This is the position taken by the British government and AIPPI. Association Internationale pour la
Protection de la Propriete Industrielle, Reports, Working Session, 12 April 2000, Question Q153,
Extraordinary Session on Draft Hague Conference on Private International Law (2000), at 7 and 10, at
http://www.aippi.org/reports/q153/m-q153-e.htm. See also WIPO Primer on Electronic Commerce and
Intellectual Property issues, p. 14, available at ecommerce.wipo.int/primer/primer/html; Standing
Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, Fourth Session,
Geneva, March 27 to 31, 2000, Report, prepared by the International Bureau (September 19,
2000)(SCT/4/6), at 15, at http://www.wipo.org/news/en.
107
Rochelle C. Dreyfuss and Jane C. Ginsburg, Draft Convention on Jurisdiction and Recognition of
Judgments in Intellectual Property Matters, WIPO Forum on Private International Law and Intellectual
Property, Geneva, January 30 and 31, 2001, (January 24, 2001) (WIPO/PIL/01/7), at 24 and 27, at
http://www.wipo.org/pil-forum/en/.
Permanent Bureau of the Hague Conference of Private International Law, Report of the Experts Meeting on
the Intellectual Property Aspects of the Future Convention on Jurisdiction and Foreign Judgments in Civil
and Commercial Matters, Geneva – 1 February 2001 (unpublished, on file with author) at 2.
37
proceedings will be stayed until the court first seized renders judgment, parties might be
encouraged to initiate proceedings in a court favorable to them.108 For example, the
owner of a U.S. trademark considers to take action against a French company that
infringes the U.S. trademark. The French company, anticipating a suit by the U.S.
trademark owner against him in the U.S., sues the trademark owner in a French court,
claiming that the U.S. trademark is invalid in France. According to article 12(4) of the
Hague Convention, the French court has exclusive jurisdiction, since the dispute has as
its object the (in)validity of a trademark. If the American trademark owner subsequently
brings action in the U.S., the U.S. court must stay the proceedings.
3.4.7
Articles 12(5) and (6)
Article 12(5) and (6) of the Hague Convention currently have the status of proposals and
appear in brackets.109 These provisions read as follows:
“[(5)
In relation to proceedings which have as their object the infringement of
patents, the preceding paragraph does not exclude the jurisdiction of any
other court under the Convention or under the national law of a
Contracting State.]
[(6)
The previous paragraphs shall not apply when the matters referred to
therein arise as incidental questions.]”
108
Letter from Sarah B. Deutsch, Vice President and Associate General Counsel, Verizon, to the Director
of the United States Patent and Trademark Office (November 30, 2000) (on file with author) at 2.
109
Association Internationale pour la Protection de la Propriete Industrielle, Reports, Working Session, 12
April 2000, Question Q153, Extraordinary Session on Draft Hague Conference on Private International
Law (2000), at 7, at http://www.aippi.org/reports/q153/m-q153-e.htm.
38
Article 12(5) has been criticized for not being clear. The article may be given two
meanings depending on the final text of article 12(4) of the Hague Convention. If article
12(4) would grant exclusive jurisdiction for infringement actions as well as validity
claims, then article 12(5) stipulates that alternative jurisdiction may be had for cases
involving infringement of patents.110 The problem in creating more than one forum is an
increased risk that judgments relating to the same subject matter are contradictory and
that litigating parties will practice forum shopping.111 If article 12(4) would not include
exclusive jurisdiction for infringement actions, then article 12(5) may serve the purpose
of making clear that infringement actions relating to patents must not be regarded as
necessarily involving the validity of the patent. Thus, under the Hague Convention, the
view of English courts as adopted in Fort Dodge would not be acceptable.112
Article 12(6) clarifies that incidental questions regarding validity or infringement of
patents, trademarks, designs and other similar rights are not subject to the exclusive
110
Peter Nygh and Fausto Pocar, Report of the Special Commission of the Hague Conference on Private
International Law, Preliminary Document no. 11, at 67-68; Association Internationale pour la Protection de
la Propriete Industrielle, Reports, Working Session, 12 April 2000, Question Q153, Extraordinary Session
on Draft Hague Conference on Private International Law (2000), at 7, at
http://www.aippi.org/reports/q153/m-q153-e.htm.
111
Letter from Edward G. Fiorito, Chair Section of Intellectual Property Law American Bar Association to
Q. Todd Dickinson, Director, United States Patent and Trademark Office (January 10, 2001) (on file with
author), at 3.
112
See Permanent Bureau of the Hague Conference of Private International Law, Report of the Experts
Meeting on the Intellectual Property Aspects of the Future Convention on Jurisdiction and Foreign
Judgments in Civil and Commercial Matters, Geneva – 1 February 2001 (unpublished, on file with
author).at 3.
39
jurisdiction provision of article 12(4).113 If exclusive jurisdiction for issues of validity as
an incidental question were conferred on a court, then parties might be required to bring
their dispute before different courts. One court would have exclusive jurisdiction to
assess the incidental question regarding the validity of intellectual property rights, and
another court would have jurisdiction to decide on the main question, e.g. regarding
infringement.114 This is generally considered undesirable.115
If the claim of proceedings determines the object thereof, the claim is the principal
question, and the defense is necessarily merely an incidental question. For example, if a
claim for tortuous interference with a contract whereby a trademark is licensed, is
brought before the court having jurisdiction on the basis of article 10 and the defendant
argues the invalidity of the trademark, then article 12(4) does not apply.
3.5
Interpretation
An obvious problem with the Hague Convention is that it would not provide for a
supranational court that safeguards uniformity in law and decisions of courts addressed to
interpret the Hague Convention.116 For example, how is a matter characterized as a matter
113
Association Internationale pour la Protection de la Propriete Industrielle, Reports, Working Session, 12
April 2000, Question Q153, Extraordinary Session on Draft Hague Conference on Private International
Law (2000), at 7 and 9, at http://www.aippi.org/reports/q153/m-q153-e.htm.
114
Peter Nygh and Fausto Pocar, Report of the Special Commission of the Hague Conference on Private
International Law, Preliminary Document no. 11, at 68.
115
Association Internationale pour la Protection de la Propriete Industrielle, Reports, Working Session, 12
April 2000, Question Q153, Extraordinary Session on Draft Hague Conference on Private International
Law (2000), at 10, at http://www.aippi.org/reports/q153/m-q153-e.htm.
116
To encourage a uniform interpretation, articles 38 to 40 of the Hague Convention provide for
consultation of committee of experts. Article 38 of the Hague Convention provides that national courts,
when interpreting the Convention, must take into account its international character, the need to promote
40
involving contract (article 6) or tort (article 10)? It is clear, however, that the problem of
characterization is only a problem for a court assessing whether it has jurisdiction, since a
court seized to recognize or enforce a judgment may not re-assess the issue on the basis
of article 27 of the Hague Convention.117
The national courts that are called upon to interpret the Hague Convention, may find
guidance in the decisions of the European Court of Justice about the Brussels
Convention.118 As a (partial) solution, it has been suggested that foreign courts ask
certified questions to, for example, administrative agencies involved in granting or
registering patents, such as the European Patent Office.119
uniformity in its application and the case law of other member states. Article 39 provides for a process
monitoring the operation of the Hague Convention. Article 40 of the Hague Convention provides that a
committee of experts will be set up for the purpose of interpreting the Hague Convention, upon a request of
either the parties to the dispute involving the interpretation of the Convention jointly or a court of a
member state. The decisions of the panel of experts will not be binding. The functioning of the committee
of experts will in future be set out in an optional protocol. Although the committee of experts is regarded
as the most effective possible means of promoting uniformity of interpretation of the convention, its
effectiveness may be reduced by the option to sign the protocol. In the U.S. the institution of a committee
of experts may be contrary to the principle of judicial independence as set out in the Constitution, even if
the committee’s decisions are not binding. Peter Nygh and Fausto Pocar, Report of the Special Commission
of the Hague Conference on Private International Law, Preliminary Document no. 11, at 120.
