Developing a Private International Intellectual Property Law: The Demise of Territoriality?

Dinwoodie, Graeme B., William and Mary Law Review

TABLE OF CONTENTS

  INTRODUCTION

  I. THE PRIVATE INTERNATIONAL LAW OF
     INTELLECTUAL PROPERTY
     A. Public Private International Intellectual
     Property Law
     B. Taking a Broader View
     C. Core Principles
       1. Choice of Law: Scope of the Lex Loci Protectionis
       2. Exclusive Jurisdiction and Serial
          National Litigation
       3. Independence of Rights
     D. Recent Illustrations
       1. NTP v. Research in Motion
       2. Boosey & Hawkes Music Publishers, Ltd. v.
          Walt Disney Co
       3. EU-Wide Relief: Roche v. Primus and
          GAT v. LUK
       4. Voda v. Cordis Corp
       5. Microsoft v. Lindows
       6. Sarl Louis Feraud v. Viewfinder

 II. REFORM: RECONFIGURING TERRITORIALITY
     A. General Principles
       1. A "Bundle" of Separate National Properties:
          Sources and Theories of Territoriality
       2. Territoriality as a Disabling Concept
       3. Territoriality as an Enabling Concept
       4. Between Territoriality and Extraterritoriality:
          A Philosophy of Restraint
     B. Forging Tools of Restraint
        1. Conduct but Not Effects
        2. Qualitative and Comparative
           Assessment of Effects
        3. Adjudicative and Prescriptive Jurisdiction;
           Declining Jurisdiction

III. LEARNING FROM SPECIFIC PROPOSALS
     A. Reviewing Objections to Adjudication of
     Foreign Claims
     B. Departures to Date
     C. Reasons for More Departures
        1. Comity and Legitimacy
        2. Competence

CONCLUSION

INTRODUCTION

Although intellectual property law is a relatively recent legal innovation, it has from an early stage in its development possessed an international dimension. Information-rich products have long crossed borders, prompting interested countries to pursue at least some intellectual property policymaking at an international level. As far back as the late nineteenth century, this resulted in the adoption of a group of multinational treaties that remain the foundation of what can be called the public international law of intellectual property. (1)

Efforts to develop a private international law of intellectual property are much more recent, (2) and are ongoing in a number of different institutional settings. (3) Yet, the need for attention to this field remains acute. (4) These efforts raise a number of questions: the content of current private international law in matters of intellectual property; the adequacy of that body of law in an increasingly globalized environment; the changes that must be made to that body of law; and the institutional means by which a private international law of intellectual property should be developed. (5) This Article explores the content of a private international law of intellectual property, but does not seek to articulate a comprehensive scheme. Rather, this exploration is intended to facilitate consideration of the core principle of territoriality that informs so much of the existing regime. Likewise, although I note the different means by which a private international law of intellectual property is evolving, the Article leaves for another day the institutional analysis of the means by which such a law may best be developed. (6)

Part I sketches the basic principles of private international law that apply in transborder intellectual property disputes, examining treaty provisions and developments at the national and regional level. In this analysis, it is important to look beyond instruments or doctrines that explicitly bear the label of "private international law." Some of the leading questions are highlighted by discussion of six recent transborder intellectual property disputes. These disputes help to illustrate aspects of cross-border exploitation of intellectual property that need to be taken into account both in critiquing current approaches and in formulating alternatives.

Part II turns to focus on the concept of territoriality. Territoriality is a principle that has always received excessive doctrinal purchase in intellectual property law. One can adhere to the basic premises that underlie territoriality without supporting the full range of rules of intellectual property law that are said to reflect the principle. Moreover, the normative force of the principle has declined as units of social and commercial organization have come to correspond less neatly with national borders, and as private ordering has weakened the capacity (and perhaps the claim) of the nation-state exclusively to determine the behavior of its citizenry. Finally, many of the same values (for example, diversity of legal regimes, tailoring of intellectual property to local needs, and protecting rights on an international basis) that the public international intellectual property system sought to further through its promulgation of the principle of territoriality can now best, and perhaps only, be achieved by reconfiguring the principle. (7)

