International Jurisdiction in Intellectural Property Disputes

• Author: Paulius Jurcys
• Position: LL.M., LL.D., Kyushu University, Faculty of Law
• Pages: 174-226

2012

Paulius Jurčys

174

3

International Jurisdiction in

Intellectual Property Disputes

CLIP, ALI Principles and other Legislative Proposals in a Com-

parative Perspective

by Paulius Jurčys, LL.M., LL.D., Kyushu University, Faculty of Law

© 2012 Paulius Jurčys

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: Paulius Jurč ys, International Jurisdiction in Intellectual Pro perty Disputes: CLIP, ALI Principles and

other Legislative Propos als in a Comparative Perspective, 3 (2 012) JIPITEC 3, 174.

Keywords: Jurisdiction, ALI Principles, CLIP Principles, intellectual property, private international law, Hague

judgments convention, Transparency Principles, Roche, GAT v Luk, Spider in the web, in personam

jurisdiction, forum non conveniens, Lucasfilm

a vision to facilitate cooperation between the courts

and thus make the adjudication more efficient. How-

ever, the actual practices of national courts remain

different; moreover, the approaches adopted in the

legislative proposals also vary. This paper provides

for a comparative study of the abovementioned leg-

islative proposals insofar as matters concerning

the competence of courts to adjudicate cross-bor-

der IP disputes is concerned. In particular, this paper

touches upon the following matters: personal/in per-

sonam jurisdiction, jurisdiction to grant provisional or

protective measures, jurisdiction in IP-related con-

tract disputes, choice of court agreements, multiple

defendants and coordination of parallel proceedings.

Abstract: The recent controversy between two

tech giants, Apple and Samsung, illustrates the prac-

tical limitations of multi-state IP litigation: the terri-

torial nature of IP rights virtually means that most of

the complex IP disputes have to be adjudicated be-

fore the courts of every state for which protection

is sought. In order to streamline the adjudication of

multi-state disputes, a number of legislative propos-

als have been prepared (including the ALI Principles,

CLIP Principles, Japanese Transparency Proposal,

Waseda Proposal and the Korean KOPILA Principles).

These proposals contain detailed provisions concern-

ing matters of international jurisdiction, choice of law

and recognition and enforcement in IP cases. More-

over, these legislativeproposals in one way or an-

other were drafted with

A. Introductory Remarks

B. General Grounds of JurisdictionC. Jurisdiction over

Contractual Disputes

D. Jurisdiction to Order Provisional and Protective

Measures

E. Choice of Court Agreements, Appearance of the De-

fendant

F. Multiple Defendants

G. Coordination of Proceedings: Lis Pendens and

Beyond

H. Concluding Remarks

International Jurisdiction in Intellectual Property Disputes

2012

175

3

A. Introductory Remarks

1 Competition in creative and technology industries

goes beyond mere innovation. In order to gain, pro-

  

various strategies (e.g. technology protection meas

-

ures or patent thickets). One of the elements of this

competition in the innovative industries is litiga-

tion: IP right holders sue alleged infringers seeking

injunctions and compensation for damages and, on

their behalf, alleged infringers may seek declara-

tions for non-liability. In an era when business mod-

els have transformed to the global arena, the territo-



-

troversy between two tech giants, Apple and Sam-

sung, clearly illustrates the problem: a number of

separate suits were brought before courts of differ-

ent states (US, Australia, Japan, Korea and several

European countries).

2

This paper deals with the latter aspect of the transna-

tional enforcement of IP rights: namely, enforcement

of IP rights before the national courts. A number of

problems related to the enforcement of multi-terri-

torial IP rights arise before the courts: Which court

should hear the case? What is the scope of a court’s

competence in adjudicating such multi-territorial

IP dispute? If a court’s jurisdiction can be asserted,

which law should be applied to the dispute? A num-

ber of legislative proposals were drafted in various

continents with an intention to address these prob-

lems related to the transnational enforcement of IP

    

the American Law Institute (the so-called ALI Prin-

ciples);

1

these were subsequently followed by the Eu-

ropean CLIP Principles,2 the Japanese Transparency3

and the Waseda Proposals as well as the Korean KO-

PILA Principles. All of these aim to propose certain

solutions for streamlining the adjudication of mul-

ti-territorial IP disputes by establishing rules on in-

ternational jurisdiction, choice of law and the rec-

ognition and enforcement of foreign judgments in

IP cases.

3 This paper was prepared for the International Law

Association (‘ILA’) Committee on ‘Intellectual Prop-

erty and Private International Law’ meeting, which

took place in Lisbon on 16-17 March 2012. The Com-

mittee was created in November 2010 and aims to

analyse the current state of the legal framework

concerning the protection of IP rights in the interna-

tional sphere. The work of the Committee is based on

the recent comparative studies as well as the above-

mentioned legislative proposals concerning the con-

-

tional law. One of the objectives of the Committee

is to conduct a comprehensive study of the existing

regulatory proposals and prepare a set of guidelines

which could serve as a source of reference for vari-

ous international as well as national regulatory bod-

ies (e.g. Hague Conference on Private International

law, regional or national lawmakers). The goal of the

-

proach towards the exercise of international juris-

diction over disputes with a foreign element; ac-

cordingly, this paper is one of the studies intended

to set the groundwork for future deliberations.

4 This paper focuses only on matters related to gen-

eral aspects of international jurisdiction in IP cases.

There are many questions related to the exercise

of court jurisdiction: jurisdiction over in personam;

jurisdiction over the merits; the relationship be-

tween in personam and jurisdiction over the merits

(subject-matter jurisdiction); the court’s authority

to hear disputes in situations where the defend-

ant is not resident in the forum state; coordination

of parallel proceedings; and jurisdiction to order

(cross-border) provisional and protective measures.