117
Peter Nygh and Fausto Pocar, Report of the Special Commission of the Hague Conference on Private
International Law, Preliminary Document no. 11, at 48 and 58
118
The national courts may also refer to the documents drafted in preparation of the Hague Convention. In
so far as the Hague Convention uses concepts which are similar to other conventions of the Hague
Conference, the interpretation of these concepts given in these other conventions may be adopted for the
Hague Convention. For example, the convention is applicable to “civil and commercial matters” only, a
concept which is also used in the Service and Evidence Conventions. Peter Nygh and Fausto Pocar, Report
of the Special Commission of the Hague Conference on Private International Law, Preliminary Document
no. 11, at 28-29.
119
Rochelle C. Dreyfuss, An Alert to the Intellectual Property Bar: The Hague Judgments Convention,
(forthcoming) (on file with author) at 17 and 24; Conclusions of the Second Special Commission Meeting
on the Recognition and Enforcement of Foreign Judgments in Civil and Commercial Matters, available at
www.state.gov/www.global/legal_afffairs/judgments_96.html.
41
3.6
Relationship with Other Conventions
The Hague Convention will ultimately include a provision regarding which international
instruments supersede it. Currently three proposals for such a provision (article 37 of the
Hague Convention) have been made. It seems that the Brussels Convention, the
European Patent Convention120 and the Regulation regarding the Community Trademark
of the European Community take preference over the Hague Convention.121
120
Catherine Kessedjian, Report of the Hague Conference on Private International Law, Preliminary
Document no. 8, Synthesis of the Work of the Special Commission of June 1997 on International
Jurisdiction and the Effects of Foreign Judgments in Civil and Commercial Matters (November 1997) at
no. 43.
121
The U.S considers this a problem. See Letter from Jeffrey D. Kovar, Assistant Legal Adviser for Private
International Law, United States Department of State, to J.H.A. van Loon, Secretary General of the Hague
Conference on Private International Law (February 22, 2000) (on file with author) at 10; Association
Internationale pour la Protection de la Propriete Industrielle, Reports, Working Session, 12 April 2000,
Question Q153, Extraordinary Session on Draft Hague Conference on Private International Law (2000), at
4, at http://www.aippi.org/reports/q153/m-q153-e.htm.
42
CHAPTER 4. PROPOSED IP TREATY
4.1
Introduction
On January 30-31, 2001, a proposal was made for a Convention on Jurisdiction and
Recognition of Judgments in Intellectual Property Matters.122 The idea is to stimulate
discussion about the desirability of an international treaty covering intellectual property
litigation.123 The advantages of a separate IP Treaty are that such a treaty can focus more
on efficiency in intellectual property litigation and that it can take into account unique
aspects of intellectual property litigation. An additional advantage is that membership to
the treaty can be limited to countries that are a member of WTO.124
4.2
Scope
The particular problem of a separate convention on jurisdiction and judgments in
intellectual property related matters may be to define the scope of such convention. The
scope of the IP Treaty includes “copyright, neighboring rights, [patents,] trademarks, and
other intellectual property rights covered by the Agreement on Trade Related Aspects of
Intellectual Property, and its successor Agreements.” A court may have difficulty in
122
Rochelle C. Dreyfuss and Jane C. Ginsburg, Draft Convention on Jurisdiction and Recognition of
Judgments in Intellectual Property Matters, WIPO Forum on Private International Law and Intellectual
Property, Geneva, January 30 and 31, 2001, (January 24, 2001) (WIPO/PIL/01/7), at
http://www.wipo.org/pil-forum/en/.
123
Rochelle C. Dreyfuss and Jane C. Ginsburg, Draft Convention on Jurisdiction and Recognition of
Judgments in Intellectual Property Matters, WIPO Forum on Private International Law and Intellectual
Property, Geneva, January 30 and 31, 2001, (January 24, 2001) (WIPO/PIL/01/7), at 2, at
http://www.wipo.org/pil-forum/en/.
124
Rochelle C. Dreyfuss and Jane C. Ginsburg, Draft Convention on Jurisdiction and Recognition of
Judgments in Intellectual Property Matters, WIPO Forum on Private International Law and Intellectual
Property, Geneva, January 30 and 31, 2001, (January 24, 2001) (WIPO/PIL/01/7), at 2, at
http://www.wipo.org/pil-forum/en/.
43
deciding whether the rights in dispute should be characterized as such rights. The
problem may be limited for registered intellectual property rights, since these require
some act by a government or governmental agency. This may not be the case, however,
for non-registered rights such as copyrights and neighboring rights. Possibly, some
guidance is found by determining the “main object” of the matter before the court, as
opposed to incidental questions.125
According to conventional conflict of law rules, courts that are addressed to adjudicate a
dispute will apply their own national law as to the question whether the dispute comes
within the scope of the IP Treaty.126 These national laws may diverge to a great extent.
Under the IP Treaty, this problem is not remedied in view of the absence of a
supranational court designated to ensure uniform interpretation of the IP Treaty.127
4.2.1
Patents
For the time being, provisions regarding patents are included in brackets in the IP Treaty,
which means that patents are excluded from the scope of the IP Treaty. One of the
reasons is that patent cases involve technically difficult laws and facts, which require a
125
Compare Peter Nygh and Fausto Pocar, Report of the Special Commission of the Hague Conference on
Private International Law, Preliminary Document no. 11, at 32.
126
Strikwerda, Inleiding tot het Nederlandse Internationaal Privaatrecht (1995) at 64.
127
The same considerations as made for the Hague Convention apply. The IP Treaty has less of an
interpretation problem than the Hague Conference, since it is proposed to be party of TRIPS and can
therefore profit from WTO dispute settlement procedures. Compare Neil W. Netanel, Asserting
Copyright’s Democratic Principles in the Global Arena, 51 Van. L. Rev. 217, 218-219 (1998).
44
high degree of judicial expertise.128 For example, in the United States the U.S. Court of
Appeals for the Federal Circuit was created for appellate patent litigation. In the
European Union, disputes regarding patent validity must be brought before the courts of
the state designated by article 16(4) of the Brussels Convention. The national laws of
that state may designate a specialized court to assess patent disputes. For example, in the
Netherlands disputes regarding patents must, in principle, be brought before the District
Court of The Hague.129 In this context, it was considered undesirable to create a treaty
according to which courts of a country have jurisdiction to assess the validity of foreign
patents.130
4.2.2
Domain names
Domain names are under consideration for inclusion in the IP Treaty, although they are
not as such covered by Agreement on Trade Related Aspects of Intellectual Property
Rights.131
128
Rochelle C. Dreyfuss and Jane C. Ginsburg, Draft Convention on Jurisdiction and Recognition of
Judgments in Intellectual Property Matters, WIPO Forum on Private International Law and Intellectual
Property, Geneva, January 30 and 31, 2001, (January 24, 2001) (WIPO/PIL/01/7), at 7, at
http://www.wipo.org/pil-forum/en/.
129
Article 80 Rijksoctrooiwet 1995 (National Patent Act of 1995).
130
Rochelle C. Dreyfuss and Jane C. Ginsburg, Draft Convention on Jurisdiction and Recognition of
Judgments in Intellectual Property Matters, WIPO Forum on Private International Law and Intellectual
Property, Geneva, January 30 and 31, 2001, (January 24, 2001) (WIPO/PIL/01/7), at 7-8, at
http://www.wipo.org/pil-forum/en/.
131
Rochelle C. Dreyfuss and Jane C. Ginsburg, Draft Convention on Jurisdiction and Recognition of
Judgments in Intellectual Property Matters, WIPO Forum on Private International Law and Intellectual
Property, Geneva, January 30 and 31, 2001, (January 24, 2001) (WIPO/PIL/01/7), at 8, at
http://www.wipo.org/pil-forum/en/
45
4.3
Contract
The general idea of the IP Treaty, as expressed in article 3, is that a defendant must be
sued in the courts of the state where the defendant is habitually resident. Other than in
article 3(2), the notion of habitual residence is not explained. This is likely to result in
diverging views among member states of the IP Treaty, should it be ratified.132
Article 7 of the IP Treaty creates additional jurisdiction for agreements pertaining to
intellectual property rights for any country whose rights are covered by the agreement. In
addition, an action may be brought before the court of the country with the most
significant relationship to the contract. Article 7(2) sets out factors to be taken into
account when assessing which country has the most significant relationship. The
residence of the parties, the country where intellectual property rights were developed
and the country where the principal obligation is to be performed are relevant.
