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Handbook of Intellectual Property ResearchLenses, Methods, and Perspectives$

Irene Calboli and Maria Lillà Montagnani

Print publication date: 2021

Print ISBN-13: 9780198826743

Published to Oxford Scholarship Online: September 2021

DOI: 10.1093/oso/9780198826743.001.0001

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PRINTED FROM OXFORD SCHOLARSHIP ONLINE (oxford.universitypressscholarship.com). (c) Copyright Oxford University Press, 2021. All Rights Reserved. An individual user may print out a PDF of a single chapter of a monograph in OSO for personal use. date: 29 November 2021

A Conflicts of Law Approach to Intellectual Property Research

A Conflicts of Law Approach to Intellectual Property Research

Chapter:
(p.34) 2 A Conflicts of Law Approach to Intellectual Property Research
Source:
Handbook of Intellectual Property Research
Author(s):

Graeme W. Austin

Publisher:
Oxford University Press
DOI:10.1093/oso/9780198826743.003.0003

Abstract and Keywords

Intellectual property (IP) conflict of laws issues in disputes between private parties arise for a variety of reasons. Most infringe the plaintiff’s intellectual property rights in countries X, Y, and Z. Part of the infringing conduct might have been in one jurisdiction, while the effects are felt elsewhere. Infringing material can be instantly distributed to any country in which there is internet access. Digital networks are also increasing opportunities for international collaboration by parties that are physically located in different places, and supply chains also increasingly straddle national borders, giving rise to disputes about the law governing intellectual property ownership. And internet commerce is increasing the global reach of brands. Research in this area must engage with the problem of providing efficient and just solutions in the context of private litigation that are also aligned with the foundations of the international intellectual property architecture including, in many contexts, the domestic economic and social policies that shape territorially confined IP rights.

Keywords:   cross-border, territoriality, conflicts workarounds, private international law, jurisdiction, justiciability, digital networks

I. Introduction

In its June 2018 decision in Westerngeco LLC v. ION Geographical Corp.,1 the US Supreme Court held that the US Patent Act allowed a patent owner to recover lost profits when components of the invention were shipped overseas with the intention they would be assembled in a manner that would have infringed the US patent if the same conduct had occurred within the United States.2 That holding provoked a vigorous dissenting opinion which reasoned the Court’s holding ‘would effectively allow U.S. patent owners to use American courts to extend their monopolies to foreign markets’.3 The dissent characterized the holding as an affront to a fundamental premise of intellectual property (IP) law: intellectual property rights (IPR) are territorially confined4 and have no effect beyond a nation’s borders.5

Neither the Opinion of the Court nor the dissent expressly addressed conflict of laws doctrines.6 As discussed later, the statutory provision at issue could be aptly (p.35) described as a conflict of laws ‘workaround’:7 a kind of localization of intellectual property rights enforcement in a context where, viewed differently, the claim might have required ascertaining and applying foreign laws. Even so, underlying the specific issue in Weterngeco were the kinds of questions that arise when conflict of laws intersects with intellectual property (described in this chapter by the label ‘IP conflicts’), and which have been the focus of considerable debate among scholars, especially in the Anglo/American context. This scholarship has tended to engage with the problem of reconciling the needs of private litigants with the fundamental premises of the international intellectual property order.8

IP conflicts issues arise in private disputes between individual parties with an international aspect.9 In contrast, the public international law of intellectual property concerns relationships between different nation-states mediated through international intellectual property treaties, and, increasingly, free trade instruments.10 Weterngeco was a private dispute between two parties that concerned allegations of damage to the patent holder’s market outside of the United States. The plaintiff relied on a provision of the domestic US patents statute that enabled it to seek recovery for lost foreign profits in a domestic court without invoking the law of the foreign territory in which the infringing activity occurred. Had the statutory provision not been interpreted so broadly, the patent holder would presumably (p.36) have been required to enforce the rights (if any) under the laws of the relevant foreign jurisdiction.

Most IP conflicts scholarship engages at some level with the problem of advancing efficient and just solutions in the context of private litigation that are also aligned with the foundations of the international intellectual property architecture.11 Elaborating on this point, this chapter first discusses the evolving doctrine on the issue of a domestic court’s subject matter jurisdiction over allegations of infringement of foreign rights—one of the IP conflicts issues the construction of the statute in Westerngeco allowed the plaintiff to avoid. It then introduces the topic of ‘conflicts workarounds’, a label used for various mechanisms for avoiding IP conflicts questions by localizing international issues under the law of the forum. These topics will help illustrate some of the key themes in this area of research.

