Copyright 2008 by The American Law Institute. Reproduced with permission. All rights reserved.
INTELLECTUAL PROPERTY:
PRINCIPLES GOVERNING JURISDICTION, CHOICE OF LAW,
AND JUDGMENTS IN
TRANSNATIONAL DISPUTES
(with Comments and Reporters’ Notes)
GLOSSARY
Introduction
This glossary provides a brief description of international treaties and conventions
in the field of intellectual property as well as some key terms frequently referred to in the
Principles.
Thanks to various bilateral and multilateral treaties, intellectual property law is
one of the most harmonized areas of law, although differences between the intellectual
property laws of individual countries remain in areas not covered by existing treaties.
Among the important international instruments are the following:
1. For copyright and the rights of performers, producers of phonograms, and broadcasting
organizations (which are covered by copyright in the United States, but are protected as
Neighboring Rights in some other countries), the Berne Convention for the Protection of
Literary and Artistic Works (Berne Convention), the WIPO Copyright Treaty (WCT), the
International Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organisations (Rome Neighboring Rights Convention), the Convention for
the Protection of Producers of Phonograms Against Unauthorized Duplication of Their
Phonograms (Geneva Phonograms Convention), and the WIPO Performances and
Phonograms Treaty (WPPT).
2. For patents, the Paris Convention for the Protection of Industrial Property (Paris
Convention), the Patent Cooperation Treaty (PCT), and the Convention on the Grant of
European Patents (European Patent Convention).
3. For trademarks, the Paris Convention, the Madrid Agreement Concerning the
International Registration of Marks (Madrid Agreement), and the Protocol Relating to the
Madrid Agreement (Madrid Protocol).
In addition, there are multilateral treaties covering subject matter such as plant
varieties and integrated circuits, numerous instruments harmonizing various aspects of
intellectual property law throughout the European Community, and other bilateral and
multilateral agreements. The most important treaty, however, is the Agreement on Trade-
Related Aspects of Intellectual Property Rights, Including Trade in Counterfeit Goods
(TRIPS Agreement), which incorporates the Berne Convention, The Paris Convention,
and the Treaty on Intellectual Property in Respect of Integrated Circuits by reference and
contains significant additional substantive and procedural provisions with respect to all
the major types of intellectual property.
The existence and the significance of these international instruments are best
understood in light of the history of, and the fundamental principles underlying, modern
intellectual property laws. The most important of these principles is the territoriality
principle. Intellectual property rights are generally understood to be territorial, meaning
that the protection afforded by a certain country’s intellectual property laws exists only
within the territory of that country, not beyond its borders. Consequently, a certain
country’s intellectual property rights can be infringed only by activities within that
country’s territory. For example, a U.S. copyright exists only in the United States and
cannot be infringed by a reproduction or distribution of the protected work in another
country, such as France. Similarly, a Japanese patent cannot be infringed by the
manufacture or sale of the patented product outside Japan, such as in Australia. However,
the reproduction or distribution of the work in France might constitute infringement
under French copyright law, just as the manufacture and sale of the patented product
might infringe an Australian patent, if one has issued there. As a consequence of the
territoriality principle, the author of a work does not own a single universal copyright in
the work. Rather, the author will own a bundle of national copyrights, each effective only
in the country under whose copyright law the respective national stick of the bundle is
protected. The same is true, and may be somewhat more intuitive, with respect to
registered rights such as patents or registered trademarks, which need to be applied for
and exist only if and where the competent governmental authority has granted or
registered them. The principle of territoriality also applies to unregistered trademarks: if
rights arise out of use, then the mark will be protected in the country or countries in
which the mark has been used, or, for famous marks, in which the mark has gained local
notoriety.
The territoriality principle allows for significant differences in intellectual
property laws among different countries. Absent contrary obligations under international
agreements, each country is free to decide whether or not to grant legal protection for
intellectual property (or certain types of intellectual property), and to determine the
requirements for protection, as well as the attributes (scope) of the right, and its limits,
duration, and all other aspects of its protection. Moreover, absent treaty obligations to
grant national treatment, countries are free to discriminate against foreign creators of
intellectual property, for example by protecting only intellectual property created by its
nationals or within its territory. (With the widespread adoption of international treaties,
however, the national treatment norm now applies to most international intellectual
property relations.)