Article 7 of the IP Treaty deviates from article 5(1) of the Brussels Convention and
article 6 of the Hague Convention, which attach jurisdiction to the country where the
principal obligation of the contract must be performed. This attachment was considered
problematic in intellectual property cases for creating multiple forums. However, article
7 raises some difficult problems as well. First, it is not clear when an agreement
“pertains” to intellectual property and when a country’s rights are “covered” by the
132
By analogy to Letter from Jeffrey D. Kovar, Assistant Legal Adviser for Private International Law,
United States Department of State, to J.H.A. van Loon, Secretary General of the Hague Conference on
Private International Law (February 22, 2000) (on file with author).
46
relevant agreement. In the case of a contract for a license of intellectual property, there is
little doubt that the contract “pertains” to intellectual property. The example of a contract
for the sale of business assets, including intellectual property rights or licensing contracts,
located in several countries, is less clearly cut. What connection between the country and
the intellectual property right is required? Must the intellectual property right be
“developed” in the country? Is a common law trademark, which comes into existence by
mere use, considered to be “developed” in a particular country? In what countries may
an action involving a European community trademark be brought? Second, article 7 is
likely to result in numerous forums as well. Not only may action be brought in the state
of domicile of the defendant, but also - if an agreement “pertains” to intellectual property
– in every country whose intellectual property rights are covered by the agreement. In
addition, the courts of the country with the most significant relationship to the contract
have jurisdiction. Third, the country with the most significant relationship to the contract
may be difficult to identify. For example, in the case of the sale and transfer of business
assets, the intellectual property rights stem from many countries and performance of the
principal obligation (transfer of assets) must take place in many jurisdictions.
Parties to a contract may deviate from the general jurisdiction provisions by a choice of
court clause or arbitration clause. The chosen court or arbitral forum has exclusive
jurisdiction pursuant to article 4 of the IP Treaty.
47
4.4
Tort
Article 6 of the IP Treaty deals with infringement actions. A definition of “infringement
actions” is not provided. Possible interpretations are that infringement actions are
proceedings that have their object, i.e. in which the claim regards, infringement of
intellectual property rights.133 In such case, the plaintiff could create a basis of
jurisdiction by claiming infringement. A defense of invalidity of the intellectual property
right would not influence the jurisdiction of the court addressed. Therefore, like the
Hague Convention, the IP Treaty does not distinguish between invalidity as a defense and
as a counterclaim.134
This would be different if an infringement action is understood to be an action
“concerned with” infringement, as in the Brussels Convention. In such case, additional
forums are available if the main or principal issue is one of infringement. In the
theoretical example that the plaintiff’s action would concern infringement as an
incidental matter, article 6 does not apply.
The forums provided for in article 6 are substantially different from the ones provided by
the Hague Convention and the Brussels Convention as interpreted by the European Court
of Justice. Infringement actions may be brought in (a) any state where the defendant
substantially acted in furtherance of the alleged infringement, or (b) any state to which
the infringement was intentionally directed or (c) any state in which the infringement
133
134
This is by analogy to how the Hague Convention is generally understood.
There is one exception, to be discussed later in the context of declaratory judgments.
48
foreseeably occurred. The foreseeable test in article 6(1)(c) does not require that the
infringement was reasonably foreseeable to occur in a particular state. The same
criticism as on the Hague Convention may be cast; the test is vague and may not satisfy
U.S. constitutional criteria.
Articles 6(2) and 6(3) of the IP Treaty provide that, if an action is brought on the basis of
article 6(1)(b) or (c) respectively, the jurisdiction of the court addressed is limited to
injury arising out of unauthorized use occurring in the court’s state. Article 6(2) makes
an exception to this limitation of jurisdiction when the injured person has his habitual
residence or principal place of business in the state of the court addressed. With respect
to the limitations on the availability of the additional forums of article 6(2) and (3), it can
be said that these are too narrow, especially taking into account the complexities of, for
example, trademark infringements via the internet.135
4.5
Exclusive jurisdiction
The IP Treaty does not make a distinction between registered and non-registered
intellectual property rights. For example, it provides no basis for exclusive jurisdiction
for the courts of the country in which intellectual property rights are deposited or
registered. This means that courts of country A may have jurisdiction in disputes relating
135
By analogy to Letter from Jeffrey D. Kovar, Assistant Legal Adviser for Private International Law,
United States Department of State, to J.H.A. van Loon, Secretary General of the Hague Conference on
Private International Law (February 22, 2000) (on file with author); Linda Silberman, Can the Hague
Judgments Project Be Saved?: A Perspective from the United States, (forthcoming)(on file with author) at
13.
49
to intellectual property rights established or developed in country B. This is an important
deviation from the current practice and is likely to give rise to much criticism.136
The authors of the IP Treaty considered including exclusive jurisdiction provisions in the
IP treaty for patents.137 Article 8(2) of the IP Treaty contains in brackets an exclusive
jurisdiction clause for proceedings that have as their object the obtaining of a declaration
of the invalidity or nullity of a registration of patents. The courts of the state which the
deposit or registration has been applied for, has taken place, or under the terms of an
international convention, is deemed to have taken place, have exclusive jurisdiction. If
invalidity of patent is presented in a dispute as a defense against a claim, then the courts
of the state of registration have no exclusive jurisdiction. Thus, it makes a difference
whether the invalidity or nullity of a patent is invoked as a defense or is the basis of a
counterclaim. For example, an English company that infringes a Japanese patent is sued
by the owner of the patent in England (on the basis of article 3 or 6 of the IP Treaty). If
the English company files a defense that the Japanese patent is invalid, the English court
will decide on the validity issue. If the English company institutes a counterclaim based
on the invalidity of the patent, this action must be brought before Japanese courts
pursuant to article 8(2) of the IP Treaty.
136
Compare Association Internationale pour la Protection de la Propriete Industrielle, Reports, Working
Session, 12 April 2000, Question Q153, Extraordinary Session on Draft Hague Conference on Private
International Law (2000), at 8, at http://www.aippi.org/reports/q153/m-q153-e.htm.
137
Rochelle C. Dreyfuss and Jane C. Ginsburg, Draft Convention on Jurisdiction and Recognition of
Judgments in Intellectual Property Matters, WIPO Forum on Private International Law and Intellectual
Property, Geneva, January 30 and 31, 2001, (January 24, 2001) (WIPO/PIL/01/7), at 8, at
http://www.wipo.org/pil-forum/en/.
50
Article 12(5)(b) of the IP Treaty creates an exception to the exclusive jurisdiction clause
of article 8(2). Article 12(5)(b) provides that, if a plaintiff in an action before the court
first seized, seeks a determination that it has no obligation to the defendant, and if an
action seeking substantive relief is brought in the second court seized, the court first
seized must suspend the proceedings at the request of a party if the court second seized is
expected to render a decision capable of being recognized under the IP Treaty. For
example, a Canadian company brings an action in Canada for a declaration of invalidity
of a Canadian patent owned by a French company. Subsequently, the French company
brings an infringement action against the Canadian company in France, in which
proceedings the Canadian company raises the defense of invalidity of the patent. In this
situation, article 8(2) does not confer exclusive jurisdiction on the Canadian court to asses
validity of the patent, so that the French courts may render a decision in this respect that
is capable of being recognized under the IP Treaty. The Canadian court must stay the
proceedings pursuant to article 12(5)(b) of the IP Treaty. Thus, if the IP Treaty were to
include the exclusive jurisdiction provision of article 8(2), the defendant can evade this
jurisdiction by bringing a subsequent infringement action.
4.6
Relationship with Other Conventions
The IP Treaty does not (yet) provide for rules governing the relationship of the IP Treaty
with other conventions or international instruments. Such provisions seem indispensable.
For example, if the Hague Convention and the IP Treaty would both come into effect, it
must be clear which convention supersedes. Take the example of the sale of business
51
assets, including intellectual property rights. Can the buyer of the assets, when suing the
seller, invoke the Hague Conference or the IP Treaty at his option? Does the IP Treaty,
in such case, merely provide for optional additional forums? If so, this would result in
increased forum shopping in intellectual property matters and an increased risk of
inconsistent judgments.138
4.7
Other provisions
According to article 2 of the IP Treaty, only states that are party to the New York
Convention on Arbitral Awards139 may become a party to the IP Treaty. Article 4 of the
IP Treaty contains provisions that apply to arbitration clauses. This is not necessary as
the New York Convention deals with the subject matter of article 4. Also, the New York
Convention and the IP Treaty diverge in important ways. For example, according to
article V(2)(b) of the New York Convention, a country my refuse recognition and
enforcement of an arbitral award if recognition or enforcement would be “contrary to
public policy” of that country. Article 25(1)(f) of the IP Treaty allows such refusal only
if recognition or enforcement is “manifestly incompatible with the public policy”.
Another example of where the NY Convention and the IP Treaty diverge is the definition
of an “arbitration agreement”. Article 4(2) of the IP Treaty goes further than the New
York Convention in this respect. According to article II of the New York Convention,
138
The authors of the IP Treaty have, in this respect, stressed the advantage of efficiency of litigation.
Rochelle C. Dreyfuss and Jane C. Ginsburg, Draft Convention on Jurisdiction and Recognition of
Judgments in Intellectual Property Matters, WIPO Forum on Private International Law and Intellectual
Property, Geneva, January 30 and 31, 2001, (January 24, 2001) (WIPO/PIL/01/7), at 3, at
http://www.wipo.org/pil-forum/en/.
139
United Nations Convention on the Recognition and Enforcement of Foreign Arbitral Awards of June 10,
1958.
52
only arbitration clauses in agreements in writing must be recognized. Pursuant to article
4(2) of the IP Treaty also non-written communications and usage may constitute an
agreement. Thus, if usage between two contracting parties prescribes arbitration, the
New York Convention does not apply, but the IP Treaty prescribes that a dispute between
the parties must be brought in arbitration and that a resulting arbitral award must be
recognized and enforced (article 22 of the IP Treaty). This is an important deviation from
practice and raises the problem that usage might not be as settled so as to designate a
particular arbitration institution or identify arbitration rules.
Article 4(3)(f) of the IP Treaty introduces the requirement that in case of non-negotiated
contracts that include an arbitration clause and involve registered rights, among other
circumstances, the expertise of the chosen forum be taken into account when assessing
the validity of the agreement. The use of the term “registered right” might lead to
discussion. Does this cover both rights required to registered to come into existence and
rights for which registration has mere declaratory effect? Presumably, article 4(3)(f)
covers both in view of the only consequence that expertise must be taken into account.
Also, the question what is relevant to assess expertise of the designated forum may arise.
For example, it is possible that some courts would consider the need to assess foreign law
as part of the relevant expertise. The result could be that these courts hold non-negotiated
contracts with a choice of forum clause or arbitration clause to be unreasonable and that
exclusive jurisdiction for the chosen forum is frustrated. This seems not desirable and
would expose contracting parties to a greater risk of having to litigate in an unexpected
53
forum. Finally, a choice of court or arbitration clause in favor of the country where the
intellectual property rights are registered, could always be considered or presumed to be
reasonable. A provision to this effect could be included in article 4 of the IP Treaty.
.
54
CHAPTER 5. PUBLIC POLICY AND APPLICABLE LAW
5.1
Introduction
Courts may refuse recognition or enforcement of foreign judgments on the basis of
diverging public policy considerations.140 For example, some countries will not enforce
foreign judgments involving the validity or infringement of patents granted under the
laws of that country due to public policy concerns.141
5.2
Brussels Convention
Articles 27(1) and 34 of the Brussels Convention lay down the rule that a foreign
judgment will not be recognized or enforced if recognition or enforcement are “contrary
to public policy” of the state in which recognition or enforcement is sought. This ground
for refusal of recognition or enforcement may be invoked in exceptional circumstances
only. The public policy exception may not be used to assess a foreign judgment on the
merits or the law applied.142
140
Permanent Bureau of the Hague Conference of Private International Law, Report of the Experts Meeting
on the Intellectual Property Aspects of the Future Convention on Jurisdiction and Foreign Judgments in
Civil and Commercial Matters, Geneva – 1 February 2001 (unpublished, on file with author).
141
John E. Kidd, ADR: the Future of Dispute Resolution in International Intellectual Property Disputes, in
International Intellectual Property, Insight Conference, February 9-10, 1998 (1998) at 19. England is an
example of this practice. James J. Fawcett and Paul Torremans, Intellectual Property and Private
International Law (1998) at 737.
142
L. Strikwerda, Inleiding to het Nederlandse Internationaal Privaatrecht (4 th ed. 1995).
Strikwerda, at 297.
55
5.3
Hague Convention
Article 28(1)(f) of the Hague Convention provides that recognition or enforcement of
judgments may be refused on the basis that enforcement is “manifestly incompatible”
with “public policy”.143 However, the Hague Convention does not define “public
policy”.144 It is intended that the public policy exception is construed narrowly and is
applied only rarely.145 The public policy exception should be invoked only if the “effect”
of a judgment is contrary to public policy, rather than the law on which the judgment is
based. If the court rendering the decision was mistaken as to the law to be applied, the
court requested to recognize or enforce that decision may not invoke the public policy
exception, even if the first court misapplied the law of the second court.146 It is not clear
whether courts may invoke the public policy exception when they disagree as to what
was the applicable law.147
143
Article 28(1) of the Hague Convention lists five other grounds on which recognition or enforcement of a
foreign judgment may be refused in (a) up to and including (e). However, forum non conveniens is not one
of them. See Edward C.Y. Lau, Update on the Hague Convention on the Recognition and Enforcement of
Foreign Judgments, 6 Ann. Surv. Int’l & Comp. L. 13 (2000) at 22.
144
Louise Lussier, A Canadian Perspective, 24 Brooklyn J. Int’l L. 31, 70 (1998).
145
Peter Nygh and Fausto Pocar, Report of the Special Commission of the Hague Conference on Private
International Law, Preliminary Document no. 11, at 108.
146
Peter Nygh and Fausto Pocar, Report of the Special Commission of the Hague Conference on Private
International Law, Preliminary Document no. 11, at 108. Graeme Austin, Private International Law and
Intellectual Property Rights, A Common Law Overview, WIPO Forum on Private International Law and
Intellectual Property, Geneva, January 30 and 31, 2001 (January 15, 2001)(WIPO/PIL/01/5), at 12, at
http://www.wipo.org/pil-forum/en.
147
Graeme Austin, Private International Law and Intellectual Property Rights, A Common Law Overview,
WIPO Forum on Private International Law and Intellectual Property, Geneva, January 30 and 31, 2001
(January 15, 2001)(WIPO/PIL/01/5), at 3, at http://www.wipo.org/pil-forum/en. An illustration of this
problem is the French Yahoo-case. A French court issued an order against an internet service provider
based in California to block access to a site on which Anti-Semitic materials were auctioned. The U.S.
internet service provider argued that U.S. law applied and claimed to be protected by the constitutional
right to free speech. The French court applied French law. Suppose that this French judgment was sought
to be enforced against the U.S. internet service provider in the U.S. Might the U.S. court refuse
enforcement on the ground of public policy of article 28(1)(f) of the Hague Convention? Another example
of diverging national intellectual property laws is the exception of “fair use”. Letter from James Love,
Director, Consumer Project on Technology, to Elizabeth Shaw, United States Patent and Trademark Office
56
5.4
IP Treaty
Article 25(1)(f) of the IP Treaty, based on article 28(1)(f) of the Hague Convention148,
provides that recognition or enforcement of foreign judgments may be refused if
recognition or enforcement would be “manifestly incompatible with the public policy” of
the state addressed. It is argued that courts should be given wider discretion to refuse
enforcement on the basis of incompatibility with public policy in intellectual property
cases. This wider discretion is allegedly justified by the fact that intellectual property
cases not only affect the litigating parties, but also the “health, safety, intellectual
development, expressive capacity, and quality of life of the populace of the enforcing
state”.149
Article 25(1)(g) of the IP Treaty creates an additional ground for refusal of recognition
and enforcement where the rendering court’s choice of law was arbitrary or unreasonable,
for example, where it applied a law lacking sufficient significant relationship to the
dispute. With respect to registered rights, application of laws other than the laws of the
(January 12, 2001) (on file with author). Michael Traynor, An Introductory Framework for Analyzing the
Proposed Hague Convention on Jurisdiction and Foreign Judgments in Civil and Commercial Matters:
U.S. and European Perspectives, 6 Ann. Surv. Int’l & Comp. L. 1, 9 (2000).