II. Justiciability: Pragmatic, Doctrinal, and Political Issues

While much of the recent interest in the topic has been prompted by the instantaneous ability to communicate the subject matter of intellectual property rights across international borders,12 IP conflicts problems have been with us for a long time. A famous early twentieth century (and terrestrial) example involved Australian mining patents.13 The nineteenth-century market for operatic sheet music also generated many intriguing conflicts questions.14

A key implication of the territoriality principle is that ‘international intellectual property’ is actually a mosaic of territorially confined domestic rights.15 The ability of nations to calibrate domestic laws within the broad parameters of public international law is a legal reality, even in an era of significant convergence of domestic laws.16 The principle also reflects a set of normative concerns directed at individual (p.37) nations’ ability to calibrate their domestic IP laws in the light of domestic interests and policies.17 Intellectual property rights are both ‘private’ property18 and instruments of domestic social policy. Moreover, in the international trade context, the content of a country’s domestic intellectual property laws can serve as bargaining chips in international negotiations. At the same time, however, the territoriality principle can make enforcement of rights on an individual nation-by-nation basis inefficient and costly and may not provide substantive justice for individual parties.

IP conflicts issues arise for a variety of reasons. Most obviously, the infringing activity is not confined within domestic borders. A defendant located in country X might infringe the plaintiff’s intellectual property rights in countries X, Y, and Z. Part of the infringing conduct might have been in one jurisdiction, while the effects are felt elsewhere. Infringing material can be instantly distributed to any country where there is internet access.19 Digital networks are also increasing opportunities for international collaboration by parties physically located in different places, and supply chains also increasingly straddle national borders,20 giving rise to disputes about the law governing intellectual property ownership. And internet commerce is increasing the global reach of brands. If the strength of trademark rights depends, at least in part, on consumer impressions, territorially confined rights are at odds with the multiterritorial sources of the mental stimuli that shape those impressions.21

The justiciability of disputes involving foreign intellectual property laws provides a useful example of the kinds of research questions that have engaged scholars working in this area. In common law jurisdictions, the traditional rule was that local courts were precluded from exercising jurisdiction over allegations of infringement of intellectual property rights.22 In Anglo common law, the (p.38) exclusionary rule arose first in the context of patents.23 It was then extended to copyrights.24 While the jurisdictional prohibition provoked commentators to analyse the scope and basis of the rule,25 and has since been overruled, there remain a number of questions that would benefit from further analysis.

The Supreme Court of the United Kingdom departed from the exclusionary rule in 2011, overturning a decision of the Court of Appeal, which, in turn, had overruled the first instance judge.26 In broad outline, the same result was reached by the United States Federal Second Circuit Court of Appeals in 1998.27 The latter case has, however, been called into question by a leading US copyright law commentator, who described the application of foreign copyright law as an ‘anomaly in the jurisprudence’, and has observed that the ‘spectre’ of ‘opening the floodgates to resolution in US courts of cases alleging violation of other nations’ copyright laws … remains unrealized in practice, with rare exception’.28 In 2016, that analysis was endorsed by the United States Federal Circuit Court of Appeals.29

Jurisdictional rules in the area of registered intellectual property rights remain firmly set against the possibility that a domestic court will exercise jurisdiction over infringement of foreign rights. The perception that registration of intellectual property rights is government action has led to the conclusion that, for the most part, infringement of intellectual property rights registered in a foreign jurisdiction is not justiciable.30 Applying the Brussels Regulation (or its predecessors), the Court of Justice of the European Union has confirmed this view and it has also been adopted by the US Federal Circuit Court of Appeals.31

A. Pragmatic Issues

The original jurisdictional prohibition against adjudicating disputes involving foreign copyrights provoked a line of scholarship concerned with the soundness of (p.39) these jurisdictional rules.32 The more recent approach adopted by the UK Supreme Court in Lucasfilm v. Ainsworth33 that foreign copyright claims are justiciable in a domestic forum—has, at least in UK law, disposed of most of the significant doctrinal questions touching on the enforcement of these intellectual property rights. As is noted above, however, the position is less clear in US copyright law.

The shift in the jurisdictional rules in the copyright area, albeit with differing degrees of enthusiasm, has foregrounded a number of interesting logistical questions. A logical corollary of the conclusion that foreign infringement claims are justiciable is that the applicable laws are the laws of every jurisdiction where a work is infringed.34 Infringement in the online context, where a work can be made available everywhere there is an internet connection, gives rise to the possibility of infringement according to almost every nation’s copyright laws.35

It is perhaps telling that the appellate courts which held that foreign copyright infringements are justiciable are not the forums most likely to confront the practical issue of how to apply a vast number of copyright laws in any proceeding. In the leading US case, in which only nineteen different copyright laws were potentially in play, the parties eventually settled. Lucasfilm concerned only the possibility that a UK court would be required to apply US copyright law. That possibility may also account for the scepticism with which the equivalent US decision is regarded.

