INTRODUCTION A. Exclusive Jurisdiction Between Public and Private International Law B. Common Law and Civil Law Perspectives I. THESES PURPORTING THAT COMITY, THE ACT OF STATE DOCTRINE AND THE TERRITORIALITY PRINCIPLE ESTABLISH IMPLICIT EXCLUSIVE JURISDICTION RULES A. The U.S. Court of Appeals for the Federal Circuit Voda Judgment and the U.K. Court of Appeal Lucasfilm Decision B. The ECJ (CJEU) GAT Decision II. EXCLUSIVE JURISDICTION RULES ARE NOT ESTABLISHED EITHER BY COMITY OR BY THE ACT OF STATE DOCTRINE AND THE TERRITORIALITY PRINCIPLE, BUT RATHER ARE RENDERED ILLEGAL BY THE PUBLIC INTERNATIONAL LAW RULES ON THE RIGHT OF ACCESS TO COURTS: THE SUBJECT MATTER AND DELIMITATION OF THIS RESEARCH III. DENIAL OF JUSTICE AND FORUM NECESSITATIS A. Denial of Justice B. Forum necessitatis C. Sources of Law Hierarchy D. EU Brussels System E. Exclusive Jurisdiction in the Brussels System IV. THE FUNDAMENTAL HUMAN RIGHT OF ACCESS TO COURTS A. Right of Access to Courts B. Applicable Law C. Nature of the Proceeding D. Possible Restrictions of the Right E. International Jurisdiction Rules F. Alternative Means of Recourse G. Exclusive Jurisdiction V. EXCLUSIVE JURISDICTION IMPLIES A DENIAL OF JUSTICE AND VIOLATES THE FUNDAMENTAL HUMAN RIGHT OF ACCESS TO COURTS A. Denial of Justice B. Violation of the Fundamental Human Right of Access to Courts C. PIL and Human Rights Solutions VI. COROLLARIES A. General Corollaries B. European Union IPRs C. European Unified Patent Judiciary D. Internal Jurisdiction E. Forum Shopping VII. THE INTERNATIONAL RESPONSIBILITY OF THE FORUM STATE FOR ITS ILLEGAL DECLINING OF JURISDICTION A. Remedies for Denial of Justice B. Remedies for Violation of the Fundamental Human Right of Access to Courts INTRODUCTION
Exclusive Jurisdiction Between Public and Private International Law
In the recent past, prestigious courts around the world have refused to adjudicate cases relating to foreign registered or unregistered intellectual property rights (hereinafter: IPRs), where the proceedings concerned an IPR infringement claim or where the defendant in an IPR infringement action or the claimant in a declaratory action to establish that the IPR is not infringed pleaded that the IPR is invalid or void and that there is also no infringement of that right for that reason (so called validity issues incidentally raised). (1) In these cases the refusal to adjudicate the foreign IPRs infringement and validity claims was grounded on exclusive subject-matter jurisdiction (exclusive jurisdiction) rules. (2) According to those rules, the State that granted or recognized the IPR has the exclusive jurisdiction to address claims related thereto, independent of its also having personal jurisdiction over the defendant. Among those decisions (3) are the Supreme Court of Appeal of the South Africa Republic's Gallo v. Sting Music (4) decision of March 9, 2010; the U.S. Court of Appeal for the Federal Circuit's January 2, 2007 decision in Voda v. Cordis Corp.; (5) the U.K. Court of Appeal's December 16, 2009 decision in Lucasfilm Entertainment Co. v. Ainsworth; (6) and the Court of Justice of the European Union GAT decision of July, 13 2006. (7)
These decisions are grounded on the assumption that since IPRs relate to a State's sovereignty or domestic policies, IPRs are granted through State acts and are limited to the territory of the State that granted them. Therefore, if a State other than that which granted or recognized the IPR exercised jurisdiction, this State would create an unreasonable interference with the State who initially granted or recognized the IPR at stake. To avoid this unreasonable interference, the petitioned courts decline jurisdiction in foreign IPRs cases. This declination of jurisdiction is not the result of any general public international law obligation, but rather is a discretionary act of self-restraint based on domestic rules of international procedural law grounded on reasons of comity to the courts and on the act of State doctrine. (Hereafter, "comity to the courts" and the "act of State doctrine." These terms are interchangeable throughout this Paper.) (8) Indeed, notwithstanding the fact that these comity rules are of a domestic nature, the same rules are rooted in the concept of territorial sovereignty within a system of equal nation-States. Thus, "even more important that the conflicts of law rules themselves are the basic contours of comity ... namely" (9) the goals that must be accomplished by adopting it, among which stays the need to avoid harmful effects on international stability and interaction among nations and "the practical desirability of making decisions which would 'further the development of an effectively functioning international system.'" (10) Therefore, "the question of extending comity touches upon issues concerning the interaction of sovereign nations-matters typically within the scope of public international law" (11) and comity can be defined as a non-binding principle governing international affairs or as "a bridge between public and private international law." (12)
The decisions here examined, then, seem in line with attempts to develop a general public international law theory of allocation of jurisdiction in civil matters that began in the 18th century in the Netherlands, that continued to develop in Anglo-American legal systems, that were popular in Germany around the turn of the 19th century (13) that "have more recently been revived by [certain] public international lawyers," (14) and that are based on "comity" reasons. (15) In contrast, this Paper adopts the opinion that "these attempts have been unsuccessful"; (16) public international law does not limit a State's exercise of jurisdiction inside its borders, (17) and "public international law can play a role in private international law [only] in ... the broader conception of human rights," (18) imposing on the States the granting of the right of access to courts and therefore the abandoning of their international jurisdiction provisions inconsistent with this right, namely the exorbitant (19) and exclusive (20) jurisdiction rules, of which this paper examines only the latter and in relation to IPRs.
