Cross-border intellectual property rights enforcement

Written by Karen Abi Younes

Junior Associate

In an interconnected global marketplace, where innovations and creative works are exchanged across borders at an unprecedented rate, the protection of intellectual property (“IP”) rights has become a critical concern.

Cross-border IP enforcement refers to the efforts and mechanisms put in place to protect and uphold intellectual property rights across different countries or jurisdictions. Intellectual property encompasses a range of intangible creations of the human mind, such as inventions, literary and artistic works, symbols, names, and designs used in commerce. It includes various forms of IP rights like patents, copyrights, trademarks, and trade secrets.

Enforcing IP rights becomes complex when they are infringed online upon or violated across international boundaries virtually. This can occur through activities like counterfeiting, piracy, unauthorized use, or theft of IP assets. For instance, a digital product could be pirated and distributed globally through online platforms.

Therefore, this article dives into the obscure landscape of cross-border IP enforcement, (I) examining the obstacles faced and (II) proposing strategies to secure IP as an invaluable asset in the global arena.

1.  Obstacles faced through the enforcement of IP

   The enforcement of IP rights across national borders has become increasingly important. Frequently, IP rights are used to spread and protect the development of new technologies, academic knowledge, and artistic works. In the international setting, it has been found that IP rights promote technology transfer between countries, thus leading to productivity growth.

   Court litigation is a traditional venue used to enforce IP rights violations against parties from the same country. However, using court litigation to enforce IP rights across national borders is difficult for several reasons: IP rights laws differ from one country to another, similar laws between countries can be interpreted differently such that a violation in one country may not be found in another, and attitudes toward IP rights protection differ in that innovating firms believe stronger protection increases incentives for further research, whereas others argue that stronger protection restricts access to new goods and reduces safety.

   In this case, private international law, which concerns relations between private parties across national borders, becomes more relevant when facing the challenges uncovered by the heightened mobility of IP and the globalized nature of commercial dealings. Private international law comes into play if a dispute, or part of the dispute, involves a foreign element, whether the parties are in different states, the place of online infringement is in a foreign state, the damage is incurred in a foreign state, the IP right is registered or came into existence in a foreign State. This intersection between IP and private international law has naturally drawn considerable academic and judicial attention, as it raises important obstacles as (a) to which court has jurisdiction to adjudicate cross-border disputes on IP rights, (b) which law is to be applied, and (c) conditions for foreign intellectual property-related judgments to be enforced.

1. The competent court to adjudicate cross-border disputes on IP rights

    

   Within IP, a widely acknowledged principle maintains that the determination of the legitimacy and registration of IP rights resides exclusively within the domain of the courts of the nation where registration has pursued. This stands true irrespective of the parties' residence involved in the legal proceedings or any affiliations with other sovereign states. This proposition is rooted in the fact that registered IP rights are inherently territorial, circumscribed by the geographical confines in which the IP has secured official registration, thereby also safeguarding public interests associated with such rights. The concept of exclusive jurisdiction underscores that only the judicial entities of a specific state retain the authority to adjudicate over a dispute, disregarding any considerations regarding the residential status of the litigants engaged in the proceedings.

    

   However, in instances pertaining to unregistered IP rights like copyright, which possess a territorial nature yet don't necessitate any formal public administrative procedures for the right's exercise, courts may exhibit a greater inclination toward deliberating on foreign claims of IP online infringement. This tendency is particularly pronounced when challenges to the authenticity of the IP right are absent. Unregistered IP rights may further introduce complexities regarding ownership, with jurisdictional determinations stemming from general rules conferring jurisdiction in such matters.

    

   For example, Pinckney Case[1] : a French resident, M. Pinckney brought an action against an Austrian company, Mediatech, who reproduced his songs on CDs. They were marketed by UK companies via a website accessible from France.

    

   A French court held that it had jurisdiction to hear the case. The court ruled that the accessibility of the website to the French public was sufficient to establish a substantial connection between the facts and the alleged damage. The jurisdiction of this court was challenged by the defendant, who argued that Austrian or UK courts should have had jurisdiction over the case: the Austrian court because the defendant had its seat and manufactured CDs there, and the UK court because it was the place where the online infringement had occurred.

    

   The European Court of Justice ruled that the accessibility of the website reproducing the copyright protected work in one European state justifies the competency of the court of that European state to hear the copyright infringement case. It is not necessary to prove that the alleged infringing activity was ‘directed to’ the European State in which the court seized is situated. However, the European Court of Justice specified that the court of the European state has jurisdiction only to determine the damage caused.

    

    

2. The applicable law by the competent jurisdiction

   Once the competent jurisdiction has been established, the second issue is to define the applicable law. In general, the current legal framework leads to a distributive application of laws. It means that the judge dealing with the cross-border case needs to apply several national laws instead of one. This approach is consistent with the territoriality principle of national IP.