How to manage these kinds of logistical issues is likely to offer a variety of interesting research projects for scholars working in the IP conflicts area. Situations in which defendants raise genuine defences might raise issues quite different from the kinds of issues raised in cases involving straightforward, but ‘ubiquitous’ infringement. In the former kind of case, parties might be expected to agree to have the case governed by one or a small number of domestic laws. If the defendant’s actions are excused by US fair use, for instance, the parties might be prepared to agree there is also no infringement under any of the laws of any jurisdiction that would otherwise apply to the infringements. In other words, the parties may agree that a decision under one nation’s laws applies to the totality of the international dispute. These kinds of questions might arise differently in straightforward infringement cases. In such cases, a defendant’s incentive to co-operate might be less obvious. Indeed, even with the consolidation of proceedings that would otherwise have had to be conducted seriatim, defendants might be motivated to resist attempts to simplify matters by agreeing to application of a smaller number of representative governing laws.

(p.40) In this context, the work by law reform bodies and other scholarly institutions addressing the consolidation of proceedings issue warrants close study. The American Law Institute has, for example, proposed a single governing law approach: in cases of ubiquitous infringement, the ALI proposes the court may apply the law(s) of a single state or a small group of states based on a determination of the place or places with the closest connection with the dispute.36 That approach is subject to further refinements—such as a reduction in damages where, for example, the infringed work is in the public domain in one or more jurisdiction.37

B. Doctrinal Issues

The jurisdictional prohibition remaining in place for registered rights offers scope for more doctrinally focused scholarship, just as the jurisdictional rules originally applied to copyright once did. After all, the original Federal Circuit decision in which the jurisdictional prohibition in the patent context was affirmed was over a powerfully reasoned dissent. The dissent urged that without exercising jurisdiction over allegations of foreign patent rights, patent owners would face significant impediments to realizing the full value of their investment in innovation.38

One intriguing aspect of the doctrines applying to registered rights is the emergence of exceptions to the basic jurisdictional impediment to litigating foreign rights. In the European Union (EU) context, an exception has emerged where a court is asked to invoke provisional measures ordering a defendant to stop infringing a patent on a pan-European basis.39 Moreover, as the recent UK Actavis UK Ltd. v. Eli Lilly litigation indicates, there may be circumstances in which a domestic court is prepared to accept it is appropriate to adjudicate questions relating to infringement of foreign patents.40 In the United States context, the original decision of the Federal Circuit was quickly distinguished by a lower court on domestic civil procedure grounds—and subsequent cases have chipped away at the holding.41 The exceptions that are beginning to cluster around that doctrinal orthodoxy could provide researchers with some interesting lines of inquiry. For example, some useful work could be done to understand the scope of the current (p.41) exceptions to jurisdictional impediments grounded in territoriality, and their potential for further development.42

C. Political Issues

Adjudicating foreign intellectual property questions will often involve conflicts about the validity of rights granted by a foreign sovereign.43 In Anglo Common Law jurisdictions, the perceived link between intellectual property rights and the sovereignty interests of the foreign nations provided part of the basis for the refusal to exercise jurisdiction.44 This is part of the explanation for the different treatment of registered and unregistered rights. The validity of registered rights more obviously implicates domestic sovereignty interests because the rights are a product of government action: the decision whether to grant the right.

The irony produced by these doctrines is obvious: jurisdictional reticence provoked by respect for the foreign sovereign makes enforcement of rights that existed under the foreign sovereign’s laws much more onerous. But, as an English judge observed many years ago, there is also a political dimension to adjudicating foreign intellectual property rights: ‘patent actions appear on their face to be disputes between the parties, in reality they also concern the public’.45 A finding of infringement ‘is a finding that a monopoly granted by the state is to be enforced;’ the result ‘is invariably that the public have to pay higher prices than if the monopoly did not exist’.46 Accordingly, ‘[i]f that be the proper result’, the judge said, then that result should come about ‘from a decision of a court situated in the state where the public have to pay the higher prices’.47 Broadly similar observations could be made about other types of registered rights. For example, enforcement of foreign trademark rights might mean that the brand premium payable as a result of the trademark registration will be reflected in the price paid by foreign customers.

