INTERNATIONAL JURISDICTION IN IP CASES. Prof. Dr. Cristina González Beilfuss

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1 INTERNATIONAL JURISDICTION IN IP CASES Prof. Dr. Cristina González Beilfuss

2 INTRODUCTION Tension between the international exploitation of IP rights (particularly in an on-line environment) and their territorial national or supranational character Territoriality principle and international jurisdiction Practical interest of litigating abroad

3 JURISDICTION - Where do we find the rules on international jurisdiction? General Rules- non Intellectual Property Specific rules, except for Community rights. - BI Recast ( Regulation 1215/2012) - National Jurisdiction Rules. When does BI Recast apply? Art. 5- If the defendant is domiciled in a Member State.

4 DOMICILE OF THE DEFENDANT Recital 15- The rules of jurisdiction should be highly predictable and founded on the principle that jurisdiction is generally based on the defendant s domicile. Art. 4 The domicile of a legal person must be defined autonomously so as to make the common rules more transparent and avoid Conflicts of jurisdiction. Arts. 62 and 63

5 Domicile of the defendant General advantages: Access to justice/rights of defense But: Adjudication on facts that took partially or even totally place abroad + application on foreign law- Different rules on the pleading and proof of foreign law. Choice of the plaintiff-alternative f

6 FORUM LOCI DELICTI Special jurisdiction Article 7 A person domiciled in a Member State may be sued in another Member State (2) in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur; Based upon a close connection between the court and the action in order to foster a sound administration of justice

7 FORUM LOCI DELICTI General provision that applies to all kinds of torts. The place where the action takes place (locus actum) does not coincide with place where the damage is sustained (locus damni)- Principle of Ubiquity Defamation cases- From Sheville (C-68/93) to E-date and Martinez (Joined Cases C-509/09 & C-161/10,) How does this case-law fit with IP cases?

8 FORUM LOCI DELICTI IP specific cases Jurisdiction analysis - analysis of fact and not of law. The place where the harmful action takes place can be one at which the right is not protected the territorial limitation of the protection of a national mark is not such as to exclude the international jurisdiction of courts other than the courts of the Member State in which that trade mark is registered...in a situation such as that in the main proceedings, the advantage presented by the place where the event giving rise to an alleged infringement occurred includes the ease with which the court there may gather evidence relating to that event. (C-523/10, Wintersteiger)

9 FORUM LOCI DELICTI C-441/13 Pez Hejduck The accessibility of a website (based on a server elsewhere) in a Member State containing unauthorized copyright protected photographs is sufficient as a basis for jurisdiction Potential for abuse: One can be sued in places where one did not act and to which one s activity was not directed.

10 MULTIPLE DEFENDANTS - Article 8 - A person domiciled in a Member State may also be sued: - (1) where he is one of a number of defendants, in the courts for the place where any one of them is domiciled, provided the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings;

11 MULTIPLE DEFENDANTS C-539/03 Roche Nederland it is not sufficient that there be a divergence in the outcome of the dispute, but that divergence must also arise in the context of the same situation of law and fact the existence of the same situation of fact cannot be inferred, since the defendants are different and the infringements they are accused of, committed in different Contracting States, are not the same. where infringement proceedings are brought..in respect of a European patent granted in each of those States,, any divergences between the decisions given by the courts concerned would not arise in the context of the same legal situation

12 MULTIPLE DEFENDANTS C-145/10 Painer a difference in legal basis between the actions brought against the various defendants, does not, in itself, preclude the application of Article 6(1) of Regulation No 44/ provided however that it was foreseeable by the defendants that they might be sued in the Member State where at least one of them is domiciled That reasoning is stronger if, as in the main proceedings, the national laws on which the actions against the various defendants are based are, in the referring court s view, substantially identical

13 EXCLUSIVE JURISDICTION IN VALIDITY CASES Exclusive jurisdiction Article 24 The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties: in proceedings concerned with the registration or validity of. rights required to be deposited or registered, irrespective of whether the issue is raised by way of an action or as a defence, the courts of the Member State in which the deposit or registration has been applied for..

14 EXCLUSIVE JURISDICTION IN VALIDITY CASES Wording that incorporates the findings of Case C-4/03, GAT v. LuK, What happens if the issue of validity is raised as a defence? The proceedings have to be stayed.

15 EXCLUSIVE JURISDICTION IN VALIDITY CASES Inside the common Unitary Patent Court, the division before which the validity is raised during infringement proceedings will have the option to continue with the infringement case and rule on validity too C-616/10 Solvay- Provisional measures are not precluded

Fordham IP Conference 4-5 April 2013 Remedies session Laëtitia Bénard Cross-border injunctions for registered IP rights in Europe

Fordham IP Conference 4-5 April 2013 Remedies session Laëtitia Bénard Cross-border injunctions for registered IP rights in Europe 1 I. General rule for all IP rights: Brussels Regulation No 44/2001 A right