WIPO Seminar Discusses Interface Between IP And Private International Law

Experts gathered in Geneva recently to review past projects on intellectual property and private international law, and look toward the future. Now, through efforts to draft a set of guidelines, headway is being made on finding ways to manage the legal uncertainties in this area. 

Speakers at the event talked about their preceding projects and the ongoing International Law Association (ILA) guidelines project. The ILA is a non-governmental organisation whose members include lawyers, academics, chambers of commerce, non-lawyers, and judiciary.

Coming from the ILA Committee on Intellectual Property and Private International Law, the project aims to lay out a wide range of principles in areas such as jurisdiction, applicable law and recognition and enforcement of foreign judgments in cross-border IP issues.

The ILA guidelines project is expected to be finalised in 2016.

The 16 January seminar, convened by the World Intellectual Property Organization Building Respect for IP Division and the ILA, was titled “Seminar on Intellectual Property and Private International Law.”

The event addressed WIPO and private international law, and the Hague Conference on Private International Law and intellectual property. It also focussed on preceding projects on the cross-border aspects of intellectual property carried out around the world, such as the American Law Institute, European-Max Planck Group for Conflict of Laws in Intellectual Property (CLIP), Transparency of Japanese Law, and Japan-Korea principles projects.

The second part of the seminar was devoted to the discussion of work done for the preparation of the ILA Committee Guidelines on jurisdiction, applicable law, recognition and enforcement of foreign judgments and the arbitrability of IP disputes that could be used by national and international lawmakers, as well as in international dispute resolution.

In his opening remarks, Toshiyuki Kono, professor at Kyushu University (Japan) and chairperson of the ILA Committee on IP and Private International Law, presented the association. The group was founded in Brussels in 1873, and its objectives, which are “the study, clarification and development of international law, both public and private, and the furtherance of international understanding and respect for international law.”

The ILA has consultative status, as an international non-governmental organisation, with a number of the United Nations specialised agencies. ILA’s Committee on IP and Private International Law was established in November 2010 with the view to create a forum on private international law issues raised in the context of intellectual property.

WIPO and Private International Law

Eun-Joo Min, senior legal counsellor at Building Respect for IP Division of WIPO, noted that “the international intellectual property system is familiar with addressing relationships with foreign elements across different legal jurisdictions.” She cited the Paris Convention for the Protection of Industrial Property and the Berne Convention for Protection of Literary and Artistic Works, which were prompted by the need to protect foreign inventors and foreign authors’ rights, respectively.

“If one considers the mobility, or trans-nationality perhaps, inherit in intellectual property, the interface between intellectual property and private international law is inevitable,” she said.

There has been some work done in this respect, she said, such as the work on intellectual property done by the Hague Conference on Private International Law, soft law initiatives developed over the last 10 years, and a 2001 proposal on a convention on jurisdiction and enforcement of judgments in intellectual property matters.

But “to date there is no fully articulated private international law regime for IP at international level,” she said.

Talking about how the international IP system addresses relationships in transnational IP matters, she referred to the “IP approach.” This consists of finding solutions within the system itself rather than relying on the rules of private international law of identifying the competent court and applicable law.

Such solutions, which address transnational IP matters, include: harmonisation of national laws, minimum standards, through WIPO treaties, the national treatment principle contained in those treaties, right of priority for patents and trademarks, uniform domain name dispute resolution policy, facilitation of multi-territorial protection, e.g., the Patent Cooperation Treaty and Madrid System, and WIPO’s alternative dispute resolution, which is a single forum for transnational IP disputes.

In the framework of WIPO’s capacity-building activities in the area of IP enforcement, WIPO undertook a project to provide an overview of national approaches in cross-border online IP infringement disputes, which is considered as the most challenging area today.

Prof. Andrew Christie, chair of Intellectual Property at the Melbourne Law School of the Melbourne University, was tasked with the analysis of data collected in the form of court judgments.

He said that based on 56 cases concerning cross-border IP infringement identified from 19 jurisdictions, the study examined the trend with respect to aspects of the disputes, including the IP right infringed, facts, parties’ location, provisional measures, and whether PIL issues, such as jurisdiction and applicable law, were addressed.

For example, while a great majority of cases under consideration concerned registered trademark and copyright infringement, as regards the PIL issues, questions of applicable law were not addressed and local law was applied in 70 percent of those cases.

In his concluding remarks, Christie noted that with respect to online infringement, also referred to as “ubiquitous” infringements, data suggests that the “typical online IP infringement scenario does not involve multiple actions and typically does not involve an action where the plaintiff is seeking in one location relief across various countries.” Based on this conclusion, he said, “Looking from the IP law prism, the issue really might be instead: is there a need to develop further consistency on when foreign action equals local infringement?”