And yet the territoriality of intellectual property rights is now moderated in a variety of ways.48 As Graeme Dinwoodie explains, in international and regional trademark law an array of different mechanisms have been adopted that facilitate the expansion of trademark rights beyond domestic borders.49 Examples include (p.42) the international protection of well-known marks under art. 6bis of the Paris Convention and procedural mechanisms facilitating the registration of marks on multiple domestic registers. The European Union Trademark system takes these initiatives a step further by providing for a registered right that transcends national borders,50 a major inroad to territoriality anticipated by the Benelux trademark system.51 European Union-wide rights can be secured on the basis of a single application with the European Union Intellectual Property Office. The underlying policy aim is to facilitate the free-flow of trademarked goods across domestic borders within the European Union.

If the common law conflicts rules were originally informed by a view that courts should not adopt rules that offend the domestic sovereignty interests reflected in domestic intellectual property regimes, what should courts make of the kinds of multilateral initiatives seeming to undermine the very premises with which the jurisdictional rules are meant to support? Some of these mechanisms reflect the gap between the reality of global markets and formalistic adherence to territoriality. Others, such as those occurring within the EU context, reflect political and economic commitments to a single market. Even so, these departures from territoriality by political branches of government should provoke scholars to question the continued salience of judicial adherence to ideas that might be coming to seem passé. Or, to ask the question in a different way, in the development of conflict of laws rules, what importance should be accorded to domestic sovereignty interests embedded in intellectual property rights given the diminishing concern with those interests manifested by the political branches of government?

It might also be useful to ask whether all aspects of domestic intellectual property laws implicate sovereignty interests in the same way, or to the same extent. For example, issues as to the propriety of adjudication of disputes involving foreign intellectual property rights do not necessarily arise in the context of issues involving ownership or transfers of intellectual property rights. If foreign patent rights are enforceable, the public may pay higher prices regardless of who gets to enforce those rights. The substantive law does not necessarily have the same gravitational pull in the context of ownership questions. Indeed, it is possible that the law of the place of creation has much more salience. For example, the laws that govern the place at which creative work gets done—including, for example, the regulation of workplaces and relationships between employees and employers—might be regarded as having greater normative significance in the choice of law analysis than the place(s) where the intellectual property rights are to be exploited.52 Sorting out which aspects of intellectual property law trigger these kinds of conceptual (p.43) problems presents scholars interested in IP conflicts with an array of fascinating research questions.

III. Choice of Law ‘Workarounds’

IP conflicts research has also focused on a number of intriguing IP conflicts ‘workarounds’. Many of these have arisen in US law. (An intriguing question is why this might be so.) The section in the US Patent Act at issue in the Westerngeco case is one of these workarounds. Recall that it provided a domestic law mechanism to secure relief for lost profits in foreign markets. A strict territorialist might object, claiming the law to be applied should be the patent laws of the jurisdictions in which the conduct amounting to the breach of the patent occurred.

Workarounds also exist in trademark and copyright law. In US intellectual property law, the trademark example is at the highest appellate level—the Supreme Court decision in Steele v. Bulova Watch.53 In that case, the Court confirmed the US Lanham Act could apply to the defendant’s actions in Mexico. It was not necessary for Bulova, the plaintiff in the case, to prove the assembly and sale of ‘Bulova’ branded watches infringed rights under Mexican trademark law. That case has generated a detailed jurisprudence in Circuit courts of appeals that sets out when the Lanham Act might be applied in such circumstances, taking account of the domicile of the parties, the degree of tension with the otherwise-applicable foreign law, and so on.54

In copyright law, US courts developed a doctrine known as the predicate act theory, which allows the US Copyright Act to apply to conduct occurring abroad—in the sense of allowing some forms of pecuniary relief for the infringements55—if the claims are predicated on a completed act of infringement within the United States.56 From time to time, distinguished scholars have urged that the principle should be extended to provide relief where any copy is made within US territorial borders,57 a proposition with significant implications for digital transmissions. If, (p.44) for example, the making of a temporary copy without licence is itself an infringing act, any copy of a work transmitted through a US network could trigger the application of US copyright law, even if the intended recipient of the copy was in a different jurisdiction.58 This liability theory continues to be invoked despite the Second Circuit’s willingness to entertain foreign copyright infringement actions (perhaps one reason for the Federal Circuit’s recent characterization of the latter rule as a ‘rare exception’).

As is discussed above, alternatives to multiple governing laws have been advanced in the high-level studies of this area. The ALI’s proposals for single governing law approaches to ubiquitous copyright infringement being a prominent example. The logistical issues that might benefit from further study have been discussed already. In addition, these conflicts ‘workarounds’ also raise some of the more conceptual questions relevant to the study of IP conflicts. As the dissent in Westerngeco pointed out, to differing degrees each conflict workaround involves, in a sense, the application of one nation’s laws to activities in another nation’s territory.

