Private International Law

Private International Law and Intellectual Property Rights

SCHEME OF WORK
S. No.

Matter Contained

Page No.

TABLE OF AUTHORITIES

INTRODUCTION

10

11

WHAT THE SYSTEM LOOKS LIKE TODAY- LACUNAE,

UNCERTAINTIES AND LOOPHOLES.
ISSUE 1: JURISDICTION AND ENFORCEMENT

ISSUE 2: CHOICE OF LAW

20

ISSUE 3: REMEDIES

25

EXPERIENCE FROM JUDICIAL PRONOUNCEMENTS

CONCLUSION- A BRIEF NOTE ON POSSIBLE SOLUTIONS FOR
THE PROBLEMS

26

CONCLUSION

36

14

Table of Authorities
Cases:

Abkco Music & Records, Inc. v Music Collection International Ltd. [1995] RPC 657,
660

Adams v Cape Industries plc [1990] Ch 433

Atkinson Footwear Ltd v Hodgskin International Services Limited (1994) 31 IPR 186
(NZ)

Attorney-General (UK) v Heinmann Publishers Australia Pty Ltd (1988) 165 CLR 30

Automotive Network Exchange Trade Mark (1998) RPC 885, 887 (UK)

Bensusan Restaurant Corp. v King, 937 F.Supp. 295 (SDNY 1996), affd on other
grounds, 126 F.3d 25 (2d Cir 1997).

Bikram Chaudhrys Copyright Claim, Kedar Nath Gupta v J.K. Organization [1998
PTC 189 (Delhi)]; Malnak v. Yogi [592 F.2d 197, 197-98 (3d Cir. 1979)]

Bonzel v. Pfizer, Inc., 439 F.3d 1358 (Fed. Cir. 2006)

Bonzel v.Pfizer, Inc., 439 F.3d 1358 (Fed. Cir. 2006)

Boosey & Hawkes Music Pubs. v. The Walt Disney Co. 145 F.3d 481 (2d Cir. 1998)

Boys v Chaplin [1971] AC 356

British South Africa Co v Companhia de Moambique [1893] AC 602

British Telecommunications v One in A Million Ltd [1998] 4 All ER 475, 486 (UK).

Cf. Films by Jove, Inc. v. Berov, 154 F.Supp. 2d 432 (E.D.N.Y. 2001)

Cf. McBee v. Delica Co. 417 F.3d 107 (1st Cir. 2005)

Coca Cola Co v All-Fect Distributing Co [1999] FCA 1721.

Compare Murray v British Broadcasting Corp., 906 F. Supp 858 (SDNY 1995) affd
81 F.3d 287 (2d Cir. 1996).

Computer Associates Intl, Inc. v. Altai, Inc., 126 F.3d 365 (2d Cir. 1997)

Creative Technology, Ltd. v Aztech System Pte., Ltd., 61 F.3d 696 (9th Cir. 1995)

Deepsouth Packing Co. v. Laitram Corp., 408 U.S. 518 (1972).

Def Lepp Music v Stuart-Brown [1986] RPC 273 (obiter) (UK)

Fauntleroy v. Lum, 210 U.S. 230 (1908)

Griggs Group v. Evans, 2005 Ch D. 153 (H. Ct. 2004), later proceeding, 2005 F.S.R.
31 (Court of Appeal (2005) (UK);

Tyburn Productions Ltd. v. Conan Doyle, [1990] 1 All ER 909(319 F.Supp.2d 1219
(W.D. Wash. 2004).

Gulf Oil Corp. v. Gilbert, 330 US 501 (1947) (US)

Hamlyn v Talisker Distillery [1894] AC 202, 207.

Hesperides Hotel Ltd vMuftizade [1979] AC 508.

Hilton v. Guyot, 159 U.S. 113, 163-64 (1895);

Huntington v Attrill [1893] AC 150 (PC)

International Shoe Co. v Washington, 326 US 310 (1945).

Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82, 89 (2d Cir. 1998)

John Pfeiffer Pty Limited v. Rogerson [2000] HCA 36 (21 June 2000)

John Walker & Sons Ltd v Ost, [1970] 2 All ER 106

Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342 (Fed. Cir. 1998).

London Film Prods. Ltd. v. Intercontinental Communications, Inc., 580 F. Supp. 47

(S.D.N.Y. 1984).

Macquarie Bank Ltd v Berg [1999] NSWSC 526 (June 2 1999)

Merklermedia Corp v DC Congress GmbH [1998] Ch 40.

Microsoft v. Lindows 319 F.Supp.2d 1219 (W.D. Wash. 2004).

Modus Vivendi (Ronson) v Keen (Lightman J, July 5, 1995)

Mount Albert Borough Council v Australasian Assurance Society Ltd [1938] AC 224,
240

National Football League v. Primetime 24 Joint Venture, 211 F.3d 10 (2d Cir. 2000)

National Football League v. T.V. RadioNow Corp., 53 U.S.P.Q.2d 1831 (E.D. Pa.
2000)

New Zealand Post Limited v Leng High Court, Auckland Williams J 17/12/98 CP
573/98.

Norbert Steinhardt & Sons Ltd v Meth (1961) 105 CLR 440.

NTP Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005)

Oggi Advertising Ltd v McKenzie [1999] 1 NZLR 631

Pearce v Ove Arup Partnership Ltd [1999] 1 All ER 769

Phillips v Eyre (1870) L.R. 6 Q.B. 1,28-29

Plastus Kreativ A.B. v Minnesota Mining and Manufacturing Co. [1995] RPC 438,
447.

Playboy Enterprises Inc. v Webworld, Inc. 991 F.Supp. 453 (N.D. Tex. 1997)

Playboy Enterprises inc. v. Chuckleberry Pubg, Inc. 939 F.Supp. 1032 (SDNY 1996)

Potter v. BHP [1905] VLR 612; (1906) 3 CLR 479

Pro Swing Inc. v. ELTA Golf Inc.; 2006 CarswellOnt 7203; 2006 SCC 52 (2006).

Quality King Distributors, Inc v LAnza Research International, Inc, 523 US 135
(1998)

Re Vissar [1928] Ch 877.

Red Sea Insurance Co v Bouygues SA [1995] AC 190

Bachchan v. India Abroad Publ'ns Inc., 585 N.Y.S.2d 661 (Sup.Ct.1992)

Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1251 (Fed. Cir. 2000)

SArL Loius Feraud v. Viewfinder. 15 U.S.C. 1125(d)(2)

Sheldon v Metro-Goldwyn Pictures Corp 106 F.2d 45, 52 (2d Cir 1939), affid, 309 US
390 (1940)

Show Format Case (2003), 35 I .I.C. 987 (2004).

Sirdar Gurdyal Singh v Rajhah of Faridkote [1894] AC 670.

Society of Composers, Authors & Music Publishers of Canada v. Canadian Assn. Of

Internet Providers (Tariff 22"), 2004 SCC 45, 32 C.P.R. (4th) 1 (Supreme Court
2004) (Canada).

Spielbankaffaire, 30 I.I.C. 227 (1999)

Spiliada Maritime Corp. v Cansulex Ltd. [1987] AC 460 (UK)

STV Prod. Inc v California Authority of Racing Fairs 785 F. Supp 854, 866 (ED Cal
1992)

Telnikoff v. Matusevitch, 702 A.2d 230, 244 (Md.1997)

Tods SpA v. Heyraud SA, [2005] 3 C.M.L.R. 28 (ECJ 2005)

Tolofson v Jensen [1994] 3 SCR 1022

Tyburn Productions v Conan Doyle (1990) 19 IPR 455

Vanity Fair Mills v. T. Eaton & Co., 234 F.2d 633 (2d Cir. 1956)

Wendell v Club Mediterranee NZ [1989] 1 NZLR 216 (NZ).

Yahoo!, Inc. v. La Ligue Contre le Racisme et l'Antisemitisme, 169 F.Supp.2d 1181

(N.D.Cal.2001),

Monographs:
Dicey & Morris, The Conflict Of Laws, (13th ed., Lawrence Collins (ed), 2000)151213
David Goddard, Conflict of Laws: Jurisdiction and Foreign Judgments in The Laws of
New Zealand (Wellington, Butterworths, 1996)
Professor Ginsburg, Private International Law Aspects of the Protection of Works and
Objects of Related Rights Transmitted Through Digital Networks, (1st ed. , 2000),
Update, 2-4.
C. Wadlow, The Law of Passing Off (2d ed.) 1st supplement 25 (1997).
Articles:

Andreas Reindl, Choosing Law in Cyberspace: Copyright

Conflicts on Global Networks (1998) 19 Michigan Journal of International Law 799.

