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Conflict of Laws for Intellectual Property in Cyberspace

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Conflict of Laws for Intellectual Property in Cyberspace 1 Conflict of Laws for Intellectual Property in Cyberspace François Dessemontet* INTRODUCTION * Professor, Universities of Lausanne and Fribourg. 2 The rules of conflict of laws are aimed at resolving conflicts between territorial laws, otherwise known as municipal laws. Although there are no separate national territories in cyberspace,1 territoriality remains in the 1 See Cass. com., March 7, 2000, D.2000 (No 20), 251-252; CA Paris, March 1, 2000, D.2000 (No 20), 251-252. For French private international law, see Chambre Nationale des Commissaires-priseurs c/ Nart SAS & Nart Inc., TGI Paris, May 3, 2000, available at http://www.legalis.net; UEJF & LICRA c/ Yahoo ! Inc & Yahoo France, Ordonnances de référé, TGI Paris, May 22, 2000 and November 20, 2000. See also M. R. Burnstein, Conflicts on the Net: Choice of Law in Transnational Cyberspace, 29 VAND. J. TRANSNAT’L L. 82 (1996); P.E. Geller, International Intellectual Property, Conflicts of Laws and Internet Remedies, EIPR 2000.125; L. LESSIG, CODE AND OTHER LAWS OF CYBERSPACE 42-60 (Cambridge 1999). 3 organization of the courts (with a few exceptions, such as the Panels adjudicating domain name disputes under the Internet Corporation for Assigned Names and Numbers (“ICANN”) Policy or the World Trade Organization (“WTO”) Dispute Resolution Body).2 Therefore, in most areas of intellectual property, conflict of jurisdiction remains a significant issue. This has prompted efforts towards the creation of a single patent court for all of Europe. However, beyond jurisdictional questions, the harmonization of intellectual property law is not a current endeavor. The Agreement on Trade- Related Aspects of Intellectual Property Rights (“TRIPS Agreement”)3 embodies only a minimum of 2 With regards to ICANN, see the Uniform Domain Name Dispute Resolution Policy, available at http://www.icann.org/udrp/udrp-policy-24oct99.htm; the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, available at http://www.arbiter.wipo.int/domains/rules/supplemental.html. With regards to the WTO, see the Understanding on Rules and Procedures Governing the Settlement of Disputes, available at http://www.wto.org/english/docs_e/legal_e/28-dsu.pdf. 3 The TRIPS Agreement is Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization, signed on April 15, 1994. 4 consensus and the World Intellectual Property Organization (“WIPO”) Treaties of 19964 only regulate copyright and neighboring rights. Many national peculiarities remain in trademark and trade name law, design law, patent law, licensing law, unfair competition law, trade secrets law and in the area of television and publicity rights, to name only some areas of paramount importance on the internet. It is therefore time, in our opinion, for a restatement of the rules of conflicts in intellectual property law. In Europe, the Convention on the Law Applicable to Extra- Contractual Obligations ("Rome II") could have spurred on the process of codification, but the opportunity was missed.5 It is therefore up to 4 The World Intellectual Property Organization (WIPO) Copyright Treaty and Performances and Phonograms Treaty, December 20, 1996. 5 It should be noted that the preparatory works for the Convention of Rome I (1980) included a thorough study by PROF. E. ULMER, INTELLECTUAL PROPERTY 5 another standing body, such as the Hague Conference on Private International Law, to take up that task. The harmonization of the rules of conflict of laws is necessary because, as set out in greater detail hereafter, the present network of international conventions does not provide a complete set of tools for resolving such conflicts. The second part of this article is devoted to the private international law of the internet in the field of intellectual property. I. INTERNATIONAL CONVENTIONS AND TERRITORIALITY A. Scope of International Conventions on Intellectual Property RIGHTS AND THE CONFLICT OF LAWS: A STUDY CARRIED OUT FOR THE COMMISSION OF THE EUROPEAN COMMUNITIES (EUR-OP Office For Publications 1978), at 103-112. Nevertheless, Rome I only regulates contractual obligations. Although Rome I is applicable to licensing agreements, including those on the internet, nothing was said on intellectual property in the final text. 6 1) Areas Regulated by International Conventions The existing treaties regulate nine types of exclusive rights: patents, trademarks and geographic denominations, trade names, designs and models, semi-conductor chips, copyright, neighboring rights, plant variety and trade secrets.6 In addition, under the Paris Convention for the Protection of Industrial Property, Member States are required to ensure effective protection against unfair competition.7 2) Minimum Rights The multilateral Conventions provide a minimum level of protection to intellectual property right holders. This minimum protection may be claimed in all Member States regardless of national legislation. 