148
Rochelle C. Dreyfuss and Jane C. Ginsburg, Draft Convention on Jurisdiction and Recognition of
Judgments in Intellectual Property Matters, WIPO Forum on Private International Law and Intellectual
Property, Geneva, January 30 and 31, 2001, (January 24, 2001) (WIPO/PIL/01/7), at 17, at
http://www.wipo.org/pil-forum/en/.
149
Rochelle C. Dreyfuss, An Alert to the Intellectual Property Bar: The Hague Judgments Convention,
(forthcoming) (on file with author) at 15.
57
country in which the rights were registered, is not necessarily considered unreasonable,
except when the case involves nullification of the registered right.150
5.5
Desirability
The discussion of the extent of public policy relates to the question whether it is desirable
that courts of a particular jurisdiction are designated by international conventions to have
jurisdiction assess cases involving intellectual property rights stemming from other
jurisdictions.151 Given the fact that intellectual property rights are territorial in nature152
and despite the existence of treaties addressing substantive law, some countries will feel
uncomfortable with the idea that they have to assess intellectual property rights created
under the laws of another country or that intellectual property rights created under their
laws are assessed by the courts of another country.153 For example, in some countries,
such as the United Kingdom and the United States, courts may be reluctant to assume
jurisdiction over cases regarding infringement of foreign registered rights. 154 Courts of
150
Rochelle C. Dreyfuss and Jane C. Ginsburg, Draft Convention on Jurisdiction and Recognition of
Judgments in Intellectual Property Matters, WIPO Forum on Private International Law and Intellectual
Property, Geneva, January 30 and 31, 2001, (January 24, 2001) (WIPO/PIL/01/7), at 28 at
http://www.wipo.org/pil-forum/en/..
151
Association Internationale pour la Protection de la Propriete Industrielle, Reports, Working Session, 12
April 2000, Question Q153, Extraordinary Session on Draft Hague Conference on Private International
Law (2000), at http://www.aippi.org/reports/q153/m-q153-e.htm.
152
This is particularly clear for trademarks and patents, which generally involve bureaucratic action to
come into existence, whereas the scope of copyrights is mostly defined by national laws. Graeme Austin,
Private International Law and Intellectual Property Rights, A Common Law Overview, WIPO Forum on
Private International Law and Intellectual Property, Geneva, January 30 and 31, 2001 (January 15,
2001)(WIPO/PIL/01/5), at 3, 10 and 14, footnote 71, at http://www.wipo.org/pil-forum/en.
153
For example the American Bar Association finds it “imperative” that United States intellectual property
rights will be assessed by American courts or administrative bodies only. See Letter from Edward G.
Fiorito, Chair Section of Intellectual Property Law American Bar Association to Q. Todd Dickinson,
Director, United States Patent and Trademark Office (January 10, 2001) (on file with author) at 23.
154
Graeme Austin, Private International Law and Intellectual Property Rights, A Common Law Overview,
WIPO Forum on Private International Law and Intellectual Property, Geneva, January 30 and 31, 2001
58
other countries, such as Germany155 and the Netherlands156, might not feel inhibited to
assume jurisdiction over a dispute regarding infringement of intellectual property and to
apply foreign intellectual property law.157
This is a concern for developed nations in particular. They usually are the exporters of
intellectual property and therefore have advanced intellectual property law. These
countries may find that under the Hague Convention jurisdiction is attributed to foreign
courts that are not familiar with or not generous towards intellectual property rights.158
For the Hague Convention and IP Treaty, this concern may be overcome by requiring
membership to the TRIPS Agreement for accession to the Hague Convention and the IP
Treaty.159 Also, in the context of the Hague Convention, the suggestion has been made
(January 15, 2001)(WIPO/PIL/01/5), at 10, at http://www.wipo.org/pil-forum/en. In the U.S, courts do not
seem so reluctant as in the past to adjudicate claims involving infringement of foreign copyright laws. See
Jane C. Ginsburg, Private International Law Aspects of the Protection of Works and Objects of Related
Rights transmitted through Digital Networks (2000 Update), WIPO Forum on Private International Law
and Intellectual Property, Geneva, January 30 and 31, 2001 (December 18, 2000)(WIPO/PIL/01/2), at 5, at
http://www.wipo.org/pil-forum/en.
155
Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, Third
Session, Geneva, 8 to 12 November, 1999, Information on the Preliminary Draft Convention on
Jurisdiction and the Effects of Judgments in Civil and Commercial Matters, Memorandum prepared by the
International Bureau (September 28, 1999) (SCT/3/3), at 9, at http://www.wipo.org/news/en.
156
L.Wichers Hoeth, Kort Begrip van het Intellectuele Eigendomsrecht (Ch. Gielen & N. Hagemans eds.,
8th ed. 2000) at 482.
157
Lincoln/Interlas, HR November 24, 1989, NJ 1992, 404. L.Wichers Hoeth, Kort Begrip van het
Intellectuele Eigendomsrecht (Ch. Gielen & N. Hagemans eds., 8th ed. 2000) at 482.
158
For example, the United States and Canada are concerned about their obligations under the Hague
Convention to recognize or enforce judgment from countries with a more limited intellectual property
regime. See, e.g., Letter from Edward G. Fiorito, Chair Section of Intellectual Property Law American Bar
Association to Q. Todd Dickinson, Director, United States Patent and Trademark Office (January 10, 2001)
(on file with author) at 23; Linda Silberman, Can the Hague Judgments Project Be Saved?: A Perspective
from the United States, (forthcoming)(on file with author) at 3-4; Louise Lussier, A Canadian Perspective,
24 Brooklyn J. Int’l L. 31, 64 (1998).
159
Rochelle C. Dreyfuss, An Alert to the Intellectual Property Bar: The Hague Judgments Convention,
(forthcoming) (on file with author) at 20. Rochelle C. Dreyfuss and Jane C. Ginsburg, Draft Convention on
Jurisdiction and Recognition of Judgments in Intellectual Property Matters, WIPO Forum on Private
International Law and Intellectual Property, Geneva, January 30 and 31, 2001, (January 24, 2001)
59
that the member states of the Hague Conference must accept accession of non-members
of the Hague Conference.160 Finally, members to the Madrid Agreement have submitted
that their intellectual property rights are subject to foreign law in a limited way in the
“central attack” system.161 An international registration of a trademark in accordance
with the Madrid Agreement is regarded as a registration of the trademark in each of the
member states of the Madrid Agreement. However, if a particular registration or the
validity of a trademark is attacked in one of the member states within five years
following the international registration, then the international registration - and other
national registrations - will share the fate of that national registration.162 Thus, the
members of the Madrid Agreement have accepted the possibility that trademarks created
under their national laws may be invalidated by a foreign court.
In the Hague Convention and IP Treaty, choice of law rules are absent, although there is a
great need for such rules.163 The advantage of choice of law rules consists of efficiency
gains for litigants, countries and courts and simplification in international intellectual
(WIPO/PIL/01/7), at 20, at http://www.wipo.org/pil-forum/en/. The authors of the IP Treaty provide the red
herring that acceptance of the IP Treaty implies submission to the fact that courts of other states may have
jurisdiction to review acts relating to intellectual property of another state. Rochelle C. Dreyfuss and Jane
C. Ginsburg, Draft Convention on Jurisdiction and Recognition of Judgments in Intellectual Property
Matters, WIPO Forum on Private International Law and Intellectual Property, Geneva, January 30 and 31,
2001, (January 24, 2001) (WIPO/PIL/01/7), at 7, at http://www.wipo.org/pil-forum/en/.
160
American Law Institute, International Jurisdiction and Judgments Project, Report (2000) at 8; Paul R.
Beaumont, A United Kingdom Perspective on the Proposed Hague Judgments Convention, 24 Brooklyn J.
Int’l L. 75, 108-109 (1998)..
161
Mary M. Squyres, The Madrid Protocol: An American Perspective, in Trademarks: Legal and Business
Aspects, 47, 54, 55 (Dennis Campbel et al. eds., 1994).
162
Dennis Campbel et al. eds, Trademarks: Legal and Business Aspects, 43 (1994).
163
See, e.g., Association Internationale pour la Protection de la Propriete Industrielle, Reports, Working
Session, 12 April 2000, Question Q153, Extraordinary Session on Draft Hague Conference on Private
International Law (2000), at 2, at http://www.aippi.org/reports/q153/m-q153-e.htm; [Background paper, p.