This Article approaches the task of reconfiguration in two ways. First, in Part II, it explores some of the different ways in which the principle of territoriality might conceptually inform a private international law of intellectual property. Contemporary multiterritorial intellectual property disputes are characterized by an excess of shared but weaker prescriptive and adjudicatory authority. The Article suggests a restrained concept of territoriality that reflects that reality, drawing in particular from the treatment of extraterritoriality in trademark law. Part III. of the Article approaches the question less conceptually and addresses reform of a specific principle of private international intellectual property law: limits on consolidated adjudication of infringement claims under domestic and foreign intellectual property laws.

I. THE PRIVATE INTERNATIONAL LAW OF INTELLECTUAL PROPERTY

A. Public Private International Intellectual Property Law

To assess the wisdom of current initiatives to develop a private international law of intellectual property, we must start with what exists. At first blush, this might seem somewhat meager. There is no treaty comprehensively, or even purposefully, addressing the private international law of intellectual property. The provisions resembling conflicts principles found in instruments of substantive (public) international intellectual property law are scattered and episodic, and appear to have been adopted without serious efforts to relate the rule articulated or implied to any general coherent principle of private international law.

For example, some scholars and courts read the core international copyright obligation of national treatment found in Article 5(1) of the Berne Convention as implicating a principle of territoriality and from that, a rule regarding choice of law. (8) Yet, as the Court of Appeals for the Second Circuit has pointed out, consistent with the views expressed by the European Court of Justice, (9) "the principle of national treatment is really not a conflicts rule at all; it does not direct application of the law of any country. It simply requires that the country in which protection is claimed must treat foreign and domestic authors alike." (10) To be sure, the principle of national treatment does generally suggest that national intellectual property laws should determine rights based on place rather than nationality, (11) but this is a very general philosophy with little specific content.

Indeed, if the general principle of national treatment did impose a particular choice-of-law rule, this could be of broad significance. The principle of national treatment is not only a foundation of the Paris and Berne Conventions, but also was reaffirmed in the TRIPS Agreement in 1994. (12) In fact, one leading treatise suggests that the slightly more elaborate national treatment provision of the TRIPS Agreement might limit the choice-of-law rules that a country may adopt. (13) Although subsequent elaboration of that view by one of the treatise authors reveals that the limit on national autonomy that the treatise contemplates would be a small one, (14) two aspects of the debate regarding the effect of Article 3 of the TRIPS Agreement are worth noting for present purposes (in addition to the fact that any limits are small). First, to attach a private international law significance to Article 3, one has to parse the definition of "protection" found in a footnote to Article 3. (15) This hardly suggests a conscious attempt to create a rule of private international law. Second, the limits that Article 3 imposes, such as they are, operate as a constraint on the choice-of-law rules that a state may adopt. They do not mandate a particular rule. (16)

As if to emphasize the dubiety of locating private international law rules in intellectual property treaties, over a century of debate has not resolved whether Article 5(2) of the Berne Convention even speaks to choice of law or, if it does, what it says. (17) Yet, that provision is clearly cast in language that resembles a conflicts rule: it provides that "the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed." (18) The majority view is that Article 5(2) endorses the lex loci protectionis, but this is not without objection from some commentators, (19) and the number of issues to which it applies is also a point of debate. (20) Finally, the few narrow provisions regarding private international law that do exist in intellectual property treaties are often stated without clarity and with no regard for how they might gel with more general principles. (21)

These observations largely hold true at the regional level as well, where intellectual property instruments have barely touched on questions of conflicts. (22) As a result, there is almost no "public private international law" (23) of intellectual property. In the last few years, however, several initiatives have been undertaken that would start to build one. Some of these were general private international law projects of which the provisions relating to intellectual property were a small (but highly contested) part. For example, in 1991 the Hague Conference on Private International Law, at the request of the United States, embarked on a quest to negotiate a jurisdiction and judgments convention of general applicability in civil and commercial matters. (24) Those efforts floundered in 2000-2001, in large part due to disagreement over how to handle intellectual property cases, forcing the Conference to scale back its efforts and concentrate on a convention validating exclusive choice-of-court clauses in business-to-business contracts. (25)