Cf. Andrew T. Guzman, Choice of Law: New Foundations,

(2002) 90 Georgia Law Journal 883

Cf. Graeme B. Dinwoodie, Commitments to Territoriality in

International Copyright Scholarship, Report of the Neuchtel Study Session of ALAI 74
(2002)

Dinwoodie, New Copyright Order,

Dinwoodie, The Role of International Norms

Donald S.Chisum, Normative and Empirical Territoriality in

Intellectual Property: Lessons from Patent Law, 37 VA. J. INTL L. 603, 605 (1997)

Dreyfuss, Why Invite Conflicts, supra, at 822

Gordon Humphreys, Territoriality in Community Trade Mark

Matters: The British Problem [2000] EIPR 405;

Graeme B. Dinwoodie, Private International Aspects of the

Protection of Trademarks (Jan. 31, 2001) WIPO Doc. No. WIPO/PIL/01/4 (trademark)

Graeme B. Dinwoodie, Conflicts and International Copyright

Litigation: the Role of International Norms, in Intellectual Property In The Conflict Of
Laws 195, 201 (Basedow, Drexl, Kur and Metzger eds. 2005)

Graeme B. Dinwoodie, The Institutions of International

Intellectual Property Law: New Actors, New Institutions, and New Sources, in
Proceedings Of The 98th Annual Meet of The American Society of International Law
213 (2004)

Graeme B. Dinwoodie, The International Intellectual Property

Law System: New Actors New Institutions, New Sources 2006 Marquette Intellectual
Property Law Review [Vol. 10:2]

Graeme B. Dinwoodie, The International Intellectual Property

System: Treaties, Norms, National Courts, and Private Ordering [at 21-23] in
Intellectual Property, Trade And Development: Normative And Institutional Aspects
(Gervais ed., Oxford 2007)

Graeme B. Dinwoodie, Trademarks and Territory: Detaching

Trademark Law From the Nation-State,41 Houston Law Review 885, 891-92 (2004);

Graeme B. Dinwoodie, Remarks, 30 BROOK. J. INTL L. 885,

887 (2005)

Graeme W Austin, Social Policy Choices And Choice Of Law

For Copyright In Cyberspace, 79 Oregon L. Rev. 101 (2001)

Graeme W. Austin,

Intellectual Property Politics and the

Private International Law of Copyright

GW Austin, The Infringement of Foreign Intellectual Property

Rights (1997) 113 LQR 321, 323.

J. Fawcett (ed.), Declining Jurisdiction In Private International

Law: Reports To The XVI Congress Of The International Academy Of Comparative
Law: Athens, August 1994, (1995).

Jane C Ginsburg, Global Use/Territorial Rights: Private

International Law Questions on the Global Information Infrastructure, 42 Journal of
Copyright Society USA 318

Jane C Ginsburg, International Copyright: From a Bundle

of National Copyright Laws to a Supranational Code? 47 Journal of the Copyright
Society of the USA 265 (2000).

Jane C Ginsburg, The Private International Law of Copyright

in an Era of Technological Change, 1998 Recueil Des Cours De LAcademie
Internationalle De La Haye (1999)

Jane C. Ginsburg, Copyright without Borders? Choice of

Forum and Choice of Law for Copyright Infringement (1997) 15 Cardozo Arts &
Entertainment Law Journal

Jane C. Ginsburg, Private International Law Aspects of the

Protection of Works and Objects of Related Rights Transmitted Through Digital
Networks, WIPO Doc. GCPIC/2 (Nov. 30, 1998) (copyright);

John

Adams,

Industrial

Property

in

Globalised

Environment in Rickett & Austin (eds.) International Intellectual Property And The
Common Law World 259 (2000).

Laurence R. Helfer, Regime Shifting: The TRIPS Agreement

and New Dynamics of International Intellectual Property Lawmaking, 29 Yale Journal
of International Law 1 (2004)

Laurette Barnard, Choice of Law in Equitable Wrongs: A

Comparative Analysis [1992] CLJ 476.

Mark D. Rosen, Exporting the Constitution, 53 EMORY L.J.

171 (2004).
Ownership, 30 BROOK. J. INTL L. 899, 920-21 (2005)

P.B. Carter, Decisions of British Courts During 1990, 61

British Yearbook of International Law 386, 402 (1991)

Paul E Geller, The Universal Electronic Archive: Issues in

International Copyright (1994) 25 IIC 54

Paul Torremans, Authorship, Ownership of Rights and Works

Created by Employees: Which Law Applies?, 27 EUR. INTELL. PROP. REV. 220,
222 (2005)

Phillip Johnson, Which Law Applies: A Reply to Professor

Torremans, 1 Journal of Intellectual Property Law and Practice, 71, 72 (2005);

Professor Dinwoodie Affirmation of Territorial Limits of

United States Copyright Protection: Two Recent Decisions [1992] EIPR 136;

Richard Garnett, The Internet and Trademark Rights: Some

Problems of Jurisdiction 39 Intellectual Property Forum 18 (1999).

Richard L. Garnett, Trademarks and the Internet: Resolution of

International IP Disputes by Unilateral Application of U.S. Laws, 30 BROOK. J. INTL
L. 925, 937 (2005).

Richard Waters and Chris Nuttal, Threat to Blackberry is

Ended By $612m Deal, FIN. TIMES, Mar. 4, 2006 at 1.

Ricketson, Copyright, Designs & Confidential Information,

Supplement No 1 75 (2000)

Sam Ricketson And

Jane C. Ginsburg, International

Copyright And Neighbouring Rights: The Berne Convention And Beyond 20.08 (2d
ed. 2005)

Introduction
Private International Law refers to a part of national law, to be applied in courts
when the issue before the bench involves a foreign element. In civil law systems, private
international law is a branch of the internal legal system dealing with the determination of
which state law is applicable to situations crossing over the borders of one particular state
and involving a "foreign element" (lment d'extranit). Lato sensu (at large) it also
includes international civil procedure and international commercial arbitration as well as
citizenship law. In common law systems, private international law, firstly, is concerned
with determining whether the proposed forum has jurisdiction to adjudicate and is the
appropriate venue for dealing with the dispute, and, secondly, with determining which of
the competing state's laws are to be applied to resolve the dispute. It also deals with the
enforcement of foreign judgments.
In the present era of globalization, with the Internet opening up unchartered
avenues, more areas kick up much consternation in the eye of law. With the push of a
button, a single copyrighted work can be accessed by anyone across the world, indicating
that the foreign elements involved in the dispute concerning exploitation and
infringement of intellectual property rights could be numerous. Notably, private

international law provides an integral part of the background against which disputes
involving Intellectual property rights can be solved. Typically, extrusion of a countrys
law occurs through its application by courts, nominally restrained by private international
law, a context that is both transparent and subject to contest by courts of other countries.1
Ten years ago, one could barely detect a private international law of intellectual
property, either in the courts or in the literature. In the classical system, national courts
had very little role to play in the construction of international intellectual property law.
Litigation involved national rights; courts were reluctant even to adjudicate claims
involving foreign intellectual property rights, prompting serial national litigation of
multinational disputes. National courts are, however, beginning to tackle multinational
cases and thus to contribute to the effective creation of international norms. This has
occurred most perceptibly in the copyright context in the United States, India and the
United Kingdom, where courts will now hear claims under foreign laws, provide
multinational relief, and effectively regulate globally by localizing any Internet conduct
in the United States.
A plethora of questions now arise. This paper seeks to proceed with a brief
analysis of the following issues with regard to private international law:
o On what basis, and when would a court venture to
exercise jurisdiction?
o What laws would govern the ownership, validity
and infringement of IPRs?
o What remedies could possibly plug the loopholes
and lacunae in the law?
In the course of this paper, these three issues will be dealt with in elaborate detail,
with relevant instances of application in common law countries, with specific references
to the United States, United Kingdom and India. For prudence and cogency, the paper
shall be segregated into four parts. Part I shall elaborate upon the generic uncertainties in
the prevailing legal regime, as regards private international law and intellectual property
1

Graeme B. Dinwoodie, The International Intellectual Property Law System: New Actors New
Institutions, New Sources 2006 Marquette Intellectual Property Law Review [Vol. 10:2]

rights. Part II looks into the three issues, namely the Jurisdiction and Enforcement, the
Choice of Law and the Remedies. Part III looks at a specific series of cases dealing with
intellectual property rights and private international law, while Part IV is a summarizing
conclusion.
I. What the system looks like today- Lacunae, Uncertainties and Loopholes.
Before dealing with the overlapping segment of the venn diagram encompassing
the domains of private international law and intellectual property law, it would be prudent
to throw light on the prevailing system of law, as a greater number of the factors
contributing to uncertainty are largely due to the ramifications and the decadence
prevailing in the present scheme of things.
At the very outset, the incremental character of common law comes to fore.
Common law can achieve little that is akin to the dramatic rationalizations facilitated by
major codification exercises or ratification of major international conventions.2 The
decisions of a court are binding only in a particular jurisdiction, and even within a given
jurisdiction, some courts have more power than others. For example, in most
jurisdictions, decisions by appellate courts are binding on lower courts in the same
jurisdiction and on future decisions of the same appellate court, but decisions of nonappellate courts are only non-binding persuasive authority. Interactions between common
law, constitutional law, statutory law and regulatory law also give rise to considerable
complexity. However stare decisis, the principle that similar cases should be decided
according to consistent principled rules so that they will reach similar results, lies at the
heart of all common law systems.
Another cause for uncertainty is the very nature of the discipline of private
international law. Private international law is intensely practical. 3 Its object is to ensure,
as far as possible, that disputes involving foreign elements are decided by the court best
placed to do so in the interests of justice and that the forum so selected should not affect
the substantive outcome of the dispute. Its goal is consistent with that of domestic
2

Considering the development of the Lex Fori Rule as an example- Phillips v Eyre (1870) L.R. 6 Q.B.
1,28-29; Boys v Chaplin [1971] AC 356; Red Sea Insurance Co v Bouygues SA [1995] AC 190, See
further, Dicey & Morris, The Conflict Of Laws, (13th ed., Lawrence Collins (ed), 2000)1512-13; Pearce v
Ove Arup Partnership Ltd [1999] 1 All ER 769; Tolofson v Jensen [1994] 3 SCR 1022; John Pfeiffer Pty
Limited v. Rogerson [2000] HCA 36 (21 June 2000)
3
Dicey and Morris, Above n.2, pp 7 & 8.