3.]
60
property issues.164 Also, they would create more clarity as to what law governs legal
relationships.165 However, agreement to international choice of law rules may be difficult
to achieve since there is no real harmonization in this area yet.166 Perhaps the adoption of
the Hague Convention, even without conflict of law rules, and the international practice
pursuant to it, might have the desired result.167
164
Graeme Austin, Private International Law and Intellectual Property Rights, A Common Law Overview,
WIPO Forum on Private International Law and Intellectual Property, Geneva, January 30 and 31, 2001
(January 15, 2001)(WIPO/PIL/01/5), at 13 and 15, at http://www.wipo.org/pil-forum/en.
165
Masato Dogauchi, Private International Law on Intellectual Property: a Civil Law Overview, WIPO
Forum on Private International Law and Intellectual Property, Geneva, January 30 and 31, 2001 (January
24, 2001)(WIPO/PIL/01/8), at 2, at http://www.wipo.org/pil-forum/en.
166
[Background paper, p. 2.]
167
Rochelle C. Dreyfuss, An Alert to the Intellectual Property Bar: The Hague Judgments Convention,
(forthcoming) (on file with author) at 19.
61
CHAPTER 6. CONCLUSIONS
The Hague Convention tries to achieve what the Brussels Convention achieved for
Europe: a framework that provides bases of jurisdiction to enhance litigation efficiency,
consolidate claims and limit forum shopping. This framework is based on the obligations
of the contracting states to recognize and enforce judgments rendered in other contracting
states. However, the Hague Convention has come across problems that stand in the way
of its success. These problems are to a considerable extent related to intellectual
property.
Intellectual property problems that are encountered in the context of the Brussels
Convention re-appear in the Hague Convention. For example, under the interpretation
given by the European Court of Justice to article 5(1) of the Brussels Convention, the
principal obligation of the contract on which an action is based is decisive to establish
jurisdiction. Article 6 of the Hague Conference also attaches jurisdiction to the place
where the principal obligation of the contract must be performed. In intellectual property
contracts, negative obligations that are performable everywhere play an important role.
This results in multiple forums having jurisdiction to assess a dispute. Article 7 of the IP
Treaty potentially increases the number of forums for agreements “pertaining” to
intellectual property.
62
The concern that the Brussels Convention and the Hague Convention lead to many
competent forums also exists for matters involving torts. The courts of the place where
the tort occurred or where the injury arose have jurisdiction. Since torts involving
intellectual property may easily be committed on the worldwide internet, a suit on the
basis of such tort may be brought before many forums. Again, article 6 of the IP Treaty
may add a number of competent forums.
A real impact of the Brussels Convention and the Hague Convention for intellectual
property matters comes from their exclusive jurisdiction provisions for registered rights.
Article 16(4) of the Brussels Convention and article 12(4) of the Hague Convention have
caused extensive discussion and disagreement about the scope and effects of exclusive
jurisdiction for intellectual property rights. The IP Treaty does currently not provide for
exclusive jurisdiction.
The Hague Convention and the IP Treaty are likely to suffer from the absence of a
supranational court interpreting the conventions. This may be a particular problem in
view of the public policy provisions of the conventions. On the basis of these provisions,
courts may refuse to recognize or enforce foreign judgments when doing so would be
manifestly incompatible with public policy. In its turn, the question of public policy
addresses issues of applicable law, especially in intellectual property matters. Is it
desirable that the courts of country A render judgments about the validity or infringement
of intellectual property rights created under the laws of country B? If country A renders
63
such a judgment, may country B refuse recognition or enforcement thereof under the
public policy provision? The discussion about these questions, and the intellectual
property related aspects of the Hague Convention in general, has recently taken off. The
proposed IP Treaty will contribute to the discussion. It will be an interesting - if not
heated - debate.
64
BIBLIOGRAPHY
Advisory Committee on Enforcement of Industrial Property Rights, First Session,
Geneva, October 19 and 20, 2000, Comments submitted by: United States Patent and
Trademark Office, Office of Legislative and International Affairs, Proposal by the
Delegation of the United States of America (October 19, 2000) (ACE/IP/1/5), at
http://www.wipo.org/news/en/index.html.
Advisory Committee on Enforcement of Industrial Property Rights, First Session,
Geneva, October 19 and 20, 2000, Discussion Paper on the Enforcement of Industrial
Property Rights, Document submitted by the Delegation of Japan (October 19, 2000)
(ACE/IP/1/4), at http://www.wipo.org/news/en/index.html.
Advisory Committee on Enforcement of Industrial Property Rights, First Session,
Geneva, October 19 and 20, 2000, Organizational Matters and Future Work to be
considered by the Advisory Committee on Enforcement of Industrial Property Rights,
Memorandum prepared by the International Bureau (August 18, 2000) (ACE/IP/1/2), at
http://www.wipo.org/news/en/index.html.
Advisory Committee on Enforcement of Industrial Property Rights, First Session,
Geneva, October 19 and 20, 2000, Summary by the Chair (October 20, 2000)
(ACE/IP/1/3), at http://www.wipo.org/news/en.index.html.
American Law Institute, International Jurisdiction and Judgments Project, Report (2000).
Association of America Publishers and others, Response to Federal Register Notice
concerning the Hague Conference proposed Convention on Jurisdiction and Enforcement
of Judgments (2001) (on file with author).
Association Internationale pour la Protection de la Propriete Industrielle, Special
Committee Q153, Hague Conference on Private International Law, Questionnaire and
Explanatory Memorandum (2000) (on file with author).
Association Internationale pour la Protection de la Propriete Industrielle, Reports, WIPO
– Standing Committee on the Law of Trademarks, Industrial Designs and Geographical
Indications (SCT), Third Session, Geneva, November 8 to 12 1999 (2000), at
http://www.aippi.org/reports/report-wipo-gfk-sct-3rd-11-99.htm.
Association Internationale pour la Protection de la Propriete Industrielle, Reports,
Working Session, 12 April 2000, Question Q153, Extraordinary Session on Draft Hague
Conference on Private International Law (2000), at http://www.aippi.org/reports/q153/mq153-e.htm.
65
Graeme Austin, Private International Law and Intellectual Property Rights, A Common
Law Overview, WIPO Forum on Private International Law and Intellectual Property,
Geneva, January 30 and 31, 2001 (January 15, 2001)(WIPO/PIL/01/5), at
http://www.wipo.org/pil-forum/en.
Paul R. Beaumont, A United Kingdom Perspective on the Proposed Hague Judgments
Convention, 24 Brooklyn J. Int’l L. 75 (1998).
Fritz Blumer, Patent Law and International Private Law on Both Sides of the Atlantic,
WIPO Forum on Private International Law and Intellectual Property, Geneva, January 30
and 31, 2001, at http://www.wipo.org/pil-forum/en/.
Katharina Boele-Woelki and Catherine Kessedjian (eds.), Internet, Which Court Decides?
Which Law Applies? (1998).
Patrick J. Borchers, A Few Little Issues for The Hague Judgments Negotiations, 24
Brooklyn J. Int’l L. 157 (1998).
Patrick J. Borchers, Judgments Conventions and Minimum Contacts, 61 Albany L.R.
1161 (1998).
Ronald A. Brand, Due Process as a Limitation on Jurisdiction in U.S. Courts and a
Limitation on the United States at the Hague Conference on Private International Law,
February 1998, at http://www.state.gov/www/global/legal_affairs/brand.html.
Stephen B. Burbank, Jurisdictional Equilibration, The Proposed Hague Convention and
Progress in National Law, (forthcoming 2001) (on file with author).
Burgerlijke Rechtsvordering, loose-leaf, Verdragen A, 86-174, 233 – 275.
Kai Burmeister, Jurisdiction, Choice of Law, Copyright, and the Internet: Protection
against Framing in an International Setting, 9 Fordham Intell. Prop. Media & Ent. L.J.
625 (1999).
Kevin M. Clermont, Jurisdictional Salvation and The Hague Treaty, 85 Cornell L. Rev.
89 (1999).
Commonwealth Attorney-General’s Department, International Jurisdiction and the
Recognition and Enforcement of Foreign Judgments in Civil Matters, Draft Hague
Convention, Issues Paper (1999), at
http://law.gov.au/publications/haguepaper/welcome.html.