At the same time, the European Union (EU), newly invested with competence in matters of private international law by the Treaty of Amsterdam, transformed the older European Brussels Convention (on jurisdiction and judgments) (26) and Rome Convention (on choice of law relating to contractual obligations) (27) into formal EU instruments. The EU also tackled the law applicable to noncontractual obligations, including in intellectual property actions. (28) Although this process was initially intended in large part to bring the old treaties fully within the EU infrastructure, it prompted substantial debate; again, intellectual property was a focal point of discussion.

Finally, as these generally applicable initiatives gained the interest, but assuredly not the assent, of the intellectual property community, scholars and private lawmaking bodies took up the challenge issued by members of the Hague Conference and started work on proposals that were consciously aimed at the peculiar demands of intellectual property disputes. Professors Rochelle Dreyfuss and Jane Ginsburg first proposed a treaty that was consciously modeled on the failed (broad) Hague Convention, but tailored to problems presented by transborder intellectual property disputes. (29) When that proposal attracted the attention of the American Law Institute (ALI), which adopted it as its own, the form of the Dreyfuss/Ginsburg proposal changed. (30) Reflecting its location outside the context of state-to-state negotiations, the proposed treaty assumed the form of soft law principles and addressed choice of law in addition to the questions of jurisdiction and judgments that had been inherited from the draft Hague Convention. (31) Moreover, reflecting the inevitably international nature of the project, the ALI appointed a European scholar, Francois Dessemontet, as a co-reporter, along with Professors Dreyfuss and Ginsburg, and assembled a thoroughly international group of advisers. The Principles were adopted by the ALI at its annual Meeting in San Francisco in May 2007 and have already been cited by U.S. courts. (32)

Despite (or, perhaps, because of) the efforts of the ALI to internationalize its initiative, (33) groups of scholars in other countries have commenced their own work in this field, including most notably the Max Planck European Group on Conflicts of Law/Intellectual Property (CLIP). (34) Although these groups are formally producing rival sets of principles, there is substantial cooperation and communication among the different groups, aided in part by some overlap in membership. (35)

B. Taking a Broader View

Contemplating the existence and further development of a public private international law of intellectual property might be too narrow an inquiry into the means by which regulation of intellectual property occurs in the context of a transborder dispute. (36) Approached more broadly, principles of private international law relevant to intellectual property clearly do exist, and are growing in number and complexity with every passing year. (37) Moreover, it is in the nature of much private international law to develop without a foundation in international treaties. To be sure, the Hague Conference on Private International Law tirelessly works toward the adoption of instruments in the field in general, but the most effective work of the Hague Conference has been in very particular areas such as family law. (38) Public private international law instruments of general application are hard to find.

Despite that, private international law abounds. Courts routinely are entangled in questions of jurisdiction, choice of law, and (perhaps to a lesser extent) recognition and enforcement of judgments, the basic fields of private international law. Private international rules have classically been rules of local law, not international law at all in the Benthamite sense. (39) Thus, if we broaden our inquiry to consider developments at the national or regional level that address the ability of courts to exercise adjudicatory authority over transborder intellectual property disputes, that seek to articulate the law applicable to such disputes, or that determine whether a local court should recognize or enforce the judgment of a foreign court in an intellectual property dispute, we find a much richer body of law. (40)

To be sure, one should not overstate the existence or depth of this existing body of law. Even when adopting a broader perspective, the extent of private international intellectual property law is slight compared to other fields. Until very recently, there was very little case law or statutory rules, (41) and surprisingly little scholar ship. (42) Without rehearsing fully the many reasons that might explain this vacuum, (43) it is certainly true that most of the relevant developments have occurred in the last fifteen to twenty years. Only now are there substantial scholarly efforts to organize the field, only now are courts consciously rendering decisions that address intellectual property through a private international lens, and only now are policymakers beginning to make some halting progress in bringing together two of the most maddeningly and fascinatingly complex fields of law.

By the same token, in assessing what private international intellectual property law currently exists, one must also bear in mind that sometimes rules of private international law do not come labeled as such. The private international dimension of substantive laws is often hidden, implicit in the legislative edict or judicial decision. Indeed, one of the tasks assumed by early scholars of private international law--most particularly, in choice of law--was to deduce from the nature of the substantive law a guiding principle regarding the scope of its application. (44) This endeavor, which defined the statutist approach and which has adherents still, gave rise to principles of private international law, often by force of necessity as courts and writers were by the circumstance of foreign commerce or conquest required to consider the reach of local laws. (45)

The formalistic nature of the statutist approach, at least in its early incarnations, was subjected to trenchant criticism. (46) But intellectual property laws were relatively immune from even that type of inquiry because public international intellectual property laws had from the late nineteenth century supplied what most scholars and courts had assumed to be a rule of clear application, namely, the principle of territoriality. (47) That principle is somewhat more chameleon-like than most scholars assume. (48) Its protean nature serves only to obscure the real grounds for decisions in this area and to forestall the development of a genuine private international law reflecting the complexity demanded by contemporary exploitation of intellectual property. The territoriality principle could have been parsed to reveal a number of subsidiary propositions, reflecting different but legitimate policy concerns, but this did not happen. (49) The perceived or claimed clarity of the territoriality principle largely precluded such scholarly or judicial inquiry. (50)

These subsidiary propositions, hidden by unquestioning incantation of the principle of territoriality, include a number of principles that truly are in the nature of rules of private international law, the central examples of which are discussed immediately below. Yet many substantive rules of intellectual property law, formulated without any eye to issues of private international law, have by necessity been subjected to arguments that cause the (often unintentional) deduction of a rule of private international law. (51) In the early days of private international law, the necessity was generated both by trading across borders and not a little military conquest, (52) but in recent years the precipitating cause has been free trade and digital communication technologies. In establishing the existing private international intellectual property law, we must also consider the spatial and jurisdictional interpretation of nominally substantive laws.

For example, copyright law is nominally territorial. (53) Statutorily endorsed exceptions allowing for extraterritorial enforcement are narrow. (54) And explicit engagement with principles of private international law is rare. (55) But extended regulation has been achieved by interpreting substantive provisions of the U.S. Copyright Act (for example, the definition of what constitutes a "copy" or what constitutes performance) in ways that effectively create choice-of-law rules. Thus, although early cases held that a "performance," as defined in the Copyright Act (for purposes other than choice of law) occurs at place of receipt of a satellite signal carrying the allegedly infringing work, (56) the Second Circuit in National Football League has since interpreted the same definition as meaning that performance occurs at every "step in the process by which a protected work wends its way to its audience." (57) As a result, performance of a work via satellite occurs also at the place of initiation of signal. Although not explicitly analyzed as such, these interpretations operate essentially as choice-of-law rules. (58) The same type of analysis is found in cases involving online conduct initiated from servers abroad. (59) Likewise, other courts have interpreted the term "authorize" in the Copyright Act, which was intended to provide an explicit basis for secondary liability, to provide a discrete basis of liability with respect to primary conduct occurring abroad. As a result, this has supplied U.S. courts with the local conduct sufficient to assume jurisdiction over a transborder dispute. (60) Finally, using equitable trust doctrines, the U.S. courts have used the existence of a "root copy" or "predicate act" in the United States to assume jurisdiction over infringing conduct abroad that flows from U.S. conduct. (61) Although none of these doctrines is explicitly cast as a matter of private international law, they clearly operate as such. (62)

C. Core Principles

Three principles of the nascent body of private international intellectual property are common to most countries, though the strength of commitment to the principles may vary from one country to another. (63) All might be thought to be a function of territoriality, or at least one rather large conception of that principle.