Early intellectual property laws, beginning in the 17th century, often protected
only domestic works and inventions. As works and products crossed borders more easily,
negative economic ramifications of this regime became apparent. Efforts to improve
international protection of intellectual property began in the middle of the 19th century,
resulting in the international instruments mentioned above. One of the key tools
employed in these instruments is the obligation to provide national treatment to
foreigners and foreign intellectual property. In other words, foreigners and foreign works
must be eligible to receive the same protection afforded to nationals of the protecting
country. National treatment alone, however, does not guarantee adequate protection, as
some countries (namely net importers of intellectual property) may determine that it is in
their best interest to afford no or very limited intellectual property protection to their
nationals and foreigners alike. As a result, international instruments are increasingly
setting minimum standards of protection that are mandatory for all member states. More
recently, it has become evident that, even where minimum standards are established,
protection may still be ineffective if no meaningful mechanism for enforcement is
provided. Thus, effective enforcement mechanisms have been made a feature of the
TRIPS Agreement. It is important to keep in mind, however, that intellectual property
laws may still differ significantly from country to country to the extent they are not
harmonized by international agreements.
Another important concept in international intellectual property law is the
distinction between registered and unregistered rights. Copyright protection is generally
afforded as a matter of law upon the creation of a copyrightable work. No registration or
recordation is required for protection; in fact, the Berne Convention prohibits formalities
as a prerequisite for enjoyment of the rights guaranteed by it. Thus, upon creation of a
work of authorship, the author will own a (territorial) copyright in each country where the
foreign work meets the requirements for protection under domestic law, without further
action such as registration or application being required. The situation is different when it
comes to patents and other so-called registered rights. An invention is patented only when
the competent government authority has, pursuant to a respective application and in most
countries following an examination to determine that the invention meets the
requirements for protection, granted a patent. No patent protection exists in countries
where the owner fails to apply for such protection or where such protection is denied by
the competent authority.
For trademarks, regimes are mixed. In many countries, trademarks must be
registered to be enforceable. As with patents, an application is usually examined to
determine whether the requirements for protection have been met. In some countries
(including the United States), trademark rights can also arise from use.
For registered rights, the cost of international protection is especially high because
applications and examinations must be made in every country in which protection is
sought. The main purpose of predominantly procedural international treaties such as the
PCT, the EPC, and the Madrid Agreement and Madrid Protocol is thus to facilitate and
streamline multinational filings. However, it is important to keep in mind that these
instruments do not result in an “international” patent or trademark. They only facilitate
the process of obtaining national patents and trademarks in multiple countries. The term
“European Patent” is only a short-form designation for a bundle of national and territorial
patent rights resulting from a facilitated application under the EPC. This stands in
contrast to existing regimes in the European Community regarding the so-called
“Community trademark” or the “Community design” (and a pending regime that would
establish a “Community patent”) that do create one unitary intellectual property right for
the territory of the European Community.
Glossary
— 1968 Convention: See Brussels Convention.
— Berne Convention: Berne Convention for the Protection of Literary and Artistic
Works of September 9, 1886, as revised at Paris on July 24, 1971 (the Paris Act), and
most recently amended on September 28, 1979. Apart from the TRIPS Agreement, which
incorporates the Berne Convention by reference, the Berne Convention is the most
important international copyright treaty. It requires automatic copyright protection of
works falling within its scope and prohibits conditioning such protection upon
compliance with any formalities (such as registration). It sets forth certain minimum
standards of protection and requires national treatment of foreign works and a minimum
level of protection.
Contracting states are required to protect literary and artistic works of authors
who are nationals of another contracting state or whose work has been first published in a
contracting state. The Berne Convention prescribes minimum standards of protection for
“every production in the literary, scientific and artistic domain, whatever may be the
mode or form of its expression.” It requires protecting a core of exclusive rights (such as
the right of the author to make or authorize translations, reproductions, public
performances, broadcasts, and other communications to the public, and adaptations and
other alterations), permitting only certain limited exceptions. The minimum required term
of protection is generally the life of the author plus 50 years, or 50 years from publication
with respect to anonymous or pseudonymous works or cinematographic works. A longer
term of protection is, however, expressly permitted.
