World Intellectual Property Organization

The Role of Private International Law and Alternative Dispute Resolution

258. The traditional method of resolving legal conflict - court litigation - is largely organized on a territorial basis.  Each country has its own courts, which may be called upon to rule upon disputes falling under their jurisdiction, mostly on the basis of the application of local laws.  This territorially based dispute resolution model faces a number of challenges when applied to disputes arising on the Internet, where activity occurs with little regard for physical boundaries.  In the intellectual property context, if an entity uses a sign on the Internet in which it has secured trademark rights in its country of establishment, but which can be accessed by users anywhere in the world, does the entity run the risk of infringing rights in other jurisdictions?  The laws of which jurisdictions should be relied upon to determine whether such infringement has occurred?  And which courts should have jurisdiction to determine this?

259. Much attention has been brought in recent years to private international law and alternative dispute resolution as means of alleviating these complex issues that the Internet poses.  The following sections of this Survey discuss the relationship between these branches of the law and intellectual property and how they can contribute to enhancing its protection on the Internet.

(i) PRIVATE INTERNATIONAL LAW, INTELLECTUAL PROPERTY AND THE INTERNET

(a) What is Private International Law?

260. Private international law, also known as conflict of laws in more common law-oriented jurisdictions, is the body of law that seeks to resolve certain questions that result from the presence of a foreign element in legal relationships.  Examples of such relationships include contractual disputes between parties located in different jurisdictions, the marital status of partners of different nationalities, the legal status of real estate located in a foreign jurisdiction, and, in the intellectual property context, disputes between a copyright owner residing in one country and Internet users residing in other countries who are accused of making available, on servers located in multiple jurisdictions, copyrighted material for download by any person anywhere in the world, without the necessary permissions.

261. Private international law is generally considered to consist of two major branches.  The first branch seeks to determine which nation's courts have jurisdiction over disputes involving a foreign element and which conditions need to be met for decisions of foreign courts to be recognized and enforced within a country ("jurisdiction and the recognition and enforcement of judgments").  The second branch seeks to determine which nation's laws are to be applied to govern the substance of legal relationships involving a foreign element ("applicable law").

262. Private international law is, contrary to what the label suggests, not international law strictu sensu, i.e., it does not constitute a set of rights and obligations between States.  To the contrary, private international law is municipal law and essentially aims to regulate conduct between private parties.  Its only "international" dimension results from the fact that it comes into application because of the presence of a foreign element.  One consequence of the inherently municipal nature of private international law is that each country has its own set of private international law rules.  As there is relatively little harmonization or coordination of these various rules at the international level, and as they tend to be complex and therefore hard to apply consistently, there is no guarantee that the same dispute involving a foreign element will be decided upon in the same manner from one jurisdiction to another (each jurisdiction reaching different results, on the basis of different rules of private international law).

263. Another peculiar feature of private international law rules, in particular those concerning applicable law, is that they are neither substantive, nor procedural in nature.  For instance, according to most private international law rules, questions concerning the legal status of real property are to be determined by reference to the substantive law of the country where the real property at issue is located.  The private international law rules concerned thus do not purport to resolve the substance of the question, but merely function as a rule of attribution (or allocation) which allows to determine from among the laws of all countries in the world, which is to govern the matter.

264. Private international law has a long tradition in legal systems.  Cross-border movements of persons and goods, typically in commerce, have been with us for millennia and are the primary catalysts of private disputes involving foreign elements.  Such disputes require some form of private international law rules, however crude, to be resolved.  The origins of private international law thus can be traced to ancient Greece and Rome, and the discipline flourished in Europe during the Middle Ages. [384]  With the huge increase in international trade and other, less commercial, interactions between citizens (e.g., marriages between persons of different nationalities) across the globe during the last century, private international law has developed into an indispensable component of the legal apparatus of each nation.

(b) Private International Law and the Internet

265. With the advent of the Internet, cross-border relationships have intensified, raising more complex questions of jurisdiction and applicable law.  Although, as mentioned in the preceding paragraph, the international community has been confronted with fundamentally the same questions ever since the earliest manifestations of international trade, a number of special characteristics of Internet-based transactions have added novel dimensions to the debate.  Among the most noteworthy of such characteristics the following can be mentioned.

(i) Instantaneous Global Presence

266. Prior to the Internet, presence in foreign markets generally was achieved on a piecemeal basis.  First, penetration in the home market was assured, after which gradual expansion to foreign markets was contemplated, and such foreign markets were approached individually, or, at best, on a regional basis.  Very often, the distribution of products in foreign markets was accompanied by some form of physical presence there, either by the producer itself or its local representative. 

267. The Internet has altered the dynamics of this process radically.  Once a website is created and published, it is immediately accessible from everywhere in the world.  At the very least, persons throughout the globe can visit the site, but often they will also be able to order and download products from it.  This global presence raises a number of pressing questions from a private international law perspective:  If a website or other online presence establishes a connection with every country in the world, which courts should have jurisdiction over disputes resulting from such presence and which laws should be relied upon to resolve them?   This feature of the Internet and the questions which it entails have been an important driving force behind the renewed interest, at the multilateral level, in private international law.  As far as jurisdiction is concerned, this interest has found expression in the negotiations on the draft Hague Convention on Jurisdiction and Foreign Judgments in Civil and Commercial Matters, which is discussed in more detail below [385], and the project of the American Law Institute (ALI) on the development of a set of Principles on Jurisdiction and Recognition of Judgments in Intellectual Property Matters.

(ii) Consumer Protection Issues

268. Prior to the development of the Internet as a medium for commercial exchanges, consumers rarely entered into a direct relationship with foreign vendors.  Typically, foreign products were distributed through local importers from whom consumers residing in the territory would make purchases.  As a result of the global presence that the Internet enables, this model in many instances will not longer apply.  Consumers can place orders on, or performs downloads from, the sites of foreign vendors, thus entering into a direct contractual relationship with them.

269. This shift in business model has important legal reverberations from the consumer protection point of view.  To the extent both parties to the transaction are located in the same jurisdiction (i.e., the consumer and the local importer), there are no particular difficulties with respect to the questions of which courts have jurisdiction and which laws should apply to consumer disputes.  However, if those parties are not located in the same country, the question arises whether the courts of the country of the consumer ("country of destination") or those of the vendor ("country of origin") should have jurisdiction.  Similarly, the issue of which applicable law governs the consumer aspects of the transaction becomes more acute.  Those who favor a country of origin approach argue that it would be impossible, or, at the least, unreasonably burdensome, to expect vendors to comply with the consumer protection laws of all the countries from which their websites can be reached.  Those in favor of a country of destination approach maintain that consumers will have neither the resources nor the incentive to pursue vendors in foreign courts.  As consumer protection is regarded a matter of public policy in many countries, these questions have proven particularly vexing to solve, even at the regional or national level. [386]

(iii) Relevance of Intellectual Property

270. There is a close relationship between intellectual property and the Internet, both in terms of the technical infrastructure of the network and the products that are traded on it.  The content that is distributed through the Internet, either lawfully or unlawfully, includes software, text, music and films, products that are at the heart of the copyright system.  Furthermore, much of the information technology which underlies the Internet potentially could benefit from intellectual property protection, although in many instances a deliberate choice was made not to seek such protection ("open standards").  The aspects of the Internet infrastructure which could appropriately be subjected to exclusive proprietary rights also is the subject of constant debate and attention. [387]  In light of these deep ties between intellectual property and the Internet, the question has arisen whether any private international law regime for the Internet could be deemed complete, if it does not also address intellectual property issues.

(c) Sources of Private International Law

271. While a fully articulated private international law regime for intellectual property has not been established at the international level, there exists a body of unified private international law in other areas of the law.  The ensuing paragraphs provide a brief overview of the most important private international law instruments at the global and regional levels.  It must be recognized, however, that, with the possible exception of the situation in Europe in respect of the jurisdiction and enforcement of judgments, the level of unification attained is relatively modest and that, consequently, private international law is still first and foremost a matter of municipal law.

272. The principal source of private international law rules at the multilateral level is the Hague Conference on Private International Law.  The Hague Conference is an intergovernmental organization the purpose of which is "to work for the progressive unification of the rules of private international law." [388]  While the First Session of the Hague Conference was held in 1893, the organization only became a permanent intergovernmental organization with the adoption of its Statute, which entered into force in 1955.  The Hague Conference currently has 62 Member States. 

273. Many multilateral treaties on private international law have been concluded under the auspices of the Hague Conference. [389]  Most of these conventions concern questions of jurisdiction, recognition of judgments and of other official acts, or applicable law.  Typically, the scope of the Hague conventions are highly focused and restricted to certain specific topics, such as questions of marital status, adoption, certain aspects of civil procedure and the international sale of goods.  Only a few of the conventions are of more general application and, among those, figures the Convention of February 1, 1971 on the Recognition and Enforcement of Foreign Judgments in Civil and Commercial Matters, which is in force, but only has three Member States (Cyprus, Netherlands and Portugal) and one Non-Member State (Kuwait). 

274. In 1992, discussions began at the Hague Conference, at the request of the United States of America, to explore the possibility of establishing a new multilateral instrument on the recognition and enforcement of judgments. [390]  Several drafts of such new proposed treaty, entitled Convention on Jurisdiction and Foreign Judgments in Civil and Commercial Matters (the "draft Hague Convention") have been tabled and it has been envisaged that a number of its provisions would be devoted specifically to intellectual property.  Negotiations have been difficult and slow, and it is unclear at this stage whether the Convention ultimately will see the light of day.  The provisions of the draft Convention concerning intellectual property nonetheless have received much attention and are therefore discussed in more detail below. [391]

275. There also exist many private international law instruments at the regional level.  In Europe, the most notable include the Brussels Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters of September 27, 1968 (Brussels Convention), the Lugano Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters of September 16, 1988 (Lugano Convention), and the EC Convention on the Law Applicable to Contractual Obligations of June 19, 1980 (Rome Convention).  The Brussels Convention recently has been replaced by Council Regulation (EC) No. 44/2001 of December 22, 2000 on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters, which entered into effect on March 1, 2002 (Brussels II). [392]  The Brussels Regulation and the Lugano Convention contain a number of provisions which are relevant to intellectual property and which are also discussed in more detail below. [393]

276. Regional agreements concerning private international law also exist in other regions than Europe.  Important work in the area concerned has been achieved in Latin America and include the Treaties of Montevideo of January 11, 1889 and March 19, 1940, as well as the Bustamante Code of Private International Law of February 20, 1928, a code consisting of 437 different articles.  Next to these regional treaties, certain countries have concluded bilateral treaties dealing with certain private international law issues that might arise between them. [394]

(d) Private International Law, Harmonization and Intellectual Property

277. The fundamental difficulty in coping with legal relationships involving foreign elements flows from the fact that the legal systems of more than one country may reasonably be found to have a connection with them.  The application of the laws of one system, rather than the other, in most cases will lead to different results.  One solution to this problem consists of selecting, based on certain criteria, from among the various potentially applicable legal systems, the laws of one particular legal system, to govern the legal relationship.  This, in essence, is the exercise of determining the applicable law under a private international law approach.  It is also the solution which encroaches the least on existing national law, because it requires no changes to such law in order to resolve the problem posed by the presence of the foreign element. 

278. A radically different solution, which is much more intrusive on existing national law, consists of trying to remove, through a process of harmonization, the source of the problem by eliminating the differences that exist between the laws of countries on a given issue.  Harmonization is achieved through the negotiation between States of treaties establishing uniform rules and, after the international instruments in question have been ratified or acceded to by the States concerned, the subsequent modification of municipal laws in order to bring them in line with the treaty provisions.