1. Choice of Law: Scope of the Lex Loci Protectionis

Most national courts have applied the lex loci protectionis to determine the applicable law in intellectual property cases, at least in adjudicating the question of infringement. (64) This rule, that the law of the country for which protection is sought applied in intellectual property cases, is seen as implementation of the principle of territoriality: "when in Rome, do as the Romans do." (65) Moreover, to the (minimal) extent that international treaties expressed a preference for a choice-of-law rule, the lex loci protectionis was favored. (66)

The lex loci protectionis has been applied with the least debate in determining the subsistence and infringement of registered intellectual property rights. The law of the country that granted the right applies to determine both the validity of the grant and its scope of protection. There has been somewhat greater controversy in copyright law, where international law mandates that copyright exist without compliance with formalities such as registration. Yet, most commentators would agree that copyright infringement is typically still a question for the lex loci protectionis.

Some scholars have, however, questioned the resilience of that rule in light of the increased international flow of copyrighted works and the ubiquity of works distributed online. (67) For these scholars, the increasingly dispersed and nonexclusive nature of national prescriptive authority, as well as practical efficiencies, support revisiting the strength of our unconditional commitment to lex loci protectionis, even on the question of copyright infringement. (68) The lex loci protectionis might fail to capture the complicated set of affinities that should prescribe the conduct of online actors. And it might (depending upon how the "place for which protection is sought" is interpreted) provide little guidance as to applicable law in online disputes, or instruct the application of the laws of 180 countries to an essentially unitary dispute, or encourage the development of information havens. It is perhaps not surprising, therefore, that some courts, including in the United States and Canada, have articulated choice-of-law rules that admit greater flexibility on the infringement question (without formally jettisoning respect for the claims of the lex loci protectionis, sometimes identified in the infringement context as the lex loci delicti). (69)

Moreover, the scope of application of the lex loci protectionis is even more uncertain. Certain aspects of an intellectual property dispute (for example, the validity of a contract relating to the transfer of intellectual property rights, or the allocation of rights between employer and employee) implicate interests of states other than the state where the allegedly infringing conduct occurred (and "for which," therefore, "protection was sought"). States where commercial exchanges are made have an interest in determining the conditions under which those bargains are upheld. The regulation of the employment relationship affects the social and economic fabric of the country of production, rather than (or at least as much as) the country where an act of infringement occurred. (70)

Thus, although some countries afford the lex loci protectionis a broad scope of application, (71) others have, for example, opted to apply the lex originis to determine questions relating to the authorship and ownership of copyright. (72) Although U.S. courts have nominally looked to the policy-based approach of the Second Restatement and applied the law of the place with the most significant relationship to the parties and the transaction to questions of initial copyright ownership, (73) they have given weight, in particular, to the nationality of the authors and the place of first publication. (74) As a result, the United States has effectively adopted a lex originis rule on copyright authorship. (75)

Such derogations from the lex loci protectionis can clearly be supported by the different prescriptive interests implicated by rules regarding the allocation of rights among employers and employees. (76) But these alternative choice-of-law rules can also be justified on other grounds, including the fact that choosing the lex originis to determine ownership results in the application of a single law to all disputes. (77) This facilitates international exploitation of the work and tracing of title, which would be largely undisputed as objectives of substantive efficiency. Finally, Graeme Austin has championed the law of the place of production, not only because of the different prescriptive interests implicated by rules on ownership and the benefits of a single law, but also because "sensitivity to the material circumstances of production in the crafting of conflict of law rules seems to better accommodate the political concerns that are grounded in the connection between domestic politics and intellectual property." (78)

Thus, departures from the default rule of lex loci protectionis already exist. The arguments for those departures are varied, but include a different balance in the prescriptive interests of sovereign states, the practical efficiency gains of a single law, and concerns for political values at play in the international intellectual property system.

2. Exclusive Jurisdiction and Serial National Litigation

Historically, courts of a particular country (especially common law countries) would only adjudicate cases involving alleged infringements of rights registered or recognized under the laws of that country and would dismiss claims asserting violation of foreign rights. (79) The doctrinal devices through which this philosophy of "exclusive jurisdiction" was implemented varied among countries, but the result was the same. (80) National courts assumed jurisdiction only over alleged infringement of intellectual property rights conferred by their local law, and thus provided protection only against conduct occurring in that country.