The lack of alignment between these strategies and the territoriality premise of intellectual property59 should provide legal scholars with interesting lines of inquiry. Once again, there is friction here between the interests of efficient adjudication of private disputes and the fundamental commitments of the international intellectual property system.

IV. Conclusion

The brief discussion in this chapter should be enough to show there continues to be considerable scope for IP conflicts research. In conclusion, however, it is useful to mention another strand of research—one whose conclusion exposes something that might be described as ‘IP conflicts scepticism’. A major 2015 study conducted for the World Intellectual Property Organization (WIPO) of private (p.45) international law issues in cases of ‘on-line intellectual property disputes’60 questions the relevance of this topic. This particular report contests the focus in some strands of scholarship and in high-level law reform initiatives on issues generated by the ubiquity of infringing activity enabled by digital technologies and networks. It concludes there is not much evidence that these kinds of cases come up very often—which, in turn, throws into doubt the importance of IP conflicts scholarship.

The 2015 Report’s focus on litigated cases in itself should distil a host of new empirical questions about IP conflicts, prompting scholars to think about how often these issues arise in practice and how they are resolved in the context of informal dispute resolution. How IP conflicts issues are engaged ‘in the shadow of the law’ could also provide scholars with some provocative new lines of inquiry.61

Notes:

(*) Thanks to Kathleen Henning for excellent research assistance and to Megan Pharis for careful and insightful editing.

(1) 138 S.Ct. 2129 (2018).

(2) Under 35 U.S.C. § 271(f)(2).

(3) 138 S.Ct. 2129 (2018), (Gorsuch J., dissenting) Slip Opinion at 2.

(4) See, e.g., Abkco Music & Records, Inc., v. Music Collection Int’l Ltd. [1995] R.P.C. 657, 660 (Hoffmann, L.J.) (EWCA).

(5) For another recent example, see Impression Products, Inc. v. Lexmark International, Inc., 581 U.S. 1523 (2017), in which Ginsburg J. dissented from the Court’s holding that sale of patented products in foreign markets exhausted US patent rights on the basis that the holding offended the territoriality principle. For analysis advancing normative arguments in favour of confining intellectual property rights within domestic borders, see Hanns Ullrich, TRIPs: Adequate Protection, Inadequate Trade, Adequate Competition Policy, 4 PAC. RIM L. & POL’Y J. 153, 160 (1995) (arguing that extraterritorial application of national intellectual property law distorts competition in the domestic marketplace). For detailed analyses of these issues in the copyright context, see Jane C. Ginsburg, The Private International Law of Copyright in an Era of Technological Change, in COLLECTED COURSES OF THE HAGUE ACADEMY OF INTERNATIONAL LAW (1998); Marketa Trimble, The Multiplicity of Copyright Laws on the Internet, 25 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 339 (2015).

(6) In general terms, conflict of laws involves ‘the study of whether or not and, if so, in what way, the answer to a legal question will be affected because the elements of the problem have contact with more than one jurisdiction’. Russel J. Weintraub, COMMENTARY ON THE CONFLICT OF LAWS (5th ed. 2006). Recent high-level studies of this area include: American Law Institute, INTELLECTUAL PROPERTY: PRINCIPLES GOVERNING JURISDICTION, CHOICE OF LAW, AND JUDGMENTS IN TRANSITIONAL DISPUTES (2007) [hereinafter ALI Principles]; Transparency of Japanese Law Project, TRANSPARENCY PROPOSAL ON JURISDICTION, CHOICE OF LAW, RECOGNITION AND ENFORCEMENT OF FOREIGN JUDGMENTS IN INTELLECTUAL PROPERTY (2009); European Max-Planck-Group for Conflict of Laws in Intellectual Property, PRINCIPLES FOR CONFLICT OF LAWS IN INTELLECTUAL PROPERTY (2010). For the purposes of this chapter ‘conflict of laws’ is used as a shorthand for disputes between private parties that have an international aspect, which might involve issues of jurisdiction, choice of law, or enforcement of judgments, or the territorial scope of non-pecuniary remedies.

(7) See infra Section III.

(8) More technical questions also arise in private international law doctrinal analysis. Cf. Graeme B Dinwoodie et al., The Law Applicable to Secondary Liability in Intellectual Property Cases, 42 N.Y.U. J. INT’L L. & POL. 201, 202 n.3 (2009) (discussing comparative approaches to characterization of secondary liability).

(9) The term ‘private international law’ captures the point. See James J. Fawcett & Paul Torremans, INTELLECTUAL PROPERTY AND PRIVATE INTERNATIONAL LAW (1998).