Commonwealth Attorney-General’s Department, International Jurisdiction and the
Recognition and Enforcement of Foreign Judgments in Civil Matters, Draft Hague
66
Convention, Issues Paper No. 2 – July 1999, at
http://law.gov.au/publications/hagueissues2/issuespaper2.html.
Commonwealth Attorney-General’s Department, International Jurisdiction and the
Recognition and Enforcement of Foreign Judgments in Civil Matters, Issues Paper 3,
International Electronic Commerce (2000), at
http://law.gov.au/publications/hagueissues3.html.
Steven P. Croley and John H. Jackson, WTO Dispute Procedures, Standard of Review,
and Deference to National Governments, 90 A.J.I.L. 193 (1996).
Graeme B. Dinwoodie, A New Copyright Order: Why National Courts Should Create
Global Norms, 149 U. Pa. L. Rev. 469 (2000).
Masato Dogauchi, Private International Law on Intellectual Property: a Civil Law
Overview, WIPO Forum on Private International Law and Intellectual Property, Geneva,
January 30 and 31, 2001 (January 24, 2001)(WIPO/PIL/01/8), at
http://www.wipo.org/pil-forum/en.
Rochelle C. Dreyfuss, An Alert to the Intellectual Property Bar: The Hague Judgments
Convention, (forthcoming) (on file with author).
Rochelle C. Dreyfuss and Jane C. Ginsburg, Draft Convention on Jurisdiction and
Recognition of Judgments in Intellectual Property Matters, WIPO Forum on Private
International Law and Intellectual Property, Geneva, January 30 and 31, 2001, (January
24, 2001) (WIPO/PIL/01/7), at http://www.wipo.org/pil-forum/en/.
James J. Fawcett and Paul Torremans, Intellectual Property and Private International Law
(1998).
DJ Freeman, International Jurisdiction and the Recognition and Enforcement [check],
available at hhtp://www.djfreeman.co.uk/pubs/I-jurisd.htm.
Jane C. Ginsburg, The Cyberian Captivity of Copyright: Territoriality and Authors’
Rights in a Networked World, 15 Computer & High Tech. L.J. 347 (1999).
Jane C. Ginsburg, Extraterritorial Application of U.S. Intellectual Property Law:
Comment: Extraterritoriality and Multiterritoriality in Copyright Infringement, 37 Va. J.
Int’l L. 587 (1997).
Jane C. Ginsburg, The Fourth Annual Herbert Tenzer Distinguished Lecture in
Intellectual Property: Copyright without Borders? Choice of Forum and Choice of Law
for Copyright Infringement in Cyberspace, 15 Cardozo Arts & Ent. L.J. 153 (1997).
67
Jane C. Ginsburg, International Copyright: From a “Bundle” of National Copyright
Laws to a Supranational Code?, J. of the Copyright Society of the U.S. (2000).
Jane C. Ginsburg, La Loi Applicable a La Circulation des Oeuvres de L’Esprit sur les
Reseaux Numeriques, Le Point de Vue d’Un Juriste Americain, Rapport remis au
Ministere de la Culture et de la Communication dans le Cadre des Activites du Centre
d’Etudes et de Recherches sur le Droit de l”Immateriel (2000) (GCPIC/2), at
http://www.wipo.org.
Jane C. Ginsburg, Private Inernational Law Aspects of the Protection of Works and
Objects of Related Rights Transmitted through Digital Networks, Group of Consultants
on the Private International Law Aspects of the Protection of Works and Objects of
Related Rights Transmitted through Global Digital Networks, Geneva, December 16-18,
1998 (GCPIC/2), at http://www.wipo.org.
Jane C. Ginsburg, The Private International Law of Copyright in an Era of Technological
Change, Recueil des Cours (1998).
Jane C. Ginsburg, Private International Law Aspects of the Protection of Works and
Objects of Related Rights transmitted through Digital Networks (2000 Update), WIPO
Forum on Private International Law and Intellectual Property, Geneva, January 30 and
31, 2001 (December 18, 2000)(WIPO/PIL/01/2), at http://www.wipo.org/pil-forum/en.
Sheldon W. Halpern, Craig A.Nard and Kenneth L. Port, Fundamentals of United States
Intellectual Property Law: Copyright, Patent and Trademark (1999).
Laurence R. Helfer, Adjudicating Copyright Claims Under the TRIPs Agreement: The
Case for a European Human Rights Analogy, 39 Harv. Int’l L.J. 357 (1998).
International Bureau, Background Paper, WIPO Forum on Private International Law and
Intellectual Property, Geneva, January 30 and 31, 2001 (WIPO/PIL/01/9), at
http://www.wipo.org/pil-forum/en.
Kazunori Ishiguro, International Copyright Infringements in Cyberspace: A Conflict-ofLaws Analysis, Internet Law and Policy Forum, Jurisdiction: Building Confidence in a
Borderless Medium, Montreal, Canada, 26-27 July 1999, at
http://www.ilpf.org/confer/present99/ishiguro_a1.htm.
Friedrich K. Juenger, A Hague Judgments Convention?, 24 Brooklyn J. Int’l L. 111
(1998).
Catherine Kessedjian, Report of the Hague Conference on Private International Law,
Preliminary Document no. 7, International Jurisdiction and Foreign Judgments in Civil
and Commercial Matters (April 1997).
68
Catherine Kessedjian, Report of the Hague Conference on Private International Law,
Preliminary Document no. 8, Synthesis of the Work of the Special Commission of June
1997 on International Jurisdiction and the Effects of Foreign Judgments in Civil and
Commercial Matters (November 1997).
Catherine Kessedjian, Report of the Hague Conference on Private International Law,
Preliminary Document no. 9, Synthesis of the Work of the Special Commission of March
1998 on International Jurisdictions and Effects of Foreign Judgments in Civil and
Commercial Matters, (1998).
Catherine Kessedjian, Report of the Hague Conference on Private International Law,
Preliminary Document no. 10, Note on Provisional and Protective Measures in Private
International Law and Comparative Law, October 1998.
Catherine Kessedjian et al., Report of the Hague Conference on Private International
Law, Preliminary Document no. 12, Electronic Commerce and International Jurisdiction,
Summary of discussions, March 2000.
John E. Kidd, ADR: the Future of Dispute Resolution in International Intellectual
Property Disputes, in International Intellectual Property, Insight Conference, February 910, 1998 (1998).
Jeffrey D. Kovar, Negotiations at the Hague Conference for a Convention on Jurisdiction
and the Recognition and Enforcement of Foreign Civil Judgments, Statement before the
Subcommittee on Courts and Intellectual Property of the Committee on the Judiciary of
the House of Representatives, June 29, 2000 (on file with author).
Edward C.Y. Lau, Update on the Hague Convention on the Recognition and Enforcement
of Foreign Judgments, 6 Ann. Surv. Int’l & Comp. L. 13 (2000).
Letter from Ronald Abramson, Chair, The Association of the Bar of the City of New
York, to the Director of the United States Patent and Trademark Office (December 11,
2000) (on file with author).
Letter from Sarah B. Deutsch, Vice President and Associate General Counsel, Verizon, to
the Director of the United States Patent and Trademark Office (November 30, 2000) (on
file with author).
Letter from Peter T. DiMauro, Patent Agent, International Center for Technology
Assessment to Q. Todd Dickinson, Director, United States Patent and Trademark Office
(January 12, 2001) (on file with author).
69
Letter from Edward G. Fiorito, Chair Section of Intellectual Property Law American Bar
Association to Q. Todd Dickinson, Director, United States Patent and Trademark Office
(January 10, 2001) (on file with author).
Letter from Michael K. Kirk, Executive Director, American Intellectual Property Law
Association to Q. Todd Dickinson, Director, United States Patent and Trademark Office
(December 8, 2000) (on file with author).
Letter from Jeffrey D. Kovar, Assistant Legal Adviser for Private International Law,
United States Department of State, to Mr J.H.A. van Loon, Secretary General of the
Hague Conference on Private International Law (February 22, 2000) (on file with
author).
Letter from James Love, Director, Consumer Project on Technology, to Elizabeth Shaw,
United States Patent and Trademark Office (January 12, 2001) (on file with author).
Letter from Kimbley L. Muller, President, International Trademark Association, to Q.
Todd Dickinson, Director, United States Patent and Trademark Office (December 1,
2000) (on file with author).
