judicial assistance

• Pages: 32-35

32 Volume 18, April–June 2012 international law update

© 2012 Transnational Law Associates, LLC. All rights reserved. ISSN 1089-5450, ISSN 1943-1287 (on-line) | www.internationallawupdate.com

then reproduce the property abroad with impunity.

Such a result would jeopardize intellectual property

rights and subvert Congress’s goals as engrafted on

to the Copyright Act. But lest the doctrine lead to a

windfall for plaintis and force a defendant to face

liability for stale claims, plaintis may collect only

those damages ‘suered during the statutory period

for bringing claims, regardless of where they may

have been incurred,’ L.A. News, 149 F.3d at 992.”

“Applying the predicate-act doctrine to this

case, we conclude that Alpha has presented a valid

claim under the Copyright Act. Accordingly, we

sustain the jury’s nding of liability on that count.”

“Distilling applicable case law, we nd that a

plainti is required to show a domestic violation of

the Copyright Act and damages owing from foreign

exploitation of that infringing act to successfully

invoke the predicate-act doctrine. Alpha has shown

both. Appellants concede on appeal that Alpha has

established a domestic violation of the Copyright

Act. While in the United States, Vance and Al

Dobowi unlawfully converted Alpha’s blueprints

and reproduced them absent authorization. ese

acts constitute infringing conduct under the

Copyright Act. See Update Art, 843 F.2d at 73

(concluding there would be an actionable violation

if defendant illegally reproduced image while in

the United States). And Alpha has demonstrated

damages owing from extraterritorial exploitation

of this infringing conduct. Al Dobowi and Linglong

used the converted blueprints to produce mining

tires almost identical to those of Alpha. ey then

sold these tires to former customers of Alpha,

causing Alpha substantial damage. See Sheldon, 106

F.2d at 52 (nding damages owing from foreign

exploitation of infringing act where defendant

converted negatives of motion picture in United

States and exhibited the lm abroad).”

“Eectively granting the validity of the above

analysis, Appellants contend that the predicate-act

doctrine may not be employed when recovery of

damages from a domestic violation of the Copyright

Act is barred by the three-year statute of limitations.

Because the statute of limitations bars Alpha from

collecting damages for activities within the United

States, Appellants assert that the jury’s Copyright

Act verdict may not stand.”

“We are not persuaded by Appellants’ creative

interpretation of applicable case law. It may be true

that, in each of the cases in which a court has invoked

the predicate-act doctrine, the plainti would have

been eligible to receive a damages award based solely

on a domestic infringement. But courts ascribed

no relevance to this observation, never discussing

the statute of limitations and its eect on the

predicate-act doctrine. Quite the opposite, at least

the Ninth Circuit anticipated that a plainti may

collect damages from extraterritorial conduct, even

if the statute of limitations bars an award based on

domestic infringement. L.A. News, 149 F.3d at 992

(‘Defendants’ argument that adoption of the Second

Circuit rule would permit plaintis to circumvent

the statute of limitation by recovering damages for

distribution abroad occurring many years after the

infringing act in the United States is without merit.

An action must be ‘commenced within three years

after the claim accrued.’ . . . A plainti’s right to

damages is limited to those suered during the

statutory period for bringing claims, regardless of

where they may have been incurred.’ (emphasis

added)). at Alpha may not collect damages from

Appellants’ domestic activities is thus of no moment

to the analysis, as the district court accurately

instructed the jury.” [Slip op. 19-24]

citation:Tire Engineering and Distribution, LLC v.

Shandong Linglong Rubber Company, Ltd., No. 10-

2271 (4th Cir. 2012).

judiciAl AssistAnce

In dispute over judicial assistance

under 28 U.S.C. Section 1782, Eleventh

Circuit finds that, as matter of first

impression, an Arbitration Panel of

Chamber of Commerce in Ecuador is a

“foreign tribunal” for purposes of the

statute

e following case involves a billing dispute

following the shipping of cell phones and accessories.

Consorcio Ecuatoriano de Telecomunicaciones

S.A. (“CONECEL”) contracted with Jet Air

Service Ecuador S.A. (“JASE”) for the shipment of

CONECEL’s cell phones and related accessories.

Even though the companies had worked together

for at least a decade, the relationship fell apart in

2008 when CONECEL allegedly discovered that

JASE had overbilled it by millions of dollars.