Recognition and Enforcement of Foreign Judgments in Intellectual Property: a Comparison for the International Law Association

AuthorBenedetta Ubertazzi
PositionMunich, Dr. iur. (Milan and Valladolid), LL.M. (Valladolid), Full Tenured Assistant
Pages306-349
2012
Benedetta Ubertazzi
306
3
Recognition and Enforcement of Foreign
Judgments in Intellectual Property
a Comparison for the International Law Association
by Benedetta Ubertazzi, Munich, Dr. iur. (Milan and Valladolid), LL.M. (Valladolid), Full Tenured Assistant
Professor of International Law at the University of Macerata (Italy), Fellow, Alexander von Humboldt Foundation
Research Fellowship for Experienced Researchers (Germany)
© 2012 Benedetta Uber tazzi
Everybody may disseminate this ar ticle by electroni c means and make it available for downlo ad under the terms and
conditions of the Digita l Peer Publishing Licence (DPPL). A copy of the license text may be obtaine d at http://nbn-resolving.
de/urn:nbn:de:0009-dppl-v3-en8 .
Recommended citation: Bened etta Ubertazzi, Recog nition and Enforcement of Foreign Judgments in Intellectua l Property: a
Comparison for the Internationa l Law Association, 3 (2012) JIPITEC, 3, 30 6.
Keywords: Recognition, enforcement, judgments, provisional measures, intellectual property
which was hosted at the Faculty of Law of the Uni-
versity of Lisbon in March 16-17, 2012. The compar-
ison concerns the rules on recognition and enforce-
ment of judgments posed by four sets of academic
principles.
Abstract: The following comparison was writ-
ten for the first meeting of the International Law As-
sociation’s newly established (2010) Committee on
Intellectual Property and Private International Law
(Chair: Professor Toshiyuki Kono, Kyushu University;
Co-Rapporteurs: Professors Pedro de Miguel Asensio,
Madrid Complutense University, and Axel Metzger,
Hannover University) (hereinafter: ILA Committee),
A. Introduction
1 The following pages compare the rules on recogni-
tion and enforcement of judgments posed by four
sets of academic principles, namely the American
Law Institute Principles Governing Jurisdiction,
Choice of Law, and Judgments in Transnational Dis-
putes, adopted on 14 May 2007 (will be referred to

Laws in Intellectual Property, prepared by the Eu-
-
tellectual Property (CLIP),” published on 31 August
2011 (will be referred to as the CLIP Principles); the
“Transparency of Japanese Law Project, Transpar-
ency Proposal on Jurisdiction, Choice of Law, Rec-
ognition and Enforcement of Foreign Judgments in
 -
ferred to as the Transparency Proposal); the “Prin-
A. Introduction
B. Scope of Application

D. Finality of judgments
E. Effects of judgments
F. Postponing the recognition or enforcement of fo-

G. Severability

I. Validity and registration
J. Finding of facts
K. Jurisdiction rules protecting consumers or
employees
L. Provisional and protective measures
M. Public policy
N. Non-compensatory damages
O. Other grounds for non-recognition of foreign
judgments
P. Exclusion of substantive review
Q. General principles related to the procedure
R. Recognition and enforcement procedures
S. Settlements
T. Conclusions
:
Recognition and Enforcement of Foreign Judgments in Intellectual Property
2012
307
3
ciples of Private International Law on Intellectual
Property Rights, Joint Proposal Drafted by Members
of the Private International Law Association of Ko-
rea and Japan (Joint University Global COE Project),”
of 14 October 2010 (will be referred to as the Joint
Korean and Japanese Proposal). As the comparison
demonstrates, in practice, all four sets of principles
lead to similar results allowing for recognition and
   

