On Intellectual property and Private International Law

(Following this post, I wrote two posts on Spicy IP; which I have reproduced in a single post below)

The interface between private international law and intellectual property raises some complex problems in legal policy. This post merely seeks to highlight a few issues in relation to this interface.

Over here, I had noted that the doctrine of forum non conveniens would apply even between two domestic Courts. The principles would be the same as the principles for the application of the doctrine in a private international law context. The position is summed up by Dicey and Morris on the Conflict of Laws, where the authors state that a Court has the power to order a stay of proceedings on the grounds of forum non conveniens if the “…defendant shows there to be another court with competent jurisdiction which is clearly and distinctly more appropriate… and (the stay of proceedings) is not unjust…”

It is interesting to examine how this doctrine will be applied specific to cases of intellectual property. A discussion on this aspect is found in James Fawcett and Paul Torremans, “Intellectual Property and Private International Law” (1998).

A case which highlights the problems posed in this area is Tyburn Productions v. Conan Doyle [1991] Ch 75. The plaintiff was a British company which wished to distribute a Sherlock Holmes movie in the United States. The defendant was the only surviving child of Sir Arthur Conan Doyle. The plaintiff was concerned that the defendant would make allegations that he was the sole copyright-holder in relation to Sherlock Holmes. Therefore, a declaration was sought from the British Courts that the defendant had no such copyright. It was held that the British Courts had no jurisdiction in the matter, as questions relating to the validity of intellectual property rights were local actions which could only be adjudicated in the place in respect of which the relief was sought.

A strong criticism against this decision was that it was based on several unfounded assumptions as to the territoriality of intellectual property rights. At the essence of this debate is the policy question of whether Courts should refuse to try a suit in respect of the infringement of a foreign intellectual property, despite having personal jurisdiction over the defendant in the matter. Suits of title to foreign land are typically not the concern of domestic Courts – should foreign intellectual property be treated on a different footing? (This issue was also discussed in a case between Satyam and Upaid, about which a post is found here.)

Fawcett and Torremans recommend the application of the doctrine of forum non conveniens in such instances. They say:

“The fact that the case concerns a foreign intellectual property right will be a powerful factor suggesting that the clearly appropriate forum is abroad… Nonetheless, there may still be circumstances where an English Court thinks it right not to decline jurisdiction, even though the case concerns the infringement of foreign intellectual property rights… one such case would be where one English company markets products in various countries and owns copyrights, designs and trademarks in respect of them. Another English company enters the same markets with products which infringe those rights. In essence one English company has harmed another and an English Court should try the case. This is the great virtue of the doctrine of forum non conveniens; it provides the flexibility to allow an action commenced in England to continue, which a blanket subject-matter limitation on jurisdiction does not…”

A recent decision of Mann J. in the High Court (Chancery Division) – Lucasfilm v. Ainsworth, [2009] F.S.R. 2 – appears to have narrowed down the position flowing from Tyburn.

Tyburn was based on the extension of the so-called “Mocambique” principle of private international law, which states that domestic Courts have no jurisdiction over suits pertaining to foreign land. In Lucasfilm, the Court distinguished Tyburn on the ground that there was a distinction between actions going to the validity of a foreign right and actions which assume validity and are merely for appropriate relief. The rule in Tyburn was confined to the former category. The following principles were said to emerge from the cases after Tyburn:

• There is a tendency to move away from a strict and absolute application of the Moçambique rule to all intellectual property cases, and in particular copyright cases.
• There is a distinction between title and validity on the one hand and trespass/infringement on the other, which would justify the conclusion that infringement of foreign copyright should be justiciable in domestic Courts.
• The private international law rule (if any) which underpins the extent to which a domestic Court should not embark on a consideration of aspects of intellectual property rights is a policy rule which depends on the specific facts of each case, and is not a rule which takes away jurisdiction as such.

The Court therefore concluded:

I am therefore prepared to conclude that an English court can, and in an appropriate case should, determine at least questions of infringement of foreign copyright cases. Those cases will include cases where subsistence is not in issue. I would not, however, hold that questions of subsistence can never be decided here. In land cases incidental questions of title can apparently now be considered. I can see no reason why the same should not apply to copyright.

It would therefore seem that the rule of Tyburn is confined to its specific facts and is not being extended to other areas.

In general, however, this appears to be one interesting area where the application of PIL rules in an IP context can give rise to legal controversy. Other such areas are documented in this WIPO note on “Private International Law and Intellectual Property”. Further, see this link for a discussion of the problems raised by the internet in relation to IP and PIL.

How do Indian Courts deal with such issues? How should they? The importance of answering these questions will only increase in the future…