Enforcing Intellectual Property Claims Globally When Rights Are Defined Territorially

Enforcing Intellectual Property Claims Globally When Rights Are Defined Territorially

Description

In recent years, intellectual property has overflowed the “Big Three” (core silos) of copyright, patent, and trademark law. The appearance of novel intellectual property rights at their “edge”' responds to many developments. The salience of knowledge goods in the modem economy has enhanced national interest in encouraging local creative production; competition at the international level, along with the emergence of global value chains, has increased emphasis on tracking information flows among nations; global protection for western science and art has led some countries to recognize the contributions of other cultures and knowledge systems. Most important, however, is the disruptive effect of the Internet. Worldwide connectivity makes many activities - such as data collection and computer hacking—more feasible; low cost distribution channels generate interest in the creativity of remote regions; and social media create both instant celebrity and profound invasions of privacy. It is no wonder, then, that there is growing interest in publicity and privacy rights, trade secrecy and database protection, and rights over traditional knowledge and geographical indications, or that there are calls to update tort and contract law and expand criminal liability. While scholars have spent considerable energy thinking about how national lawmakers should fashion or adapt substantive protective regimes to deal with changes in the creative landscape, it is equally important to consider another effect of the Internet. Connectivity does more than enable and draw attention to all sorts of novel intellectual efforts, it also allows both old and new activities to be accomplished in a very different way: all over the world instantaneously, simultaneously, and ubiquitously. If lawmakers do no more than create innovative intellectual property regimes, they may well perpetuate a problem that copyright, trademark, and patent law have long struggled with: the mismatch between the territoriality of intellectual property law and the global dimension of intellectual production, exploitation, and use. Marketa Trimble has called attention to one example of the problem, showing how devices such as VPNs, Sling and Tor can permit users to disguise their location and obtain access to remote signals, thereby undermining the interests of local right holders. Of course, right holders who learn of remote uses can sue in each country where their rights are violated. But the territoriality of intellectual property protection is problematic from the perspectives of both intellectual property owners and those accused of infringement. At a minimum, suing and defending in multiple territories is expensive. If the right holder is the weaker party, it may not be able to afford to sue everywhere. As a result, rewards and deterrence may be inadequate. Conversely, if the weaker party is the accused infringer, multiple suits can lead to improvident settlements—agreements that, in effect, mean less freedom to rely on the public domain. Even if the parties are well matched, there are difficulties. For example, the smartphone wars are raging around the globe. The parties to the dispute between Apple and Samsung are so well matched; they can both afford prolonged litigation in multiple jurisdictions. Eventually, such disputes resolve (as this one largely has). But before that happens, the lawyers earn millions. The principals, the many judicial systems that hear the cases, and the taxpayers and consumers who must absorb the cost do not make out nearly as well. The issues go beyond expense and wasted judicial resources. In some cases, the elements of these causes of action are divided among jurisdictions. For example, a celebrity image may be cultivated in one country, but exploited without authorization elsewhere; a trade secret might be taken in one state for use far away; or a distribution system may utilize infrastructure divided among several territories. In such cases, suit may be brought in all of the relevant locations, but it is possible that each court will leave it to one of the others impose liability. The result is an omitted case, insufficient liability, and inadequate deterrence. Alternatively, all the jurisdictions might find the accused infringer liable. As the Canadian Supreme Court noted in SOCAN v. Internet Providers, a case involving Internet transmissions through Canada, that did not necessarily start and end in Canada: “[The Internet] ‘raises the spectre of . . . copyright duties on a single telecommunication in both the State of transmission and the State of reception.’” As troubling, it is possible for courts to reach conflicting judgments. Apple and Samsung, for example, were not merely involved in multiple suits; they must grapple with essentially inconsistent outcomes. For example, Apple won in Germany and California, but lost in Japan, South Korea, and Britain. Inconsistency in “the real world” is a problem because the parties have to tailor what they do to the intellectual property law of wherever they are acting. Thus they may have to suffer the expense of manufacturing different products or engaging in different marketing strategies in each of the locations in which they operate. On the Internet, the situation is even worse. Consider, for example, the cases against eBay as to whether it was secondarily liable for sales of counterfeit merchandise occurring on its auction site. In the United States, eBay's monitoring of its site was held adequate enough for eBay to avoid direct or secondary liability; in Europe, a similar level of monitoring was found insufficient. If eBay obeys the European judgments, it will undermine U.S. interests in creating an efficient worldwide auction system; if it obeys the U.S. judgment, it will offend European interests in preserving the cachet and prestige of European trademarks. There are several ways to deal with the mismatch between the territoriality of intellectual property law and the global nature of creative production, exploitation, and use. Part I describes four approaches, each of which manipulates substantive law. All four achieve a degree of efficiency, but they do it at the expense of sovereign authority to craft intellectual property law that reflects domestic values and needs. Part II describes procedural mechanisms that avoid that problem. In particular, Part II focuses on efforts by the American Law Institute, the Max-Planck Institute, and two coalitions of Asian scholars and practitioners to develop an agreement on rules of private international law. The proponents of this approach recognize that it will not be easy to reach consensus on private international law. However, they see a procedural approach as normatively more appropriate (and possibly, easier to achieve) than altering the substance of the Big Three or the rights now emerging at their edges. I conclude with some thoughts on the issues lawmakers and scholars ought to consider if a procedural approach is to be adopted and other benefits this tactic might bring to the international intellectual property system.

Source Publication

The Internet and the Emerging Importance of New Forms of Intellectual Property

Source Editors/Authors

Susy Frankel, Daniel Gervais

Publication Date

2016

Enforcing Intellectual Property Claims Globally When Rights Are Defined Territorially

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