As a conclusion, this paper adopts and develops a thesis according to which exclusive jurisdiction rules in IPRs cases are not suggested by public international law; are actually illegal according to its rules on the denial of justice and on the fundamental human right of access to courts; and therefore, must be abandoned not only with respect to IPRs infringement issues, but also to IPRs validity claims raised as a defense in infringements proceedings, as the majority of the scholars maintain (21) and the most recent academic initiatives like the ALI Principles and the CLIP Project codify. (22)
Common Law and Civil Law Perspectives
Finally, with respect to international jurisdiction, it is necessary to highlight that the basic terminology, and legal institutions adopted in Europe diverge considerably from those of the U.S. system, since "European law does not distinguish between personal and subject matter jurisdiction, whereas American law does not employ the categories of general, special and exclusive jurisdiction." (23) However, on the one hand, "American and European law provide functionally equivalent methods for resolving the same problems, [albeit] they cannot agree on, much less unify, these methods." (24) On the other hand, at least with respect to IPR cases, it seems that a "good part of the impression" (25) that the two systems are "significantly different" (26) "ensues from differences in style and structure rather than from differences in substance." (27) Therefore, although this Paper adopts the notion of exclusive jurisdiction, which is rooted in the European legal tradition rather than the U.S. categories of personal and subject matter jurisdictions, it aims at proposing and demonstrating a thesis applicable at least to both of these legal systems.
THESES PURPORTING THAT COMITY, THE ACT OF STATE DOCTRINE AND THE TERRITORIALITY PRINCIPLE ESTABLISH IMPLICIT EXCLUSIVE JURISDICTION RULES
The U.S. Court of Appeals for the Federal Circuit Voda Judgment and the U.K. Court of Appeal Lucasfilm Decision
In this framework, this Paper starts analyzing the first thesis, which purports that comity and the territoriality principle establish exclusive jurisdiction in the State courts that granted or recognized a registered or unregistered IPR, with respect to both its validity and infringement. (28) This thesis was recently adopted, inter alia, by two important sovereign court decisions, namely the Voda v. Cordis U.S. Court of Appeals for the Federal Circuit judgment and the Lucasfilm Entertainment Co. v. Ainsworth U.K. Court of Appeal decision. In the Voda case, the plaintiff, Voda, was a U.S. resident, while the defendant, Cordis, was a U.S.-based entity. (29) Voda owned several U.S., European, British, Canadian, French, and German patents related to a single invention, which Voda claimed Cordis infringed. (30) Cordis did not object to Voda's claim of U.S. patent infringement, but opposed Voda's infringement claims concerning the European, British, Canadian, French and German patents, arguing that the court lacked subject matter jurisdiction over such claims. (31) The court accepted Cordis' argument, and thus refused to examine Voda's foreign patent infringement claims. (32)
In Lucasfilm, the U.S. plaintiffs sued in a U.S. Court two defendants domiciled in the United Kingdom, claiming that the defendants had infringed the plaintiffs' U.S. copyrights with respect to a number of works created for the film Star Wars. (33) According to the plaintiffs, the defendants' infringement activity was "all actually done in or from the U.K. [by virtue of] ... sales to U.S. customers in the U.S. by dispatch of products from the U.K., advertising on the internet and the placing of advertisements in U.S...