(EU) Private International Law & International Property Rights

8 September 2016 Advanced IP Law (EU) Private International Law & International Property Rights Marcus Grahn Jur. kand.; Magister Juris (Oxon.); LL.M. Ph.D. Candidate in Private International Law Marcus.Grahn@jur.uu.se 1 Structure A. Brief introduction to Private International Law B. International Jurisdiction of Courts I. Brief background to the Brussels/Lugano instruments II. Scope and basic structure of the Brussels(/Lugano) system III. Jurisdiction under the Brussels(/Lugano) instruments in cases concerning validity or registration of IPRs IV. Jurisdiction under the Brussels(/Lugano) instruments in other cases involving IPRs V. Special Rules on Jurisdiction for supranational IPRs C. Applicable Law I. The Rome Regulations II. Infringement actions under the Rome II Regulation III. IPR transactions under the Rome I Regulation IV. Creation, registration and validity of IPRs D. Recognition and Enforcement of Judgments E. Extra-EU outlook 2 1

A. Introduction to Private International Law (I) I. What is Private International Law? Synonymous with the Common Law field of law known as Conflict of Laws Three principal questions: 1) The International Jurisdiction of Courts 2) The Law Applicable 3) Recognition and Enforcement of Foreign Judgments 4) (Cross-border administrative co-operation) 5) (International Commercial Arbitration) Why does it matter? 3 A. Introduction to Private International Law (II) II. The traditional method Underpins both the Private International Law of Continental Europe, the Conflict of Laws of the Common Law of England & Wales, as well as the EU Private International Law Regulations -Historically also applied in the US (Restatement 1st on the Conflict of Laws) To be distinguished from the contemporary US approaches (interest analysis; Restatement 2nd on the Conflict of Laws) Three analytical steps: 1) Characterisation 2) Localisation 3) Application 4 2

B. International Jurisdiction of Courts (I) I. The Brussels(I)/Lugano instruments: background(i) i. 1968 Brussels Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters ( The Brussels Convention ) ii. Council Regulation (EC) No 44/2001 of 22 December 2000 on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters ( The Brussels I Regulation) iii. Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters (recast) ( The Recast Regulation or The Brussels Ibis Regulation ) 5 B. International Jurisdiction of Courts (II) I. The Brussels/Lugano instruments: background (II) i. 1988 Lugano Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters ii. 2007 Lugano Convention on Jurisdiction and Enforcement of Judgments in Civil and Commercial Matters Adopt the same structure as the Brussels instruments, but lack provisions corresponding to those of the Recast Regulation! 6 3

B. International Jurisdiction of Courts (III) I. The Brussels/Lugano instruments: background (III) Common features: i. Dual/Double instruments ii. Aim: facilitate cross-border circulation of judgments iii. Uniform, autonomous, interpretation and application iv. Subject to the jurisdiction ratione materiae of the CJEU 7 B. International Jurisdiction of Courts (VI) II. The Brussels/Lugano instruments: scope (I) A. Ratione materiae(art. 1) i. Civil and commercial matters (Art. 1(1)) Irrespective of type of court or tribunal Does not apply to revenue, customs, administrative matters or to acta jure imperii ii. Excluded matters (Art. 1(2)) 8 4

B. International Jurisdiction of Courts (VII) II. The Brussels/Lugano instruments: scope (II) B. Geographical field of application i. Brussels Regulations: Binding in their entirety and directly applicable in all Member States (Art. 288 TFEU). ii. Lugano Conventions: binding for all EU Member States by virtue of EU Law (Art. 216(2) TFEU) and applied vis-á-vis EFTA States; binding for EFTA States under Public International Law (VCLT) and applied vis-á-vis both EU States and other EFTA States. iii. Exclusively applicable when the defendant is habitually resident within the EU (Art. 5(1) Recast Regulation) or a Convention State (Art. 3(1) LC), respectively. iv. Applicable, but, subject to certain exceptions, refer to domestic rules on Private International Law where the defendant is not domiciled within the EU (Art. 6(1) Recast Regulation) or a Convention State (Art. 4(1) LC). 9 B. International Jurisdiction of Courts (VIII) II. The Brussels/Lugano instruments: scope (III) C. Ratione temporis i. The Recast Regulation applies to proceedings initiated on, or after, 10 January 2015 (Art. 81 Recast Regulation) ii. The 2007 Lugano Convention entered into force on 1 January 2010 (Art. 69(4) LC) 10 5

