Territoriality and Extraterritoriality in Intellectual Property Law

Abstract:     
It is often said that intellectual property (IP) rights are territorial in nature. This territoriality principle has several distinct dimensions on the level of substantive IP law, private international law and international conventions. Whereas it is true that there are examples of an overly rigid territorial thinking, in particular as regards jurisdiction concerning foreign IP rights, one can also observe an opposite trend towards unilateral expansions of national jurisdiction to overcome the territorial limits of IP law. Namely, the local IP regime is applied extraterritorially to activity occurring in other territories.

This article identifies the loophole in the territoriality principle, which allows for extraterritoriality in the first place. It then outlines relevant examples taken from the patent, copyright and trademark laws of different countries, predominantly from U.S. and German legislation and court practice. These examples are classified into two groups, depending on the primary purpose of the provision in question. Inbound regulation concerns situations in which a territory is shielded from spillover effects stemming from extraterritorial activities. Outbound regulation aims at enforcing the local IP regime with regard to activities and effects in foreign territories. The concluding section explains why unilateral “extraterritorialism” deserves as much scrutiny as does an overly rigid “territorialism”.

Number of Pages in PDF File: 41

Keywords: intellectual property, territoriality, extraterritoriality, transit, patent, trademark, copyright, traditional knowledge, export, import, secondary infringement, German law, European law

JEL Classification: O34

Accepted Paper Series