— Brussels Convention: Convention on Jurisdiction and the Enforcement of
Judgments in Civil and Commercial Matters of 27 September 1968. The Brussels
Convention is a multilateral treaty among the European Community’s member countries
setting forth rules on jurisdiction and enforcement of judgments. The Brussels
Convention has been replaced by the Brussels Regulation (which is identical to the
Brussels Convention but for a few modifications) for all member countries with the
exception of Denmark.
— Brussels Regulation: Council Regulation (EC) No 44/2001 of 22 December 2000
on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and
Commercial Matters. The Brussels Regulation is a European Community instrument
setting forth rules on jurisdiction and enforcement of judgments that is directly binding
on all member countries. The Brussels Regulation replaced the Brussels Convention for
all member countries except Denmark. The jurisdictional rules of the Brussels Regulation
apply whenever a resident of a member country is sued in the courts of a member
country. When applicable, the Brussels Regulation’s rules supersede national law on
jurisdiction and enforcement of judgments. Under the Brussels Regulation, a defendant
must be sued in the courts of his or her country of residence, unless one of the
specifically listed other bases for jurisdiction is applicable. With respect to intellectual
property disputes, the most important jurisdictional provisions are Art. 5 Nr. 3, which
provides for jurisdiction in tort actions, including infringement actions, at the place or
places where the harmful event occurred, and Art. 22 Nr. 4, which assigns exclusive
jurisdiction to the country of registration in actions concerning the validity of registered
rights. Under the enforcement provisions of the Brussels Regulation, judgments of the
courts of a member country are generally entitled to full faith and credit in all other
member countries, subject only to very limited exceptions.
— Domain Name: A domain name is a unique name that identifies an Internet
website. Each domain name corresponds to a numeric Internet Protocol (IP) address that
is used to route traffic on the Internet. Domain names have two or more parts, separated
by dots (e.g., “ali.org”). The last part (e.g., “.com,” “.org,” or “.net”) is referred to as the
top-level domain, and the preceding part is referred to as the second-level domain.
— EPC: See European Patent Convention.
— EPO: See European Patent Office.
— European Patent: The national patents granted under the European Patent
Convention (EPC) are collectively referred to as European Patents. European Patents are
granted for the EPC member countries designated by the applicant in the respective
application.
— European Patent Convention (EPC): Convention on the Grant of European Patents
(European Patent Convention) of 5 October 1973. The EPC establishes a centralized and
facilitated system for the application, examination, and grant of patents for EPC member
countries (currently 31 European countries). As an alternative to filing separate patent
applications in numerous countries in Europe, the EPC allows inventors to file a single
application under the EPC and to designate the member countries for which patent
protection is sought.
The European Patent Office (EPO) examines the application, which may be filed
in English, French, or German, based on substantive standards harmonized in the EPC. If
these standards are met, the EPO issues patents for each member country that the
applicant has designated in the application (collectively, these patents are somewhat
confusingly referred to as European Patents). Once granted, each such patent becomes
independent and is treated like a national patent of the respective designated member
country. The main benefits of the EPC lie in the efficient application and examination
procedure and a unitary term and scope of protection in all designated member countries.
Patents granted under the EPC may be challenged in an opposition procedure
before the EPO within a nine-month period after issuance. The opposition applies to all
patents granted pursuant to the single application under the EPC (so-called “central
attack”).
— European Patent Office (EPO): The European Patent Office is the executive body
established under the European Patent Convention (EPC). The EPO’s main seat is in
Munich, Germany. The EPO’s task is to examine applications for and to grant patents
under the EPC.
— Geneva Phonograms Convention: Convention for the Protection of Producers of
Phonograms Against Unauthorized Duplication of Their Phonograms of October 29,
1971 (Geneva Phonograms Convention). The Geneva Phonograms Convention requires
contracting states to protect producers of phonograms who are nationals of a contracting
state against unauthorized duplication, importation for the purpose of distribution, and
distribution of their phonograms. Protection may be granted under copyright or similar
rights (such as Neighboring Rights) or unfair competition or penal law. The minimum
term for protection required by the Geneva Phonograms Convention is 20 years.
— ICANN: The Internet Corporation for Assigned Names and Numbers (ICANN) is
responsible for managing and coordinating the Domain Name System.
— Madrid Agreement: Madrid Agreement Concerning the International Registration
of Marks of April 14, 1891, as last revised at Stockholm on July 14, 1967. The Madrid
Agreement and the Madrid Protocol are sometimes referred to collectively as the Madrid
System for the international registration of marks. While the two instruments are related,
they are separate agreements (the United States, for example, is a party to the Madrid
Protocol, but not the Madrid Agreement).
The Madrid Agreement, like the Madrid Protocol, facilitates multinational
trademark filings by allowing for a single “international application” with the applicant’s
national trademark office based on an existing trademark registration in that country
(called a “basic registration”). The international application is forwarded to the World
Intellectual Property Organization, which in turn forwards it to the contracting states
designated in the application for examination. Unless a designated country refuses
protection within one year, the mark is deemed to be protected in that country. The
“international registration” results in a bundle of national marks that are independent
from each other with the one exception that all resulting trademarks are invalidated if the
basic registration is cancelled or invalidated within the first five years from the
international registration (so-called “central attack”).
— Madrid Protocol: Protocol Relating to the Madrid Agreement Concerning the
International Registration of Marks (as signed at Madrid on June 28, 1989). The Madrid
Protocol, like the Madrid Agreement, facilitates multinational trademark filings by
allowing for a single “international application” with the applicant’s national trademark
office. However, the Madrid Protocol differs from the Madrid Agreement in several
ways, making it more amenable to accession by the United States. International
applications under the Madrid Protocol may be in English, while applications under the
Madrid Agreement must be in French. In addition, international applications under the
Madrid Protocol may be based on a “basic application,” not only a “basic registration,”
allowing for international applications based on U.S. intent-to-use applications. The
national examination period under the Madrid Protocol is extended to 18 months and
later oppositions are possible. Finally, the consequences of a “central attack” are
ameliorated under the Madrid Protocol by permitting the owner to convert the dependent
national marks into independent national filings.
— Moral Rights: Many countries grant so-called moral rights to creators of
copyrightable works. These rights are intended to protect the author’s reputational
interest and his or her personal bond with the work. Consequently, they are often referred
to as “noneconomic” rights. Moral rights typically include the right of attribution (i.e., the
right to be named as the author of the work) and the right of integrity (i.e., the right to
object to a mutilation or distortion of the work), both required to be protected under the
Berne Convention, but other moral rights may exist in some countries (including, for
example, a right of divulgation (to release the work to the public), and a (little-exercised)
right of “repentance and withdrawal”). Moral rights are often nonwaivable and
nonassignable. Except with respect to a limited category of works of visual art, the
United States Copyright Act does not expressly protect moral rights. However, through
the Copyright Act’s derivative work right, unfair-competition law, and other state and
federal laws the rights of paternity and integrity may sometimes be approximated in the
United States.
— Neighboring Rights: The term “neighboring rights” typically refers to rights
conferred on performers, broadcasting organizations, and producers of phonograms in
respect of their activities. In many legal traditions, these activities are deemed not to meet
the creativity threshold required to qualify for copyright protection. Nevertheless, some
protection is typically granted under “neighboring rights” regimes. The scope and
duration of protection are often more limited than in the case of copyright protection. In
the United States, most of these works are protected under copyright. The most important
international treaties addressing these rights are the Rome Neighboring Rights
Convention, the Geneva Phonograms Convention, the TRIPS Agreement, and the WPPT.
— Paris Convention: Paris Convention for the Protection of Industrial Property of
March 20, 1883 as last revised at Stockholm on July 14, 1967. Apart from the TRIPS
Agreement the Paris Convention is the most important international treaty relating to
“industrial property,” including patents and utility models, trademarks and trade names,
industrial designs, and unfair competition.
The Paris Convention requires member states to afford national treatment to
nationals of other member states with respect to protection of all industrial property.
While the Paris Convention requires protection of the most important categories of
industrial property, it contains few substantive minimum standards of protection. The
major benefit of the Paris Convention is the right of priority provided with respect to
patents, trademarks, and industrial designs. Any person who files an application for a
patent (including a utility model, a form of protection similar to, but weaker than, a
patent), trademark, or industrial design in a member state is entitled to priority in all other
member states for a period of twelve months (in the case of patents) and six months (in
the case of trademarks and industrial designs). During the priority period, the filing party
is protected against any intervening act that might otherwise result in the invalidity of
subsequent applications by such party in other countries, including filings by other
parties, publication or exploitation of the invention, or use of the mark.
— Patent Cooperation Treaty (PCT): Patent Cooperation Treaty, done at Washington
on June 19, 1970 as modified on February 3, 1984. The PCT is a procedural instrument
that facilitates multinational patent filings and gives patent applicants more time to decide
on the countries in which he or she ultimately wants to seek patent protection.
The PCT permits filing a single, so-called “international application” designating
any number of PCT member states with the same effect as if a regular patent application
had been filed in the patent office of each such member state (but without the need to
provide local translations or pay local fees at that time). One of the major designated
patent offices then conducts an international search resulting in a report allowing the
applicant to better assess the likelihood of patentability in the designated countries. The
applicant can then decide on the countries in which he or she wishes to continue to the
national stage, and it is not until this time that translations of the application and payment
of local fees are required.
Patents resulting from a PCT application are national patents, granted by the
competent local patent office according to local patent law. However, since all these
patents are based on substantially the same application for the same invention, the claims
and other content of PCT-based patents will generally be substantially similar (subject to
modifications in the course of the prosecution in the national phase).
— PCT: See Patent Cooperation Treaty.
— Rome Convention on the law applicable to contractual obligations (the Rome
Convention): The instrument of the member States of the European Union for
harmonizing rules of conflict of laws regarding contracts. It will be replaced by a
Regulation (Rome I), which, at the end of 2007, was in the final stages of adoption.
— Rome Regulation on the law applicable to contractual obligations (Rome I): Once
adopted, will be the instrument of the member States of the European Union for
harmonizing rules of conflict of laws regarding contracts, replacing the Rome
Convention.
— Rome Regulation on the law applicable to non-contractual obligations (Rome II): The
instrument of the member States of the European Union for harmonizing rules of conflict
of laws regarding torts.
— Rome Neighboring Rights Convention: International Convention for the
Protection of Performers, Producers of Phonograms and Broadcasting Organisations,
done at Rome on October 26, 1961. The Rome Neighboring Rights Convention (often
referred to as the “Rome Convention”) establishes certain minimum standards of
protection for performers with respect to their performances, producers of phonograms
with respect to their phonograms, and broadcasting organizations with respect to their
broadcasts. The minimum term of protection required by the Convention is 20 years. The
Convention also requires national treatment of qualifying performers, producers of
phonograms, and broadcasting organizations. The United States is not a party to the
Rome Neighboring Rights Convention. However, the TRIPS Agreement, the WPPT (for
performers and producers of phonograms), and the Geneva Phonograms Convention (for
producers of phonograms) require similar, and sometimes more robust, protection.
— TRIPS Agreement: Agreement on Trade-Related Aspects of Intellectual Property
Rights, including Trade in Counterfeit Goods. The TRIPS Agreement is a portion of the
Agreement Amending the General Agreement on Tariffs and Trade and Creating the
World Trade Organization, which was signed on April 15, 1994, at Marrakesh, Morocco.
The TRIPS Agreement, which is binding on all WTO member countries, is the most
comprehensive and important multilateral intellectual property treaty to date.
The TRIPS Agreement sets forth minimum standards of protection in the areas of
copyright and neighboring rights, trademarks, geographical indications, industrial
designs, patents, layout-designs of integrated circuits, and undisclosed information. It
further requires WTO members to provide certain procedures and remedies in order to
ensure effective enforcement of intellectual property rights. Finally, enforcement of
obligations under the TRIPS Agreement itself may be effected through the WTO dispute-
settlement procedures. Generally, the TRIPS Agreement requires national treatment as
well as most-favored-nation treatment with respect to all types of intellectual property.
Regarding copyright, the TRIPS Agreement first requires that all WTO members
comply with the substantive provisions of the Berne Convention (with the exception of
Art. 6bis of the Berne Convention covering moral rights). In addition, it clarifies that
computer programs and original compilations of data (as opposed to unoriginal databases
that are not required to be protected under the TRIPS Agreement, but are protected in
some countries, most notably European Community member countries) are to be
protected under copyright. It further adds an exclusive rental right for computer programs
and cinematographic works.
With respect to neighboring rights, the TRIPS Agreement stipulates minimum
standards for the protection of performers, producers of phonograms, and broadcasting
organizations.
The TRIPS Agreement also incorporates the obligations of the Paris Convention
by reference, requiring all WTO members to comply with Paris Convention standards of
protection concerning trademarks, patents, industrial designs, and other areas covered by
that convention. It also adds important substantive standards to those already contained in
the Paris Convention.
The most important provisions include a broad definition of the subject matter
eligible for trademark protection, the inclusion of service marks within the protection
regime, an express extension of the protection of well-known marks under the Paris
Convention to service marks, and detailed minimum standards for the protection of
geographical indications and industrial designs.
The TRIPS Agreement establishes significant minimum standards with respect to
patent protection, including a requirement that patents be available for any inventions that
are new, involve an inventive step (deemed to be synonymous with the term “non-
obvious” used in U.S. patent law), and are capable of industrial application (deemed to be
synonymous with the term “useful” used in U.S. patent law), whether products or
processes, in all fields of technology. It requires protection of the right of a patent owner
to prevent the manufacture, use, offer for sale, sale, and import of a patented product, as
well as extending such protection to at least the product obtained directly from a process
patent. The patent provisions of the TRIPS Agreement further establish boundaries to
compulsory licenses and other exceptions to the rights conferred by a patent.
Finally, the TRIPS Agreement incorporates an existing instrument regarding the
protection of integrated circuits by reference and establishes certain minimum standards
regarding the protection of undisclosed information (i.e., trade secrets).
— Uniform Domain-Name Dispute Resolution Policy (UDRP): The UDRP is a
dispute resolution policy adopted by the Internet Corporation for Assigned Names and
Numbers (ICANN) and incorporated in all registration agreements between Domain-
Name registrars and Domain-Name registrants. The policy allows for the resolution of
disputes between a trademark owner and a Domain-Name registrant.
— WCT: See WIPO Copyright Treaty.
— WIPO: See World Intellectual Property Organization.
— WIPO Copyright Treaty (WCT): The WIPO Copyright Treaty of 1996 confirms
certain clarifications already contained in the TRIPS Agreement, including the
requirement of protecting computer programs and original compilations of data under
copyright and granting a rental right at least with respect to computer programs,
cinematographic works, and phonograms (subject to certain qualifications). The WCT
also requires granting authors a comprehensive right of communicating works to the
public, including by way of Internet transmission. Like the WPPT, the WCT contains
provisions regarding the protection of technological protection mechanisms and rights-
management information as well as an obligation to ensure effective enforcement of
rights covered by it.
— WIPO Performances and Phonograms Treaty (WPPT): The WIPO Performances
and Phonograms Treaty of 1996 is based on the protection of performers and producers
of phonograms established in the Rome Neighboring Rights Convention and the TRIPS
Agreement but strengthens the existing regime in several ways, including specifically
with respect to digital forms of exploitation. The WPPT requires, at a minimum, the
protection of the rights of reproduction, distribution, rental, and making available to the
public with respect to performances and phonograms. The term of protection is 50 years.
The WPPT also requires affording performers the rights of broadcasting, communicating
to the public, and fixating their unfixed performance. Performers are also entitled to
moral rights under the WPPT. In addition to these minimum standards of protection, the
WPPT also requires national treatment of qualifying performers and producers of
phonograms. Finally, the WPPT contains provisions regarding the protection of
technological protective mechanisms and rights- management information as well as an
obligation to ensure effective enforcement of rights covered by it.
— World Intellectual Property Organization (WIPO): WIPO, headquartered in
Geneva, Switzerland, is an agency of the United Nations. Its mission is promoting the use
and protection of intellectual property. WIPO currently administers 23 international
treaties dealing with different aspects of intellectual property protection.
— World Trade Organization (WTO): WTO is an international organization
headquartered in Geneva, Switzerland. Among other things, WTO administers the WTO
agreements, which facilitate international trade in goods, services, and intellectual
property. WTO currently has 149 members, while numerous other countries are awaiting
admission.
— WPPT: See WIPO Performances and Phonograms Treaty.
— WTO: See World Trade Organization.