B. International Jurisdiction of Courts (IX) II. The Brussels/Lugano instruments: structure Hierarchical structure 1) Exclusive jurisdiction 2) Tacit prorogation 3) Rules for the protection of weaker parties 4) Prorogation/Choice of court agreements 5) Main rule: defendant s domicile 6) Special rules on jurisdiction 11 B. International Jurisdiction of Courts (X) III. Jurisdiction in cases concerning validity or registration of IPRs (I) Article 24(4) Brussels Ibis Regulation The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties: [1] in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar 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, has taken place or is under the terms of an instrument of the Union or an international convention deemed to have taken place. Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on October 1973, the courts of each Member State shall have exclusive jurisdiction in proceedings concerned with the registration or validity of any European patent granted for that Member State. 12 6

B. International Jurisdiction of Courts (XI) III. Jurisdiction in cases concerning validity or registration of IPRs (II) Article 24(4) Brussels Ibis Regulation The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties: [1] in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar 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, has taken place or is under the terms of an instrument of the Union or an international convention deemed to have taken place. 13 B. International Jurisdiction of Courts (XII) III. Jurisdiction in cases concerning validity or registration of IPRs (III) Exclusive jurisdiction: rationale Connection between certain actions with the creation, i.e.the proceedings for granting the right and with the organisation of the register. Territoriality of the rights granted concurrence of forum and jus. Avoidance of irreconcilable judgments 14 7

B. International Jurisdiction of Courts (XIII) III. Jurisdiction in cases concerning validity or registration of IPRs (IV) Article 24(4) Brussels Ibis Regulation The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties:[1] in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to bedepositedorregistered,irrespectiveofwhethertheissueisraisedbywayofan action or as a defence, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of an instrument of the Union or an international convention deemed to have taken place. Issues of characterisation 15 B. International Jurisdiction of Courts (XIV) III. Jurisdiction in cases concerning validity or registration of IPRs (V) proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered Copyrights excluded CJEU: Ferdinand M.J.J. Duijnstee v Lodewijk Goderbauer(ECLI:EU:C:1983:326) The term proceedings concerned with the registration or validity of patents contained in [Article 24(4)] must be regarded as an independent concept intended to have uniform application in all the[member] States. Narrow interpretation: Registration: correct registration procedure followed Validity: existence of deposit/register, validity of the right 16 8

B. International Jurisdiction of Courts (XV) III. Jurisdiction in cases concerning validity or registration of IPRs (VI) proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered Does not encompass: Disputes concerning the right to protection of IPRs DisputesarisingoutofcontractswhichhaveastheirobjectrightinIPRs Disputes between an employee, the invention of whom is the subject of a patent, and his employer concerning their respective rights in that patent Infringement actions and actions for abstention of tortious conduct Disputes concerning granting or revocation of, or remuneration for, compulsory licences 17 B. International Jurisdiction of Courts (XVI) III. Jurisdiction in cases concerning validity or registration of IPRs (VII) Article 24(4) Brussels Ibis Regulation The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties: [1] in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar 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, has taken place or is under the terms of an instrument of the Union or an international convention deemed to have taken place. 18 9

B. International Jurisdiction of Courts (XVII) III. Jurisdiction in cases concerning validity or registration of IPRs (VIII) irrespective of whether the issue is raised by way of an action or as a defence CJEU:GatGesellschaftfürAntriebstechnikmbH&Co.KGvLukLamellen-und Kupplungsbau Beteiligungs KG(ECLI:EU:C:2006:457) [M] the exclusive jurisdiction provided for by that provision should apply whatever the form of proceedings in which the issue of a patent s validity is raised, be it by way of an action or a plea in objection, at the time the case is broughtoratalaterstageintheproceedings. Butthisdoesnotdepriveanotherwisecompetentcourttodecidetheremainedof the case! 19 B. International Jurisdiction of Courts (XVIII) III. Jurisdiction in cases concerning validity or registration of IPRs (IX) Article 24(4) Brussels Ibis Regulation Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on October 1973, the courts of each Member State shall have exclusive jurisdiction in proceedings concerned with the registration or validity of any European patent granted for that Member State. Leads to fragmentation and multiple litigation 20 10