   To know which law is applicable a multiple step approach shall rely on:

   1. an initial step is to translate the presented factual situation into plain legal questions.
   2. allocate each legal question to an established choice of law category.
   3. overriding mandatory such political, social or economic importance or significance to the public interest that they cannot be set aside despite the international nature of the dispute. Overriding mandatory rules override choice of law rules and require the rules to be applied irrespective of the law that would otherwise be applicable. In the absence of overriding mandatory rules, the applicable law will be determined according to choose of law rules. Choice of law rules regulate the applicable law issue but not the legal questions as such. They will direct the judge to the applicable law to be used to resolve the identified legal questions and as such decide on the claims and counterclaims made.
   4. often parties agree on the law to be applied to the dispute. This agreement could be based on an existing contractual understanding or on an agreement reached between the parties after

      the issue in dispute occurred, before or after legal proceedings were initiated.

       

      For example, shall an Austrian copyright holder initiate an infringement case in France regarding an infringement which took place in France, the applicable law to be applied on the conditions of the infringement will be French copyright law on the basis of Article 8.1 of the Rome II Regulation “The law applicable to a non-contractual obligation arising from an infringement of an intellectual property right shall be the law of the country for which protection is claimed”.

3. Conditions of enforcing IP rights in foreign state

   In addition to requiring foreign judgments to be enforceable in their country of origin, enforcement of a foreign judgment by a court are subject to several conditions.

   Firstly, the court of origin must have exercised "international jurisdiction," implying that it had the authority to hear and adjudicate the dispute. The assessment of "international jurisdiction" varies among different states. Some jurisdictions apply their own internal jurisdictional rules, while others adopt the rules of the state of origin or establish special regulations for this purpose. In certain cases, the lack of "international jurisdiction" in the court of origin can be a valid reason for refusal.

   Secondly, the foreign decision must be conclusive and final. Most legal systems stipulate that the decision should be conclusive and definitively settle the matter. This implies that the same dispute cannot be re-litigated between the same parties in the originating court. This requirement doesn't necessarily mean that all potential appeals have been exhausted, but in practical terms, a court approached for enforcement might suspend proceedings if there's an ongoing appeal. Generally, interim or provisional orders are not recognized in such jurisdictions.

   Thirdly, the foreign decision must pertain to the merits of the case. Procedural rulings are usually not recognized, as courts typically follow their own domestic procedural rules and are not bound by foreign judgments based solely on foreign procedural rules.

   Fourthly, there is a prerequisite for the parties to be identical. This implies that the court addressing the enforcement will not recognize a judgment if the parties involved differ from those in the foreign decision or are not in privity with them. However, it's worth noting that certain legal systems permit the enforcement of a judgment against the legal successor who has acquired the rights of the judgment debtor.

   Facing such legal obstacles in case of online infringement of IP rights across international scale, it is mandatory to provide and elaborate strategies that secure IP rights globally without any boundaries.

    

1.  Proposed strategies to secure IP as an invaluable asset in the global arena

Effectively safeguarding IP from cross-border online infringement necessitates a meticulous and vigilant approach. Employing a range of strategic measures, can bolster IP defences against such challenges.

1. Initiating global IP registration is paramount, encompassing patents, trademarks, copyrights, and trade secrets, providing a robust legal basis for protection.
2. Collaborate with adept legal professionals who possess comprehensive knowledge of local IP regulations in each target jurisdiction to navigate the difficulties of enforcement and infringement procedures.
3.  Leverage cutting-edge technological tools to engage in cross-border monitoring, promptly identifying potential infringements across digital platforms and mitigating unauthorized utilization.
4. Strengthen IP security through customs collaboration with relevant authorities in target countries, curbing counterfeit imports and exports and enhancing cross-border protection.
5. Harness the power of international agreements like the Berne Convention and Madrid Protocol to streamline IP safeguards across borders.
6. Fortify contractual agreements by integrating resilient IP clauses within partnerships, distribution, and supplier contracts, succinctly outlining usage parameters and the ramifications of infringement.
7. Deliberate strategic licensing agreements that establish terms of use, delineate territorial boundaries, and stipulate penalties for unauthorized cross-border usage.
8. Implement robust digital protection measures, including encryption and watermarking, to secure online content against unauthorized duplication.
9. Harness market research and analytical insights to deploy effective market surveillance, identifying potential counterfeit products or unauthorized replicas within targeted markets.
10. Embrace proactive enforcement strategies, promptly initiating legal action against infringing parties to establish a precedent and deter future cross-border violations.
11. Engage with specialized organizations that focus on cross-border IP enforcement, capitalizing on their expertise and global reach.
12.  Adapting your enforcement methods to align with local customs and cultural norms amplifies the potency of your actions.
13. Elevate employee vigilance and adherence to IP protection measures through targeted internal training initiatives.

While the sole objective of this article is to highlight the importance of protecting your IP in a world full of insecurities especially infringement in a cross-border scale, we might ask ourselves to what extent countries across the globe will adopt regulations protecting IP rights from international territorial infringements noting the mismatch of different principles and laws?