(10) Leading international instruments include: Paris Convention for the Protection of Industrial Property, as last revised at the Stockholm Revision Conference, 14 July 1967, 21 U.S.T. 1583, 828 U.N.T.S. 303; Berne Convention for the Protection of Literary and Artistic Works, art. 6bis(1), 9 September 1886, as revised at Paris on 24 July 1971, and amended in 1979, S. Treaty Doc. No. 99–27 (1986); Universal Copyright Convention, 6 September 1952, 6 U.S.T. 2731, 216 U.N.T.S. 132; Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms, Geneva, 29 October 1971, 25 U.S.T. 309, 888 U.N.T.S. 67. The TRIPS Agreement was a significant step in the integration of intellectual property rights and trade. See Agreement on Trade-Related Aspects of Intellectual Property Rights, 15 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994) (hereinafter TRIPS Agreement). The public international law of intellectual property should also be considered to include international human rights instruments. See Graeme W. Austin, Authors’ Human Rights and Copyright Policy, 40 COLUM. J.L. & ARTS 405, 411 (2017).

(11) See Graeme B. Dinwoodie, The Architecture of the International Intellectual Property System, 77 CHI.-KENT. L. REV. 993 (2002). The topic also includes remedies, which, in the interests of space I do not discuss in this chapter. For an excellent overview, see Richard Garnett, Intellectual Property Remedies Across Borders, in INTERNATIONAL INTELLECTUAL PROPERTY AND THE ASEAN WAY: PATHWAYS TO INTEROPERABILITY 128 (Elizabeth Siew-Kuan Ng and Graeme W. Austin eds., 2017).

(12) See Andreas P. Reindl, Choosing Law in Cyberspace: Copyright Conflicts on Global Networks, 19 MICH. J. INT’L L. 799, 800 (1998): ‘The choice of law rules have worked—and perhaps were not all that important—so long as acts of use such as the distribution of records or the performance of films occurred in discrete geographical areas.’

(13) Potter v. Broken Hill Proprietary Co (1906) 3 CLR 478 (Austl.).

(14) See, e.g., Jeffreys v. Boosey (1854) 4 HLC 815 (UK).

(15) See Mihály Ficsor, Direct Broadcasting by Satellite and the ‘Bogsch Theory’, 18 INT’L BUS. LAW. 258, 258 (1990). For an expert nuanced inquiry into the implications of territoriality in the intellectual property context, see Marketa Trimble, Advancing National Intellectual Property Policies in a Transnational Context, 74 MD. L. REV. 203 (2015).

(16) Rochelle Dreyfuss and Graeme Dinwoodie have elaborated on this point in impressive detail in their pathbreaking study of ‘TRIPS federalism’, which explores the extent to which the regulation of intellectual property issues is distributed between domestic and international legal institutions. See Graeme B. Dinwoodie & Rochelle Cooper Dreyfuss, A NEOFEDERALIST VISION OF TRIPS: THE RESILIENCE OF THE INTERNATIONAL INTELLECTUAL PROPERTY REGIME (2012). See also Marketa Trimble, Advancing National Intellectual Property Policies in a Transnational Context, 74 MD. L. REV. 203 (2015). Space constraints preclude discussion of cross border remedies. For a path-breaking analysis of cross-border injunctions in the patent context, see Marketa Trimble, Cross-Border Injunctions in US Patent Cases and Their Enforcement Abroad, 13 MARQ. INTELL. PROP. L. REV. 331 (2009).

(17) See Graeme W. Austin, Valuing ‘Domestic Self-Determination’ in International Intellectual Property Jurisprudence, 77 CHI.-KENT L. REV. 1155 (2002).

(18) TRIPS Agreement, supra note 10, pmbl. recital 4 (‘intellectual property rights are private rights’).

(19) See, e.g., Sound N Light Animatronics Co. v. Cloud B, Inc., 2017 WL 3081685, (C.D. Cal. 7 April 2017) (US Copyright Act applicable to allegedly infringing products available on foreign website that targets US customers); Shropshire v. Canning, 809 F. Supp. 2d 1139, 1147 (N.D. Cal. 2011) (infringement under US law where infringing copies posted on YouTube and available in the United States); Goes Int’l, AB v. Dodur Ltd., No. 14–cv–05666–LB, 2016 WL 427369 (N.D. Cal. 2016) (US Copyright Act applied where the defendant uploaded an infringing game to servers in China that became accessible to and downloaded by thousands of consumers in the United States); Crunchyroll, Inc. v. Pledge, No. C 11–2334 SBA, 2014 WL 1347492 (N.D. Cal. 2014) (US Copyright Act applied to 3,000 videos that were uploaded in the United Kingdom and transmitted to viewers in the United States through YouTube’s California servers).