as of provisional measures. The similarity among the
principles at stake is grounded on the great need,
particularly in connection with IPRs, for the effec-
tive protection of a rights holder from infringement;
and is a natural consequence of the favor shown to-
wards the consolidation of claims provided for by all
four sets of principles in question.
B. Scope of Application
1. Differences
2 Pursuant to Section 401.1, the ALI Principles’ provi-
sions on recognition and enforcement apply only to
foreign judgments rendered by courts that applied
the Principles. By contrast, if the rendering court did
not apply the Principles, then the enforcement court
should determine whether to recognize or enforce
the judgment pursuant to its domestic rules on rec-
ognition and enforcement of foreign judgments.
1
All
of the other sets of Principles here analyzed, how-
ever, provide that their provisions on recognition
and enforcement apply to foreign judgments ren-
dered by any courts, whether they applied the set of
principles at stake or not. Additionally, reciprocity is
not a precondition for recognition and enforcement
under the ALI Principles, CLIP Principles and Joint
Korean and Japanese Proposal, whereas it is a pre-
condition according to the Transparency Proposal
(Article 402 (vi)).2 The Preliminary Draft Convention
on Jurisdiction and Foreign Judgments in Civil and
Commercial Matters of 30 October 1999 and then of
February 2001 (hereinafter, Hague Judgment Con-
vention or Hague Draft Convention) does have an
element of reciprocity, being a draft for an interna-
tional convention, as is outlined below in paragraph
B.IV. Finally, only the CLIP Principles explicitly pose
the favor recognitionis principle.3
2. Rationale
3 The ALI Principles limit the application of its reco-
gnition and enforcement rules to judgments that
were rendered according to the ALI Principles (§
401). Thus, according to the comments to this pro-
vision it “creates [the] condition[…] on enforcement
and Recognition […] that the dispute was declared
by the rendering court as within the scope of the
Principles.”
4
“If the rendering court did not apply
the ALI Principles, the enforcement court shall de-
termine whether to recognize or enforce the judg-
ment pursuant to its domestic rules on recognition
and enforcement (subsection (l)(b)).”5
4 By contrast, the recognition and enforcement rules
of the CLIP Principles, the Transparency Proposal,
and the Joint Korean and Japanese Proposal are not
limited to judgments that applied their respective
rules. Not limiting the applicability of the proposal
to “situations in which the rendering court has ap-

the one adopted under §401(1) ALI Principles. This

only for international or treaty legislators but also
for national legislators when drafting their own na-
tional systems to be applied to decisions adopted in
any country in the world.”6
5
Additionally, the CLIP Principles and the Joint Ko-
rean and Japanese Proposal do not require re-
ciprocity as a precondition for recognition and en-
forcement. Thus, a judgment otherwise entitled to
recognition will not be denied recognition simply
because the rendering country might not recog-
nize the judgment of the country where recogni-
tion is sought if the circumstances were reversed.
The approach of the CLIP Principles “is based on the
idea that public or state interests are affected only
indirectly by the recognition of judgments that re-
solve civil controversies between private parties.”7
As such, “[t]he protection of public interests does
not justify recourse to reciprocity, since other alter-
natives more respectful of the rights of the private
parties involved and the policy goals behind recog-
nition provide the necessary safeguards, especially
the use of public policy as a ground for non-recog-
nition.”8 In contrast, reciprocity is a precondition
for recognition and enforcement under the Trans-
parency Proposal (Article 402 (vi)). With respect to
this Proposal the presence of the reciprocity require-