legislation- prompt and efficient resolution of disputes and consistency and fair
predictability of outcomes.4
Alongside, Private international law distils intensely difficult theoretical
problems, such as the authority of domestic courts to apply the laws of foreign
jurisdiction and the role and scope of the principle of the comity of nations. 5 These issues
and their significance are sometimes directly reflected in substantive rules, such as the
common law prohibition against the justifiability of torts involving foreign land, 6 and the
application of foreign revenue and penal statutes. 7 Common Law courts also seldom wish
to be involved in the recognition of rights that cannot be enforced, which are concerns
largely informed by deeply held values about the appropriate relationships between
sovereign nations.
With regard to the IPR context, these values are expressed in the principle of
territoriality.8 National Trademarks are given with territorial limitation. 9 In Quality
King Distributors, Inc v LAnza Research International, Inc,

10

Justice Ginsburg

mentioned that Copyright mentioned that Copyright protection was territorial in nature,
and the rights granted by the United States Copyright Act extend no farther than the
nations frontiers. As far as patents are concerned, the words of Justice Aldous, in the
Plastus Kreativ A.B. v Minnesota Mining and Manufacturing Co. 11 maybe relied upon,
which runs thus:
Although patent actions appear on their face to be disputes
between two parties, in reality they also concern the public.
A finding of infringement is a finding that a monopoly
granted by the state is to be enforced.
4

The result is

David Goddard, Conflict of Laws: Jurisdiction and Foreign Judgments in The Laws of New Zealand
(Wellington, Butterworths, 1996)
5
http://www.thestandard.com/article/display/0,1151.20320,00.html?partner=law.
6
British South Africa Co v Companhia de Moambique [1893] AC 602; Hesperides Hotel Ltd v
Muftizade [1979] AC 508.
7
Huntington v Attrill [1893] AC 150 (PC); Re Vissar [1928] Ch 877.
8
Graeme W Austin, Social Policy Choices And Choice Of Law For Copyright In Cyberspace, 79 Oregon L.
Rev. 101 (2001)
9
Automotive Network Exchange Trade Mark (1998) RPC 885, 887 (UK); Gordon Humphreys,
Territoriality in Community Trade Mark Matters: The British Problem [2000] EIPR 405; Richard Garnett,
The Internet and Trademark Rights: Some Problems of Jurisdiction 39 Intellectual Property Forum 18
(1999).
10
523 US 135 (1998)
11
[1995] RPC 438, 447.

invariably that the public have to pay higher prices than if

the monopoly did not exist. If that be the proper result,
then that result should, I believe, come about from a
decision of a court situated in the state where the public
have to pay the higher prices.
Intellectual property regimes are regarded as primarily utilitarian in their aims and
policies. Thus, it is not surprising that the policies of private international law should
generate some friction when they are required to interface with the rights and principles
that are decidedly public in character. Efforts to develop a private international law of
intellectual property are much more recent, and are ongoing in a number of different
institutional settings.12 Institutional questions may significantly affect the content of
private international intellectual property law in a number of ways.
A perusal of means by which a private international law of intellectual property
should be developed also raises institutional issues. As in public international intellectual
property law, there has been a proliferation of actors seeking to shape policy, a
phenomenon that of itself compels consideration of institutional choices.13 Should
development of this area of law be pursued through soft law models that are becoming
more significant components of the international legal regime? Should lawmaking
initiatives be established at the international level, or would a network of cooperating
national actors be preferable?

Moreover, those increased institutional choices may

present the opportunity to break impasses that are now developing in almost every
intellectual property lawmaking context.14
12

P.B. Carter, Decisions of British Courts During 1990, 61 British Yearbook of International Law 386,
402 (1991) (noting the need for the development of such a body of law in response to the decision of the
U.K. courts in Tyburn Productions v. Conan Doyle).
13
This phenomenon on the public international side of the picture has already received scholarly attention.
Laurence R. Helfer, Regime Shifting: The TRIPS Agreement and New Dynamics of International
Intellectual Property Lawmaking, 29 Yale Journal of International Law 1 (2004) (discussing regimeshifting); John Braithwaite & Peter Drahos, Global Business Regulation (1st ed., 2000) 564 (suggesting
different forms of forum-shifting); Graeme B. Dinwoodie, The Institutions of International Intellectual
Property Law: New Actors, New Institutions, and New Sources, in Proceedings Of The 98th Annual Meet
of The American Society of International Law 213 (2004) (discussing the proliferation of institutions on
both the public and private side).
14
Graeme B. Dinwoodie, The International Intellectual Property System: Treaties, Norms, National
Courts, and Private Ordering [at 21-23] in Intellectual Property, Trade And Development: Normative And
Institutional Aspects (Gervais ed., Oxford 2007)

At this juncture, therefore, we should embrace a prominent role for private

international law in the international intellectual property system. A vibrant private
international law, which recognizes the expressive and constitutive capacity of judicial
decision-making, can make contributions to the system well beyond the resolution of
private disputes. In urging that courts consciously acts upon that potential, a fuller
appreciation of the role of dialogue as a lawmaking institution, both in developing and
implementing a private international intellectual property law, would be the solution.

II. Issue 1: Jurisdiction and Enforcement:

To obtain relief in more than one country for acts of intellectual property
infringement, a plaintiff was required to sue separately in every country in which
infringement was alleged to have occurred, notwithstanding that the allegations might
involve the same conduct by the same defendant with respect to what in fact was the
same piece of intellectual property. De jure, by virtue of the principle of territoriality,
paradoxically installed by international treaty, the right holders separate national
proceedings each sought to vindicate separate national property rights.15
This result, which might seem to flow most logically in the case of registered rights that
come into being only upon separate application to different national authorities, pertains
equally as a matter of law to rights (e.g., copyright) that accrue without registration.16
There may be international intellectual property law, but there is no such thing as
an international copyright, patent or trademark. When it comes to exercising jurisdiction,
it must be noted that two aspects come to fore:
o The exercise of jurisdiction over the defendantPersonal Jurisdiction
15

Nor does the national treatment obligation found in treaties mandate any different approach. See Bonzel
v.Pfizer, Inc., 439 F.3d 1358 (Fed. Cir. 2006) (upholding forum non conveniens dismissal of patent action
and noting that these treaties require a nation's courts to give equal treatment to nationals of other nations;
they do not establish jurisdiction or require a nation's courts to receive litigation that it reasonably believes
would be better conducted in another nation.)
16
See Computer Associates Intl, Inc. v. Altai, Inc., 126 F.3d 365 (2d Cir. 1997) (separate French and U.S.
copyrights implicated by proceedings in France and the United States).

o The application of foreign IPR laws in the caseSubject Matter Jurisdiction

Allied herewith, is the subsequent and incidental question as regards the
enforcement of judgments rendered by and in foreign fora.
a) Personal Jurisdiction:
Beyond the purview of international treaties, such as The Brussels Convention on
Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters, 1972, 17
and the Lugano Convention on Jurisdiction and Enforcement of Judgments in Civil and
Commercial Matters, 1988,18 a court may validly exercise personal jurisdiction of the
defendant has been validly served with the documents necessary to initiate the
proceedings. Generally speaking, the forum can exercise personal jurisdiction over
corporations or entities that are present in the jurisdiction. The domestic court may hear
all claims against a defendant that is present in the forum even if some or even all of the
causes of action do not involve acts done in the forum.
As for the defendants outside the forum, special rules of the domestic forum are
utilized to determine whether service on the defendant is permitted. 19 To justify the
exercise of jurisdiction over an out-of-state defendant, ultimately, there must be a
sufficient nexus between the defendant and the forum.20
With the advent of internet based commerce, courts have been driven to engage
with the issue of the degree of internet presence that provides a basis to exercise
jurisdiction over the website operator.21 A passively accessible website is insufficient to
sustain the exercise of jurisdiction.22

17

1972 OJEC (L299) 32

1988 OJEC (L319) 9
19
Playboy Enterprises Inc. v Webworld, Inc. 991 F.Supp. 453 (N.D. Tex. 1997); Playboy Enterprises inc. v.
Chuckleberry Pubg, Inc. 939 F.Supp. 1032 (SDNY 1996); Coca Cola Co v All-Fect Distributing Co
[1999] FCA 1721.
20
International Shoe Co. v Washington, 326 US 310 (1945).
21
Professor Ginsburg, Private International Law Aspects of the Protection of Works and Objects of Related
Rights Transmitted Through Digital Networks, (1st ed. , 2000), Update, 2-4.
22
Bensusan Restaurant Corp. v King, 937 F.Supp. 295 (SDNY 1996), affd on other grounds, 126 F.3d 25
(2d Cir 1997).
18

