Developing a private international intellectual property law: the demise of territoriality?

• Author: Dinwoodie, Graeme B.

TABLE OF CONTENTS INTRODUCTION I. THE PRIVATE INTERNATIONAL LAW OF INTELLECTUAL PROPERTY A. Public Private International Intellectual Property Law B. Taking a Broader View C. Core Principles 1. Choice of Law: Scope of the Lex Loci Protectionis 2. Exclusive Jurisdiction and Serial National Litigation 3. Independence of Rights D. Recent Illustrations 1. NTP v. Research in Motion 2. Boosey & Hawkes Music Publishers, Ltd. v. Walt Disney Co 3. EU-Wide Relief: Roche v. Primus and GAT v. LUK 4. Voda v. Cordis Corp 5. Microsoft v. Lindows 6. Sarl Louis Feraud v. Viewfinder II. REFORM: RECONFIGURING TERRITORIALITY A. General Principles 1. A "Bundle" of Separate National Properties: Sources and Theories of Territoriality 2. Territoriality as a Disabling Concept 3. Territoriality as an Enabling Concept 4. Between Territoriality and Extraterritoriality: A Philosophy of Restraint B. Forging Tools of Restraint 1. Conduct but Not Effects 2. Qualitative and Comparative Assessment of Effects 3. Adjudicative and Prescriptive Jurisdiction; Declining Jurisdiction III. LEARNING FROM SPECIFIC PROPOSALS A. Reviewing Objections to Adjudication of Foreign Claims B. Departures to Date C. Reasons for More Departures 1. Comity and Legitimacy 2. Competence CONCLUSION INTRODUCTION

Although intellectual property law is a relatively recent legal innovation, it has from an early stage in its development possessed an international dimension. Information-rich products have long crossed borders, prompting interested countries to pursue at least some intellectual property policymaking at an international level. As far back as the late nineteenth century, this resulted in the adoption of a group of multinational treaties that remain the foundation of what can be called the public international law of intellectual property. (1)

Efforts to develop a private international law of intellectual property are much more recent, (2) and are ongoing in a number of different institutional settings. (3) Yet, the need for attention to this field remains acute. (4) These efforts raise a number of questions: the content of current private international law in matters of intellectual property; the adequacy of that body of law in an increasingly globalized environment; the changes that must be made to that body of law; and the institutional means by which a private international law of intellectual property should be developed. (5) This Article explores the content of a private international law of intellectual property, but does not seek to articulate a comprehensive scheme. Rather, this exploration is intended to facilitate consideration of the core principle of territoriality that informs so much of the existing regime. Likewise, although I note the different means by which a private international law of intellectual property is evolving, the Article leaves for another day the institutional analysis of the means by which such a law may best be developed. (6)

Part I sketches the basic principles of private international law that apply in transborder intellectual property disputes, examining treaty provisions and developments at the national and regional level. In this analysis, it is important to look beyond instruments or doctrines that explicitly bear the label of "private international law." Some of the leading questions are highlighted by discussion of six recent transborder intellectual property disputes. These disputes help to illustrate aspects of cross-border exploitation of intellectual property that need to be taken into account both in critiquing current approaches and in formulating alternatives.

Part II turns to focus on the concept of territoriality. Territoriality is a principle that has always received excessive doctrinal purchase in intellectual property law. One can adhere to the basic premises that underlie territoriality without supporting the full range of rules of intellectual property law that are said to reflect the principle. Moreover, the normative force of the principle has declined as units of social and commercial organization have come to correspond less neatly with national borders, and as private ordering has weakened the capacity (and perhaps the claim) of the nation-state exclusively to determine the behavior of its citizenry. Finally, many of the same values (for example, diversity of legal regimes, tailoring of intellectual property to local needs, and protecting rights on an international basis) that the public international intellectual property system sought to further through its promulgation of the principle of territoriality can now best, and perhaps only, be achieved by reconfiguring the principle. (7)

This Article approaches the task of reconfiguration in two ways. First, in Part II, it explores some of the different ways in which the principle of territoriality might conceptually inform a private international law of intellectual property. Contemporary multiterritorial intellectual property disputes are characterized by an excess of shared but weaker prescriptive and adjudicatory authority. The Article suggests a restrained concept of territoriality that reflects that reality, drawing in particular from the treatment of extraterritoriality in trademark law. Part III. of the Article approaches the question less conceptually and addresses reform of a specific principle of private international intellectual property law: limits on consolidated adjudication of infringement claims under domestic and foreign intellectual property laws.

1. THE PRIVATE INTERNATIONAL LAW OF INTELLECTUAL PROPERTY

   1. Public Private International Intellectual Property Law

      To assess the wisdom of current initiatives to develop a private international law of intellectual property, we must start with what exists. At first blush, this might seem somewhat meager. There is no treaty comprehensively, or even purposefully, addressing the private international law of intellectual property. The provisions resembling conflicts principles found in instruments of substantive (public) international intellectual property law are scattered and episodic, and appear to have been adopted without serious efforts to relate the rule articulated or implied to any general coherent principle of private international law.

      For example, some scholars and courts read the core international copyright obligation of national treatment found in Article 5(1) of the Berne Convention as implicating a principle of territoriality and from that, a rule regarding choice of law. (8) Yet, as the Court of Appeals for the Second Circuit has pointed out, consistent with the views expressed by the European Court of Justice, (9) "the principle of national treatment is really not a conflicts rule at all; it does not direct application of the law of any country. It simply requires that the country in which protection is claimed must treat foreign and domestic authors alike." (10) To be sure, the principle of national treatment does generally suggest that national intellectual property laws should determine rights based on place rather than nationality, (11) but this is a very general philosophy with little specific content.

      Indeed, if the general principle of national treatment did impose a particular choice-of-law rule, this could be of broad significance. The principle of national treatment is not only a foundation of the Paris and Berne Conventions, but also was reaffirmed in the TRIPS Agreement in 1994. (12) In fact, one leading treatise suggests that the slightly more elaborate national treatment provision of the TRIPS Agreement might limit the choice-of-law rules that a country may adopt. (13) Although subsequent elaboration of that view by one of the treatise authors reveals that the limit on national autonomy that the treatise contemplates would be a small one, (14) two aspects of the debate regarding the effect of Article 3 of the TRIPS Agreement are worth noting for present purposes (in addition to the fact that any limits are small). First, to attach a private international law significance to Article 3, one has to parse the definition of "protection" found in a footnote to Article 3. (15) This hardly suggests a conscious attempt to create a rule of private international law. Second, the limits that Article 3 imposes, such as they are, operate as a constraint on the choice-of-law rules that a state may adopt. They do not mandate a particular rule. (16)

      As if to emphasize the dubiety of locating private international law rules in intellectual property treaties, over a century of debate has not resolved whether Article 5(2) of the Berne Convention even speaks to choice of law or, if it does, what it says. (17) Yet, that provision is clearly cast in language that resembles a conflicts rule: it provides that "the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed." (18) The majority view is that Article 5(2) endorses the lex loci protectionis, but this is not without objection from some commentators, (19) and the number of issues to which it applies is also a point of debate. (20) Finally, the few narrow provisions regarding private international law that do exist in intellectual property treaties are often stated without clarity and with no regard for how they might gel with more general principles. (21)

      These observations largely hold true at the regional level as well, where intellectual property instruments have barely touched on questions of conflicts. (22) As a result, there is almost no "public private international law" (23) of intellectual property. In the last few years, however, several initiatives have been undertaken that would start to build one. Some of these were general private international law projects of which the provisions relating to intellectual property were a small (but highly contested) part. For example, in 1991...