HCCH and Intellectual Property

Marta Pertegás, first secretary at the Hague Conference on Private International Law (HCCH), presented the HCCH, which has the mandate to “work for the progressive unification of the rules of private international law” by developing international conventions to which any state may become a party, and assisting states with the implementation and application of such conventions.

Among the HCCH work relating to intellectual property, she mentioned a study on the subject of the law applicable to licensing agreements and know-how; the 1961 Hague Convention Abolishing the Requirement of Legalisation for Foreign Public Documents (Apostille Convention); the 1970 Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters (Evidence Convention); and the 2005 Hague Convention on Choice of Court Agreements (Choice of Court Convention).

Referring to two IP cases, namely the Tiffany (NJ) LLC v. Qi Andrew and others case and the LG v. Obayashi Co. and Tanaka case, Pertegás illustrated the relevance of the two HCCH conventions – the 1970 Evidence Convention and the 2005 Choice of Court Convention, which were referred to by the US Supreme Court and the Seoul High Court, respectively.

She emphasised the fact that in the latter case, the convention has not even entered into force yet. This convention is expected to enter in force in 2015 as a result of the European Union decision of 4 December 2014 that will enable it to ratify the convention, she said.

She concluded her presentation by referring to the HCCH “Judgments project,” which has the objective to elaborate a convention on recognition and enforcement of judgments in general. “The question for us today is whether IP disputes should be in or out,” she said, and welcomed IP experts’ views on this matter.

Preceding Projects

This session of the seminar was devoted to the presentation of the projects undertaken by various institutions on the cross-border aspects of intellectual property.

American Law Institute Project

The 2008 American Law Institute’s project on intellectual property, presented by its rapporteurs, Profs. Rochelle Dreyfuss of New York University and Jane Ginsburg of Columbia University, develops a set of principles governing jurisdiction, choice of law, and judgments in transnational disputes.

The numerous goals of the project included: to streamline litigation through improving enforcement and to bring finality to multinational disputes, by preserving the resources of the parties and judiciary, avoid inconsistent judgments, and deal with issues raised by internet.

“Our project was aspirational,” Dreyfuss said. “At the same time the goal was to be credible. The idea was to create a project that would provide for efficiency but not lose constitutive values [procedural due process and substantive commitments],” she said.

CLIP Project

Josef Drexl, honorary professor at the University of Munich and managing director of the Max Planck Institute for Innovation and Competition (Munich), presented the CLIP Principles project, published in 2013. It was the result of an initiative of the Max Planck Institute for Comparative and Private International Law (Hamburg, Germany) and the Max Planck Institute for Intellectual Property and Competition Law (now: Innovation and Competition). Scholars from different European countries contributed to this project, which was the European response to the ALI project.

Globalisation, digitisation, the work in the Hague conference, various regulations in Europe concerning applicable law and initiative of UNCITRAL on security rights in IP lead to the CLIP project, Drexl said.

The objectives of the CLIP project were to provide guidelines to the courts and arbitration tribunals when applying existing law, to provide “model law” for legislature, states and international organisations, to contribute to the development of general principles of private international law in IP and to assist private parties in shaping their legal relationships.

Discussing the features of the project, Drexl said: “What we wanted to achieve is completeness.” While the project was built upon the European legal traditions and gave weight to European solutions, it proposed reform of EU law where it was needed. The project had an impact in the development of European regulations and was cited by the European Court of Justice, he said.

Transparency of Japanese Law Project

This project led by Professor Kono aims to provide information in important fields of Japanese business law – corporate law, commercial law, IP law, finance law, insolvency law, private international law – by organising and translating into English Japanese law and case law.

Kono pointed out that private international law was unknown to the Japanese legal system – there was no IP-related provision of jurisdiction or choice of law in Japanese law until 2011.

While similar to the previous projects in terms of its structure, the transparency project focuses only on Japanese law, unlike the former ones aiming at universal applicability.

Japan-Korea Principles Project

Prof. Gyooho Lee at Chung Ang University, Seoul, presented the Japan-Korea project on principles of private international law on intellectual property rights, whose objectives are to create a model law which can provide influence on legislation in East Asian countries and to restate and confirm rules which are commonly and internationally agreeable.

The working group consisted of thirteen Japanese and Korean legal scholars and the Joint Japanese-Korean Proposal was finalised in 2010 and discussed in 2011.

The Principles were taken into account to amend the Korean Civil Procedure Act and cited by a Korean court.

Mission of ILA Committee       

The second half of the seminar looked at how the ILA Committee is building on previous projects to create a new set of guidelines.