279. Apart from private international law and substantive harmonization of national laws, there exist also other means of dealing with problems resulting from cross-border legal relationships which may be considered to fall in between those categories in terms of their effect on existing national laws.  Examples of the latter category in the intellectual property field include, for instance, the principle of national treatment.  In the industrial property area, this principle is enshrined in Article 2 of the Paris Convention, which states as follows:

"Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals;  all without prejudice to the rights specially provided for by this Convention.  Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with." 

A similar requirement of national treatment exists in copyright and is contained in Article 5 of the Berne Convention providing that "[a]uthors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention."  While the national treatment principle is aimed at resolving certain questions arising from the presence of foreign elements in a legal relationship (namely, persons desirous to protect their intellectual property in a foreign jurisdiction), this is not achieved through harmonizing the laws concerned.  Indeed, the national treatment principle does not require nations to amend any substantive aspect of their intellectual property regimes, but merely requires them to allow foreigners to benefit from these regimes to the same extent and in the same manner as their nationals, without any discrimination with respect to the acquisition, maintenance and enforcement of the rights concerned.  Neither does the national treatment principle reflect a private international law approach, as it does not purport to designate the law of any particular country that is to govern an intellectual property issue involving a foreigner, but merely states that foreigners should not be treated differently than nationals with respect to intellectual property issues. [395]

280. These differing approaches - reliance on private international law, substantive harmonization, or the application of general principles such as national treatment - are not mutually exclusive.  On the one hand, private international law rules themselves are sometimes harmonized through treaties.  On the other hand, even in areas where harmonized international rules exist, divergences often remain in the implementing legislation of States parties to the relevant treaties, which again may require resorting to private international law techniques to cope with them.  Furthermore, harmonization treaties often include a combination of the various approaches.  Which approach is preferred in relation to a particular question will depend primarily on the nature of the issue, the needs of parties whose interests are most affected by such issue and the degree to which States are willing to modify their municipal laws on the point in question.

281. Historically, for certain branches of the law, the emphasis has been on private international law solutions as a means of dealing with issues arising from cross-border legal relationships, while for other branches, the prevailing trend has been to try to harmonize the relevant norms.  The three great international intellectual property treaties, the Paris Convention, the Berne Convention and the TRIPS Agreement, all place the emphasis on harmonization, both in terms of substance and procedure, and contain few provisions that could be characterized as rules of private international law.  Nonetheless, they do not exclude a private international law approach altogether.  A classic example in the latter regard is Article 5(2) of the Berne Convention, which states that "the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed." [396] More recently, negotiations during the WIPO Diplomatic Conference on the Protection of Audiovisual Performances (December 7 to 20, 2002) on the question of the international recognition of the transfer of rights of audiovisual performers centered at least in part on a possible private international law approach in order to bridge differing positions among delegations. [397]

282. The relatively modest attention which has been brought to private international law as a means of resolving problems arising from the presence of foreign elements by the intellectual property system results from three essential features:  (a) the territorial nature of the intellectual property system, (b) the need for introducing minimum intellectual property standards across jurisdictions and (c) the reliance of the intellectual property system, notably in industrial property, on registration as a means of enabling, or at least, facilitating the protection of the rights concerned.

(i) Territorial Nature of The Intellectual Property System

283. Intellectual property law is "territorial," because its geographical scope of application is defined by and restricted to the boundaries of the nation.  Each country determines, for its own territory and independently from any other country, what is to be protected as intellectual property, who should benefit from such protection, for how long and how protection should be enforced.  Consequently, the fact that a person may have a valid and enforceable intellectual property right in one country, as such, has no bearing on whether that right will be recognized in another country.  The territorial nature of intellectual property law is at least partially explained by its use as an instrument of economic and cultural policy by States.  Intellectual property grants exclusive rights, in effect monopolies, which are intended, on the one hand, to stimulate market actors to invest in new creations by offering them a framework for reaping the rewards of their investments and, on the other, to safeguard the integrity of artistic works, as well as the reputation of artists.  The determination of the conditions which have to be met for such rights to be granted, and of any exceptions to them, requires a careful balancing of competing interests.  Traditionally, States have jealously guarded the power to strike the appropriate balance for their own jurisdictions, and such power has come to be accepted as an essential attribute of sovereignty.  Historically, this deeply engrained notion of territoriality has restrained the reliance on private international law approaches in an intellectual property context.  As noted by Cornish:

"[I]t is conceivable that nations would agree to treat inventors and authors as having personal rights to patents or copyright which are determined by their country of origin.  In principle, then, they would be able to carry their rights thus defined to other countries and demand recognition and enforcement there.  Thus, an author from country A which gives copyright for the author's life and 50 years would be able to demand that period of protection in country B, even though its local law is limited to a copyright of (say) 56 years.  The same would be true of the range of material protected and the scope of the rights granted.  In the early period of industrialization, the political unacceptability of this approach was soon enough appreciated and instead the territorial character of intellectual property became widely accepted during the nineteenth century." [398]

284. Enhanced application of private international law techniques in the intellectual property arena would require increased deference on the part of States to each other's policy choices in the areas of copyright, trademarks and patents.  The historical prevalence of the territoriality principle suggests that there are limits to the degree of flexibility which States are prepared to exhibit in this connection.

(ii) The Need For Minimum Standards of Intellectual Property Protection

285. Resort to private international law techniques to resolve cross-border intellectual property disputes in a world where many countries have deficient intellectual property systems makes little sense, as conflict of law rules may designate the laws of countries with substandard intellectual property rules to govern a particular question.  In other words, a functioning multilateral private international law regime for intellectual property presupposes that the intellectual property laws of most nations have reached a certain level of maturity.  While many countries may be deemed to have reached that level several generations ago, the recognition of the need for robust intellectual property laws by countries worldwide is a relatively recent phenomenon, which initially manifested itself in the seventies and was accentuated by the conclusion of the TRIPS Agreement. [399]

(iii) A System of Registered Rights

286. One important component of the intellectual property system, namely industrial property, relies heavily on the concept of registration as a means of protecting rights.  Typically, a producer will first secure its position in the local market by obtaining the necessary registrations there, later expand his business to foreign markets and obtain equivalent registrations in those jurisdictions.  As a result of intellectual property's territoriality, each nation determines its own conditions and procedures for the acquisition of the registrations in question, and registrations must be obtained for each jurisdiction in which protection is sought.  Producers who have a global market presence, and therefore must file for protection in multiple countries, are faced by a maze of differing registration conditions and formalities.

287. Already in the nineteenth century, it was realized that this situation could severely hamper the development of international trade and that some measure of coordination between the various national intellectual property systems had to be introduced.  This policy objective has been, and continues to be, of such paramount importance that the creation of linkages and increased coordination between the various national systems of registered rights has tended to dominate the agenda of international industrial property negotiations.  The realization of this objective has traditionally been considered far more urgent and effective as a means of enhancing intellectual property protection at the international level, than the creation of a private international law regime specifically tailored to suit intellectual property needs.  This is well illustrated by the fact that two of the principal achievements of the Paris Convention, the provisions on national treatment (Article 2), as well as those on rights of priority (Article 4), facilitate the registration of rights by foreigners in local markets, on the one hand, by ensuring that such foreigners are not discriminated against (national treatment) and, on the other, by offering applicants reasonable time to file applications in multiple countries (right of priority).  Two other major milestones in international industrial property, the Madrid System and Patent Cooperation Treaty, essentially are a large-scale exercise in trying to mitigate the negative effects of the existence of different national and regional systems for the registration of trademarks and patents.

(e) Jurisdiction and Applicable Law in Intellectual Property Disputes

288. While there is no fully articulated private international law regime for intellectual property at the international level, several general principles can be distilled from the national and regional systems.  This section provides a summary of these principles, as they have been applied, in particular in the United States of America and the European Union, to intellectual property disputes on the Internet. [400]  Mention also will be made of the latest status of the discussions on the draft Hague Convention and the project of the American Law Institute to develop a set of "Principles on Jurisdiction and Recognition of Judgments in Intellectual Property Matters."

(i) Jurisdiction

289. In the common law system, and relying in particular on United States terminology, the general requirement is that courts must have both jurisdiction over the defendant ("personal jurisdiction") and the subject matter of the dispute ("subject matter jurisdiction").  Whether a court has personal jurisdiction over a defendant will be a function of the degree of contact between the defendant and the forum (for instance, is the defendant a resident in the forum, or does he only have infrequent or minor contacts there?).  Depending on the degree and level of contact, in the United States of America, such jurisdiction can be "general," meaning that the court has jurisdiction over the defendant even for acts committed outside the forum, or merely "specific," meaning that the court only has jurisdiction over the defendant with respect to those acts committed by him inside the forum.  In the Internet context, this line of enquiry typically is reflected in the question of whether the defendant's website has sufficient connections with the forum for the court to exercise either general or specific jurisdiction.  Two landmark cases in the United States of America - Zippo Mfg. Co. v. Zippo Dot Com, Inc. (1996) [401] and Cybersell, Inc. v. Cybersell, Inc. (1997) [402] - introduced the notions of "passive/interactive websites" and "purposeful availment" as standards to determine whether jurisdictional requirements are met in this context. [403]

290. Even if a court finds that it has personal jurisdiction over the defendant, it must still be verified whether the court has jurisdiction over the subject matter of the claim.  Traditionally, common law courts have been reluctant to accept that they have subject matter jurisdiction over disputes concerning foreign intellectual property rights. [404]  This reluctance is largely explained by the territorial and public policy nature of intellectual property, which have led the courts in question to find that their consideration of foreign intellectual property laws would inappropriately impinge upon the sovereignty of the nations which promulgated them.  Recently, however, United States and English courts have exhibited greater flexibility in this respect, in particular in disputes involving allegations of infringement of foreign copyright. [405]

291. In the European Union, the principal instrument governing questions of jurisdiction, including in intellectual property matters, is the Council Regulation (EC) No. 44/2001 of December 22, 2000 on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters (Brussels II).  This regulation, which entered into force on March 1, 2002 replaces the Brussels Convention of September 27, 1968 and applies to the Member States of the European Union, except Denmark in relation to which the Brussels Convention remains in force.  In addition to the Regulation and Brussels Convention, account has to be taken also of the Lugano Convention which extends the provisions of the Brussels Convention to the Member States of the European Free Trade Association (EFTA). [406]  One article, in particular, of Brussels II deals explicitly with intellectual property issues.  This is Article 22 (4), which reads as follows:

"The following courts shall have exclusive jurisdiction, regardless of domicile:

"4. in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of a Community instrument or an international convention deemed to have taken place.

Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on 5 October 1973, the courts of each Member State shall have exclusive jurisdiction, regardless of domicile, in proceedings concerned with the registration or validity of any European patent granted for that State."

292. A number of other articles of Brussels II, while not making explicit reference to intellectual property, are nonetheless also important in terms of determining jurisdiction over disputes involving intellectual property issues, including those that arise on the Internet.  The two most significant such provisions are Article 2 (1) and Article 5 (3). [407]  Article 2 (1) lays down the general jurisdiction principle underpinning Brussels II, namely that "persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State."  Article 5 (3) provides that "[a] person domiciled in a Member State may, in another Member State, be sued:  ... in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur."  Intellectual property infringements generally will be regarded as torts under Brussels II.

