Proposed mechanism.

AuthorBarbosa, Roberto Garza
PositionInternational Copyright Law and Litigation: A Mechanism for Improvement

As was previously mentioned, the proposed mechanism offers three alternative paths for a solution--making provisions for possible failures. The first path is based on an international convention on jurisdiction and recognition of judgments and decrees from copyright cases; the second is based on comity; and the third is premised on a reliance on administrative remedies available in countries where the rate of piracy is unusually high. The first path is the most important--and ambitious--proposal of this Article.

  1. International Convention on Recognition of Copyright Decrees and Judgments

    As experience has shown, an international convention on recognition and enforcement of foreign judgments is rather difficult to achieve. There are no conventions of this kind at a multilateral level and only a few bilateral treaties, besides the EC Regulations, have succeeded in their negotiations. The primary reason for difficulties in achieving a convention on recognition and enforcement at the multilateral level is related to discrepancies among countries in their rules to assess jurisdiction over nonresident defendants. (159) Also, there is a fear of large punitive damages awards. (160) However, if the scope of an international convention is restricted to copyright litigation where there are no punitive damages and where different laws seem to be better harmonized with similar remedies, the likelihood of successful negotiations will increase.

    This was likely the case for the United Nations Convention on the Recognition and Enforcement of Foreign Arbitral Awards (New York Convention) and the Inter-American Convention on International Commercial Arbitration (Panama Convention); both have a large number of adherents and are widely recognized. (161) This large acceptance is due to the fact that both conventions are applicable only to cases of arbitration where there is an arbitral agreement or clause among parties and there are grounds for non-recognition. Grounds for non-recognition include arbitral awards not covered by the convention and circumstances such that it would be against domestic public policy. (162) The limitation in the application--not to all cases, but just for arbitral cases--and the inclusion of grounds for non-recognition, including domestic public policy, were the key provisions for the acceptance of these conventions.

    Having explained the difficulties of a general litigation jurisdiction and enforcement convention, I now turn to an explanation of the proposed bases for a possible convention that will cover copyright infringement cases. The first issue that I will examine is the application of the proposed convention, then questions of jurisdiction and applicable law, problems with preliminary injunctions, and finally, grounds for non-recognition.

    1. Application

      These proposed bases are limited to copyright infringement cases. Their scope is not open to other intellectual property rights. Due to the non-formalities requirement of the Berne Convention, copyrights are in the best position to be litigated internationally; no copyright prosecution is necessary to obtain protection so copyrighted works are protected automatically in the Member States of major copyright conventions. (163) There is no need for an administrative determination regarding the creation of the right, and consequently, it is not necessary to review any act of any official, either national or foreign. (164) There are some countries in which available remedies are limited if there is no registration, but most countries do not restrict remedies if the work is not registered. Copyrights are different than trademarks or patents where the validity of the act of issuance could be at stake in each infringement action commenced by the holder because copyrights do not depend on the issuance of a title for their creation. (165)

      In the course of copyright litigation, several things have to be demonstrated by the plaintiff and several defenses may be pursued by the defendant. As long as these questions are present in litigation, they must be resolved by the court hearing the case. Therefore, even if an infringement of a copyright is the threshold and arguably the unique cause of action for which this proposal would apply, there are other themes that incidentally need to be covered here, including ownership, protected subject matter, and the taking of an idea.

      In an action for copyright infringement, the plaintiff has to demonstrate that he or she is the holder of a valid copyright and that the defendant is infringing one or more of his or her exclusive rights. (166) There could be cases in which the defendant copied the whole of the plaintiff's valid work with no excusatory defenses or fair use. Even so, the defendant can claim a wide range of defenses, including arguing that the plaintiff has no title over the copyright in the place where the infringement took place or in any place. If this is the case, the court must look to the original copyright holder and then try to find the chain of titles until it reaches the plaintiff. In this kind of case, the court must look into the details of the applicable law of each assignment and into the assignment agreement, itself. Therefore, while this proposal is not intended to cover ownership, at any time in an infringement action a court may resolve questions of ownership, and so the proposal will cover those questions. Another determination would create an escape for defendants that would operate by questioning the plaintiff's title.

      It is also important to note cases where the infringement is not as obvious. Those cases involve a defendant taking ideas or non-original parts of the work so that courts have to look carefully into the details of the applicable copyright law in order to determine what constitutes an infringement. Other infringement actions may involve situations in which there is no other expression available for the defendant to use the underlying idea. If this is the case, the protection of that work would be more limited. However, this limited protection could change if the applicable law changes.

      Even if there are differences in the means of resolving all possible questions that arise in copyright infringement cases, those questions must be resolved according to the applicable law chosen. Because there is some degree of harmonization, most of those questions are likely to be resolved in a predictable way. Consequently, the proposal will cover all the necessary questions to be resolved in an infringement action according to the applicable law chosen.

    2. Jurisdiction

      As for the question of jurisdiction, it is important to find a point of convergence in both legal traditions. (167) In this Article, there are explanations of how the assessment of jurisdiction works in each legal tradition. While the differences are remarkable, it is also true that there is a point in the middle that could be acceptable for lawyers on both sides of those legal traditions. I will revisit briefly the bases for jurisdiction in both legal systems and then find the points of convergence that will be used for the proposed convention.

      In order to determine jurisdiction, there are several key provisions worth noting from the EC Regulation that are representative of the civil law tradition approach. (168) Article 2 establishes the domicile of the defendant as a general rule for jurisdiction. (169) If a defendant resides in one state, he or she may be sued in that state. This provision does not represent any conflict with common law tradition approaches where similar rules could apply. However, while there is a tendency to forum shop in the United States, civil law lawyers tend to sue in the place where the defendant is domiciled. (170) Article 5(3) is an exception to the general rule for tort cases. (171) For these cases, there can be jurisdiction in the place where the harmful event occurred. This place can be the place where the act commenced or the place where damages were suffered. (172) In the United States, the same rule is applied according to several state long-arm statutes. (173) However, as was earlier discussed, there is a required constitutional test that is not present in the EC Regulation. While in the European Union the defendant does not need to have any contact with the forum except for the damage caused, in the United States the defendant must have minimum contacts with the forum. These constitutional requirements were examined in Part III.B., including the outline of the three-part test developed by the Ninth Circuit regarding the determination of jurisdiction over nonresidents. (174)

      I believe that it is more reasonable to follow the U.S. approach. Even if the EC Regulation is representative of all civil law tradition rules, Article 5(3) does not reflect exactly the approaches taken by all the countries belonging to this tradition. (175) In Mexico, for instance, there is no similar provision, at least in civil cases, subjecting the defendant to the jurisdiction of the place where the damage is suffered. (176) Moreover, most of the Latin American codes of civil procedure do not have a similar provision because they are also based on the Mexican Federal Code of Civil Procedure. (177) This is an important consideration to resolve because, ultimately, if it is not possible to sue a foreign defendant making available infringing materials through the Internet, then the whole purpose of the proposed mechanism would be useless. Therefore, the three-part test established by the Ninth Circuit offers a good option for this proposal, and it represents an approximate midpoint for the various standards of civil law tradition countries as well.

      Important challenges still remain, however. Civil law tradition courts and lawyers are very formalistic. Most of them probably would not feel comfortable with the expression "do some act or consummate some transaction with the forum or perform some act by...

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT