The Networked Information Society: Territoriality and Beyond

Professor Pedro A. De Miguel Asensio

Abstract

The protection of IP rights in the global networks poses extraordinary challenges to the existing models of adjudicating international disputes. Territoriality is deeply rooted as a basic feature of IP rights influencing jurisdiction rules and choice of law provisions. New trends have emerged to facilitate the adjudication of disputes concerning IP rights of several countries in a single jurisdiction. The development of model rules may significantly influence progress at international, regional and national level. Among the model texts drafted recently on the Private International Law of Intellectual Property the ALI Principles and the CLIP Principles intend to provide guidance for the development of international conventions and other instruments and also for the improvement of national legislations. International jurisdiction and applicable law to disputes concerned with infringement of IP rights carried out through ubiquitous media such as the Internet raise particular difficulties. Indeed, so-called multistate and even ubiquitous infringements have received special consideration both in the ALI Principles and the CLIP Principles. The territorial scope of injunctions arising out of such disputes deserves also particular attention in the context of Internet activities. Territoriality of IP rights is closely related to the widespread acceptance of the lex loci protectionis as the conflict of laws rule to determine the law applicable to IP infringements. Recourse to the law of the country for which protection is claimed leads to the application of as many laws as countries are covered by the claim. Furthermore such a rule has traditionally been considered as mandatory. Hence, party autonomy is not admitted and no exceptions are allowed as illustrated by the approach adopted in Article 8 of the 2007 EU Regulation on the law applicable to non-contractual obligations. This traditional model raises significant difficulties in its application to activities carried through the Internet inasmuch as those activities may simultaneously infringe IP rights in a great number of countries. Strict adherence to territoriality and the lex loci protectionis criterion may lead to the distributive application of many national laws to a single claim concerning those activities. This mosaic rule may in practice be especially burdensome for IP rightholders that intend to claim before a single court the entire damage suffered worldwide. The approaches adopted by the ALI and the CLIP group offers a good starting point to explore the limits and possible alternatives to the prevailing model on the adjudication of multi-state infringement claims and to discuss the devices that can be used to implement a more flexible approach better adapted to the needs of global networks.

Conference Paper