293. In the case of Handelskwekerij Bier B.V. v. Mines de Potasse d'Alsace S.A. (1978), the European Court of Justice ruled that the terms "place where the harmful event occurred"  of Article 5 (3) covered both the place where the damage occurred and the place where the event causing the damage took place. [408]  Account also needs to be taken of the European Court of Justice's decision in the case of Shevill v. Presse Alliance S.A. (1995), in particular in relation to the extent of the relief that can be obtained before the various competent courts under the Mines de Potasse standard.  According to Shevill, the courts of the places where the damage was suffered only have power to award compensation for damages suffered by the plaintiff within their own countries, but, if the action is brought against the defendant in a court of the country of its establishment, those courts have power to grant a fuller extent of damages, not restricted to those suffered in the forum. [409]

294. With respect to intellectual property infringements on the Internet, the application of the above general principles often crystallizes in the question of whether the mere accessibility of a website in the territory is a sufficient basis for finding jurisdiction, or whether something more than mere accessibility is required.  Generally, at least in the United States of America, the mere accessibility of a website in a forum will not be deemed sufficient for a court to exercise jurisdiction over the defendant, [410] but this position is not uniformly shared in all countries. [411]  The European Court of Justice's decision in Mines de Potasse likely implies that a plaintiff can sue, under Brussels II, in multiple courts to seek redress, namely in all places where damage was suffered and in the place where the infringement occurred.  Because of the global accessibility of the Internet, the difficulty consists of localizing damages and the infringing act.  In the copyright context, it would seem reasonable to accept that damage is suffered, at the very least, in the places where unlawful material was downloaded, as such downloads represent lost business for the plaintiff.  Determining the place where the infringing act occurred appears more complicated. [412]  From the plaintiff's point of view it is, of course, preferable, if the court which is seized finds that it has jurisdiction over claims for all damages arising out of the Internet activity which is the subject of the complaint, irrespective of the various countries in which those damages have been suffered.  In the European context, Shevill may offer relief in this regard, provided the court which is seized finds that it has subject matter jurisdiction over any foreign intellectual property rights that may be at issue.

295. Mention also should be made of the discussions concerning jurisdiction that are held in the framework of the draft Hague Convention.  As with Brussels II, several provisions of the draft impact upon intellectual property, but the most significant is the proposed Article 12 on Exclusive Jurisdiction.  Various versions of this Article have been tabled since the start of the negotiations and each invariably has been the source of considerable controversy.  Among the principal difficulties in industrial property figure the questions of whether the courts of the country of registration/protection should have exclusive jurisdiction also over infringement cases and how to deal with (in)validity issues that may arise as incidental questions in proceedings before courts other than those of the country of protection/registration. [413]  The latest draft, as it relates to intellectual property, together with relevant commentary, can be found in the Summary of the Outcome of the Discussion in Commission II of the First Part of the Diplomatic Conference held from June 6 to 20, 2001 and reads as follows: [414]

"Article 12 Exclusive jurisdiction

"...

"Intellectual property  [415]

"[Alternative A [416]

"4. In proceedings in which the relief sought is a judgement on the grant, registration,  validity, abandonment, revocation or infringement [417] of a patent or a mark, the courts of the Contracting State of grant or registration shall have exclusive jurisdiction. [418]

"5. In proceedings in which the relief sought is a judgement on the validity, abandonment, or infringement of an unregistered mark [or design], the courts of the Contracting State in which rights in the mark [or design] arose shall have exclusive jurisdiction.]

"[Alternative B [419]

"5A.  In relation to proceedings which have as their object the infringement of patents, trademarks, designs or other similar rights, the courts of the Contracting State referred to in the preceding paragraph [or in the provisions of Articles [3 to 16]] have jurisdiction. [420]]

"Alternatives A and B

"[6. Paragraphs 4 and 5 shall not apply where one of the above matters arises as an incidental question in proceedings before a court not having exclusive jurisdiction under those paragraphs. However, the ruling in that matter shall have no binding effect in subsequent proceedings, even if they are between the same parties. A matter arises as an incidental question if the court is not requested to give a judgement on that matter, even if a ruling on it is necessary in arriving at a decision.] [421]

"7. [In this Article, other registered industrial property rights [(but not copyright or neighbouring rights, even when registration or deposit is possible)] [422] shall be treated in the same way as patents and marks]

"[8. For the purpose of this Article, "court" shall include a Patent Office or similar agency.] [423]"

296. It appears unclear, at present, whether negotiations on the draft Hague Convention will be successful and whether any international instrument that might ultimately be adopted will include provisions on intellectual property.  In an effort to spur a debate on the desirability of an international regime for the recognition and enforcement of foreign judgments in intellectual property matters, the American Law Institute has initiated a project on the development of draft Principles on Jurisdiction and Recognition of Judgments in Intellectual Property Matters.  The discussion has begun only recently and it is too early to say what direction the project might take. [424]

(ii) Applicable Law

297. While multilateral rules on jurisdictional issues arising in the context of intellectual property disputes are sparse, no international legal framework for determining the law applicable to such disputes is available either.  The following paragraphs discuss some of the principal questions in this connection in the areas of copyright, trademarks and patents, with a particular focus on the acquisition [425] and infringement of rights.

(a)  Acquisition of Rights

298. In the area of copyright, Article 15 of the Berne Convention contains a number of provisions which concern the question of who is to be deemed the "author" of certain types of works.  Article 15 (1) states that "[i]n order that the author of a literary or artistic work protected by this Convention shall, in the absence of proof to the contrary, be regarded as such, and consequently be entitled to institute infringement proceedings in the countries of the Union, it shall be sufficient for his name to appear on the work in the usual manner."  Furthermore, Article 15 (2) provides that "[t]he person or body corporate whose name appears on a cinematographic work in the usual manner shall, in the absence of proof to the contrary, be presumed to be the maker of the said work." 

299. Apart from these articles, the Berne Convention is on the whole quite silent on the question of the acquisition of rights.  Furthermore, these provisions do not purport to determine substantively who is to be deemed an author, but are merely evidentiary rules establishing rebuttable ownership presumptions.  Much more concerned with establishing the various types of rights which authors may have in their works, the Berne Convention thus leaves the question of the acquisition of rights, essentially, to national law.

300. In the absence of any firm guidance in the Berne Convention, the appropriate point of departure in considering the law applicable to the acquisition of copyrights is the territoriality principle.  A strictly territorial reading of the copyright system would imply that each country determines, separately and on its own, who is to be regarded as an author of a work.  At least theoretically, such point of view could result in changes in the identity of an author of a work, as it crosses national boundaries.  In the context of the Internet, where works are transmitted around the globe instantaneously and where the notion of territories is hardly experienced as a practical constraint (compared, for instance, to bandwidth), such consequence may appear to be out of step with reality and a source of considerable legal uncertainty.  As an alternative, it has been proposed that the law applicable to the acquisition of copyright could be determined by reference to a fixed point of attachment.  The main possibilities discussed in this regard include the personal law of the claimed author (i.e., the law of  his or her nationality, or residence), the law of the forum, the law of the country in which protection is sought, or the law of the country of origin of the work. [426]

301. In the area of trademarks and patents, the territoriality principle is reinforced by the fact that these classes of rights, in most instances, are required to be registered in order to benefit from protection.  As such, the acquisition of the rights concerned is to be determined on the basis of the law of the countries in which registration is sought.  Although the Paris Convention does not reflect this principle explicitly, it follows implicitly from several of its provisions and remains basically unchallenged.  The acquisition of unregistered trademarks (or "common law marks," as they are known in certain jurisdictions) is determined on the basis of the law of the countries in which the marks are used, provided, of course, such countries offer protection to unregistered marks. [427]

302. Account also may be taken of the Joint Recommendation Concerning Provisions on the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet, adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of WIPO in 2000 (the "WIPO Joint Recommendation"). [428]  The Joint Recommendation contains a number of articles that provide guidance on the circumstances under which the use of a sign on the Internet may form the basis for the acquisition of trademark rights in such sign.  While, as clarified in its Explanatory Notes, the Joint Recommendation is expressly without prejudice to the law applicable to the issues falling under its scope (leaving this determination to the private international law of individual Member States), its approach, which consists of identifying points of attachment as a solution to questions raised by the ubiquity of the Internet, clearly is inspired by private international law.

303. In Article 5, the Joint Recommendation states that "[u]se of a sign on the Internet in a Member State, including forms of use that are made possible by technological advances, shall in every case be taken into consideration for determining whether the requirements under the applicable law of the Member State for acquiring or maintaining a right in the sign have been met."  However, an important limitation is introduced through Article 2 providing that "[u]se of a sign on the Internet shall constitute use in a Member State for the purposes of these provisions, only if the use has a commercial effect in that Member State" ."  Article 3 lists a number of factors which may be considered to determine commercial effect in a Member State, including whether the user of the sign is doing, or has plans to do, business in the Member State in relation to identical or similar goods or services, the "level and character of commercial activity of the user in relation to the Member State," the "connection of the manner of use of the sign on the Internet with the Member State" and "the relation of the use of the sign on the Internet with a right in that sign in the Member State."

(b)  Infringement of Rights

304. As regards infringements of trademarks and patents, the law of the country where protection is sought also is deemed the governing law, although, contrary to the Berne Convention, the Paris Convention does not state this explicitly. [429]  In other words, whether certain acts committed in one or more territories constitute an infringement of a trademark or a patent is to be judged separately for each territory in which such rights were acquired, based upon the substantive law of that jurisdiction.

305. Except for the separate category of domain name issues, [430] the most vexing question regarding trademarks on the Internet results from the fact that any use of a sign on the web is visible anywhere and thus may potentially result in infringements in any number of jurisdictions, if rights corresponding to the sign are protected there.  Entities contemplating to start businesses supported by an Internet presence, even though they may be aimed solely at the local market, may find themselves in the not so enviable position of having to clear their rights in multiple jurisdictions (theoretically in all), if they are to be sure of their legal position.  Such lack of legal security and unreasonably heavy burden is hardly conducive to the healthy development of commerce on the Internet. [431]

306. One aim of the WIPO Joint Recommendation is to provide guidance on how to alleviate these concerns.  It does so through various different means.  First, it establishes the principle in Articles 2 and 3 that the mere visibility of a sign used on the Internet in a particular jurisdiction can only form the basis for the finding of an infringement if the use "has a commercial effect" in the territory concerned.  In addition, the Joint Recommendation introduces a procedure for notice and avoidance of conflict in Articles 9 through 12.  Under this procedure, a rightsowner, who is of the view that the use of a sign on the Internet by a third party infringes its rights in a particular territory, can send a notification of infringement to such third party.  The Joint Recommendation shields the third party from liability, if it indicates that it has a right in the sign in another territory and "expeditiously takes reasonable measures that are effective to avoid commercial effect in the Member State referred to in the notification."  The important advantage of the procedure contemplated by the Joint Recommendation is that a person intending to use a sign on the Internet no longer would be under the same pressure to clear in advance his rights in multiple jurisdictions, but can limit doing so in those where effectively business will be conducted, leaving any problems that may arise in other jurisdictions to be resolved ex post on the basis of the notification procedure, and this without running the risk of incurring liability.

307. The WIPO Joint Recommendation also contains a number of provisions that are intended to avoid that remedies are granted with too broad effect on the Internet.  Article 13 establishes the general principle that "[t]he remedies provided for the infringements of rights or for acts of unfair competition in a Member State, through use of a sign on the Internet in that Member State, shall be proportionate to the commercial effect of the use in that Member State."  Furthermore, Article 15 stipulates that "[w]here the use of a sign on the Internet in a Member State infringes a right, or amounts to an act of unfair competition, under the laws of that Member State, the competent authority of the Member State should avoid, wherever possible, imposing a remedy that would have the effect of prohibiting any future use of the sign on the Internet."