A court may deny jurisdiction on the ground of forum non conveniens,23 i.e., if it
concludes that another forum will be most convenient and would best serve the interests
of justice.24 To analyze the existence of forum non conveniens, factors such as the
strength of the plaintiffs case, relative cost and convenience of proceedings in each of
the available for a; location and availability of evidence, the state of any related
proceedings in other jurisdictions.25
In the context of Anglo common law tradition, there was, until recently, a rigid
prohibition against the exercise of subject matter jurisdiction over all claims involving
infringement of foreign IPRs. However, IPR disputes have been considered to distill
particular difficulties of their own. Thus, the application of the forum non conveniens rule
to IPR disputes has received only scant analysis.26
While the US courts seem to have greater experience in applying the rule of
forum non conveniens to IPR issues, specifically in copyright issues, the judicial
reluctance to engage with foreign copyright laws did not crystallize into a rigid rule.27
b) Subject Matter Jurisdiction- Special Rules for IPR disputes?
Common Law courts have traditionally been concerned with whether
infringement of foreign IPR is a proper subject matter to be heard within a domestic
forum. Concerns arising from perceptions as to the connection between IPR and the
exercise of sovereignty of the foreign state have caused some courts to adopt a
particularly restrictive approach to the issue of subject matter jurisdiction over and above
the concerns that might typically inform a forum non conveniens analysis. While common
law is used to applying foreign contract or tort laws,28 IPRs exist at the sufferance of the
23

J. Fawcett (ed.), Declining Jurisdiction In Private International Law: Reports To The XVI Congress Of
The International Academy Of Comparative Law: Athens, August 1994, (1995).
24
Gulf Oil Corp. v. Gilbert, 330 US 501 (1947) (US); Spiliada Maritime Corp. v Cansulex Ltd. [1987] AC
460 (UK); Wendell v Club Mediterranee NZ [1989] 1 NZLR 216 (NZ).
25
John Adams, Industrial Property in a Globalised Environment in Rickett & Austin (eds.) International
Intellectual Property And The Common Law World 259 (2000).
26
GW Austin, The Infringement of Foreign Intellectual Property Rights (1997) 113 LQR 321, 323.
27
London Film Productions Ltd v Intercontinental Communications Inc 580 F.Supp 47 (SDNY 1984);
Professor Dinwoodie Affirmation of Territorial Limits of United States Copyright Protection: Two Recent
Decisions [1992] EIPR 136; STV Prod. Inc v California Authority of Racing Fairs 785 F. Supp 854, 866
(ED Cal 1992), reversed on other grounds 3 F3d 1289 (9th Cir 1993); Creative Technology, Ltd. v Aztech
System Pte., Ltd., 61 F.3d 696 (9th Cir. 1995); Compare Murray v British Broadcasting Corp., 906 F. Supp
858 (SDNY 1995) affd 81 F.3d 287 (2d Cir. 1996).
28
See generally, Dicey & Morris, , Above n.2. Part Seven Law of Obligations

domestic sovereign.29 As far as patents and trademarks are concerned, this

characterization is fairly clear. Individual copyrights do not depend on State action to
come into existence,30 but individual domestic copyright statutes still define the
circumstances in which copyrights come into existence and the nature of the authors
rights.
In an early decision from the High Court of Australia, Potter v. BHP,31 the court
recognized an analogy between foreign land and foreign Intellectual Property rights,
and held that a similar jurisdictional prohibition existed. The rule was later extended to
copyright infringement actions.32
The jurisdictional prohibition was reinforced by the lex fori and the double
actionability rule, which apply to foreign tort claims. While the lex fori is strictly a choice
of law, than a jurisdictional rule,33 it is convenient to discuss it here, as its application in
foreign Intellectual Property Rights cases supported the courts refusal to entertain such
claims. The lex fori rule requires a plaintiff to establish that the alleged wrong was
actionable according to the lex fori and not defensible according to the law of the place
where the alleged wrong occurred. Cases that involve allegations of infringing
Intellectual Property Rights are foundered on the first limb, as were it not for the
infringement of one countrys copyright law to be the infringement of another countrys
copyright law, the requirement that the wrong be actionable according to the lex fori
could never be satisfied.34
For example, some scholars and courts read the core international copyright
obligation of national treatment found in Article 5(1) of the Berne Convention, 35 as
implicating a principle of territoriality and from that a rule regarding choice of law. Yet,
29

See generally, Ricketson, Copyright, Designs & Confidential Information, Supplement No 1 75 (2000)
Berne Convention for the Protection of Literary and Artistic Works, Art. 5(2).
31
[1905] VLR 612; (1906) 3 CLR 479. See also Norbert Steinhardt & Sons Ltd v Meth (1961) 105 CLR
440.
32
Tyburn Productions v Conan Doyle (1990) 19 IPR 455; Def Lepp Music v Stuart-Brown [1986]
RPC 273 (obiter) (UK); Atkinson Footwear Ltd v Hodgskin International Services Limited (1994) 31 IPR
186 (NZ); Bikram Chaudhrys Copyright Claim, Kedar Nath Gupta v J.K. Organization [1998 PTC 189
(Delhi)]; Malnak v. Yogi [592 F.2d 197, 197-98 (3d Cir. 1979)]
33
Pearce v Ove Arup Partnership Ltd [1999] 1 All ER 769.
34
Ibid.
35
Berne Convention, art. 5(1) (providing that authors shall enjoy, in respect of works for which they are
protected under this Convention, in countries of the Union other than the country of origin, the rights which
their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted
by this Convention)
30

as the Court of Appeals for the Second Circuit has pointed out, consistent with the views
recently expressed by the European Court of Justice, 36 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.37 To be sure, the principle of national treatment does generally
suggest that national intellectual property laws should focus on place rather nationality,38
but this is a very general philosophy with little specific content.
In Pearce v. Ove Arup Partners,39 the English Court held that there was no per se
objection to the application of Dutch Copyright Laws by an English Court. The court
adopted a more flexible approach to the lex fori rule that was recognized earlier in Red
Sea Insurance Co. v. Bouygues, 40 and took the view that a foreign copyright claim could
be actionable in an English Court as the claim was not conceptually unknown in English
law and was one for which the English Court would have given a remedy had the facts
alleged arisen in England. In addition to this common law rule, it is also mandated in the
Brussels Convention, where applicable, where the validity of rights sued upon is put in
issue, only the courts of the place where the rights are registered may exercise
jurisdiction.41
c) Enforcement of Judgments:
Another point of concern is that of the enforceability of any judgment rendered in
the context of cross-border cases. While some states have enacted the Uniform Foreign
Country Money-Judgments Recognition Act, 1962, which provides for the enforcement
of any judgment of a foreign state granting or denying recovery of a sum of money,
36

Case C-28/04, Tods SpA v. Heyraud SA, [2005] 3 C.M.L.R. 28 (ECJ 2005) (suggesting that as is
apparent from Article 5(1) of the Berne Convention, the purpose of that convention is not to determine
applicable law).
37
Itar-Tass, 153 F.3d at 89 n.8. See also Phillip Johnson, Which Law Applies: A Reply to Professor
Torremans, 1 Journal of Intellectual Property Law and Practice, 71, 72 (2005); Sam Ricketson And Jane
C. Ginsburg, International Copyright And Neighbouring Rights: The Berne Convention And Beyond
20.08 (2d ed. 2005)
38
Graeme B. Dinwoodie, Trademarks and Territory: Detaching Trademark Law From the Nation-State,
41 Houston Law Review 885, 891-92 (2004); Graeme B. Dinwoodie, Conflicts and International Copyright
Litigation: the Role of International Norms, in Intellectual Property In The Conflict Of Laws 195, 201
(Basedow, Drexl, Kur and Metzger eds. 2005)
39
Above, n.31.
40
(1995) AC 190
41
A.16(4) and 19, Brussels Convention.

certain other states rely on common law, which in turn contain similar procedural
parameters.
One major constraint as far as enforcement of foreign judgments are concerned, is
that a judgment will not be enforced if the court lacked personal jurisdiction over the
defendant. The critical factor is usually the residence of the defendant in the form. 42
Alone, assumption of jurisdiction in accordance with the rules of the country will not
suffice.43
A foreign judgment could also be impeached for the breach of natural justice, 44
but not on the ground that the foreign court misapplied lex fori or some other body of law.
III. Issue 2: Choice of Law
The question that arises is as to what law is to be applied. To proceed with the
answer, one has to analyze the issue in the light of infringement, ownership and
commercial dealings and equitable causes of action.
a) Infringement:
To obtain relief in more than one country for acts of intellectual property
infringement, a plaintiff was required to sue separately in every country in which
infringement was alleged to have occurred, notwithstanding that the allegations might
involve the same conduct by the same defendant with respect to what in fact was the
same piece of intellectual property.45 De jure, by virtue of the principle of territoriality,
paradoxically installed by international treaty, the right holders separate national
proceedings each sought to vindicate separate national property rights.46 This result,
which might seem to flow most logically in the case of registered rights that come into
being only upon separate application to different national authorities, pertains equally as a

