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
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. …