Kono said the ILA Committee provides meaningful work on “think[ing] about the enforcement of IPRs in a global context.” Tools such as national legislation and bilateral treaties “were quite adequate” for the 19^th century market. However, “suppose you have 30 countries – then how many bilateral treaties do we need?” As “the meaning of market is changing – and quite drastically,” the tools required to address IP rights will need to change as well.

Selected Issues from the ILA Committee Guidelines

Presenters on this panel were either the chairs or senior members of the various sub-committees working on these topics.

Prof. Axel Metzger of Humboldt University (Germany) explained the drafting technique used by the committee. Projects such as ALI and CLIP were drafted in the form of principles and have as much detail as one might find in national legislation.

By contrast, he said, the committee chose to use guidelines with “meta-principles” to be more general and more flexible. As part of this goal, the committee tried to develop new terminology “which is neutral, in a sense,” that would allow for the differences between legal systems.

Jurisdiction

Metzger gave some examples of jurisdiction guidelines where the committee has found consensus. Guidelines for the defendant’s forum, for example, were uncontroversial in the committee, though they do go against the decision in Voda v. Cordis Corp. (US Fed. Cir. 2007).

Prof. Benedetta Ubertazzi of Macerata University (Italy) discussed the more controversial issue of exclusive jurisdiction. To get around the fact that “a judgment on validity would have inter partes effect,” the guideline states that such a decision “shall be binding between the parties only.”

Applicable Law

Prof. Pedro de Miguel Asensio of Complutense University of Madrid outlined some of the focus areas of the subcommittee on applicable law: contracts, infringement, and initial ownership. The goal of the committee was to “develop solutions that overcome differences between the previous projects; and at the same time, try to provide solutions that are more global in scope.”

Prof. Marie-Elodie Ancel of the Université Paris-Est Crétil looked at challenges that arise when parties have not contracted to a specific forum for any future disputes. Although the “closet connection principle” is generally endorsed, it “varies from one country to another,” Ancel explained. The committee, thus, has worked toward a solution ensuring that parties “should be able to predict and establish easily the law that governs a contract.”

Prof. Rita Matulionyte of the University of Newcastle then discussed how the principle of lex loci protectionis is not equipped to deal with “ubiquitous infringement” that occurs via the internet. To get around this, the committee recommends that the court in which the dispute was brought “will have to determine which law has the closest connection to the dispute and apply that single law to determine the infringement worldwide.” The committee recognises that, with such an approach, party autonomy on infringement matters will be “limited to some extent,” she said.

Prof. Mireille van Eechoud of the University of Amsterdam commented on the legal uncertainty that comes with accepting multiple laws for establishing initial ownership. For example, “one might be recognised as author in one country but in the next the rights go to the employer,” she said. While two models were proposed, van Eechoud admitted that “discussions within the committee are still very much in progress.”

Recognition of Foreign Judgements

Prof. Marketa Trimble of the University of Nevada, Las Vegas, noted that although many of the guidelines in this area do not appear to be IP specific, it is important to remember “they are part of this larger system of guidelines.” Guidelines in this area were in four sub-categories: definition of a judgment; effects of a recognised judgment; grounds for non-recognition; and partial and limited recognition.

Arbitration & IP

After cataloguing various countries’ stances on the arbitrability of IP, Prof. Dário Manuel Lentz de Moura Vicente of the University of Lisbon noted that there seems to be “a basic trend toward the liberalization of IP arbitration, but significant differences remain between national legal systems.” Because of the legal uncertainty this could cause, he said “there is a need for uniform conflict of law even if it is soft law.”

Conclusion

Ginsburg responded to a question regarding whether states would be expected to implement these guidelines or if they would be left up to judicial interpretation, saying that it is not necessarily one or the other.

“Even if one thought that the Berne Convention announced a choice of law rule for infringement, it does not announce a choice of law rule for ownership,” she said.

In closing, Kono thanked everyone for the “extremely productive event” and mentioned the committee’s goal is to simply take “a modest step forward.” He said this work will help prepare everyone “for when complicated disputes could occur in the future.”

According to Kono, the committee’s aim is to finalise the proposed guidelines by 2016, but its mandate could be extended until 2018.

The webcast of the seminar together with the presentations and bios of the speakers are available here.

Elena Bourtchouladze (LLB, DEA) holds a PhD degree in Public International Law from the Graduate Institute (Geneva) with focus on the WTO TRIPS Agreement and WIPO Conventions. She is a researcher at IP-Watch, and has experience in regulatory issues and litigation at a multinational company and an international organisation.

James Côté is an intern at Intellectual Property Watch. He is completing is J.D. from the University of Ottawa. He has a deep interest in IP as it relates to business and trade. To learn more about these subjects, he has worked as part of an IP Law Clinic helping technology start-ups and as president of the uOttawa International Commercial and Trade Law Students Association.

 

 

Image Credits: Pawel Loj