(This paper does not deal with two issues: namely, ju-

risdiction in IP infringement cases and subject-mat-

ter/exclusive jurisdiction which are analysed in the

article prepared by B. Ubertazzi in this volume.) In

court proceedings, jurisdictional issues have to be

 -

serted, only then do the issues related to the appli-

cable law come into play. In any case, it should be

emphasised that both issues – international jurisdic-

tion and the choice of applicable law – are closely in-

tertwined; or, to put it differently, the applicable law

largely depends on which state’s court hears the case

and on which jurisdictional ground the jurisdiction

is exercised.

5

It should also be emphasised that current court prac-

tice and existing legislative frameworks still remain

far behind the solutions proposed in the legislative

proposals dealing with cross-border IP matters (the

ALI Principles, CLIP Principles, Transparency Prin-

ciples, or Waseda Principles). At the same time, it is

also true that the legislative proposals were drafted

-

lar jurisdictions.

6

The solution to various problems related to inter-

national jurisdiction depends to a large degree on

 

grounds of jurisdiction (in personam jurisdiction) as

well as doctrines which allow the courts to exercise

their discretion in ascertaining jurisdiction (namely,

forum non conveniens

and the ‘special circumstances’ test); and, secondly,

the relationship between general grounds of juris-

diction and other bases of jurisdiction.

7

The need to create a legal framework unifying is-

sues related to international jurisdiction has long

been recognized. It is argued that many problems

which persisted during the negotiations to draft a

global Judgments Convention at the Hague Confer-

2012

Paulius Jurčys

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3

    

Hence, the Hague Conference for Private Interna-

tional Law is prepared to reopen the drafting process

of the Convention.4 It has been argued elsewhere

that work done at the Hague Conference provides a

solid basis for discussing issues related to interna-

tional IP jurisdiction matters.5

B. General Grounds of Jurisdiction:

In Personam Jurisdiction,

Defendant’s Domicile and

Exclusionary Mechanisms

2001 Hague Draft of the Judgments Convention;6 Articles

2:101 and 2:2601 CLIP Principles; Section 201 ALI; Articles

103 and 107 Transparency Principles; Articles 201, 202, 211

and 212 Waseda Principles; Articles 2, 8, 9 KOPILA

8 The issue of ascertaining jurisdiction over the dis-

pute is one of the most complex ones. In countries

with developed economic systems, the court practice

has evolved over decades, if not centuries. Hence,

existing jurisdiction rules and practices have to be

viewed in the light of domestic cultural, historical,

legal and economic contexts. In this regard, some

important comparative studies have already been

conducted by distinguished scholars.

7

The discus-

sion in the following section will be more compara-

tive as regards the legislative proposals, and rather

more descriptive in depicting the existing legal sys-

tems in different states.

I. Differences

1. General Grounds of Jurisdiction:

Domicile or Habitual Residence?

a) Natural Persons

9 As a starting point, a comparison of the four legisla-

tive proposals reveals that the basic connecting fac-

tor for determining jurisdiction in personam differs.

The 2001 Hague Draft, ALI, CLIP and Waseda Princi-

ples adopt the ‘residence’ as a general ground of ju-

risdiction over the defendant. In addition to the ‘ha-

bitual residence’ (Art. 9), the Korean Principles also

require a court to establish a ‘substantial connec-

tion’ between the forum state and the party or the

case (Art. 8). However, the Transparency Principles

refer to the ‘domicile’ of the defendant.

10 It should be noted that there is another slight dif-

ference in the terminology. Namely, some legislative

proposals refer to the ‘habitual residence’ of the de-

fendant (Art. 2:201 CLIP and Art. 201 Waseda), while

the ALI Principles simply refer to the ‘residence’ of

the defendant (Art. 201(1)). Whether the terminolog-

ical differences could actually lead to different prac-

tical outcomes is discussed below.8 In this regard it

should be noted that the 2001 Hague Draft as well as

the Korean Principles contain a special rule that re-

quires establishing the existence of ‘substantial con-

nection between the parties or the dispute’ and the

forum state (Art. 18(1) of the 2001 Hague Draft and

Art. 8(1) KOPILA).

b) Legal Persons

11

The ALI and the CLIP Principles establish essentially

 

persons. The residence of a natural person is consid-

ered to be the state in which the person is habitually

 -

sonal connections. Besides, the notion of ‘residence’



it is in any state in which (a) it has a statutory seat;

(b) it is incorporated or formed; (c) its central ad-

ministration is located; or (d) it maintains its prin-

cipal place of business (S 201(3) of the ALI Principles

and Arts. 2:601(2) and 2:601(3) of the CLIP Princi-

ples). In addition, the CLIP Principles specify that

the ‘habitual residence of a natural person acting

in the course of a business activity shall, for actions

related to that activity, also be the principal place

of business’. From the literal wording of the provi-

sion, it appears that the Waseda and Korean Princi-

  

a legal person.9

12

As mentioned above, the Transparency Principles

establish ‘domicile’ as a connecting factor and state

that in cases ‘where the defendant is a corporation,

association, or foundation, the courts of Japan shall

also have international jurisdiction when the de-



2. Branches, Agencies or Business Offices

13 There are also differences with regard to jurisdiction

-

risdiction rules dealing with this issue are provided

    -





10 Even though the termi-

nology of the provisions differs slightly, the legisla-

tive proposals essentially adopt a restrictive approach

and allow a court to assume territorially limited ju-

risdiction over branch, agency or other form of busi-



could be asserted only over claims related to the ac-

tivities of the branch in the forum state.