Letter from Thomas M.T. Niles, President, United States Council for International
Business to Madeleine K. Albright, Secretary, Department of State (October 30, 2000)
(on file with author).
Andreas F. Lowenfeld, Editorial Comment: Forum Shopping, Antisuit Injunctions,
Negative Declarations, and Related Tools of International Litigation, 91 A.J.I.L. 314
(1997).
Andreas F. Lowenfeld, Editorial Comment: Forum Non Conveniens and Antisuit
Injunctions, an Update, 92 A.J.I.L. 41 (1998).
Andreas F. Lowenfeld, Thoughts about a Multinational Judgments Convention: a
Reaction to the Von Mehren Report, 57 Law and Contemp. Probs. 289 (1994).
Andreas F. Lowenfeld and Linda Silberman, A different Challenge for the ALI: Herein of
Foreign Country Judgments, and International Treaty, and an American Statute, 75 Ind.
L. J. 635 (2000).
Andreas F. Lowenfeld and Linda Silberman, Memorandum to The Council on the
Proposal for Project on Jurisdiction and Judgments Convention, November 30, 1998,
http://www.ali.org/ali/1999_Lowen1.html
Andre Lucas, Private International Law Aspects of the Protection of Works and Objects
of Related Rights Transmitted Through Digital Networks, Group of Consultants on the
70
Private International Law Aspects of the Protection of Works and Objects of Related
Rights Transmitted through Global Digital Networks, Geneva, December 16-18, 1998
(GCPIC/1), at http://www.wipo.org.
Andre Lucas, Private International Law Aspects of the Protection of Works and of the
Subject Matter of Related Rights Transmitted Over Digital Networks, WIPO Forum on
Private International Law and Intellectual Property, Geneva, January 30 and 31, 2001
(December 17, 2000)(WIPO/PIL/01/1 Prov.), at http://www.wipo.org/pil-forum/en.
Louise Lussier, A Canadian Perspective, 24 Brooklyn J. Int’l L. 31 (1998).
Harold G. Maier, A Hague Conference Judgments Convention and the United States
Courts: A Problem and a Possibility, 61 Albany L.R. 1207 (1998).
Arthur T. von Mehren, Enforcing Judgments Abroad: Reflections on the Design of
Recognition Conventions, 24 Brooklyn J. Int’l L. 17 (1998).
Arthur T. von Mehren, Recognition and Enforcement of Foreign Judgments: a New
Approach for the Hague Conference?, 57 L. & Contemp. Problems 271(1994).
Karen E. Minehan, The Public Policy Exception to the Enforcement of Foreign
Judgments: Necessary or Nemesis?, 18 Loy. L.A. Int’l & Comp. L.J. 795 (1996).
Neil W. Netanel, Asserting Copyright’s Democratic Principles in the Global Arena, 51
Van. L. Rev. 217 (1998).
Neil W. Netanel, The Digital Agenda of the World Intellectual Property Organization:
Comment: The Next Round: The Impact of the WIPO Copyright Treaty on TRIPS Dispute
Settlement, 37 Van. J. Int’l L. 441 (1997).
Peter North and James J. Fawcett, Cheshire and North’s Private International Law (13th
ed. 1999).
Peter Nygh and Fausto Pocar, Report of the Special Commission of the Hague
Conference on Private International Law, Preliminary Document no. 11.
Permanent Bureau of the Hague Conference of Private International Law, Report of the
Experts Meeting on the Intellectual Property Aspects of the Future Convention on
Jurisdiction and Foreign Judgments in Civil and Commercial Matters, Geneva – 1
February 2001 (unpublished, on file with author).
Henry H. Perritt jr., Jurisdiction in Cyberspace, 41 Vill. L. Rev. 1 (1996).
71
Linda Silberman, Can the Hague Judgments Project Be Saved?: A Perspective from the
United States, (forthcoming)(on file with author).
Software & Information Industry Association, Comments on the Preliminary Draft
Convention on Jurisdiction and Foreign Judgments in Civil and Commercial Matters
submitted to the U.S. Patent and Trademark Office (January 12, 2001) (on file with
author).
Standing Committee on the Law of Trademarks, Industrial Designs and Geographical
Indications, Third Session, Geneva, 8 to 12 November, 1999, Use of Trademarks on the
Internet: Summary of Responses to Questionnaire, prepared by the International Bureau
(October 20, 1999) (SCT/3/2), at http://www.wipo.org/news/en.
Standing Committee on the Law of Trademarks, Industrial Designs and Geographical
Indications, Third Session, Geneva, 8 to 12 November, 1999, Information on the
Preliminary Draft Convention on Jurisdiction and the Effects of Judgments in Civil and
Commercial Matters, Memorandum prepared by the International Bureau (September 28,
1999) (SCT/3/3), at http://www.wipo.org/news/en.
Standing Committee on the Law of Trademarks, Industrial Designs and Geographical
Indications, Fourth Session, Geneva, March 27 to 31, 2000, Report, prepared by the
International Bureau (September 19, 2000)(SCT/4/6), at http://www.wipo.org/news/en.
Standing Committee on the Law of Trademarks, Industrial Designs and Geographical
Indications, Fourth Session, Geneva, March 27 to 31, 2000, Provisions of the Preliminary
Draft Convention on Jurisdiction and Foreign Judgments in Civil and Commercial
Matters, prepared by the International Bureau (December 20, 1999)(SCT/4/3), at
http://www.wipo.org/news/en.
Standing Committee on the Law of Trademarks, Industrial Designs and Geographical
Indications, Fifth Session, Geneva, September 11 to 15, 2000, Protection of Industrial
Property Rights in relation to the Use of Signs on the Internet, prepared by the
International Bureau (June 21, 2000)(SCT/5/2), at http://www.wipo.org/news/en.
Standing Committee on the Law of Trademarks, Industrial Designs and Geographical
Indications, Sixth Session, Geneva, March 12 to 16, 2001, Protection of Marks, and other
Industrial Property Rights in Signs, on the Internet, prepared by the International Bureau
(January 25, 2000)(SCT/6/2), at http://www.wipo.org/news/en.
Standing Committee on the Law of Trademarks, Industrial Designs and Geographical
Indications, Second Session, Geneva, June 7 to 12, 1999, Study concerning the Use of
Trademarks on the Internet, prepared by the International Bureau (April 8, 1999)
(SCT/2/9 Prov.), at http://www.wipo.org/news/en.
72
L. Strikwerda, Inleiding to het Nederlandse Internationaal Privaatrecht (4th ed. 1995).
Mary M. Squyres, The Madrid Protocol: An American Perspective, in Trademarks: Legal
and Business Aspects, 47 (Dennis Campbel et al. eds., 1994).
William H. Theis, Admiralty Proceedings and the Proposed Hague Convention on
Jurisdiction and Judgments, 32 J. Mar. L. & Com. 59 (2001).
Michael Traynor, An Introductory Framework for Analyzing the Proposed Hague
Convention on Jurisdiction and Foreign Judgments in Civil and Commercial Matters:
U.S. and European Perspectives, 6 Ann. Surv. Int’l & Comp. L. 1 (2000).
United States Department of State, Conclusions of the Second Special Commission
Meeting on the Recognition and Enforcement of Foreign Judgments in Civil and
Commercial Matters, at
http://www.state.gov/www/global/legal_affairs/judgments_96.html.
United States Department of State, Conclusions of the Special Commission of June 1994
on the Question of the Recognition and Enforcement of Foreign Judgments in Civil and
Commercial Matters, at
http://www.state.gov/www/global/legal_affairs/judgments_94.html.
United States Department of State, Note on the Question of “Forum Non Conveniens” in
the Perspective of a Double Convention on Judicial Jurisdiction and the Enforcement of
Decisions, at http://www.state.gov/www/global/legal_affairs/forum.html.
Thomas E. Vanderbloemen, Note, Assessing the Potential Impact of the Proposed Hague
Jurisdiction and Judgments Convention on Human Rights Litigation in the United States,
50 Duke L.J. 917 (2000).
L.Wichers Hoeth, Kort Begrip van het Intellectuele Eigendomsrecht (Ch. Gielen & N.
Hagemans eds., 8th ed. 2000).
WIPO Electronic Commerce, Primer on Electronic Commerce and Intellectual Property
Issues, at http://ecommerce.wipo.int/primer/primer.html.
73