II. Place of Infringement and Questions of Choice of Law
Barbosa, Roberto Garza, Marquette Intellectual Property Law Review
When there is copyright infringement abroad, there are several steps to be taken in order to claim protection overseas. The first step is to locate the country where protection is sought. Even if this task does not represent a problem in principle, the assessment of the place of infringement may not be as clear as one might hope. Moreover, there can be several places of infringement according to several national statutes.
Having determined the place of infringement and the country where protection is sought, the next step is to look into the national law of the protecting country. (42) It is necessary to look at both national copyright law and the governing treaty provisions. It is also important to note how treaty provisions are to be construed and if the international treaty in question is self-executing or if it has an implementing law. This part of the Article will address conflicts of law issues that arise when deciding the applicable law to be applied to infringing activities. (43)
Identifying the country whose protection is claimed is the starting point when engaging in international copyright litigation. The protecting country is the country where the alleged infringing act occurred. (44) It is well established that the law of the protecting country is the applicable law for infringement that occurs in that jurisdiction. (45) Under this approach, if an infringement takes place in Mexico, for example, the protecting country will be Mexico. But this does not necessarily mean that the forum country would be Mexico. This means that even if an infringement action is brought to another forum--where the defendant has his domicile--the applicable law must be that of Mexico. (46)
As already mentioned, the territorial character of copyright law has led to the creation of several copyright and neighboring rights conventions. Like the Berne Convention, almost all the conventions have included the national treatment principle and several minimum rights. Therefore, when applying foreign copyright law, the outcome must be somehow predictable in that it must conform to treaty obligations, such as protected subject matter and remedies. This is significant because efforts to harmonize create certainty in cases involving acts that occur abroad or in cases with international elements.
The proposed mechanism may apply to cases where, for one reason or another, the protecting country is different than the forum country. In those cases, the forum country may issue injunctive relief enforceable in the protecting country, if it contains rights and remedies specifically covered by the copyright law of the protecting country or the TRIPs Agreement. (47) In other words, if the copyright law of the forum country provides for rights not contained in the TRIPs Agreement and the protecting country does not provide for those rights, then the enforcement of the injunctive relief may become uncertain. This lack of regulation may range from moral rights to secondary liability. However, before entering into the details of the proposed mechanism, it is important to analyze some details about the applicable law in international litigation.
Unlike cases in the past when hard copies made it easier to locate the place of infringement, now technological developments have made this locating task more complex. An infringement might include several acts that generally are divided as follows: initiating acts, like making copies or sending communication signals; intermediate acts, including the importation of copies or the relaying of a signal; and consummating acts, like the reception of the signal and sales of materials where the copyright is fixed. (48) Complex cases may involve any of those infringing acts taking place in several jurisdictions--for instance, the transmission of infringing materials posted on the Internet may create uncertainty about the applicable law, though arguably it would be the law of the country of reception. …