42

Adams v Cape Industries plc [1990] Ch 433

Sirdar Gurdyal Singh v Rajhah of Faridkote [1894] AC 670.
44
Above, n.40.
45
This jurisdictional approach also had the effect of assimilating the lex loci protectionis to the lex fori.
46
Nor does the national treatment obligation found in treaties mandate any different approach. See Bonzel
v. Pfizer, Inc., 439 F.3d 1358 (Fed. Cir. 2006) (upholding forum non conveniens dismissal of patent action
and noting that these treaties require a nation's courts to give equal treatment to nationals of other nations;
they do not establish jurisdiction or require a nation's courts to receive litigation that it reasonably believes
would be better conducted in another nation.)
43

matter of law to rights (e.g., copyright) that accrue without registration. 47 There may be
international intellectual property law, but there is no such thing as an international
copyright, patent or trademark.
Most national courts have applied the lex loci protectionis to determine the
applicable law in intellectual property cases, at least in adjudicating the question of
infringement.48 The generic choice of law approach in IPR actions flows from the
territoriality of Intellectual Property Rights.49 The issue really arises only in the context of
copyright actions, as the opportunities for domestic courts to engage with choice of law
principles with respect to infringement of foreign registered rights such as patents and
trademarks are quite remote. Anglo common law systems regard international copyrights
as a mosaic of territorially confined copyrights- English copyright, a French Copyright,
an Indian Copyright, and so on.
Moreover, the scope of application of the lex loci protectionis is even more
uncertain. Certain aspects of an intellectual property dispute (e.g., the validity of a
contract relating to the transfer of intellectual property rights, or the allocation of rights
between employer and employee) implicate interests of states other than the state where
the allegedly infringing conduct occurred (and for which, therefore, protection was
sought). States where commercial exchanges are made have an interest in determining
the conditions under which those bargains are upheld. The regulation of the employment
relationship affects the social and economic fabric of the country of production, rather
than (or at least as much as) the country where an act of infringement occurred. 50 Thus,
although some countries afford the lex loci protectionis a broad scope of application, 51
others have, for example, opted to apply the lex originis to determine questions relating to
the authorship and ownership of copyright.52
47

Computer Associates Intl, Inc. v. Altai, Inc., 126 F.3d 365 (2d Cir. 1997) (separate French and U.S.
copyrights implicated by proceedings in France and the United States).
48
See generally Jane C. Ginsburg, Private International Law Aspects of the Protection of Works and
Objects of Related Rights Transmitted Through Digital Networks, WIPO Doc. GCPIC/2 (Nov. 30, 1998)
(copyright); Graeme B. Dinwoodie, Private International Aspects of the Protection of Trademarks (Jan.
31, 2001) WIPO Doc. No. WIPO/PIL/01/4 (trademark)
49
Abkco Music & Records, Inc. v Music Collection International Ltd. [1995] RPC 657, 660
50
Graeme W. Austin, Intellectual Property Politics and the Private International Law of Copyright
Ownership, 30 BROOK. J. INTL L. 899, 920-21 (2005) (defending attention to the important social
policy choices reflected in the law of the place where a work was first created)
51
Spielbankaffaire, 30 I.I.C. 227 (1999) ; Show Format Case (2003), 35 I .I.C. 987 (2004).
52
Paul Torremans, Authorship, Ownership of Rights and Works Created by Employees: Which Law
Applies?, 27 EUR. INTELL. PROP. REV. 220, 222 (2005) (discussing Belgian law).

Although U.S. courts have nominally looked to the policy-based approach of the
Second Restatement, and applied the law of the place with the most significant
relationship to the parties and the transaction to questions of initial copyright ownership,
they have given weight in particular to the nationality of the authors and the place of first
publication.53 As a result, the United States has effectively adopted a lex originis rule on
copyright authorship.54
Extraterritorial approaches have clear parallels in other branches of Private
International Law doctrines. At common law, courts determine the proper law of a
contract.55 The traditional common law rule for choice of law in tort was double
actionability. The general aim, however, is to establish a single law that governs the
plaintiffs claims.
Much has been written on the plausible adoption of a single governing law
approach in the Copyright context particularly in the context of cross border copyright
issues.56 Some of these suggestions include the law of the place of upload of the work, the
law of the authors residence, or the law of the country of imitation of the infringement.
Such approaches may bring in efficiency, for litigants, courts and contracting parties. One
law, rather than a potential multiplicity of foreign copyright laws may simplify many
cross-border IPR issues. Territorial approaches may need to give way in the light of the
shift in International copyright relations from a bundle of national copyright laws to a
supranational code.57

53

Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82, 89 (2d Cir. 1998)
Cf. Films by Jove, Inc. v. Berov, 154 F.Supp. 2d 432 (E.D.N.Y. 2001), motion for reconsid. den., 250.
F.Supp.2d 156 (E.D.N.Y. 2003), later proceeding, 341 F.Supp.2d 199 (E.D.N.Y. 2004). On the question of
subsistence of copyright (e.g., the standards of originality), the U.S. courts have applied the lex loci
protectionis.
55
Mount Albert Borough Council v Australasian Assurance Society Ltd [1938] AC 224, 240; Hamlyn v
Talisker Distillery [1894] AC 202, 207.
56
Jane C Ginsburg, The Private International Law of Copyright in an Era of Technological Change, 1998
Recueil Des Cours De LAcademie Internationalle De La Haye (1999); Jane C. Ginsburg, Copyright
without Borders? Choice of Forum and Choice of Law for Copyright Infringement (1997) 15 Cardozo
Arts & Entertainment Law Journal; Jane C Ginsburg, Global Use/Territorial Rights: Private International
Law Questions on the Global Information Infrastructure, 42 Journal of Copyright Society USA 318; Paul
E Geller, The Universal Electronic Archive: Issues in International Copyright (1994) 25 IIC 54; Andreas
Reindl, Choosing Law in Cyberspace: Copyright Conflicts on Global Networks (1998) 19 Michigan
Journal of International Law 799.
57
Jane C Ginsburg, International Copyright: From a Bundle of National Copyright Laws to a
Supranational Code? 47 Journal of the Copyright Society of the USA 265 (2000).
54

So long as individual nations remain content to have key aspects of their domestic
information policy shaped by public international copyright law norms, the relevance of
strictly territorial approaches to choice of copyright laws must inevitably wane.58
For other forms of Intellectual Property rights, there may be too much friction
caused by perceptions of the public policy importance of the property rights at stake or
extraterritorial approaches to be entertained.
b) Ownership and Commercial Dealings:
For the purpose of private international law, the common law tradition borrows
the movable/immovable categorization. Land is categorized as immovable property,
along with certain interests in land that within domestic law, fall under the gamut of
personal property. Intellectual property falls squarely within the gamut of immovable
property. The situs of the property determines the nature of the property as movable or
immovable. Choses in action are thereby generally situated in the country where they are
properly recoverable or can be enforced.59 Because the essence of an Intellectual
Property is the owners right to take action to prevent others from engaging in certain
types of activity in a given territory, it naturally follows that a patent, a trademark or a
copyright is situated in the country whose law governs its existence. 60 Similarly, the
assignability of an Intellectual Property Right must inevitably be governed by the law
under which it was created.
This approach withstands the test of consistency with a territorial approach, both
to initial copyright ownership and transfers of ownership. Thus, a purportedly global
transfer of a copyright may not be acceptable in certain countries, if, according to the law
of such countries, the transfer was inconsistent with a certain procedural requirement.
The single law approach receives support by those essentially concerned to see
Private International Law principles facilitate frictionless international trade in
Intellectual Property Rights. Divided ownership of Intellectual Property would augment
costs greatly, which is evidenced in the division of the exclusive rights in a copyright
work, on a territory-by-territory basis. But, the difference in the suggested regime would
58

Article 14bis of the Berne Convention

Dicey & Morris, para 22R-023.
60
Dicey & Morris, para. 22-051
59

be that a territorial approach to a choice of law for copyright ownership possibly leading
to different owners for different territories, arising out of the operation of law, and not out
of prior commercial exchange.
Primarily because common law private international law principles on ownership
and transfer of Intellectual Property remains in a fairly underdeveloped state, there are
more questions than answers.
c) Equitable Causes of Action:
Statutory Intellectual Property rights provide only part of the legal autonomy
available to protect interests. Common law and equitable causes of action are frequently
invoked to supplement, or as alternatives to, statutory rights. These points of reference
will be elaborated upon using the examples of passing off and breach of confidence.
As far as passing off was concerned, the lex fori rule determined actionability.61 In
the United Kingdom, the Private International Law Act, 1995 was passed, indicating that
the governing law was lex loci. In other jurisdictions, the rule of lex fori would apply.
An important exception to the traditional notions of jurisdiction and choice of law
has long been recognized in Anglo Common Law. In John Walker & Sons Ltd v Ost, 62 an
English Judge recognized that an English Court had jurisdiction over acts done in the UK
comprising supply of instruments of fraud which facilitated passing off abroad.63
This strand of common law theory has recently been resurrected in
cybersquatting disputes. It was mentioned that the court would not stand by and allow
what can graphically be called an instrument of fraud to remain in the hands of a trader.64
In common law jurisdictions, where there is no statutory protection for data, the
course of action is labeled as a breach of confidence, so as to prevent misappropriation of
secrets. The equitable duty of good faith plays a role here.
Very little definitive authority delineates private international law approach to
equitable wrongs.65 Further work is needed with respect to applicable private
international law principles for equitable harms and common law claims. These areas of
61