B. International Jurisdiction of Courts (XIX) III. Jurisdiction in cases concerning validity or registration of IPRs (X) Article 25(4) Brussels Ibis Regulation Agreements [1] conferring jurisdiction shall have no legal force if [1] the courts whose jurisdiction they purport to exclude have exclusive jurisdiction by virtue of Article 24. 21 B. International Jurisdiction of Courts (XX) IV. Jurisdiction under the Brussels/Lugano instruments in other cases involving IPRs (I) The Regulation/Convention applies to all actions concerning civil and commercial matters related to IPRs and the mere existence of Article 24(4) establishes this. Disputes regarding transactions of IPRs, i.e. contracts which have as their object IPRs: Art. 4(1): defendant s domicile Art. 7(1)(a): the Member State for the place of performance of the obligation in question Art. 6(1): domestic rules on jurisdiction 22 11

B. International Jurisdiction of Courts (XXI) IV. Jurisdiction under the Brussels/Lugano instruments in other cases involving IPRs (II) Disputes concerning granting or revocation of, or remuneration for, compulsory licences: Art. 4(1): defendant s domicile Art. 7(1)(a): the Member State for the place of performance of the obligation in question Art. 6(1): domestic rules on jurisdiction Infringement actions/actions for the abstention of tortious conduct (including unfair competition claims) Art. 4(1): defendant s domicile Art. 7(2): the place where the harmful event occurred or may occur Art. 6(1): domestic rules on jurisdiction 23 B. International Jurisdiction of Courts (XXII) V. Special Rules on Jurisdiction for supranational IPRs (I) Community Trade Marks Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (Art. 94 et seq.) The Brussels I Regulation shall apply, subject to rather far-reaching exceptions Introduces special Community trade mark courts for infringement and validity proceedings which shall have exclusive jurisdiction Grants international jurisdiction to the courts of the Member State where: 1) the defendant is domiciled or, failing that, where he has an establishment; or, failing that, 2) the plaintiff is domiciled, or, failing that, where he has an establishment, or, failing that, 3) where the Community trade mark Office has its seat. Subject to agreements of jurisdiction/tacit prorogation in favour of another Community trade mark court. Infringement proceedings may also be brought in the courts of the Member State where the act of infringement has been committed or threatened. 24 12

B. International Jurisdiction of Courts (XXIII) V. Special Rules on Jurisdiction for supranational IPRs (II) Community Designs Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (Art. 79 et seq.) Adopts a solution identical to that in the Community Trade Mark Regulation Community plant variety rights Council Regulation (EC) No 2100/1994 of 27 July 1994 on Community plant variety rights (Arts. 101-102). Reference to the Lugano Convention The Recast Regulation may (and most likely does) applym 25 I. The Rome Regulations C. Applicable Law(I) I. Regulation (EC) No 593/2008 of the European Parliament and of the Council on the law applicable to contractual obligations (Rome I) II. Regulation (EC) 864/2007 of the European Parliament and of the Council on the law applicable to non-contractual obligations (Rome II) Material scope: civil and commercial matters Geographical scope: binding in their entirety and applicable in all Member States by virtue of Art. 288 TFEU. Universal scope of application. Temporal scope: 17 December 2009 (Rome I), 11 January 2009 (Rome II) 26 13

C. Applicable Law(II) II. Infringement actions: Art. 8 Rome II Regulation (I) 1. The law applicable to a non-contractual obligation arising out of an infringement of an intellectual property shall be the law of the country for which protection is claimed. 2. In case of a non-contractual obligation arising from an infringement of a unitary Community intellectual property right, the law applicable shall, for any question that is not governed by the relevant community instrument, be the law of the country in which the act of infringement was committed. 3. The law applicable under this Article maynot be derogated from by an agreement pursuant to Article 14. 27 C. Applicable Law(III) II. Infringement actions: Art. 8 Rome II Regulation (II) 1. The law applicable to a non-contractual obligation arising out of an infringement of an intellectual property shall be the law of the country for which protection is claimed. Intellectual property rights is an autonomous concept Covers, inter alia, copyrights, related rights, the sui generis right for the protection of databases, and industrial property rights (Recital 26 Rome II Regulation) Industrial property rights include: patents, designs, plant variety rights, trade marks, trade names» Contested whether it also includes GIs and designations of origin 28 14