(20) See National Research Council US, THE DIGITAL DILEMMA: INTELLECTUAL PROPERTY IN THE INFORMATION AGE 55 (2000).

(21) See Graeme W. Austin, Introduction, in TRADEMARK PROTECTION AND TERRITORIALITY CHALLENGES IN A GLOBAL ECONOMY 1 (Irene Calboli and Edward Lee eds., 2014).

(22) See Austin, supra note 17.

(23) Potter v. Broken Hill Proprietary Co. (1906) 3 CLR 479 (Austl.) (holding that subject matter jurisdiction did not exist over foreign patent infringement). See Richard Garnett, Potter v Broken Hill: Misuse of Precedent in Cross-border IP Litigation, in Andrew T. Kenyon & Megan Richardson, LANDMARKS IN AUSTRALIAN INTELLECTUAL PROPERTY LAW 1–15 (2009).

(24) Tyburn Productions v. Conan Doyle [1991] Ch. 75 (UK).

(25) See, e.g., Austin, supra note 17.

(26) See Graeme W. Austin, Cooperation through Conflict of Laws: The Justiciability of Cross-Border Copyright Infringement, in INTERNATIONAL INTELLECTUAL PROPERTY AND THE ASEAN WAY: PATHWAYS TO INTEROPERABILITY 111 (Elizabeth Siew-Kuan Ng & Graeme W. Austin eds., 2017).

(27) Boosey & Hawkes Music Publishers v. Walt Disney Co., 145 F.3d 481 (2d Cir. 1998); for an early precursor, see London Film Prods. v. Intercontinental Commc’ns, 580 F. Supp. 47 (S.D.N.Y. 1984).

(28) David Nimmer & Melville Nimmer, NIMMER ON COPYRIGHT § 17.03[A] (David Nimmer & Melville Nimmer eds., 2018).

(29) Halo Creative & Design Ltd. v. Comptoir Des Indes Inc., 816 F.3d 1366, 1373 (Fed. Cir. 2016). One obvious question for IP scholars is to account for the different attitudes to this issue manifest in UK and US IP conflicts.

(30) See Case C-539/03, Roche Nederland BV v. Primus, 2006 E.C.R. I-6535.

(31) Voda v. Cordis Corp., 476 F.3d 887 (Fed. Cir. 2007).

(32) G.W. Austin, The Infringement of Foreign Intellectual Property Rights, 113 Law Q. Rev. 321, 321 (1997).

(33) [2011] UKSC 39. See also Jedis Ltd. v. Vodafone New Zealand Ltd. [2012] NZHC 2448 (N.Z.).

(34) For an early discussion of this point, see Andreas P. Reindl, Choosing Law in Cyberspace: Copyright Conflicts on Global Networks, 19 MICH. J. INT’L L. 799, 808 (1998) (noting that a ‘multiplicity’ of foreign laws could apply to an infringing work that could be accessed in various jurisdictions).

(35) Id.

(36) ALI Principles, supra note 6, at § 321.

(37) Because of a shorter copyright term. See ALI Principles, supra note 6, at § 321, illustration 1.

(38) See Voda, 476 F.3d 887, 905 (Newman J., dissenting).

(39) See Case C-616/10, Solvay SA v. Honeywell Fluorine Prods. Europe BV.

(40) Actavis UK Ltd. and Ors v. Eli Lilly and Co. [2017] UKSC 48 (the Supreme Court was not, however, required to adjudicate the point).

(41) See Baker-Bauman v. Walker, 2007 WL 1026436 (S.D., 2007); Fairchild Semiconductor Corp. v. Third Dimension (3d) Semiconductor Inc., 589 F. Supp.2d 84 (D. Me., 2008); Lotes Co., Ltd v. Hon Hai Precision Indus. Co., 2011 13152817 (N.D. Cal., 2011).

(42) For a comprehensive analysis of enforcement of intellectual property rights in the European Union context, see Marketa Trimble, Extraterritorial Intellectual Property Enforcement in the European Union, 18 SW. J. INT’L L. 233 (2011).

(43) Occasionally, ‘act of state’ doctrine is directly raised. See, e.g., Geophysical Serv. Inc. v. ConocoPhillips Co., 2016 WL 2839286 (S.D. Tex. 13 May 2016), on reconsideration, 2016 WL 3974834 (S.D. Tex. 25 July 2016).

(44) See Austin, supra note 32.

(45) Plastus Kreativ A.B. v. Minn. Mining and Mfg. Co. [1995] RPC 438, 447 (UK).