C. Wadlow, The Law of Passing Off (2d ed.) 1st supplement 25 (1997).
[1970] 2 All ER 106
63
Modus Vivendi (Ronson) v Keen (Lightman J, July 5, 1995); Merklermedia Corp v DC Congress GmbH
[1998] Ch 40.
64
British Telecommunications v One in A Million Ltd [1998] 4 All ER 475, 486 (UK).
65
Laurette Barnard, Choice of Law in Equitable Wrongs: A Comparative Analysis [1992] CLJ 476.
62

concern and emerging doctrines provide useful reminders of possible alternatives to the
territorial approaches that dominate in the Private International Law of Copyrights,
Trademarks and Patents.
IV. Issue 3: Remedies
As it is in many other branches of law, in litigation involving Intellectual Property
Rights, the remedies and procedural assistance offered by the forum are particularly
important. The law of the forum govern the matters of procedure. Remedies are generally
regarded as procedural matters. Particular remedies may not be available in the forum,
despite being permitted by the lex causae. Additionally, a remedy available under the
forums law may be refused if it is radically different from remedies available under the
lex causae.66
Due to limited opportunities for the exercise of any kind of subject matter
jurisdiction over foreign Intellectual Property Rights, there is scant authority on the issue
of the approach to remedies in cross-border cases.67 However, there would appear to be at
least some scope for tension between the forums approach to damages, for instance, and
that of the applicable foreign laws.
While interspersing Private International Law and Intellectual Property Right
disputes, careful consideration is needed as to whether, departure from the common law
rule that the rule of lex fori governs the relief, is warranted. Within the territorial
paradigm, damages are often sought to compensate for the defendants usurpation of
particular markets.
The marketing opportunities lost are those created by the intellectual property
protections afforded by the laws of the foreign states. The close link between the
existence of the rights and the means of their protection might support the view that
remedies and rights should be governed by the same body of law.
Finally, mention should be made the issue of interim relief. Many intellectual
property infringement actions do not reach a full trial. Interim reliefsuch as preliminary
injunctions is usually sufficient to shut down an infringing operation.68
66

Attorney-General (UK) v Heinmann Publishers Australia Pty Ltd (1988) 165 CLR 30
Sheldon v Metro-Goldwyn Pictures Corp 106 F.2d 45, 52 (2d Cir 1939), affid, 309 US 390 (1940)
68
Oggi Advertising Ltd v McKenzie [1999] 1 NZLR 631; New Zealand Post Limited v Leng High Court,
Auckland Williams J 17/12/98 CP 573/98.
67

In the Internet era, the willingness of cour ts to provide interim relief which may
have international effects will increasingly be an important issue. Some courts may be
reticent to offer even preliminary relief which may have the result of cutting across
international borders.
In a recent Australian decision, for example, a New South Wales Judge dismissed
an ex parte application for an interim injunction to restrain dissemination via the Internet
of allegedly defamatory material.69 In a recent cybersquatting case, a New Zealand Judge
was apparently less inhibited by the international dimensions of the relief sought,
ordering the defendant to delete the words NZ Post or any similar name, from any
Internet service or site any domain name over which he had control. 70 This was in a
passing off action. However, there was no evidence before the Court that plaintiff had
goodwill in the name NZ Post in any of the jurisdictions outside of New Zealand where
the website was accessible.
The close link between the existence of the rights and the means of their
protection might support the view that remedies and rights should be governed by the
same body of law.
V. Experience from Judicial Pronouncements:
These principles have been put under pressure, at least in the first place, not by
withering scholarly critique or the force of sustained international reform efforts. Rather,
social and commercial pressures have generated disputes among private parties that by
their very nature call into question the wisdom or resilience of these principles. To
illustrate those disputes, which can also be used as test cases for proposals discussed in
Part II of this Paper, and the challenges that globalization causes for intellectual property
law, consider the following four trans-border litigation scenarios drawn from case law
over the past decade. These illustrations reinforce what conflicts scholars have long
known: territoriality does not foreclose the effective development of a private
international law. In fact, the principle of territoriality compels a private international
law of intellectual property.

69
70

Macquarie Bank Ltd v Berg [1999] NSWSC 526 (June 2 1999)

New Zealand Post Limited v Leng High Court, Auckland Williams J 17/12/98 CP 573/98.

Case 1: NTP v. Research in Motion.71

In a litigation that attracted substantial public attention because of its significance
for the continued availability of the Blackberry personal data assistant, a U.S. patentee
brought an infringement action against Research in Motion (RIM), the Canadian
manufacturer of the Blackberry device. RIMs most compelling argument was that the
acts alleged to infringe NTPs patents did not occur within the United States as required
by the language of the U.S. patent statute.72
Some of the necessary elements of the RIM Blackberry service (in particular the
relay or router that transfers the email from the Blackberry server to the local network
allowing the Blackberry user to receive the email) occurred in Canada. This relay was a
key feature of the NTP patent; it was an essential element in the claim of the NTP patent
that RIM was alleged to infringe. NTP possessed no equivalent patent in Canada where
the essential activity occurred.73
In its initial opinion, a panel of the Court of Appeals for the Federal Circuit held
that because control and beneficial use of the infringing system was within the United
States, the statutory language was satisfied and upheld the finding of infringement. Patent
law is resolutely territorial,74 and the Supreme Court has consistently reaffirmed that
principle,75 albeit subject to later targeted Congressional derogations (sometimes in
implementation of treaty obligations). Thus, the decision came as a surprise to many
commentators. As a result, the Canadian government filed an amicus brief supporting a
request for rehearing en banc, urging restraint and comity on the part of the U.S. courts
and suggesting that the courts opinion interfered with the business and legal environment
in Canada. The original panel of the Court of Appeals decided to withdraw its original
71

NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005) , replacing 392 F.3d 1336 (2004).
The litigation settled last year. See Richard Waters and Chris Nuttal, Threat to Blackberry is Ended By
$612m Deal, FIN. TIMES, Mar. 4, 2006 at 1.
72
See Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1251 (Fed. Cir. 2000) (requiring that in order
to violate the patent holders exclusive right to offer its patented invention for sale, the allegedly infringing
offer must occur within the United States); Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342 (Fed. Cir.
1998).
73
Search of global QPAT database, March 2, 2006; [cf. ICraveTv.com]
74
Patent rights are the most explicitly territorial of the primary forms of intellectual property. See Donald
S.Chisum, Normative and Empirical Territoriality in Intellectual Property: Lessons from Patent Law, 37
VA. J. INTL L. 603, 605 (1997) ; see also 35 U.S.C. 271(a) (whoever without authority makes, uses,
offers to sell, or sells any patented invention, within the United States or imports into the United States any
patented invention during the term of the patent therefore, infringes the patent) (emphasis added).
75
See Deepsouth Packing Co. v. Laitram Corp., 408 U.S. 518 (1972).

opinion. In its revised opinion, the Court concluded that the situating of the router in
Canada enabled RIM to avoid infringement of NTPs method claim because a process
cannot be used within the United States as required by section 271(a) unless each of the
steps is performed within this country. However, the court affirmed that, with respect to
the system claim, the use of a patent occurs at the place at which the system as a whole
is put into service, i.e., the place where control of the system is exercised and beneficial
use of the system obtained. Thus, RIM remained liable for infringement of NTPs
system claims because RIMs customers located within the United States controlled the
transmission of information and benefitted from the resulting exchange of information.
After the issuance of the panels revised opinion, RIM and the Government of
Canada (unsuccessfully) sought en banc rehearing. The Canadian Government argued
that transnational enforcement of patents may be appropriate in certain circumstances, but
that this should only occur after a full analysis of the international implications of
applying U.S law to activity happening abroad (which it did not discern in the panels
opinion). More particularly, the Canadian government argued that:
The

reissued

panel

opinion

lacks

any

acknowledgment or discussion of the effect of, or

the effect upon, long-established international
understandings and agreements regarding national
jurisdiction over intellectual property. Because the
decision of the panel was neither explained nor
justified in terms of contemporary, internationallyaccepted principles of national jurisdiction, the
opinion raises questions concerning fundamental
principles upon which this international intellectual
property system has harmoniously been based for
well over a century.
The position of the Canadian government accurately captures the essence of three
important propositions:
(1) it may well be that, in an interconnected world, national courts will on occasion be
required to grant transborder relief;

(2) this should only occur after a full airing of the principles of private international law
that inform that question; and
(3) the court of appeals had effectively announced a rule of private international law by
localizing the use in the United States under what is a version of the law of the most
significant relationship test.76 The Canadian government position, as articulated both in
its briefs before the court and in the state interests reflected in its law and (non-grant) of
rights to NTP, required respect for several reasons.
First, in a world of shared, non-exclusive prescriptive authority, the prescriptive
authority and legitimacy of U.S. law is diminished notwithstanding substantial U.S.
activity, and Canada had a rightful prescriptive interest in the dispute. Second, for
practical reasons of enforcement, to the extent that the decisions of the U.S. courts might
require recognition in Canada to be effective, the legitimacy-grounded assertions of the
government of Canada can have real practical bite. Private international law has always
been concerned with practical questions as well as claims of fairness and legitimacy.77
Even if the U.S. courts concluded that U.S. laws finding of infringement should
prevail over the lack of plaintiffs rights in Canada because of the weight of the
respective interests of those two countries, the mere recognition and consideration of the
international implications would surely render Canadian cooperation more likely and
show the respect toward the decisions of other nations that other doctrines purport to
further.

Case 2: Boosey & Hawkes Music Pubs. v. The Walt Disney Co.78

76

U.S. courts in copyright cases have gravitated to that same test (as have Canadian courts). See Itar-Tass
Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82 (2d Cir. 1998); Society of Composers, Authors
& Music Publishers of Canada v. Canadian Assn. Of Internet Providers (Tariff 22"), 2004 SCC 45, 32
C.P.R. (4th) 1 (Supreme Court 2004) (Canada). Although sometimes, as with the NTP court in patent, that
consideration may simply have informed what the cour t frames as an interpretation of substantive
copyright law. [See National Football League v. T.V. RadioNow Corp., 53 U.S.P.Q.2d 1831 (E.D. Pa.
2000); National Football League v. Primetime 24 Joint Venture, 211 F.3d 10 (2d Cir. 2000); Playboy
Enters. v. Chuckleberry Pub. Inc., 939 F. Supp. 1032 (S.D.N.Y. 1996).]
77
See Vanity Fair Mills v. T. Eaton & Co., 234 F.2d 633 (2d Cir. 1956) ; see also Graeme B. Dinwoodie,
Remarks, 30 BROOK. J. INTL L. 885, 887 (2005) (noting comments of Graeme Austin).
78
145 F.3d 481 (2d Cir. 1998).