C. Applicable Law(IV) II. Infringement actions: Art. 8 Rome II Regulation (III) 1. The law applicable to a non-contractual obligation arising out of an infringement of an intellectual property shall be the law of the country for which protection is claimed. Infringement of an intellectual property right is an autonomous concept (Art. 13) Includes infringement of intellectual property rights based on: Unjust enrichment, negotiorumgestio, culpa in contrahendo 29 C. Applicable Law(V) II. Infringement actions: Art. 8 Rome II Regulation (IV) 1. The law applicable to a non-contractual obligation arising out of an infringement of an intellectual property shall be the law of the country for which protection is claimed. Lex loci protectionis If the claim is based on a national IPR, the rule directly identifies the applicable law The connecting factor leads to the mosaic approach a single act of infringement may be judged differently under different laws applicable Wide scope: covers almost all relevant aspects of an infringement claim Does notcover issues of validity! 30 15

C. Applicable Law(VI) II. Infringement actions: Art. 8 Rome II Regulation (V) 2. In case of a non-contractual obligation arising from an infringement of a unitary Community intellectual property right, thelawapplicableshall,foranyquestionthatisnotgovernedbythe relevant community instrument, be the law of the country in which the act of infringement was committed. Not all conflict issues pertaining to unitary community IPRs: Application of Community instruments in relation to non-eu states is governed by Art. 8(1). The law of a Member State applicable to gaps in the instruments is governed by Art. 8(2) lex loci delicti. 31 C. Applicable Law(VII) II. Infringement actions: Art. 8 Rome II Regulation (VI) 2. In case of a non-contractual obligation arising from an infringement of a unitary Community intellectual property right, thelawapplicableshall,foranyquestionthatisnotgovernedbythe relevant community instrument, be the law of the country in which the act of infringement was committed. Includes: Community trade marks Community designs Community plant variety rights (arguably) GIs and designations of origin 32 16

C. Applicable Law(VIII) II. Infringement actions: Art. 8 Rome II Regulation (VII) 2. In case of a non-contractual obligation arising from an infringement of a unitary Community intellectual property right, the lawapplicableshall,foranyquestionthatisnotgovernedbythe relevant community instrument, be the law of the country in which the act of infringement was committed. Art. 101(2) Community Trade Mark Regulation Art. 88(2) Community Designs Regulation Art. 97(1) Community Plant Variety Rights Regulation However, all of them refer to the law of the country in which the acts of infringement occurred, including its private international law (renvoi). Consequently, Art. 8(2) applies. 33 C. Applicable Law(IX) II. Infringement actions: Art. 8 Rome II Regulation (VIII) 2. In case of a non-contractual obligation arising from an infringement of a unitary Community intellectual property right, the law applicable shall, for any question that is not governed by the relevant community instrument, be the law of the country in which the act of infringement was committed. Lex loci delicti(commissi) Requires the localisation of an actual or impending infringement in one or more countries Limited scope of application 34 17

C. Applicable Law(X) II. Infringement actions: Art. 8 Rome II Regulation (IX) 3. The law applicable under this Article may not be derogated from by an agreement pursuant to Article 14. 35 C. Applicable Law(XI) II. Infringement actions: Art. 8 Rome II Regulation (X) Relation to other International Conventions Berne Convention Paris Convention TRIPs Agreement WIPO Conventions Article 28(1) Rome II Regulation gives precedence to conflict of laws rules contained in these other Conventions, however, it is of little, if any, practical consequence, since they do not differ materially from Article 8 of the Rome II Regulation. 36 18

