Intellectual Property and Private International Law

Intellectual Property and Private International Law

Intellectual Property and Private International Law

Intellectual Property and Private International Law

Synopsis

The protection and commercial exploitation of intellectual property rights such as patents, trade marks, designs and copyright are seldom confined to one country and the introduction of a foreign element inevitably raises potential problems of private international law, ranging from establishing which court has jurisdiction and which is the applicable law to securing the recognition and enforcement of foreign judgments. For example, will a foreign defendant be subject to the jurisdiction of the English courts if he induces his English distributor to infringe a patent in England? What law will apply to a trade mark licensing agreement made between a German company and a French company where the parties have not expressly chosen whose law governs their contract? And are an author's rights determined by the same law as that governing the issue of the transferability of copyright? Although such issues are becoming increasingly important, a dearth of literature exists on the subject. Fawcett and Torremans remedy that neglect and provide a systematic and comprehensive analysis of the topic that will be welcomed by practitioners and scholars alike. From the authors' preface This book is concerned with the application of the rules of private international law to intellectual property cases. Private international lawyers have largely ignored this topic, and it has been left to intellectual property lawyers to discuss this. This is a pity. It is a topic which raises unique questions for the private international lawyer which deserve an answer, and at the same time tells us much about the rules of private international law that are being applied. The aim of the book is to fill this gap in the literature. The emphasis in the book is on private international law rather than on intellectual property law. Nonetheless, it is hoped that intellectual property lawyers will find much to interest them here Most of the book is taken up with a discussion of the relevant rules of private international law and their application in the context of intellectual property law. A major theme of the book is the extent to which there are special rules of private international law for this area and whether there should be such rules. Alternative private international law solutions will be considered by looking at the law in other jurisdictions and, where appropriate, proposals will be put forward for a better solution This book is part of the Oxford Monographs in Private International Law series, the aim of which is to publish work of high quality and originality in a number of important areas of private international law. The series is intended for both scholarly and practitioner readers.

Excerpt

When in 1990 in the course of a critical commentary upon the holding in Tyburn Production Ltd v Conan Doyle [1991] Ch. 75 I advocated 'the construction of a much needed private international law of intellectual property' (61 B.Y.I.L. 202), I was, of course, advocating satisfaction of an obvious need. In the years that have elapsed since then, although some, albeit piecemeal, progress has been made, that need has become even more pressing. This has largely been as a result of advances in technology, both actual and prospective.

Historically the impact of private international law upon intellectual property issues was slight. This may have been in part due to the 'territorial' approach adopted by private international lawyers. The physical location of non-physical phenomena presented difficulty. Even in the immediate post-Beale era response to the criteria of 'closest connection', 'proper law', 'governmental interest analysis', etc., has not been free from difficulty.

However, whatever the explanation of the past failure of private international law to meet the need to accommodate problems in the area of intellectual property, that need is compelling. What is required is a comprehensive pattern of legal rules individually tailored to deal appropriately with a wide and diverse variety of issues. Whether this is to be satisfactorily achieved by statutory intervention alone is, especially in the light of the likelihood of continuing and fairly rapid development, doubtful. There is certainly room for creative judicial activity, which is now facilitated by the currently emerging flexible and justice orientated approach to private international law generally. Moreover, legal writing obviously has an important part to play in the achievement of the objective. The avowed aim of Oxford Monographs in Private International Law is to publish works of originality and quality on a number of important and developing areas of private international law. I think that both practitioners and academics will regard this volume as not only providing a detailed and illuminating analysis of the present position but as also constituting a major contribution to the long overdue evolution of a comprehensive and sophisticated private international law of intellectual property.

Wadham College, Oxford P. B. CARTER 1 May, 1998 . . .

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