To obtain relief in more than one country for acts of intellectual property infringement, a plaintiff was required to sue separately in every country in which infringement was alleged to have occurred, notwithstanding that the allegations might involve the same conduct by the same defendant with respect to what in fact was the same piece of intellectual property. (81) De iure, by virtue of the principle of territoriality, paradoxically installed by international treaty, the rightholder's separate national proceedings each sought to vindicate separate national property rights. (82) This result, which might seem to flow most logically in the case of registered rights that come into being only upon separate application to different national authorities, pertains equally as a matter of law to rights (for example, copyright) that accrue without registration. (83) There may be international intellectual property law, but there is no such thing as an international copyright, patent, or trademark.

The reasons for this approach, why there has been some modification of the rule in recent years, and why I suggest a further departure, are more fully outlined below.

3. Independence of Rights

The principle of independence of rights formally enshrined in the Paris and Berne Conventions (84) bears more of the characteristics of a rule of public international law, but has clear effects in private litigation and is seen as another instantiation of the principle of territoriality. Yet, as we will see below, in certain contexts, the legal principle cannot withstand commercial realities in an interconnected world. I seek to raise the question whether a direct commercially grounded intrusion upon that principle is more destructive of international comity than minor, relatively deferential accommodations (for example, assumptions that patents on the same invention, emanating from a common application, are presumptively the same in two separate countries) that might be made under a progressive international intellectual property litigation system. (85)

D. Recent Illustrations

These principles have been put under pressure, at least in the first place, not by withering scholarly critique or the force of sustained international reform efforts. Rather, social and commercial pressures have generated disputes among private parties that by their very nature call into question the wisdom or resilience of these principles. To illustrate those disputes, consider the following six transborder litigation scenarios drawn from case law over the past decade. These illustrations can be used as test cases for application of the approaches discussed in Part II of this Article and the challenges that globalization causes for intellectual property law. But they also reinforce what conflicts scholars have long known: territoriality does not foreclose the effective development of a private international law. In fact, the principle of territoriality compels a private international law of intellectual property.

1. NTP v. Research in Motion

In litigation that attracted substantial public attention because of its significance for the continued availability of the BlackBerry personal data assistant, a U.S. patentee brought an infringement action against Research in Motion (RIM), the Canadian manufacturer of the BlackBerry device. (86) RIM's most compelling argument was that the acts alleged to infringe NTP's patents did not occur "within the United States" as required by the language of the U.S. patent statute. (87) Some of the necessary elements of the RIM BlackBerry service (in particular the "relay" or router that transfers the email from the BlackBerry server to the local network allowing the BlackBerry user to receive the email) occurred in Canada. This relay was a key feature of the NTP patent; it was an essential element in the claim of the NTP patent that RIM was alleged to have infringed. NTP possessed no equivalent patent in Canada where the essential activity occurred. (88) In its initial opinion, a panel of the Court of Appeals for the Federal Circuit held that, because "control and beneficial use" of the infringing system was within the United States, the statutory language was satisfied and upheld the finding of infringement. (89)

Patent law is resolutely territorial, (90) and the Supreme Court has consistently reaffirmed that principle, (91) albeit subject to later targeted congressional derogations (92) (sometimes in implementation of treaty obligations). (93) Thus, the apparent ease with which the court found infringement of U.S. law came as a surprise to many commentators. As a result, the Canadian government filed an amicus brief supporting a request for rehearing en banc, urging restraint and comity on the part of the U.S. courts and suggesting that the court's opinion interfered with the business and legal environment in Canada. (94)