6 Art. 39 of the TRIPS Agreement. 7 Paris Convention for the Protection of Industrial Property, 1883, revised in Stockholm 1967. See art. 10 bis. 7 3) National Treatment Nationals of other Member States, as well as expatriates and refugees, must not be subjected to discrimination. Therefore, any intellectual property right holder who is entitled to claim the benefit of the Convention will enjoy, in all Member States, the same protection as a national of those States. This equal protection of nationals and foreigners, combined with the minimum rights, suppresses most conflicts of law. However, when a national law deviates from international standards, issues of private international law arise. Although this deviation is justiciable before the WTO Dispute Resolution Body under the TRIPS Agreement, there are no other international mechanisms that ensure that the legislation of Member States respects the minimum rights set out in the international instruments. The acceleration of technical progress has elicited various responses from 8 national legislatures. These conflicts of laws are more frequent now, mainly because the major conventions have not been revised in the last three decades. The question of whether the system of international conventions provides a set of rules for resolving conflicts of law will be examined in light of the Berne Convention.8 However, the other main intellectual property treaties have the same bearing on international law. Article 5 (2) of the Berne Convention Article 5 (2) of the Berne Convention provides for the independence of the rights conferred upon 8 Berne Convention for the Protection of Literary and Artistic Works (1886). The Convention, concluded in 1886, was revised in Paris in 1896 and in Berlin in 1908, completed in Berne in 1914, revised in Rome in 1928, in Brussels in 1948, in Stockholm in 1967 and in Paris in 1971. It was again amended in 1979. 9 authors by the legislation of each country.9 A first reading of this provision might lead one to believe that the Convention states a rule of conflict. However, closer reading reveals that Article 5(2) only states that foreigners may not be discriminated against on the basis of technicalities of their national law. The "independence" of national copyright laws means that no deprivation of intellectual property rights by domestic legislation will be recognized in other Member States.10 It also means that there can be no centralized attack against the validity of copyrights for a given work or subject 9 "Consequently, apart from the provision of this Convention, the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed by the laws of the country where protection is claimed." 10 See S.M. STEWART, INTERNATIONAL COPYRIGHT AND NEIGHBORING RIGHTS 38-39, n° 3.17 (2d ed. 1993). For trade mark law, see, for example, ATF 91 II 117; ATF 82 I 196; ATF 83 II 312 and ATF 312 I 148. 10 matter.11 Furthermore, contrary to the 19th century12 concept, no reciprocity requirements can be imposed on foreigners seeking the protection of the local courts. However, even the Berne Convention could not eliminate all formal reciprocity requirements in certain disputed areas, such as the duration of a copyright,13the "droit de suite" (right to an interest in resales)14or the protection of applied arts.15 Article 5 (2) of the Berne Convention is a rule on the treatment of foreigners, rather than a rule on conflicts of law. However, the Berne Convention, unlike the Montevideo Convention of 1889, is based on the idea that the protection under the lex originis of a work, whatever the 11 This differs from the treatment of "international trademarks" under the Madrid Arrangement of 1891 (but not under the 1989 Protocol). 12 See STEWART, supra note 10, n° 3.15. 13 See art. 7 (8). 14 See art. 14 ter (2). 15 See art. 2 (7). 11 definition of the country of origin, does not extend outside that country. The main difficulty encountered under the lex originis rule seems to be that certain works can originate in more than one country.16 Between the difficulties arising out of this exceptional situation and those arising out of the necessity for the copyright owner to bring suit under the law of each country for which protection is sought, the parties to the Berne Convention chose the latter because at that time multiple litigation could not be avoided. Thus, Article 5 (2) of the Berne Convention provides that the applicable law is the law of the country for which protection is sought. A century later, the extra-territorial effect of court decisions17 16 See STEWART, supra note 10 at n° 3.14 for the remaining provisions on material reciprocity. 17 See J.J. Brinkhof, Could the President of the District Court of The Hague Take Measures Concerning the Infringement of Foreign Patents ?, EIPR 1994.360 et seq. for The Hague District Court's former practice. 12 was still something of a novelty, especially in the United Kingdom.18 However, certain countries accepted this effect19 before the Brussels and Lugano Conventions20 changed the rules in Europe.
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