308. In the area of patents, one specific question may arise with respect to the law applicable to infringements when a patented invention consists of elements that are physically located in different territories.  For example, in the case of process patents for a method to process and transfer certain data using computerized networks (e.g., the Internet), distinct elements in the claimed process could be performed in different territories.  If an alleged infringer operates a system containing all of the claimed elements within the territory in which the invention is protected, there would be a straightforward claim for infringement.  However, the question of applicable law (and jurisdiction) would be more difficult where a patented invention involves activities in several countries by several individuals.

309. One of the few provisions in the existing international intellectual property treaties which clearly have a private international law connotation is Article 5.2 of the Berne Convention concerning the law applicable to copyright infringement.  This Article stipulates that "[t]he extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed."  While there has been some hesitation whether the terms "country where protection is claimed" should be read to refer to the forum (i.e., the country where the court proceedings are brought) or the country where the infringing acts have occurred, the latter interpretation is more widely accepted.[432]

310. In the context of copyright on the Internet, the difficulty consists of determining where the infringing act occurred.  If a file is made available on the Internet by a person residing in country A, on a server located in country B, for download or simple viewing by anyone in the world, where can it be said that the infringing act occurred?  In the country where the file was uploaded?  In the country where the server hosting the file is located?  In each country where the file was downloaded?  In each country from which the file was viewed? [433] 

311. In the area of trademarks, the WIPO Joint Recommendation reflects a preference on the part of the international community to determine for each jurisdiction separately whether an infringement has occurred.  In copyright, however, much of the discussions have centered on proposals to reduce the number of potentially applicable laws, as "an alternative to territoriality." [434]  Several possible points of attachment have been considered in this connection. [435]  Inspired by the legal regime for satellite transmissions, an important portion of the debate has centered on the question of whether the application of the law of the country of emission, or of the country of reception is to be preferred. [436]  Neither solution, however, is without difficulty.  Generally, determining the source of a transmission on the Internet or the location of its reception is a tenuous exercise. [437]  Furthermore, the application of the law of the country of emission may stimulate parties acting in bad faith to locate their Internet activities in jurisdictions with deficient intellectual property regimes in order to evade liability.  Finally, the application of the law of the country of reception would require an assessment of whether an infringement has occurred in each separate jurisdiction.  Such approach is considered hard to reconcile with the ubiquitous manner in which copyrighted material travels over the Internet.

(ii) ALTERNATIVE DISPUTE RESOLUTION

(a) What are the Methods of Alternative Dispute Resolution?

312. "Alternative Dispute Resolution" (ADR) is used here in its widest sense, including all procedures aimed at resolving disputes between private parties outside of the court system, typically, but not necessarily, with the help of a neutral third party.  The following paragraphs provide a non-exhaustive overview of the most commonly used ADR techniques in the order of increasing formality.  The various mechanisms are not necessarily mutually exclusive in any particular conflict, but can be used sequentially or in a customized combination.  They may also be used as an adjunct to court litigation.  The WIPO Arbitration and Mediation Center administers procedures and offers assistance in all of these areas.

  (i) Negotiation

313. Negotiation is an informal process where the parties attempt to resolve their differences through direct interaction.  Negotiations are often the first step in more complex dispute-resolution activities. [438]  Negotiations can be structured in advance by determining, for example, the participants, the subject matter to be addressed, or various activities to be undertaken by the parties at various stages of the process.  Such structures can be agreed upon by the parties, or imposed by external sources, such as self-regulatory instruments or legislation.

(ii) Mediation

314. Mediation (also known as conciliation) is a voluntary, non-binding, confidential and flexible procedure in which a neutral intermediary, the mediator, endeavors, at the request of the parties to a dispute, to assist them in reaching a mutually satisfactory settlement of the dispute, or to provide a neutral evaluation of the parties' respective positions.  The mediator does not have any power to impose a settlement on the parties.  Mediation is also voluntary in the sense that either party may, if it so chooses, abandon the mediation at any stage prior to the signing of an agreed settlement. [439]

(iii) Expert Determination

315. Expert determination is a procedure by which parties agree to submit a particular dispute, usually of a technical, scientific or industry-specific nature, to an expert in the particular subject matter.  The parties can authorize the expert either to render a decision that is binding between the parties as a matter of contract law, or to make a non-binding recommendation on the basis of his or her expertise.  Expert determination is often invoked in aid of a parallel dispute resolution process. 

(iv) Regulated Infrastructure

316. Entities in control of an infrastructure, such as operators of market platforms, online auction sites, or Internet service providers, often issue rules and establish mechanisms to resolve compliance disputes.  Access to the infrastructure is made dependent on submission to those mechanisms.  Since non-compliance can be sanctioned by exclusion, regulated infrastructures have an in-built enforcement mechanism.  The most prominent example of such mechanisms is the Uniform Domain Name Dispute Resolution Policy (UDRP), which is dealt with in more detail below. [440]

(v) Arbitration

317. Arbitration is probably the best known alternative to court litigation and traditionally well established in international trade.  Arbitration is a procedure in which a dispute is submitted, by agreement of the parties, to an arbitrator or to a tribunal of several arbitrators who give a decision on the dispute that is binding on the parties.  Arbitration is also binding in the sense that no party can unilaterally withdraw from the proceedings or resort to court litigation once the parties have agreed to submit a dispute to arbitration. [441]

(b) The WIPO Arbitration and Mediation Center

318. In order to make the advantages of ADR widely available to intellectual property owners, WIPO has established, in 1994, the WIPO Arbitration and Mediation Center (the Center).  The procedures offered by the Center under the WIPO Mediation Rules, the WIPO Arbitration Rules and the WIPO Expedited Arbitration Rules are particularly appropriate for technology, entertainment and other disputes involving intellectual property.  Parties can draw upon a growing list of more than 1,000 independent arbitrators and mediators from some 70 countries covering the entire legal and technical spectrum of intellectual property. [442]

319. The Center has focused significant resources on establishing an operational and legal framework for the administration of disputes relating to the Internet and electronic commerce. For example, today the Center is recognized as the leading dispute resolution service provider for disputes arising out of the registration and use of Internet domain names.  Between December 1999 and October 2002, the Center has received some 4,500 cases under the UDRP alone, relating to approximately 8,000 domain names.  The Center also administers a number of specific policies designed to resolve disputes in the new generic top level domains, namely .aero, .biz, .coop, .info, .museum, .name and .pro.  With disputes arising from these new domains, the total number of cases received by the Center amounts to 20,000. [443]

320. Since the end of 2001, the Center has also observed a marked increase in the number of arbitrations and mediations under the WIPO Arbitration, Expedited Arbitration and Mediation Rules that have been filed with the Center.  These have so far involved parties from 13 countries on three continents and have been conducted in English, French and German.  The subject matter of the proceedings includes both contractual disputes (e.g. software licences, distribution agreements for pharmaceutical products and research and development agreements) and non-contractual disputes (e.g. patent infringement).  In addition, the Center is frequently asked to recommend WIPO neutrals, or to act as appointing authority, by parties to disputes that are not subject to the WIPO Rules but that require experience in arbitration or mediation as well as specialized knowledge of the intellectual property rights in dispute. [444]

321. In addition to providing dispute resolution services to private parties, the Center is frequently consulted on issues relating to intellectual property dispute resolution and the Internet and has been involved in the development of various tailor-made procedures.  The most prominent example is the UDRP which is based on recommendations made by WIPO to address certain abusive practices in the domain name system.  Also in the area of e-commerce, the Center has, on the request of the Application Service Provider Industry Consortium (ASPIC), developed a set of dispute avoidance and resolution best practices specifically tailored to meet the needs of Application Service Providers (ASP). [445]

(c) General Characteristics of ADR

322. ADR is private and, in principle, based on the agreement of the parties involved.  The parties' consent is the basis for the legitimacy of the proceedings.  The private and consensual basis of ADR is the reason for its flexibility:  the parties decide whether and how to resolve their disputes, there is no predetermined number of ADR mechanisms, and, thus, no limit to parties' ability to tailor the proceedings to their needs and circumstances.

323. The underlying consent is often part of a contractual relationship between the parties and is expressed in a contract clause determining the procedures to resolve disputes arising out of, or relating to, the parties' contractual relationship.  Such "pre-dispute" clauses are not always individually negotiated, but can also be part of a standard agreement or an adhesion contract offered on a "take it or leave it basis."  As a general matter pre-dispute clauses provide the parties with a high degree of certainty as to how their disputes will be resolved, a fact that will serve to expedite the actual proceedings.  The dispute resolution process can, however, also be determined in a submission agreement concluded after a dispute has arisen, particularly if the parties' relationship is such that an agreement on the process can be achieved without significant delay, expense or acrimony.  Examples of (pre-dispute) contract clauses and (post-dispute) submission agreements are the recommended contract clauses and submission agreements provided in the WIPO Mediation Rules, the WIPO Arbitration Rules and the WIPO Expedited Arbitration Rules. [446]

324. A dispute resolution process may be conducted ad hoc, i.e., the parties determine, possibly with the help of a neutral, the procedures according to which the dispute will be resolved.  The process may also be conducted under procedures offered by an experienced institutional service provider, such as the WIPO Arbitration and Mediation Center, that has made available comprehensive and proven Mediation Rules, Arbitration Rules and Expedited Arbitration Rules and provides procedural and administrative support to parties and neutrals.  In administering procedures, the Center assists the parties in selecting qualified neutrals (i.e., arbitrators or mediators), determines the neutral's fees in consultation with both the parties and the neutral, provides guidance as to the application of the relevant procedural rules, administers all financial aspects of the proceeding, organizes any support services that may be needed, and ensures the overall neutrality and efficiency of the procedure. [447]

(d) ADR in E-Commerce

325. Disputes in e-commerce are at least as recurrent and varied as disputes occurring in more traditional commercial relationships.  Many of the classic advantages of ADR are therefore equally valid in an e-commerce context.  However, in the experience of the WIPO Arbitration and Mediation Center, the Internet has influenced dispute resolution procedures in at least two respects: 

(1)  It has posed new challenges that make the need for efficient dispute resolution mechanisms both more pressing and more complex.  Some of these challenges will be addressed later in this section;  and 

(2)  In addition to creating new challenges, the Internet has also influenced the way disputes are resolved.  Online methods can render procedures more efficient and are increasingly being used in the context of ADR as well as by courts.  ADR procedures using electronic means of communication and case management are often referred to as "Online Dispute Resolution" (ODR) without, however, implying a conceptual difference to ADR in general.

326. In certain situations, parties might still prefer to refer their disputes to court litigation because of its public nature.  This is the case, for example, if a party is interested in a public precedent to clarify the legal situation, if the other party is totally uncooperative or has been acting in bad faith, as is often the case in an extra-contractual infringement dispute, or if parties expect a public institution, such as a patent or trademark office, to undertake a certain activity as a result of the procedure, such as the registration, cancellation or invalidation of a registered industrial property right. Alternative means of resolving disputes are, however, becoming increasingly important in the various types of e-commerce transactions.  The following paragraphs highlight some of the most important dispute resolution needs in various types of e-commerce transactions, and examine how these needs can be served by ADR proceedings such as those offered by the WIPO Arbitration and Mediation Center.

327. A Single International Forum.  Disputes in e-commerce can be, and increasingly are, as global as the Internet.  This is mainly due to two factors: 

(1) The Internet facilitates direct commercial relationships between parties in different areas of the world, such that in many cases, a party cannot even determine with a reasonable degree of certainty where its contracting partner is located;  and

(2) Because the Internet offers an instantaneous global presence, any act on the Internet can have legal consequences anywhere in the world; [448]  displaying a sign on the Internet might be considered to infringe registered or unregistered rights in potentially any jurisdiction of the world, [449] likewise, commercial practices that are legitimate in one country, might be considered unfair or illegal in others.  It is increasingly difficult for anyone involved in e-commerce to determine with a reasonable degree of certainty in which country its activities might be legally relevant.

328. As a result of these factors, there is a tension between the largely national and territorial character of court litigation and the international - or "a-national" character of e-commerce disputes.  Parties might have to protect their rights, or be held liable, in potentially any jurisdiction, and under the law of potentially any country, that is connected to the Internet.  In addition, since national laws and practices differ widely, multi-jurisdictional litigation always carries the risk of producing inconsistent results.  While it is true that international elements have always been present in (international) trade, such elements now affect potentially every e-commerce transaction and are far more difficult to control.

329. ADR, being consensual, allows parties to keep disputes under control by determining a single neutral forum as well as the rules, if any, for resolving their disputes, rather than having to litigate in a multitude of jurisdictions and under a multitude of different laws.  This is particularly true if the proceeding is administered by an international ADR provider such as the WIPO Arbitration and Mediation Center.  Like e-commerce itself, ADR is not strictly bound by territorial borders and, especially if the procedure is administered online, can take place in the same virtual arena.

330. Accessibility.  International trade was traditionally carried out by a limited number of intermediaries that took orders in one country and placed them in another, thus bridging linguistic and cultural differences, and assuming part of the economic and legal risks.  This has changed with the advent of the Internet:  its low entry barriers enable direct contacts between less sophisticated actors, such as individuals and small entities, and encourage a greater incidence of small and standardized transactions.  The value of these transactions will often lie below the threshold justifying court litigation.  As a result, the number of disputes, as well as the number of parties involved, tends to be higher, whereas the range of problems is more limited than in traditional international trade.  E-commerce needs, therefore, dispute resolution mechanisms that are inexpensive, fast, and easy to access and use while at the same time providing meaningful remedies.

331. While court litigation can provide effective remedies, it is often perceived as cumbersome and expensive.  In most cases, litigation requires the assistance of lawyers, parties have to wait for the allocation of court time (which is often scarce), and procedures, as well as the applicable law, are strictly regulated.  Court litigation is, therefore, unattractive for the resolution of small and standardized disputes.  This is even more apparent if the parties are located in different countries.

332. Because of their essentially private nature, ADR procedures are flexible and can be structured in a way that is both efficient and easy to use, particularly if the range of problems to be addressed is limited and can easily be standardized.  Parties can, for example, dispense with hearings, meetings or other face-to-face communications, and decide to conduct the proceeding completely or partly online.  They can streamline the procedure by limiting the range of problems to be addressed, as well as the scope and number of written or oral pleadings.  Access is, of course, simplified if the dispute resolution procedure has been determined in advance, for example in a contract clause, in an institutional arrangement (such as a certification or "trustmark" scheme), or as part of a regulated infrastructure (such as the UDRP).

333. Preserving Trust and Reputation.  E-commerce takes place in an environment that cuts across territorial and cultural boundaries thus creating a risk of cultural or linguistic misunderstandings while at the same time lacking the informal means of developing trust through face-to-face relationships.  Potential customers might hesitate to buy if they are uncertain as to how future disputes will be resolved.  This concern is particularly relevant for smaller e-commerce vendors that cannot rely on the reputation of a strong trademark as a means to instill trust.

334. In addition, a good reputation can easily be lost in a dispute.  For many companies, it is therefore of vital importance that a dispute with another company or a customer does not become public.  Court proceedings are, however, generally public.  The negative publicity of a public dispute may have severe consequences for the company's future funding and other business and marketing activities.

335. ADR can provide means to accommodate both the need to create trust as well as the need to preserve a company's reputation.  Because of the private nature of ADR, the proceedings themselves can be kept confidential thus allowing parties to focus on the merits of the dispute without concern about its public impact. [450]  Offering to engage in inexpensive, accessible and efficient ADR mechanisms operated by an independent third party can be a means of building trust.  Such mechanisms are even more effective if they involve a neutral and independent entity that certifies a vendor's conformity with certain standards and offers to administer ADR proceedings.  This is the case, for example, in "trustmark" schemes [451] which have been developed to enhance the credibility of e-commerce vendors.  Similarly, regulated infrastructures requiring submission to ADR as a condition for access can enhance trust in, and preserve the integrity of, the infrastructure as a whole.

336. The concern for creating trust and preserving reputation is often shared by a group of companies or even a whole industry.  Some industries have developed codes of conduct that include ADR mechanisms (such as mediation, ombudspersons, dispute review boards or arbitration) allowing outsiders to challenge a particular member's compliance with the standards.  Such mechanisms can serve to enhance the integrity and reputation of the trade or industry group as a whole, and are often used as a means to pre-empt public regulation.

337. Efficiency.  One of the driving forces of e-commerce is efficiency, the fact that transactions can take place more efficiently online than off-line.  Competition requires e-commerce companies to be as efficient and cost-effective as possible in their activities.  This also applies to the way disputes are resolved.  Instead of the highly formalized, but often cumbersome and costly court proceedings, companies increasingly seek business solutions: effective action under their control that takes care of the problem while preserving commercial relationships and reputations.  This need is evidenced by the general tendency towards more informal means of ADR, which, like mediation, are interest-based, rather than rights-based, and allow parties to find a solution by reference to their business needs, without being strictly bound to legal positions.

(e) ADR, E-Commerce and Intellectual Property

338. The close relationship between intellectual property and e-commerce has already been emphasized above. [452]  Intellectual property rights turn intangible assets, such as software, music, movies or information in general, into goods that can be traded digitally.  Intellectual property also provides much of the framework in which e-commerce takes place:  the software which makes online transactions possible, novel business models, or the identifiers, such as trademarks, which enable consumers to find what they want online.  E-commerce disputes therefore often involve intellectual property rights.

339. ADR has, however, traditionally played only a modest role in the resolution of intellectual property disputes.  This has to do with the fundamentally territorial nature of intellectual property rights which are, in principle, only granted for, and protected in, individual countries (or, as is increasingly the case in Europe, regions). [453]  ADR was also widely regarded as inappropriate for the resolution of intellectual property disputes, since intellectual property was perceived as a matter of public policy, rather than a system of private rights and, as such, it did not seem to lend itself easily to private settlement.

340. ADR is, however, gaining increasing importance in intellectual property disputes.  This is evidenced by the growing number of intellectual property disputes filed with institutional ADR providers such as the WIPO Arbitration and Mediation Center.  E-commerce has contributed to pushing intellectual property rights to the center of economic activity - there are more intellectual property rights, more owners of such rights, and more transactions involving such rights.  Intellectual property rights are also increasingly being marketed on an international scale, while the means to protect and enforce them are still firmly rooted in territoriality: court litigation in intellectual property matters may therefore involve a multitude of procedures in different jurisdictions, with a risk of inconsistent outcomes.  In addition, courts cannot always respond to the efficiency demands of intellectual property owners, who can hardly afford to divert scarce resources in terms of time and money to lengthy litigation. [454]  Since court procedures are generally public, they provide few means of responding to the particularly sensitive confidentiality interests of intellectual property owners, and the expertise needed to properly address the often highly technical issues in intellectual property disputes is not always readily available within the national court systems. 

341. ADR proceedings allow parties to avoid many of these disadvantages.  As stated above, ADR can cope with multi-jurisdictional disputes, can be tailored to fit the efficiency demands of the parties, as well as the confidentiality concerns.  ADR procedures also allow parties to select expert neutrals who are knowledgeable about the business, technical and legal issues that may be involved in the dispute.

342. As stated above, ADR might be less suitable in extra-contractual infringement disputes, or if one of the parties seeks to establish a public legal precedent, such as a general declaration of patent validity or invalidity, rather than an award which is limited to the relationship between the parties.  ADR works best if it can be based on a pre-existing relationship between the parties, such as a license agreement, a franchise, or a distribution contract.  Such relationships will often exist in e-commerce, since most of the content distributed over the Internet, as well as much of its infrastructure, is protected by intellectual property rights that are marketed through licensing agreements.  Thus, e-commerce contracts, both in business-to-consumer (B2C), as well as in business-to-business (B2B) relationships, more often than not relate to intellectual property rights, involve licensing agreements, and can therefore provide a basis for ADR clauses.

(f) ADR and Legal Systems

343. While ADR was traditionally developed almost completely outside of national legal systems, its benefits are today acknowledged almost everywhere in the world.  ADR is, in fact, increasingly integrated into the legal systems themselves and is gaining increasing legitimacy as a means for resolving disputes between private parties.  Countries attempt to channel the resolution of private disputes into ADR in an effort to release pressure from the national court systems by requiring, or at least encouraging, parties to engage in mediation or other forms of ADR prior to seeking judicial remedies. [455]  Procedural laws refer to, or even integrate, methods such as mediation or conciliation, which are typical for ADR.  National courts are authorized, and sometimes required, to depart from strict legal procedures by using ADR methods.  In addition to enforcing arbitral awards, some countries, such as the Netherlands and France, provide specific mechanisms for enforcing the outcome of other types of domestic ADR procedures as well. [456] 

344. The integration of ADR into the various legal systems is part of a wider trend that is not limited to e-commerce.  The specific challenges of e-commerce have, however, contributed to that trend.  An example is the expanded liability exposure of entities involved in e-commerce, which can be managed and controlled through ADR mechanisms.  It has been pointed out above that the legal consequences of e-commerce activities are increasingly difficult to predict.  E-commerce companies have to assess the legal relevance of their e-commerce on a worldwide scale.  Smaller companies that take advantage of the Internet's low entry barriers are, however, often either not aware of such risks or lack the resources for a comprehensive legal analysis.  In order to respond to such difficulties, some national and international norms shield entities from liability for their Internet activities up to the point when they are notified that such activities are illegal or infringe the intellectual property rights of another.  Once notified, the entity is required to take measures to end the illegal or infringing state of affairs.  An example is the "notice and avoidance of conflict procedure" in the WIPO Joint Recommendation on the Use of Marks, and Other Industrial Property Rights in Signs, on the Internet.[457]  Such norms call for "structured negotiations", an ADR mechanism, between the party sending the notification, and the entity which is required to act.  The fact that the latter engages in the proceeding shields it from legal liability for its prior activities.

345. Structured negotiations are also used to manage the even more complex liability exposure of e-commerce intermediaries such as Internet service providers, application service providers [458] and operators of market platforms or online auction sites.  Such intermediaries provide access to a certain technical infrastructure.  They typically operate under the double risk of being held liable for the conduct of the users of their services as well as by their users themselves for a denial of service.  Examples for norms regulating that risk with the help of ADR mechanisms is the "notice and take down procedure" established by the United States Digital Millennium Copyright Act (DMCA) and similar provisions of the EU E-Commerce Directive. [459]  Under the DMCA, an Internet service provider [460] must respond to a notification [461] that certain material posted under its control infringes someone else's copyright by "expeditiously" taking down that material.  In addition, the provider must promptly inform its subscriber that access to its web page has been disabled.  If the subscriber then files a "counter notification," [462] the service provider must put the content back on the server within 10 to 14 business days, unless the copyright owner initiates court proceedings against the subscriber.

346. Regulated infrastructures can provide another means of controlling and managing the double liability exposure of intermediaries. [463]  National law might accept the fact that an intermediary provides efficient means for the resolution of disputes between its subscribers and third parties claiming that their rights have been infringed by a subscriber, as a reason for excluding, or at least limiting, the intermediary's (vicarious) liability for activities by its subscribers.

(g) ADR Limits and Challenges

347. As a private, consent-based dispute mechanism, ADR has certain structural limitations.  The following paragraphs analyze these limitations with a particular reference to e-commerce, and provide an overview of means to address them.

348. Consent.  While a court has the authority to order parties subject to its jurisdiction to be joined in court proceedings, there are no means to force a party to participate in an ADR procedure against its will.  ADR is therefore commonly assumed to be viable only in the context of contractual relationships.  Indeed, an increasing number of e-commerce transactions are subject to ADR clauses.  In such cases, the dispute resolution process in question is not always negotiated individually, but often forms part of standard terms and conditions.

349. ADR is gradually moving beyond the purely contractual sphere, particularly in e-commerce.  This is, for example, the case when e-commerce vendors unilaterally pledge to submit to ADR if their customers so wish, which often happens in the context of a "trustmark" or certification scheme [464] operated by a neutral entity.  ADR proceedings can even be used to resolve what are essentially extra-contractual disputes, if one party unilaterally submitted to ADR, e.g., in the context of a regulated infrastructure, or as part of any industry-wide code of conduct.  The most notable example of this is the resolution of domain name disputes under the UDRP, which is specifically designed to address bad faith trademark infringements, a type of dispute that was traditionally outside the reach of ADR mechanisms.  As a result of such developments, ADR, while still conceptually based on the agreement of the parties, [465] is increasingly becoming integrated into institutional systems.  This trend is reinforced by the tendency of national laws to channel private dispute resolution into ADR by encouraging, or even requiring, parties to try alternative means of resolving their disputes prior to seeking judicial remedies. [466]

350. Enforcement.  The outcome of most ADR procedures is not directly enforceable by public mechanisms.  If the parties have reached a settlement, it is in most countries enforceable only as a matter of (national) contract law. [467]  Some ADR procedures provide, however, very effective enforcement options.  The most prominent example is arbitration.  Arbitral awards are recognized and can be enforced, subject to a limited number of specified exceptions, in the more than 120 contracting states of the New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards (the "New York Convention"). [468]  As a result of this Convention, the enforcement of arbitral awards is more efficient than the enforcement of court judgments, which cannot rely on a comparable comprehensive international instrument but is still grounded on bilateral or regional agreements, or on national laws based on comity.

351. Rather than relying on public mechanisms, enforcement can also be facilitated in the context of an institutional structure.  Among the most efficient examples are regulated infrastructures which provide an in-built enforcement mechanism, because a decision that a subscriber has failed to comply with the conditions for use can be sanctioned by exclusion.  The pressure to abide by the outcome of an ADR procedure is less direct, but can nevertheless be efficient, in "trustmark" or certification schemes where a vendor risks losing its certification in case of non-compliance, or in industry-wide codes of conduct where a member of the group risks additional sanctions, such as public criticism, for not complying with the outcome of an ADR procedure.

352. Efficiency versus Due Process.  Efficiency is one of the major advantages of ADR.  Efficiency, however, normally calls for a reduction of complexity.  Complex disputes require more complex proceedings, while disputes concerning only a limited range or a standard set of problems can more easily be resolved in streamlined procedures.  Efficiency gains will, therefore, be most tangible in less complex proceedings.  ADR is flexible and can be tailored to fit the type of disputes to be resolved.

353. Efficiency must, however, be balanced by due process safeguards.  There are two basic elements that need to be taken into account in that context: 

- The less the procedure relies on human interaction and the more it is conducted without face-to-face meetings, the more important are due process safeguards to ensure that the parties are properly notified and to limit the risk of misunderstandings;  and

- The more binding the procedure and the more severe its potential consequences (such as a final decision which cannot be appealed), the more important are due process safeguards.  While due process safeguards can be less stringent for ADR mechanisms which, like mediation, depend on the continuous agreement of both parties to proceed, they are crucially important for procedures such as arbitration where the award is final.

354. National laws and the New York Convention therefore provide a number of due process requirements for the recognition and enforcement of arbitral awards.  While arbitration procedures are subject to a broad set of due process safeguards that developed over time, control mechanisms are less developed with regard to other ADR mechanisms, even though some mechanisms (such as regulated infrastructures) provide fairly efficient enforcement options.  However, where the procedure in question does not exclude access to the national court system, as is the case under the UDRP, recourse to litigation can provide an additional safeguard and function as an appeal.  Non-exclusive procedures are also more likely to be acceptable under national consumer protection laws which tend to invalidate pre-dispute ADR clauses depriving consumers of their right to go to court. [469]

355. The following are examples of the most important due process safeguards that need to be taken into account in basically any ADR procedure: [470]

- All ADR procedures should be supported by the agreement of the parties; [471]

- If third parties are involved as facilitators or decision-makers, they must be impartial and independent;

- Both parties must be duly notified of the proceedings;

- Both parties must, within the scope of the procedure, be given sufficient opportunity to present their case;

- If the proceedings can result in binding decisions, such decisions should only be based on facts that had been part of the proceedings;

- Any such decisions should provide reasons;  and

- There should be an internal or external appeal mechanism, or at least means to control compliance with due process safeguards. [472]

356. Confidentiality.  Confidentiality is traditionally mentioned as one of the key advantages of ADR.  Companies may fear the adverse effects of publicity for their reputation among customers, business partners or competitors.  Moreover, confidential procedures allow the presentation of secret or confidential business information.  Intellectual property owners tend to be particularly sensitive regarding confidentiality given the value and vulnerability of their intangible assets. [473]

357. If, however, the procedure is part of an institutional structure (and the voluntary element is reduced to a minimum) as is the case, for example, in regulated infrastructures, the interest in preserving confidentiality is balanced by a need for transparency.  Confidentiality might create distrust in the integrity of the system, and be regarded as serving vested interests only.  Transparency, on the other hand, can ensure the neutral administration of procedures, further the uniform and consistent application of rules, and help to develop a coherent body of jurisprudence.

(h) An Example:  The WIPO UDRP Experience

358. The ADR procedure established by the Uniform Domain Name Dispute Resolution Policy (UDRP) provides some insight into the advantages and challenges of establishing ADR mechanisms in an online environment.  The UDRP has served as a model for various other dispute resolution policies established for ccTLDs, [474] as well as for the new gTLDs. [475]  The following paragraphs highlight some general characteristics of the system that have contributed to its success, and attempt to draw some general conclusions from the experience of the WIPO Arbitration and Mediation Center.  The procedure is also addressed in Chapter III(c).

359. Contractual and Mandatory.  The UDRP is efficient because it is mandatory.  There is no need to negotiate the parties' submission prior to the procedure since their consent is part of a contractual hierarchy that lies at the basis of the Domain Name System.  On the top of that hierarchy, ICANN has the authority to accredit registrars and to determine the conditions of their operation.  As part of that authority, ICANN obliges registrars to require submission to the UDRP in their registration agreements with domain name registrants.  As a result, all registrants of domain names in the concerned gTLDs [476] are contractually bound to the UDRP.  The UDRP is mandatory in the sense that a procedure can be initiated by a complainant and run its full course even if the registrant refuses to participate.

360. Direct Enforcement.  Another distinct advantage of the UDRP is its in-built enforcement mechanism which is also based on the contractual hierarchy of the Domain Name System.  ICANN requires registrars to directly implement UDRP decisions ordering the cancellation or transfer of a domain name.  This disposes with the need to have UDRP decisions reviewed or confirmed by a court or any public authority prior to their implementation. [477]

361. In addition, registrars are required to block transfers of domain names by registrants during a pending administrative proceeding (UDRP, paragraph 4) or for a period of 15 business days after such proceeding is concluded (UDRP, paragraph 8).  This prevents bad faith registrants from frustrating the UDRP proceedings by transferring the disputed domain name to a third party which is not formally involved in the procedure, a practice which is commonly referred to as "cyberflight", and obviates the need to seek more costly injunctive relief from courts.

362. International.  The UDRP provides a single forum for the resolution of disputes that would otherwise present difficult issues of international jurisdiction because of the likelihood that the parties are based in different jurisdictions, [478] and that trademarks protected in several countries are involved.  The UDRP also establishes a single set of rules for the administration as well as for the decision on the dispute, and does not rely, in principle, on national law.

363. Scope.  It has been stated above that efficiency requires a reduction of complexity.  UDRP proceedings can be streamlined and efficient, because they are limited to "cybersquatting", i.e., bad faith registration and use of a domain name that is identical or confusingly similar to the complainant's mark by a person that has neither a right, nor a legitimate interest in the registered term. [479]  This restriction reflects the common denominator of internationally agreed and accepted principles concerning the abuse of trademark or service mark and has facilitated the acceptance of the UDRP.  The UDRP does not attempt to resolve disputes between parties that both hold a right or legitimate interest in the domain name.  Such disputes would require a much more complex assessment of the rights and interests involved and do not lend themselves easily to streamlining and standardization, especially in an international context.  Also contributing to the overall efficiency of the UDRP is the fact that remedies are limited to cancellation or transfer of domain names that are directly enforceable in the Domain Name System, and that panels cannot award monetary damages which would have to be enforced by public means.

364. Streamlined Procedures.  Procedures under the UDRP are, in principle, limited to one set of pleadings from either party.  In addition, each procedural step is subject to deadlines.  Procedures are almost exclusively conducted online, [480] and - absent exceptional circumstances - dispense with in-person hearings (UDRP Rules, paragraph 13).  As a result, a procedure under the UDRP can be completed within two months.

365. Due process safeguards.  Since submission to the UDRP is mandatory for domain name registrants, and since remedies are directly enforceable, the UDRP contains a number of procedural safeguards:

- Neutrality:   The procedures are administered by neutral dispute-resolution institutions that are not involved in the registration of domain names;

- Notice:  The UDRP requires institutions to use all possible ways of notifying the respondent of the complaint (see UDRP Rules, paragraph 2(a));

- Language:  The language of the procedure will be the language of the registration agreement, unless the parties agree or the panel - in exceptional circumstances - determines otherwise (UDRP Rules, paragraph 11).  This allows a respondent to defend its case in the language which it is most likely to master;

- Burden of Proof:  The complainant carries the burden of establishing all elements even if the respondent is in default (UDRP, paragraph 4(a));

- Impartiality and Independence: Decisions are rendered by impartial and independent panelists (UDRP Rules, paragraph 7) whose profiles are publicly available (UDRP Rules, paragraph 6(a)).  Either party can request that the dispute be decided by a three-member panel in which case both parties participate in the selection of the panelists (UDRP, paragraphs 3(b)(iv) and 5(b)(iv)).  Panelists are under an obligation to ensure that both parties are treated with equality and that each party is given a fair opportunity to present its case (UDRP Rules, paragraph 10(b));

- Reasoned Decisions:  Decisions shall be in writing, provide the reasons on which they are based, and identify the name of the panelist (UDRP Rules, paragraph 15(a));

- Appeal:  The UDRP itself does not provide an appeal mechanism.  However, either party is free to bring the dispute before a national court of justice before, during or after the procedure;  and

- Fees:  All fees for a UDRP proceeding are to be paid exclusively by the complainant, except where the respondent has opted for a three member panel, in which case the fees are split evenly between the parties. [481]

366. Transparency versus confidentiality.  The UDRP has largely opted for transparency with a view to discourage cybersquatting and to allow a coherent body of jurisprudence to develop.  As long as a procedure is pending, only the disputed domain name and the case number are published;  once a decision is rendered, it is published in full, also providing the name of the panelist(s) (UDRP Rules, paragraph 15(a)).  The WIPO Arbitration and Mediation Center has further enhanced the transparency of the UDRP dispute resolution mechanism by providing a searchable "Index of WIPO UDRP Panel Decisions". [482]  This index allows interested parties to search for decisions that relate to a particular subject matter or address a particular legal issue.

(i) New Developments in ADR

367. Based on what has been said in the previous paragraphs and on the experience of the WIPO Arbitration and Mediation Center, it is possible to identify a number of trends concerning the future development of ADR in e-commerce.

368. Online ADR.  ADR will not only increasingly relate to e-commerce activities, but will also make increasing use of online means of communication and case administration.  It seems likely that procedures for resolving disputes related to the parties' online presence will, like the UDRP, as much as possible be placed in the same online environment.  Certain types of procedures will dispense with in-person hearings or meetings wherever possible.  In certain, albeit limited, situations, the use of online means might go so far as to refer even the resolution of the dispute itself to a computer system. [483]

369. Expansion of ADR.  ADR has traditionally been limited to particular sectors.  Arbitration, for example, was almost exclusively confined to high-value disputes in international trade, while mediation was originally most popular in the area of family or labor disputes.  E-commerce, with its special needs for efficient dispute resolution on an international level, has accelerated the trend towards ADR also in areas that, like intellectual property, have traditionally relied almost exclusively on court litigation.

370. Informal ADR.  It appears likely that there will be a tendency towards less formal ADR methods that do not exclude the parties' recourse to litigation.  E-commerce, with its emphasis on efficiency, increasingly favors the speedy, interest-based and less costly resolution of disputes through ADR over formal and complex, and therefore more costly, procedures.  Informal ADR procedures - particularly if they do not exclude the parties' recourse to national courts - raise fewer due process concerns and are more likely to be accepted under the national legal systems involved.  While arbitration will continue to play a dominant role in business-to-business disputes, less formal procedures, such as structured negotiation, mediation or other tailor-made schemes are likely to be increasingly used for business disputes as well as disputes involving consumers and private individuals.

371. Tailored ADR Procedures. In order to realize the efficiency gains that are likely to result from streamlined and standardized procedures, ADR will increasingly be tailored to specific types of disputes, such as disputes arising in specific businesses or industry sectors (e.g., insurance, Internet service providers and application service providers [484]), from specific types of transactions (e.g., e-commerce auctions) or for specific subject matters (e.g., cybersquatting [485] and privacy).  As such, the procedures are likely to become part of the (legal or business) standard in the specific area concerned, and are more likely to be accepted by the stakeholders concerned.

372. ADR in Institutional Relationships.  The development of specific ADR mechanisms for specific types of disputes will also further the trend to integrate ADR procedures into institutional relationships, such as certification or "trustmark" schemes, self-regulation and industry standards, or regulated infrastructures (as in the case of the UDRP).  Such institutional solutions dispose with the need to bargain for both parties' submission to the proceedings, thus increasing the efficiency as well as the legal certainty of dispute resolution.

373. In-built Enforcement Mechanisms.  As part of institutional relationships, ADR procedures often provide in-built enforcement mechanisms since non-compliance can be sanctioned by exclusion from the certification scheme, the industry, or the infrastructure concerned.  The experience under the UDRP has shown that such mechanisms greatly enhance the efficiency of ADR procedures and largely dispense with the need to seek the help of public enforcement mechanisms.

374. Public Support.  Given the interest of government and public authorities in channeling the resolution of private disputes into ADR, it is likely that ADR mechanisms will be supported and encouraged by public regulation.  Hybrid dispute resolution systems result if a public authority defers to solutions developed through private ADR, or lends its authority to the outcome of ADR procedures.  Increasing public attention to ADR is also likely to result in more active policing of minimum procedural safeguards, while public scrutiny has so far largely been confined to regulating arbitration.


[384] See H. Battifol and P. Lagarde, " Droit International Privé," (8th edition, 1993), Volume 1, at pp.17-31.

[385] See A. D. Haines, "The Impact of the Internet on the Judgements Project:  Thoughts for the Future," available at http://www.hcch.net/e/workprog/jdgm.html.

[386] See, for instance, Joint Declaration of the European Council and the European Commission, available at http://europe.eu.int/comm/justice_home/unit/civil_en.htm and United States Federal Trade Commission, "Consumer Protection in the Global Electronic Marketplace - Looking Ahead," (September 2000), available at http://www.ftc.gov/bcp/icpw/lookingahead/lookingahead.htm.

[387] Reference is made in this connection to, for instance, the discussions regarding the patentability of online business models.  For more on this subject, see paras.243-246.

[388] See Article 1 of the Statute of the Hague Conference on Private International Law.

[389] A list of such treaties is available athttp://www.hcch.net/e/conventions/index.html.

[390] According to the United States Patent and Trademark Office (65 Fed. Reg. 61306/RIN 0651-AB25), "[t]he impetus behind th[is] request was to gain recognition and enforcement of U.S. judgments in other countries.  While U.S. courts generally recognize and enforce judgments from other countries, U.S. judgments do not always receive the same treatment abroad." 

[391] See paras.288-296.

[392] Similarly, a Regulation aimed at replacing the Rome Convention is currently under consideration.  See "EU Actions on Jurisdiction, Choice of Law Watched Closely by E-Commerce Interests," E-Commerce and Law Report (March 20, 2002).

[393] See paras.288-294.  Specifically with regard to patents in the European context, account also has to be taken of the provisions of the European Patent Convention concerning opposition procedures and its Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent.  For a discussion of these provisions, see J. Fawcett and P. Torremans, "Intellectual Property and Private International Law," at pp.27-28 and 52-61.

[394] For examples of such bilateral arrangements, in particular those concluded by France, see Battifol et al, supra note 384, at pp.605-608.

[395] For instance, if a foreigner wished to obtain the registration of a sound as a trademark in a particular country, typically a private international law rule would provide that questions of the registrability of a mark by foreigners are to be determined by reference to the law of a given country.  The national treatment principle, however, only implies that the country in which registration is sought could not lawfully allow its nationals to register sound marks, but not foreigners.

[396] For a discussion of this provision and its relationship with private international law, see A. Lucas, Private International Law Aspects of the Protection of Works and of the Subject Matter of Related Rights Transmitted over Digital Networks, WIPO Forum on Private International Law and Intellectual Property, Geneva, (January 30 and 31, 2001) (document WIPO/PIL/01/1 Prov.).  See also paras.298-299.

[397] See "Understanding of Provisions of the Instrument, Diplomatic Conference on the Protection of Audiovisual Performances," Geneva, (December 7 to 20, 2000) (document IAVP/DC/33).

[398] W.R. Cornish, "Intellectual Property" (4th edition) (Sweet & Maxwell, 1999), at pp.26-27.

[399] The Paris and Berne Unions, from the date of their constitution in 1883 and 1886 until 1960, included less than 50 members each.  Presently, however, 164 States are party to the Paris Convention, 149 to the Berne Convention and 144 to the TRIPS Agreement.  During the period from 1991 until 2000 alone, more States became party to the Paris Convention (63) and the Berne Convention (64) than the total membership for each Union eighty years after their establishment.  This evolution can be graphically illustrated as follows:

[400] For a more complete discussion of the subject, reference is made to the papers presented at the WIPO Forum on Private International Law and Intellectual Property, available at http://www.wipo.int/pil-forum/en.

[401] 952 F. Supp. 1119, 1124 (W. D. Pa. 1996).

[402] 130 F. 3d 414 (9 th Cir. 1997).

[403] See D. Rice, "Jurisdiction over E-commerce Disputes:  Different Perspectives under American and European Law in 2002," International Federation of Computer Law Associations, Berlin, (June 7-8, 2002).

[404] See G. Austin, "Private International Law and Intellectual Property Rights, A Common Law Overview," January 2001, pp.8-10, available at http://www.wipo.int/pil-forum/en.  Specifically in relation to trademarks, see G. Dinwoodie, "Private International Aspects of the Protection of Trademarks," January 2001, pp.18-26, available at http://www.wipo.int/pil-forum/en.

[405] See Austin (2001), Ibid, at pp.8-10, available at http://www.wipo.int/pil-forum/en.

[406] EFTA comprises four Member States:  Iceland, Liechtenstein, Norway and Switzerland.  For more information on EFTA, see http://www.efta.int.

[407] Still others include Article 6 (1) on joint defendants, the provisions of Section 4 concerning jurisdiction over consumer contracts and the provisions of Section 9 on lis pendens - related actions.

[408] See the discussion of the case in Cheshire and North, "Private International Law" (13 th edition), at pp.215-216.

[409] J.C. Ginsburg, "Private International Law Aspects of the Protection of Works and Objects of Related Rights Transmitted Through Digital Networks," (December 1998), at pp.18-19, available at http://www.wipo.int/news/en.

[410] See J.C. Ginsburg, "Private International Law Aspects of the Protection of Works and Objects of Related Rights Transmitted Through Digital Networks" (2000 Update), (January 2001), at pp. 3-6, available at http://www.wipo.int/pil-forum/en and Dinwoodie (2001), supra note 404, at pp.15-18.  See also para. 289.

[411] For instance in France, in relation to trademark infringement on the Internet, see SG2 v. Brokat Informationssysteme Gmbh, Nanterre Court of Appeals (1996), as discussed in Dinwoodie (2001), supra note 404, at pp.17-18.  See also VEJF and LICRA v. Yahoo! Inc. and Yahoo France, Ordonnance of November 20, 2000, Tribunal de Grande Instance de Paris, available at http://www.legalis.net.

[412] See paras.304-311.

[413] See A. Kur, "International Hague Convention on Jurisdiction and Foreign Judgments:  A Way Forward for I.P.?," European Intellectual Property Review, at pp.175-183 (April 2002).

[414] The Summary is available at ftp://ftp.hcch.net/doc/jdgm2001draft_e.doc.  All text in italics, including the footnotes, where copied verbatim from the Summary.

[415] Three proposals have been made with respect to the treatment of intellectual property in the Convention. The first two appear within general brackets and are each bracketed also (Alternatives A and B). That indicates that there is no consensus on the inclusion of intellectual property within the scope of the Convention or in respect of each of the proposals themselves. For the third proposal, see note below.

[416] The main difference between Alternatives A and B is whether proceedings for the infringement of patents and marks and such other rights as may be covered by this provision should fall within the exclusive jurisdiction or not. In addition, for a number of the delegations that favour an exclusive jurisdiction also for infringement under this provision, a satisfactory final or disconnection clause with respect to existing and future instruments regulating jurisdiction, recognition and enforcement for specific areas such as intellectual property is a precondition for including infringement in this Article on exclusive jurisdiction.

[417] It was pointed out that, when deciding which proceedings (e.g. infringement proceedings based on provisions of an Unfair Competition Act or of a Patent or Trademark Act, or proceedings concerning certain common law torts such as passing off) were to be covered by "infringement", the solution should be consistent with the possible exclusion of "antitrust or competition claims" from the scope of the Convention.

[418] This paragraph also covers situations where an application for the grant or registration of a patent or mark has been filed.

[419] This Alternative does not dispute the proposition in Alternative A that there should be exclusive jurisdiction in respect of proceedings that have as their object the registration, validity, nullity or revocation of patents, trade marks, designs or other similar rights. To that extent paragraphs 4 and 5 would remain if paragraph 5A was accepted. Alternative B refers only to proposed paragraph 5A. Paragraphs 6, 7 and 8 are common to both Alternatives.

[420] This provision will have to be excluded from the exceptions stated in Article 17.

[421] The purpose of this paragraph is to maintain non-exclusive jurisdiction where a matter otherwise falling within the scope of paragraphs 4 and 5 arises as an incidental question in proceedings which do not have as their object one or more of the matters described in that paragraph. The intention is that any decision made between the parties on such an incidental question will not have a preclusory effect in another State, in other cases when produced by one of the parties. There is no consensus on this paragraph.

[422] There is no consensus on the words included within the brackets. Other suggestions are to exclude copyright from the scope of the Convention either in whole or only copyright infringement on-line. Furthermore, the following text was proposed as an alternative: ["In proceedings concerning the infringement of a copyright or any neighbouring right, the courts of the Contracting State under whose laws the copyright or the neighbouring right is claimed to be infringed shall have exclusive jurisdiction"]. This proposal seeks to include copyright within the exclusive jurisdiction of the courts of the Contracting State under whose law a copyright is claimed to have been infringed. This is an alternative to the exclusion of proceedings for the infringement of copyright proposed in para 7 above.

[423] This paragraph might be necessary to ensure that decisions of these organs are covered by the chapter on recognition: see the definition of "judgment" in Article 23.

[424] An early draft was presented by Rochelle Dreyfuss and Jane Ginsburg, two of the three reporters on the ALI project, at the WIPO Forum on Private International Law and Intellectual Property in January 2001.  The draft is available as document WIPO/PIL/01/7, see http://www.wipo.int/pil-forum/en/.

[425] The incidence of the transfer of rights through agreement is not considered.

[426] See Ginsburg (1998), supra note 410, at pp.18-19, and A. Lucas, "Aspects de Droit International Privé de la Protection d'Œuvres et d'Objets de Droits Connexes Transmis par Réseaux Numériques Mondiaux," (January 2001), at pp.11-20, available at http://www.wipo.int/pil-forum/en.

[427] See F. Blumer, "Patent Law and International Private Law on Both Sides of the Atlantic," (January 2001), at p.6, available at http://www.wipo.int/pil-forum/en, and Dinwoodie (2001), supra note 404, at pp.26-28.

[428] The WIPO Joint Recommendation is discussed more fully at paras.154-166.

[429] See Blumer (2001), supra note 427, at p.6, and Dinwoodie (2001), supra note 404, at pp.30 and 31.

[430] Other portions of this paper are specifically devoted to domain names, see Chapter III(d).

[431] See also Dinwoodie (2001), supra note 404, at pp.26-27.

[432] See Ginsburg (1998), supra note 409, at p.35, and Lucas (2001), supra note 396, at p.6.

[433] This option would imply that the mere accessibility of a website is sufficient grounds for finding copyright infringement.

[434] See Ginsburg (1998), supra note 409, at p.37.

[435] See Ibid. at pp.37-45.

[436] See Lucas (2001), supra note 396, at pp.26-34.

[437] Imagine an international traveler who uploads a file on a server from his laptop (or, inversely, downloads one from the server on his laptop) when he is in transit in an airport lounge in between flights.  Apart from the fact that it would be hard to determine where exactly the person was when he uploaded/downloaded the file, the location of the airport lounge is quite random and, as such, should have little bearing on the outcome of the dispute.

[438] In order to help parties determine an appropriate method or procedure for resolving a particular dispute, the WIPO Arbitration and Mediation Center offers a "Good Offices" service.

[439] For information on the Mediation services offered by the WIPO Arbitration and Mediation Center, see Guide to WIPO Mediation, WIPO Publication No. 449 and the Center's website at http://arbiter.wipo.int/mediation/index.html.

[440] For information about the WIPO Arbitration and Mediation Center's services under the UDRP, see http://arbiter.wipo.int/domains/gtld/udrp/index.html.

[441] For information on the Arbitration services offered by the WIPO Arbitration and Mediation Center, see the Center's website at http://arbiter.wipo.int/arbitration/index.html.

[442] Further information about the WIPO Arbitration and Mediation Center in general is available at http://arbiter.wipo.int/center/index.html.

[443] Further information on the Center's activities in the area of domain name dispute resolution is available under http://arbiter.wipo.int/domains/index.html.  See also paras.213-218.

[444] For information on the Center's neutrals see http://arbiter.wipo.int/neutrals/index.html.

[445] See "Dispute Avoidance and Resolution Best Practices for the Application Service Provider Industry", WIPO Publication No. 837.1.

[446] Available at http://arbiter.wipo.int/arbitration/contract-clauses/index.html.

[447] Further information about the services of the WIPO Arbitration and Mediation Center is available online at http://arbiter.wipo.int/center/index.html.

[448] See also paras.265-270.

[449] This problem is addressed by the WIPO Joint Recommendation Concerning Provisions on the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet, see footnote 164 .

[450] See the detailed confidentiality provisions in Articles 52 and 73 to 76 of the WIPO Arbitration Rules and Articles 14 to 17 of the WIPO Mediation Rules.

[451] An overview of various "trustmark" schemes is provided in "Addressing Disputes in Electronic Commerce", ABA Task Force On Electronic Commerce and Alternative Dispute Resolution, Task Force Draft, at pp.24-28 (March 2002).

[452] See para.270.

[453] See paras.300-301.

[454] It is interesting to note in that context that the number of settlements in patent litigation in the USA has increased by more than 100% over the last ten years, see Gauri Prakash-Canjels, "Trends in Patent Cases: 1990-2000", IDEA-The Journal of Law and Technology, Vol. 41, pp.283-295 (2001).

[455] See the overview of national provisions on ADR in OECD Document DSTI/ICCP/CP(2002)1/FINAL of July 17, 2002 "Legal Provisions Related to Business-to-Consumer Alternative Dispute Resolution in Relation to Privacy and Consumer Protection".

[456] See OECD document DSTI/ICCP/REG/CP(2002)1/FINAL, at p.9.

[457] WIPO Publication No. 845, available at http://www.wipo.int/about-ip/en/?wipo_content_frame=/about-ip/en/development_iplaw/index.htm.  See also Chapter III (b).

[458] The WIPO Arbitration and Mediation Center has worked with the Application Service Provider Industry Consortium (ASPIC) to develop of a set of dispute avoidance and resolution best practices specifically tailored to meet the complex liability exposure of application service providers (ASP), see http://arbiter.wipo.int/asp/index.html and "Dispute Avoidance and Resolution Best Practices for the Application Service Provider Industry," WIPO Publication No. 837.1.

[459] Public Law No. 105-304, 112 Stat. 2860 (October 28, 1998).  The EU E-Commerce Directive (Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market, Official Journal Nr. L 178, July 17, 2000, pp.1-16) contains similar provisions without, however, structuring the negotiation process as clearly. Pursuant to Article 15 "information society service providers" shall not be obliged to monitor the information they transmit or store; however, Articles 13 and 14 exclude providers from liability for the caching or hosting of information, provided that they act expeditiously to remove or disable access to the information upon obtaining actual knowledge.

[460] "Internet service provider" is defined in Section 512(k)(1)(A) of the U.S. Copyright Act as "an entity offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user's choosing, without modification to the content of the material as sent or received."

[461] Section 512(c)(3) of the U.S. Copyright Act specifies a number of formal requirements that must be fulfilled in order to trigger the obligation to act on the part of the service provider.

[462] A "counter notification" must again comply with certain statutory requirements, see Section 512(g)(1) of the U.S. Copyright Act.

[463] See para.316.

[464] See para.335.

[465] Under the UDRP, the ADR agreement is concluded when the complainant files a complaint thus accepting the offer made by the domain name registrant in its registration agreement to submit to the procedure.

[466] See para.343.

[467] Some countries, such as the Netherlands and France, provide specific mechanisms, such as judicial confirmation, for enforcing the outcome of a domestic ADR procedure, see OECD document DSTI/ICCP/REG/CP(2002)1/FINAL, at p.9.

[468] The Convention was adopted on June 10, 1958, and went into force on June 9, 1959.  The text, as well as a list of contracting parties, is available on the website of the United Nations Commission on International Trade Law (UNCITRAL), http://www.uncitral.org, as well as on the website of the WIPO Arbitration and Mediation Center, at http://arbiter.wipo.int/arbitration/ny-convention/index.html.

[469] See OECD Document DSTI/ICCP/REG/CP(2002)1/FINAL, at p.9.

[470] The list tracks the list of reasons, contained in Article V1 of the New York Convention, for which recognition and enforcement of an arbitral award may be refused.  The list can be regarded as an international minimum standard of due process for binding ADR procedures.

[471] In arbitration, or in regulated infrastructures such as the UDRP, parties are bound to an agreement expressed before the proceeding;  less formal procedures, such as mediation, rely on the continuing agreement of both parties to remain engaged since either party can simply cease to participate at any time.

[472] Arbitral awards are subject to a limited judicial control;  UDRP decisions do not preclude either party from re-litigating the dispute in a competent national court of justice.  In both cases, the "appeal" is not part of the system itself, but relies on the "external" public court system.

[473] The detailed confidentiality provisions in Articles 52 and 73 to 76 of the WIPO Arbitration Rules and Articles 14 to 17 of the WIPO Mediation Rules take account of such interests.

[474] An overview is provided on the website of the WIPO Arbitration and Mediation Center, available at http://arbiter.wipo.int/domains/cctld/index.html.

[475] Overview on the Center's website, at http://arbiter.wipo.int/domains/gtld/newgtld.html.

[476] The UDRP applies directly to domain name registrations in .com, .net, .org, as well as in the new gTLDs .aero, .biz, .coop, .info, .museum, .name and .pro.

[477] A losing registrant can, however, block the implementation by initiating court proceedings with a competent court of justice within ten days after notification of decision, see paragraph 4(k) UDRP.

[478] The UDRP disputes received by the WIPO Arbitration and Mediation Center between December 1999 and August 2002 involved parties located in 108 countries.  In about 50% of all cases, Complainant and Respondent were based in different jurisdictions.  Cases have, so far, been administered in Chinese, English, French, German, Japanese, Korean, Norwegian, Portuguese and Spanish.

[479] See paragraph 4(a) UDRP.  It is interesting to note that the institutional basis of the UDRP, namely the fact that it forms part of a regulated infrastructure, makes it possible to resolve disputes involving fraud or bad faith, which are not usually regarded as likely candidates for ADR.

[480] Except for the submission of the complaint (paragraphs 3(a) UDRP Rules) and the response (paragraph 5(b) UDRP Rules).

[481] UDRP, Paragraph 4(g) .  The current WIPO schedule of fees is available at http://arbiter.wipo.int/domains/fees/index.html.

[482] Available at http://arbiter.wipo.int/domains/search/index.html.

[483] For example, "blind bidding" procedures pursuant to which parties to a purely monetary dispute submit monetary offers and demands to an automated system.  The offers and demands are not disclosed to the other party, but compared in various rounds.  The case is settled if offer and demand are matching, or fall within a specific range (e.g., 30%);  in the latter event, the case is settled for the average of offer and demand.

[484] An example is the above mentioned cooperation between the WIPO Arbitration and Mediation Center and the Application Service Provider Industry Consortium (ASPIC).

[485] An obvious example is the UDRP.

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