(46) Id.

(47) Id.

(48) Graeme B. Dinwoodie, Territorial Overlaps in Trademark Law: The Evolving European Model, 92 NOTRE DAME L. REV. 1669, 1674 (2017).

(49) Id. at 1674–86.

(50) Id.

(51) Id.

(52) See Graeme W. Austin, Intellectual Property Politics and the Private International Law of Copyright Ownership, 30 BROOKLYN J. INT’L L. 899 (2005).

(53) Steele v. Bulova Watch Co., 344 U.S. 280 (1952).

(54) See, e.g., Ocean Garden, Inc. v. Marktrade Co., 953 F.2d 500 (9th Cir. 1991); Vanity Fair Mills, Inc. v. T. Eaton Co., 234 F.2d 633 (2d Cir. 1956). See also Tim W. Dornis, Behind the Steele Curtain: An Empirical Study of Trademark Conflicts Law, 1952–2016, 20 VAND. J. ENT. & TECH. L. 567 (2018).

(55) The complex issue of the kinds of pecuniary relief available is examined by the Ninth Circuit in L.A. News Serv. v. Reuters Television Int’l (USA) Ltd., 340 F.3d 926, 931 (9th Cir. 2003), as amended on denial of reh’g (7 October 2003); cert. denied 541 U.S. 1041 (2004).

(56) Sheldon v. Metro-Goldwyn Pictures Corp., 106 F.2d 45 (2d Cir. 1939), aff’d, 309 U.S. 390 (1940); Allarcom Pay Television, Ltd. v. Gen. Instrument Corp., 69 F.3d 381, 387 (9th Cir. 1995); L.A. News Serv. v. Reuters Television Int’l, Ltd., 149 F.3d 987 (9th Cir. 1998), as amended on denial of reh’g and reh’g en banc (Aug. 25, 1998); Update Art, Inc. v. Modiin Publ’g, Ltd., 843 F.2d 67 (2d Cir. 1988); Gen. Motors Corp. v. Lopez de Arriorua, 948 F. Supp 684 (E.D. Mich. 1996); Famous Music Corp. v. Seeco Records, Inc., 201 F. Supp. 560, 569 (S.D.N.Y. 1961).

(57) See, e.g., Jane C. Ginsburg, The Cyberian Captivity of Copyright: Territoriality and Authors’ Rights in a Networked World, 15 SANTA CLARA COMPUT. & HIGH TECH. L.J. 347 (1999); Jane C. Ginsburg, Copyright Without Borders? Choice of Forum and Choice of Law for Copyright Infringement in Cyberspace, 15 CARDOZO ARTS & ENT. L.J. 153 (1997). For analysis of these views, see Graeme W. Austin, Social Policy Choices and Choice of Law for Copyright Infringement in Cyberspace, 79 OR. L. REV. 575, 614 (2000).

(58) Jane C. Ginsburg, Extraterritoriality and Multiterritoriality in Copyright Infringement, 37 VA. J. INT’L L. 587, 600–602 (1997); Jane C. Ginsburg, Global Use/Territorial Rights: Private International Law Questions of the Global Information Infrastructure, 42 J. COPYRIGHT SOC’Y U.S.A. 318 (1995).

(59) André Lucas, Aspects de droit international privé de la protection d’oeuvres et d’objets de droits connexes transmis par réseaux numériques mondiaux, 33, WIPO Doc. GCPIC/1 (25 November 1998), http://www.wipo.int/meetings/fr/doc_details.jsp?doc_id=925. Some leading scholars have, in contrast, advanced the idea that domestic courts can and should create ‘global norms’ for cross-border intellectual property cases in a way that reflects the increasingly ‘fluid’ character of public international law-making that has emerged. See Graeme B. Dinwoodie, A New Copyright Order: Why National Courts Should Create Global Norms, 149 U. PA. L. REV. 469 (2000) (copyright); Timothy Holbrook, Extraterritoriality in US Patent Law, 49 WM & MARY L. REV. 2111 (2008) (patents).

(60) Andrew F. Christie, Private International Law Issues in Online Intellectual Property Infringement Disputes with Cross-Border Elements, WIPO (2015), http://www.wipo.int/edocs/pubdocs/en/wipo_rep_rfip_2015_1.pdf.

(61) Some scholars have already pursued these lines of inquiry. For a compelling empirical analysis that ‘complements’ the 2015 WIPO study (while reaching a different conclusion), see Marketa Trimble, Undetected Conflict-of-Laws Problems in Cross-Border Online Copyright Infringement Cases, 18 N.C. J. L. & TECH. 119, 125 (2016).