In 1940, Disney released the animated motion picture Fantasia. The soundtrack to
the film included a performance of The Rite of Spring by Igor Stravinsky. Because under
U.S. law the work was in the public domain, Disney needed no authorization to record or
distribute it in the United States, but permission was required for distribution in countries
where Stravinsky still enjoyed copyright protection. In 1939 the parties executed an
agreement giving Disney rights to use the work in a motion picture.
In 1991 Disney released Fantasia in video cassette and laser disc format, and
distributed the video on a worldwide basis (including throughout the United States).
Boosey & Hawkes Music Publishers Ltd., the assignee of Stravinsky's copyright for The
Rite of Spring, sued Disney in federal district court in New York, contending that the
1939 license did not authorize distribution in video format. Boosey sought damages for
copyright infringement deriving from Disney's sales of videocassettes of Fantasia in at
least eighteen foreign countries. The district court held that video distribution was not
covered by the license and granted partial summary judgment to Boosey, but dismissed
the complaint under the doctrine of forum non conveniens in so far as it sought relief for
foreign copyright claims. The court concluded that these claims should be tried in each
of the nations whose copyright laws were invoked. The district courts decision was
wholly consistent with the conventional approach to transborder copyright claims in the
U.S. courts. The principle of exclusive jurisdiction had, with only minor judicial
exceptions and some scholarly objection,79 been followed in copyright litigation.
Although the Second Circuit vacated the summary judgment in Boosey's favor on
whether the license covered video distribution, the court reversed the order dismissing the
foreign copyright claims on forum non conveniens grounds and remanded to the district
court for trial.
The Second Circuit criticized the district court for failing to consider whether
there were alternative fora capable of adjudicating Boosey's copyright claims, as is
generally required prior to making a forum non conveniens dismissal. For example, the
lower court made no determination whether Disney was subject to jurisdiction in the
various countries where the court anticipated that trial would occur and did not condition

79

See, e.g., London Film Prods. Ltd. v. Intercontinental Communications, Inc., 580 F. Supp. 47 (S.D.N.Y.
1984).

dismissal on Disney's consent to jurisdiction in those nations. In a footnote, the Second

Circuit noted that it did need not decide whether forum non conveniens dismissal requires
the dismissing court to ascertain a single alternative court with jurisdiction over the
claims.
The appeals courts also rejected the district courts analysis of the so-called
public interests that are part of forum non conveniens analysis. The district court had
reasoned that the trial would require extensive application of foreign copyright (and
antitrust) jurisprudence, bodies of law involving strong national interests best litigated in
their respective countries, and that these necessary inquiries into foreign law would
place an undue burden on our judicial system. The Second Circuit stressed that while
reluctance to apply foreign law is a valid factor favoring dismissal . . . , standing alone it
does not justify dismissal and noted that:
numerous countervailing considerations suggest
that New York venue is proper: defendant is a U.S.
corporation, the 1939 agreement was substantially
negotiated and signed in New York, and the
agreement is governed by New York law.

The

plaintiff has chosen New York and the trial is ready

to proceed here. Everything before us suggests that
trial would be more easy, expeditious and
inexpensive in the district court than dispersed to
18 foreign nations.
As a result of the Second Circuits decision, the parties reached a global
settlement. It is not uncommon that resolution of the private international law questions
raised by multi-territorial intellectual property disputes proves sufficient to encourage the
parties to reach a private settlement of all the separate national claims.
Indeed, although this departure from exclusive jurisdiction has since been
followed by other U.S. courts in copyright cases, those cases have typically settled prior
to trial of the foreign claims. The approach in Boosey & Hawkes has also been followed
in copyright cases in the European Union, although the precipitating cause in Europe was
the Brussels Convention on Jurisdiction and Recognition of Judgements, which governs

the resolution of disputes in civil and commercial matters between persons domiciled in
the parties to the Convention (essentially, countries of the European Union).
For example, although English courts have typically not entertained claims under
foreign copyright laws,80 in 1999, the Court of Appeal permitted a claim for copyright
infringement based upon conduct in Holland to proceed in the English courts.
The court acknowledged that because the acts of copying in that case (the
unauthorized construction of a building conforming to the architectural work contained in
the plaintiffs plans) took place in Holland, they could not constitute infringements of the
plaintiff's U.K. copyright. The court concluded that rules of U.K. law that previously
restricted the adjudication of foreign intellectual property claims had been overridden by
the Brussels Convention (and other legislative developments) where the parties were
from contracting states, and that the case for infringement of Dutch copyright could
therefore proceed.81
Doctrinally, the U.K. defendant could clearly be sued in the United Kingdom
because place of domicile is the starting point for jurisdiction under the convention. The
court accepted that the English courts had jurisdiction in relation to the claims against the
non-U.K. defendants under article 6(1) of the Brussels Convention, which provides that a
person domiciled in a contracting state may be sued, where he is one of a number of
defendants, in the courts for the place where any one of them is domiciled.
Case 3: Microsoft v. Lindows82
Microsoft filed a complaint in federal court in Seattle alleging that Lindows use
of the term LINDOWS (for an open source Linux operating system with an interface that
resembles Windows software) was an infringement of its trademark in the term
WINDOWS for operating systems.
80

The defendant argued, inter alia, that the term

See Griggs Group v. Evans, 2005 Ch D. 153 (H. Ct. 2004), later proceeding, 2005 F.S.R. 31 (Court of
Appeal (2005) (UK); see, e.g., Tyburn Productions Ltd. v. Conan Doyle, [1990] 1 All ER 909 (rejecting
plaintiffs request to declare that the defendant had no rights under U.S. copyright and trademark laws);
see also Austin,
81
The Pearce court noted that it was not necessary to decide whether . . .an action for alleged infringement
of a foreign copyright by acts done outside the United Kingdom in a state not party to the Brussels
Convention, in a case where no question as to the validity or registration of the right was in issue, was . . .
justiciable in an English court. But see Griggs Group v. Evans, 2005 Ch D. 153 (H. Ct. 2004), later
proceeding, 2005 F.S.R. 31 (Court of Appeal 2005)
(UK).
82
319 F.Supp.2d 1219 (W.D. Wash. 2004).

WINDOWS was generic, and the district court judge had indicated an initial receptivity
to that argument. Having failed to obtain appellate review of the analysis on the question
of generic status, and while the U.S. trial was pending, Microsoft initiated or threatened
litigation against Lindows and its distributors in several other countries.
Consistent with the position of the British courts discussed above, the U.S. court
declined to issue an antisuit injunction against Microsofts foreign litigation. Microsoft
obtained preliminary injunctions in the Netherlands, Finland and Sweden, before settling
the Dutch case. Initially, Lindows tried to maintain some use of the LINDOWS mark (at
least as part of its corporate name) in the United States, but eventually in July 2004,
Microsoft settled its trademark suits against Lindows on a global basis with a $20 million
payment to Lindows, which agreed to change its name to LINSPIRE. The inefficiencies
of marketing a product, especially one heavily distributed online, under a different mark
in different countries were not worth the marginal benefits of being able to use the more
communicative mark LINDOWS.
As a result of the successful actions in Europe, and despite the possibility of an
adverse decision in the United States, a single result was reached globally. The attack on
U.S. rights, nominally independent of the separate European trademark registrations, was
effectively rebuffed as a result of the foreign determinations.

Microsoft officials

defended their international strategy by noting that Microsoft must protect its
trademarks or risk losing them and that a ruling in the U.S case would unlikely affect
overseas trademarks. The resolution of the U.S. case doesnt necessarily bind any other
country.83
Lindows officials saw the new lawsuits differently, charging that its a tactic to
make us spend money opening up all these new legal fronts. . . It makes no sense to
launch all these lawsuits when in three months, this case will be decided in U.S. court
and, if we lose, well change our name, and its a nonissue.

Case 4: SArL Loius Feraud v. Viewfinder.

83

Microsoft-Lindows Battle Expands in Europe, CNet News.com, Dec. 8, 2003.