C. Applicable Law(XII) III. IPR transactions under the Rome I Regulation (I) Claims based on contractual obligations relating to IPR fall within the scope of the Rome I Regulation, e.g.: Agreements for the transfer of IPRs Licensing agreements Subject to party autonomy (art. 3) In the absence of a choice of law, governed by Article 4(2)-(4) of the Rome I Regulation 37 C. Applicable Law(XIII) III. IPR transactions under the Rome I Regulation (II) Article 4(2)-(4) Rome I Regulation Art. 4(2): law of the country where the party performing the characteristic obligation is habitually resident Always the party selling the IPR or granting the license Habitual residence determined according to Art. 19. Art. 4(3): law of another country if the contract is manifestly more closely connected with that country Art. 4(4): if impossible to determine the applicable law pursuant to the rules of Art. (1) or (2), the law of the country with which the contract is most closely connected 38 19

C. Applicable Law(XIV) IV. Applicable law to the creation, registration and validity of IPRs Outside the scope of Article 8 Rome II Regulation Precede the question of infringement Questions of status excluded from the scope of the Regulation In any event not questions concerning non-contractual oblgiations Outside the scope of the Rome I Regulation Questions of status excluded from the scope of the Regulation In any event not questions concerning contractual obligations Usually subjected to the law of the country of origin of the relevant IPR Community IPRs are governed by EU Law 39 D. Recognition and Enforcement Automatic recognition (Art. 36(1) Recast Regulation; Art. 33(1) Lugano Convention 2007) No exequatur (Art. 39(1) Recast Regulation) Exequatur still necessary under the Lugano Convention (Art. 38(1) Lugano Convention) No review on the merits Limited grounds for refusal of recognition and enforcement Ordre public Procedural irregularities implicating the right to a fair trial and the right to be heard Irreconcilability with earlier judgment Jurisdiction exercised in contravention of, inter alia, Art. 24(4) 40 20

E. Extra-EU outlook I Common Law of England & Wales: Copyrights LucasFilm and others. v Ainsworth and another, [2011] UKSC 39 Mann, J., [2008] EWHC 1878 (Ch.)» US judgment unenforceable» Justiciable in England Court of Appeal, [2009] EWCA 1328» US judgment unenforceable» Foreign international property rights, registered or not, held not justiciable in England (British South Africa Co. v Companhia de Moçambique, [1893] AC 602) 41 E. Extra-EU outlook II Common Law of England & Wales: Copyrights LucasFilm and others. v Ainsworth and another, [2011] UKSC 39 UK SC (per Lords Walker and Collins)» No appeal on enforcement issue.» In the case of a claim for infringement of copyright [1] the claim is one over which the English court has jurisdiction, provided that there is a basis for in personamjurisdiction over the defendant, or, to put it differently, the claim is justiciable. US SC (per Lord Mance)» Agreed, but left room for a different outcome in cases concerning the validity of foreign IPRs. 42 21

E. Extra-EU outlook III US Conflict of Laws: Jurisdiction London Film Prods. V Intercontinental Comms. 580 F.Suppl. 47 (S.D.N.Y.) Copyright infringement causes of actions are transitory in nature Reciprocity concerns No need to pass judgment on the existence or validity of a foreign copyright Forum non conveniens doctrine inapplicable o No alternative forum with personal jurisdiction over the defendant o No advantage demonstrated 43 E. Extra-EU outlook IV US Conflict of Laws: Jurisdiction Boosey& Hawkes Music Pubs v. The Walt Disney Co. 145 F.3d 481 (2 nd Circuit, 1998) Dismissal on the basis offorum non conveniensrequire it be demonstrated that there is an alternative forum available to the plaintiff. Reluctance to apply foreign law may be taken into account, but is not, in and of itself, sufficient to justify declining jurisdiction. Vodav. Cordis(476 F.3d 887 (Fed. Circuit, D.C., 2007)) No jurisdiction over foreign patent infringement claims! 44 22

E. Extra-EU outlook V US Conflict of Laws: Choice of Law Itar-tass Russian News Agency v. Russian Kurier, Inc. 153 F.3d (2 nd Circuit, 1998) Prior positon: national treatment as a conflicts rule 2 nd Circuit: National treatment: non-discrimination provision; not a conflicts rule Issues of ownership: governed by the law with which the property and the parties have the most significant relationship Infringement issues: governed by the lex loci delicti 45 23