General Report (Intellectual Property and Private International Law)

Abstract:     
The emergence and development of global business activities, and the inception of the Internet have resulted in the creation of a new field of legal studies concerning cross-border enforcement of intellectual property (IP) rights. This novel area of law is known as private international law and intellectual property. It has attracted much attention from lawyers within the fields of both private international law and intellectual property law. Several landmark decisions have caught the interest of legal practitioners as well as scholars engaged in deeper research activities. So far, several edited books have been published, and a greater amount of legal articles have been written on the subject.

This General Report draws upon 21 national reports received from countries with very divergent legal traditions. National reports were collated from three continents: North America (Canada and the United States), Europe (14 EU Member States, Switzerland and Croatia) and Asia (India, Taiwan, Korea and Japan). The national reports were drafted on the basis of a questionnaire containing two main sections: general legal and institutional framework concerning the enforcement of IP rights, international and regional legal instruments which have been ratified or are applicable in their countries as well as national statutory instruments pertaining to the enforcement of IP rights; and 12 hypothetical case studies.

The General Report consists of four main parts. Parts I and II provide a brief overview of the as well as the institutional framework pertaining to private enforcement of IP rights. Part III deals with various jurisdictional issues which arise in cross-border IP litigation and provides an analysis of the jurisdictional approaches which exist in the countries covered. More specifically, Part II deals with jurisdiction over parties, jurisdiction in contractual and non-contractual disputes, subject-matter (exclusive) jurisdiction, available possibilities for consolidating multiple claims/proceedings, treatment of international parallel proceedings, and choice of court agreements in IP disputes. Part IV is mainly devoted to analyzing various choice-of-law problems that arise in cross-border IP disputes. Namely, it provides an overview and analysis of the approaches concerning the applicable law to the proprietary aspects of IP rights, choice-of-law problems arising in IP infringement cases and contracts for the transfer of IP rights. A further aim of Part III is to depict choice-of-law problems which arise in the context of IP finance. Lastly, Part V focuses on the recognition and enforcement of foreign judgments rendered in IP-related disputes. An Epilogue concludes.

Keywords: intellectual property, private international law, jurisdiction, choice-of-law, subject matter jurisdiction, Shevill, GAT v LUK, Roche Nederland, initial title, ALI principles, CLIP, transparency principles, Japan, subafilms

JEL Classification: K10, K33

working papers series