A principal subject of private international law is the recognition and enforcement

of judgments. There is little developed case law on this topic in the intellectual property
field, in part because the primary relief in intellectual property cases typically takes the
form of injunctive relief, often preliminary injunctive relief. 84 Such orders are rarely
capable of direct recognition and enforcement.85
Indeed, the limits of enforcing injunctive orders abroad may explain some of the
motivation behind the decision of the U.S. Congress to include jurisdiction in rem against
domain names as part of the Anti-Cybersquatting Consumer Protection Act (ACPA) in
1999.86 The paucity of decisions on enforcement may also reflect the fact that the United
States has tended to enforce foreign judgements notwithstanding that the full faith and
credit obligations imposed by the U.S. Constitution and federal legislation on state and
federal courts do not extend to foreign judgments.87
Although other countries, including within the European Union, are not so
accommodating, foreign litigants frequently have sufficient assets in the United States
such that foreign enforcement is not necessary.
The decision of a district court in Feraud v. Viewfinder thus represents the most
extended judicial discussion in recent years of the enforceability of a foreign intellectual
property judgement. In Feraud, the French plaintiffs, who design high-fashion clothing,
had obtained a default judgment for one million francs from a French court against a
Delaware corporation that maintains websites on which it posts photographs from fashion
shows and other information about fashion events. The defendant had posted photographs
of models wearing clothing of the plaintiffs design at various fashion shows in Paris, and
the complaint filed in France alleged that this violated both French copyright and unfair
competition law.
When the plaintiffs sought to enforce that judgment, the defendant argued that,
under the New York recognition statute, the French judgment should not be enforced
because the damages awarded bore no relation to actual damage sustained, because the
84

Pro Swing Inc. v. ELTA Golf Inc.; 2006 CarswellOnt 7203; 2006 SCC 52 (2006).
See Richard L. Garnett, Trademarks and the Internet: Resolution of International IP Disputes by
Unilateral Application of U.S. Laws, 30 BROOK. J. INTL L. 925, 937 (2005).
86
See 15 U.S.C. 1125(d)(2)
87
See Hilton v. Guyot, 159 U.S. 113, 163-64 (1895); see also Dreyfuss, Why Invite Conflicts, supra, at 822
(discussing enforcement practices)
85

underlying French law was inconsistent with U.S. intellectual property law, and because
enforcement of the judgment would be inconsistent with the First Amendment.
As with most states, the New York recognition statute calls for the enforcement of
foreign money judgments unless, doing so would be repugnant to the public policy of
the state. Neither the amount of damages awarded, nor the differences between French
and U.S. copyright law, satisfied this strict standard. The damage award was issued after
the defendants failure to contest the amount in France, and the notion of an award not
wholly reflecting actual damages is also found in U.S. copyright law and trademark law.
An enforcement analysis does not require a plaintiff to show that the actions in
France would have violated American law; rather, the question is whether the judgment
of the French court imposing liability under French law is repugnant to the public policy
of the State of New York (and the French law did not approach that standard). The
district court reasoned that:
Copyright and trademark law are not matters of
strong

moral

principle.

Intellectual

property

regimes are economic legislation based on policy

decisions that assign rights based on assessments of
what legal rules will produce the greatest economic
good for society as a whole. Different countries
will, at different times, reach different conclusions
as to the types of creative endeavor that should
receive the benefit of copyright protection and the
extent of that benefit, and different conclusions as
to the kinds of competitive activity that should be
encouraged or discouraged by trademark law. If the
United States has not seen fit to permit fashion
designs to be copyrighted, that does not mean that a
foreign judgment based on a contrary policy
decision is somehow repugnant to the public
policies

underlying

trademark law.

the

Copyright

Act

and

However, the court concluded that because the defendants activities fell
within the purview of the First Amendment, to enforce a judgment based upon liability
for engaging in those activities would violate the public policy of New York. In reading
the provisions of the statute to preclude the enforcement of a foreign judgment that
attached liability to conduct abroad that would have been protected by the First
Amendment in the United States, the court was acting in line with several other U.S.
courts.88
However, intellectual property judgements (especially copyright and trademark
judgments) will frequently implicate speech-like values.

Such an approach to

recognition, especially when activities forming the basis for the judgment occurred
wholly or substantially abroad, would offer a potentially large exception to enforcement
in cases where the laws of the rendering and enforcing court are different. 89 Yet, that is
precisely when enforcement obligations are of vital importance.90
Conclusion- A brief note on possible solutions for the problems:
In light of the increasing frequency of these types of disputes, to what extent do
we need to reform the principles of private international law that operate in intellectual
property cases? In this Part of the paper, I will address the basic principles that need to
be reformed. Most fundamentally, the principle of territoriality needs to be reviewed; our
ability to develop a sophisticated system would benefit from the principle being broken
down into its constituent propositions, and each proposition defended on its own terms.
Territoriality needs to be explained and defended, not simply invoked.
First, territoriality is a principle that has always received excessive doctrinal
purchase. One can adhere to the basic premises that underlie territoriality without
supporting the full range of private international law rules that are said to reflect the
principle. This divergence between the principle and its implementing devices continues

88

See Yahoo!, Inc. v. La Ligue Contre le Racisme et l'Antisemitisme, 169 F.Supp.2d 1181 (N.D.Cal.2001),
rev'd on other grounds, 379 F.3d 1120 (9th Cir.2004), revd, 433 F.3d 1199 (9th Cir.2006) (en banc);
Bachchan v. India Abroad Publ'ns Inc., 585 N.Y.S.2d 661 (Sup.Ct.1992); Telnikoff v. Matusevitch, 702
A.2d 230, 244 (Md.1997) (rejecting enforcement of English libel judgment).
89
See Mark D. Rosen, Exporting the Constitution, 53 EMORY L.J. 171 (2004).
90
See Fauntleroy v. Lum, 210 U.S. 230 (1908) (domestic state-to-state recognition under the Full Faith and
Credit Clause).

to grow, as legal systems become less nationally-confined (even if they are still largely
nationally-defined).
Second, the normative force of the principle has declined as units of social and
commercial organization 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 (e.g., diversity of legal regimes, tailoring of
intellectual property to local needs, protecting rights on an international basis) that the
public international intellectual property system sought to further through its
promulgation of the principle of territoriality must still be pursued, but can now best be
achieved by reconfiguring the principle.91 A few parameters are as follows:

Territoriality as a disabling concept: The principle of territoriality

will rarely be interpreted in this restrictive fashion, to be sure, the
principle was used historically to deny authority to third party
states to adjudicate or to prescribe.92 But giving territoriality this
reading would reduce its application to cases where there was a
false conflict because only one state had an interest in the
application of its law. And, in the present environment of
international exploitation, it would be far too disabling of
jurisdiction. Today, a single state will rarely have an exclusive
authority to prescribe. Thus, some less demanding notion of
territoriality must be required to support a states prescriptive
interest.

Territoriality as an Enabling Concept: Having seen the disabling

effects of reading territoriality strictly, one could adopt a much
more liberal approach: any conduct or effect within the territory of
a state is sufficient to sustain adjudicatory or prescriptive
jurisdiction. However, here it is the excess of authority in todays

91

Cf. Graeme B. Dinwoodie, Commitments to Territoriality in International Copyright Scholarship, Report

of the Neuchtel Study Session of ALAI 74 (2002) (characterizing different approaches to territoriality in
copyright law as regressive or nationalistic, reformed, pragmatic and internationalist).
92
Cf. Andrew T. Guzman, Choice of Law: New Foundations, 90 GEO L.J. 883, 909-12 (2002) (arguing that
where countries cannot (or do not) apply their laws extraterritorially there will be under-regulation).

world, rather than its shared nature, that causes problems.

Information products that are exploited internationally are likely
to touch upon the territory of many nations; particularly in the
online context, where activity is ubiquitous, this is too generous a
notion of territoriality. In effect, it will implement a philosophy of
extra-territoriality rather than territoriality, leading to overregulation (and the imposition of potentially inconsistent
obligations).93 Or stated in less conclusive terms, this approach is
too enabling of jurisdiction.

Between Territoriality and Extra-Territoriality: A Philosophy of

Restraint: The key to adapting to the realities of excess shared
authority lies in restraint: the existence of prescriptive authority
has to be distinguished from the exercise of that authority. The
purest act of sovereignty is to foreswear from acting in
circumstances where it is (descriptively and prescriptively)
possible to do so. Territorial connections that are sufficient to
sustain a nominal interest should not support the exercise of
jurisdiction that effectively prescribes globally. In this climate, the
important judicial tools become doctrines of abstention and
systems of equilibrium rather than binary tests of the existence of
jurisdiction.94

A Singular Law, instead of Territoriality: An implicit practical

problem with adhering too strictly to the territorial model is that it
results in the need to apply a multiplicity of laws to a multiterritorial dispute. Often the selection of a single law is seen as a
rejection of the demands of full territoriality.95 However, even in
the face of territoriality one can conform to the basic principle of
territoriality and effectuate the objective of applying a single law

93

See Dinwoodie, New Copyright Order, supra note 50, at 572 (noting problem of too many loci delicti):
Guzman, supra note 132, at 906-08.
94
Cf. McBee v. Delica Co. 417 F.3d 107 (1st Cir. 2005)
95
Austin, Valuing Self-Determination, supra note 4, at 1157 (critique of root copy theory).

to a worldwide dispute by designating a single point as the

relevant place. That is, the localization sub-rule allows us to get
the practical benefits of a single law without nominally departing
from territoriality.96 Indeed, where courts and scholars are
desirous of achieving a single applicable law without appearing to
violate the principle of territoriality, that consideration may
inform the choice of law rule that is selected. 97 For example, in
copyright cases, the lex originis is often supported as the choice of
law rule for initial ownership because it produces a single owner
on a worldwide basis. Use of the lex loci protectionis, on the other
hand, to determine infringement will tend to result in the
application of numerous laws to a multi-territorial dispute.
In the present era, where the interest forms the crux of most activities, plenty of
issues come to fore, leaving scholars of law world over, to decide solutions that would be
sub-servient to the interests of society at large. While many of these issues might be
solved by establishing clear rules on burden of proof, plenty other require more in-depth
attention. The existent systems are nugatory and insufficient. Sound substantive
principles are critical to this, and efficient procedural mechanisms are equally essential.

96

Dinwoodie, The Role of International Norms, at 203

Andreas Reindl, Choosing Law in Cyberspace: Copyright Conflicts on Global Networks, 19 MICH J.
INTL L. 799 (1998); RESTATEMENT 6 (ease of application).
97