Japanese system, namely Article 118 of the Code of
Civil Procedure. However, this rule has been critici-
sed, both in the context of the Japanese system and
in the Transparency Proposal, as will be recalled in
the Discussion section below. Notwithstanding this
criticism, the Transparency Proposal keeps the re-
ciprocity requirement for the following reason, well
expressed by the commentary’s exact wording: “due
to considerable differences of legal policies on IP
rights and unfair competition, there are many va-
rieties concerning the scope, degree and method of
the protection of rights. Under these circumstances,
it is still unclear if for only Japan to abandon the re-
ciprocity requirement would create more protection
of IP rights or fair competition. Thus, the Transpa-
rency Proposal still maintains the reciprocity requi-
rement to recognize and enforce foreign judgments
2012
Benedetta Ubertazzi
308
3
relating to IP rights or unfair competition. However,
the standards for determining the reciprocity should
be relaxed as explained below. (2) Standards for Re-
ciprocity. The requirement of reciprocity would be
-
ment of the same kind relating to IP or unfair com-
petition would be recognized or enforced under sub-
stantially the same conditions as those prescribed in
the Transparency Proposal. This is based on acade-
mic opinions and judgments so far, which have ge-
nerously recognized the existence of reciprocity.”9
6
With regard to reciprocity, the ALI provisions on re-
cognition and enforcement are drafted as an instru-
ment to be applied only to judgments that followed
the principles. Hence there is no need for recipro-
city as a condition for recognition and enforcement
of judgments.10
3. International Context
7 Notwithstanding the fact that the existing and ne-
gotiated universal international instruments on IP,
especially the ones concluded and negotiated in the
past two decades among which the TRIPs agree-
ment and the ACTA, strongly emphasise the need
to effectively enforce intellectual property rights
(IPRs), and albeit enforcement of IPRs across na-
tional borders is crucial for their effective protec-
tion,
11
those international instruments focus their
emphasis on purely domestic issues,12 while at the
same time “ignore” transnational disputes,13 fail to
address problems of cross-border enforcement of
IPRs through civil litigations, and do not deal with
cross-border recognition and enforcement of judg-
ments. Yet, international conventions on recogni-
tion and enforcement of judgments concerning civil
and commercial matters in general can have an im-
pact on IPRs judgments. Among those conventions
at the regional level in the EU/EFTA frame worth re
-
membering are the 1968 Brussels Convention, now
Brussels I Regulation (Regulation 44/2001), and the
Lugano Convention (hereinafter Brussels system),
-
sels system’s recognition and enforcement rules ap-
ply only to judgments given by a court of another
Member State, even though the recasting of this Reg-
ulation will also address third States’ judgments,14
mainly in line with the European Group of Private
International Law Proposed Amendment of Regula-
tion 44/2001 in Order to Apply it to External Situa-
tions (Bergen, 21 September 2008, Padua 20 Septem-
ber 2009, Copenhagen, 19 September 2010),15 Thus,
for the time being the Brussels system is subject to
  
aim at creating a special regime that favors recog-
nition of judgments.
8
In contrast, national rules do not pose reciprocity as
a precondition for recognition and enforcement of
foreign judgments. See, for instance, the PIL Swiss
law as well as the Italian law on the matter. Also, the
majority of U.S. courts do not impose a reciprocity
requirement for the recognition and enforcement
of foreign judgments.16
in U.S. legislation (e.g., the Uniform Foreign Mon-
ey-Judgments Recognition Act) as well as in Amer-
ican treatises (e.g., Restatement (Third) of Foreign
Relations Law).17 While some national legal systems
do include a reciprocity requirement, such as in
-
cant role in practice and the generally held view is
that the requirement should be abolished.18
4. Discussion
9 The extension of the provisions on recognition and
enforcement of foreign judgments of the CLIP Prin-
ciples, the Transparency Proposal and the Joint Ko-
rean and Japanese Proposal to situations in which
the rendering court has not applied the Principles
corresponds to their aim to be model rules. In fact,
“contrary to international conventions, model rules
made by national or private bodies in the area of rec-
ognition and enforcement of judgments are not ex-
pected to be applied as such by courts in typical sit-
uations. Indeed, Part 4 of the CLIP Principles may
in practice mainly be useful as a reference to inter-
pret or supplement international and domestic law
and as a model for national and international legisla-
tors, in line with the possible uses of the CLIP Princi-
ples as stated in the Preamble. Therefore, the provi-
sions of Part 4 of the CLIP Principles are not drafted
to be applicable only to situations in which the ren-
dering court has applied the Principles.”19 In con-
trast, notwithstanding the fact that this aim is also
proper to the rules of the ALI Principles, their lim-
ited application to judgments rendered by courts of
countries adopting the Principles seems to be sub-
ject to criticism.
10 Reciprocity should not be a precondition for recog-
nition and enforcement, as it is under the Transpar-
ency Proposal, since other alternatives already pro-
vide the necessary safeguards for the protection of
public interests involved, especially the use of pub-
lic policy as a ground for non-recognition.
20
Also, the
questionable aspects of reciprocity are highlighted
by the commentary on the Transparency Proposal
according to which the requirement of reciprocity
should be deleted from Article 118 of the Code of
Civil Procedure21 as well as from the Transparency
Proposal,22
that the lack of efforts of the concerned government
to establish reciprocity would bring about burdens
on private persons as users of the system of the rec-
ognition and enforcement of foreign judgments.” 23
Second, “it takes too much time and costs to gather
and translate foreign legal materials for examining
the requirement of reciprocity.”24 Third, only a few

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