The Court of Appeals decided to withdraw its original opinion. In its revised opinion, the court concluded that the situating of the router in Canada enabled RIM to avoid infringement of NTP's method claim because "a process cannot be used 'within' the United States as required by section 271(a) unless each of the steps is performed within this country." (95) However, the court affirmed that, with respect to the system claim, the use of a patent occurs at "the place at which the system as a whole is put into service, i.e., the place where control of the system is exercised and beneficial use of the system obtained." (96) Thus, RIM remained liable for infringement of NTP's system claims because "RIM's customers located within the United States controlled the transmission of the originated information and also benefited from such an exchange of information." (97)

After the issuance of the panel's revised opinion, RIM and the Government of Canada (unsuccessfully) sought en banc rehearing. (98) The Canadian government argued that transnational enforcement of patents may be appropriate in certain circumstances, but that this should only occur after a full analysis of the international implications of applying U.S. law to activity happening abroad (which the Canadian government did not discern in the panel's opinion). More particularly, the Canadian government argued that:

   The reissued panel opinion lacks any acknowledgment or discussion
   of the effect of, or the effect upon, long-established
   international understandings and agreements regarding national
   jurisdiction over intellectual property. Because the decision of
   the panel was neither explained nor justified in terms of
   contemporary, internationally-accepted principles of national
   jurisdiction, the opinion raises questions concerning fundamental
   principles upon which this international intellectual property
   system has harmoniously been based for well over a century. (99)

The position of the Canadian government accurately captures the essence of three important propositions: (1) it may well be that, in an interconnected world, national courts will on occasion be required to grant transborder relief; (2) this should only occur after a full airing of the principles of private international law that inform that question; (100) and (3) the court of appeals had effectively announced a rule of private international law by localizing the use in the United States under what is a version of the law of the most significant relationship test. (101)

The Canadian government's position, as articulated both in its briefs before the court and in the state interests reflected in its law and nongrant of rights to NTP, required respect for several reasons. First, in a world of shared, nonexclusive prescriptive authority, the legitimacy of U.S. law applied without regard for the interests of other states is diminished notwithstanding substantial U.S. activity, and Canada had a rightful prescriptive interest in the dispute. Second, for practical reasons of enforcement, to the extent that the decisions of the U.S. courts might require recognition in Canada to be effective, the legitimacy-grounded assertions of the government of Canada can have real practical bite. Private international law has always been concerned with practical questions as well as claims of fairness and legitimacy. (102) Even if the U.S. courts concluded that U.S. law's finding of infringement should prevail over the lack of plaintiff's rights in Canada because of the weight of the respective interests of those two countries, the mere recognition and consideration of the international implications would surely render Canadian cooperation more likely and show the respect toward the decisions of other nations that other doctrines such as exclusive jurisdiction (discussed below) purport to further.

2. Boosey & Hawkes Music Publishers, Ltd. v. Walt Disney Co.

In 1940, Disney released the animated motion picture Fantasia. (103) The soundtrack to the film included a performance of The Rite of Spring by Igor Stravinsky. (104) Because under U.S. law the musical work was in the public domain, Disney needed no authorization to record or distribute it in the United States, but permission was required for distribution in countries where Stravinsky still enjoyed copyright protection. In 1939, the parties executed an agreement giving Disney rights to use the work in a motion picture. (105)

In 1991, Disney released Fantasia in video cassette and laser disc format and distributed the video on a worldwide basis (including throughout the United States). (106) Boosey & Hawkes Music Publishers Ltd., the assignee of Stravinsky's copyright for The Rite of Spring, sued Disney in federal district court in New York, contending that the 1939 license did not authorize distribution in video format. (107) Boosey sought damages for copyright infringement deriving from Disney's sales of videocassettes of Fantasia in at least eighteen foreign countries. (108)

The district court held that video distribution was not covered by the license and granted partial summary judgment to Boosey, but dismissed the complaint under the …

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Publication information: Article title: Developing a Private International Intellectual Property Law: The Demise of Territoriality?. Contributors: Dinwoodie, Graeme B. - Author. Journal title: William and Mary Law Review. Volume: 51. Issue: 2 Publication date: November 2009. Page number: 711+. © 1999 College of William and Mary, Marshall Wythe School of Law. COPYRIGHT 2009 Gale Group.

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