The Choice Of Law Debate In Copyright Infringement
Introduction
Private International Law governs the disputes between two individual parties rather than States. Unlike Public International Law that has a defined jurisdiction and law, Private International Law lacks in that area. There are no stipulated courts or arbitration centers like ICJ, ICC or PCA where such matters can be heard. Since these cases deals with parties from various jurisdictions, there is no clarity on the laws that would be applicable in such disputes. In disputes arising out of the latter, first, preliminary ABC issues must deal with- Application of Foreign Judgements, Basis of Jurisdiction and Choice of Law. Choice of Law is determining which country’s laws will govern the dispute. Basis of Jurisdiction is deciding which court is competent to hear the case. Application of Foreign Judgements determines whether judgements from different nations can be enforceable in the current dispute. This paper deals with the question of Choice of Law in case of an IPR dispute.
Choice Of Law In Ipr Infringement
The nature of the rights is the primary concern in any international dispute that involves intellectual property rights. The theory of Territoriality states that since disputes relating to the registration and validity of intellectual property rights are typically considered to fall under the exclusive jurisdiction of the State in which such registration was applied for, the choice of law should favour that State. This practice that has gained widespread acceptance over the years.[1] The competent authority in each State decides whether or not to grant registration after conducting an investigation into both the substantive and formal requirements; as a result, any disputes regarding the validity of registration must be resolved by the state that granted registration in the first place (lex loci protectionis).[2]
[image Sources: Shutterstock]
When it comes to disagreements over IPR that occur across international borders, this type of dispute is treated the same way as contractual disagreements over the transfer and licensing of these rights are treated: as a tort that falls under general jurisdictional guidelines.[3] In order to make a decision regarding the choice of law, the court in question must first determine the location of the IPR in question, as well as who owns it, what it contains, and the extent of its protections. IPRs are consequently located in the nation that granted the rights, and infringements are to be deemed to have occurred in accordance with the law of that nation.[4]
International Regulations
The Paris Convention 1883[5] and the Berne Convention 1886[6], both establish the principle of National Treatment. This principle states that foreigners or foreign parties should be treated as a national with regards to various IPR protection that exists in each State. The goal of this principle is to prevent the members states from favouring their national citizens over the foreigners.[7] To simply if State X is a signatory to either of the conventions and Company A registered in State P has filled an IPR infringement case in State X against a citizen of State X, State has to treat Company A as its own national and not favour the alleged tort feasor. National treatment may thus be described as “compromise in a situation it was out of the question to agree on common principles regarding private international law and there was no harmonisation between the laws of the countries the parties are a national of ”[8] This principle affirms the theory of Territorial by implying that IPRs are territorial in nature and the remedy for infringement should also be territorial, that is, subjected to the law of the State where it was registered.
Copyright is a more complicated problem. Per Article 5(2) of the Berne Convention[9], copyright is established without the need for any further procedures. To begin with, a book published in India will be protected in Australia if the criteria for protection there are satisfied; if the conditions for protection under other national laws are met (such as those of Germany, Norway, or Sweden), the book will also be protected internationally. Since copyright is “universal”, some argue that the lex originis should be utilised to determine who owns works that have been plagiarised. Since copyright in whatever form (even first ownership) is subject to the territoriality principle, many argue that lex loci protectionis is the appropriate course of action.[10]
The Rome II regulation[11] partly deviates from the universally accepted application of lex loci protectionis. This contradiction can be seen in Article 8. Article 8(1)[12] of the regulation is in consonance with the commonly accepted principle, whereas Article 8(2)[13] can be found to support the principle of Lex Loci Delicti Commissi (law of the land where the tort is committed). This article talks about infringement of Unitary Community IPR. In case of such infringement, Lex Loci Delicti Commissi will apply.
SHOULD LEX LOCI PROTECTIONIS BE APPLIED BLANKETLY TO COPYRIGHT INFRINGEMENT?
It has been established that lex loci protectionis is the rule that is applied to all the IPR infringement cases, barring a few exceptions. With the advent of technology and proliferation of Internet, infringement of IPR has lost its nature of territoriality. Today, most of the copyright infringement happen through the Internet. The Internet’s lack of geographic boundaries and the scope for anonymity it provides have made it possible for IP rights to be violated in ways that are both novel and unprecedented in magnitude. Online marketplaces, such as online auction houses, or websites that advertise their unlawful nature are used to trade or profit from tangible counterfeit or pirated items in every category. Massive volumes of digitally copyrighted information, such as software, music, movies, video games, and text, are also transferred online without the owners’ permission through specialised websites or file-sharing networks.
In this scenario, when infringement has become borderless, should the rule of lex loci protectionis be blanketly applied to all the cases? Consider a set up where ‘Ship Sterling Star’ is a movie that is available on an OTT platform called ‘Surnet’. Person A makes a copy of the movie on his phone and shares it with his friends. His friend, B, sells it to an online streaming platform called ‘Freelm’. So, this platform makes the movie available to the entire world at large. In this case, if the movie is registered for copyright in India and licensed to Surnet based in US, applying the lex loci protectionis rule, the protection granted will be per the Indian laws. But, this will be in complete ignorance of the factors that should be considered. The question that arises here is, can such a complicated issue which involves multiple jurisdictions and tort feasorsbe resolved through this blanket rule? Scholar supported that when it comes to infringements fueled by online distribution. The appropriate law for copyright violations that occur across international borders could be the law of the location where the infringing work was uploaded, the law of the author’s country of residency, the law of the country where the infringement was first committed, etc.[14]
Opinion And Analysis
While it is obvious that following one blanket principle makes it easier for the courts to decide to which law should govern the dispute, but the idea of having a law is not to make things easier for court, it is to provide a remedy to the person who was wronged. So, applying a principle that solves a dilemma of choice of law may not be the right approach. The first reason against the application of the principle is, when the issue spreads over different jurisdiction, choosing the place of registration as the governing law may not be very appropriate when none of the tort feasors are nationals of that jurisdiction.
If this theory is eliminated, the other theory that can be applied is lex loci delicti commissi. The application of this theory will ensure that the tort feasorgets punished according to his rights. But there is a problem here as well. In a case where multiple parties are involved, each belonging to a different jurisdiction, how should the choice of law be ascertained? If there are three jurisdictions involved- one where the content was illegally downloaded, one where the infringing content was shared and one where the infringing content was made available through an online streaming platform, what would be the choice of law? One can suggest that the plaintiff can file independent cases in every jurisdiction. But this might get very complicated.
The solution that can be proposed here is having guidelines to determine the choice of law in case of such disputes where more than one jurisdiction is involved. The guidelines should stipulate a method of deciding which law should be applicable. One of the methods that can be used is- determining the infringement that caused the maximum damage. In the previous example of the movie ‘Ship Sterling Star’ the highest damage caused to the producers of the movie would be through Freelm. The reason being a larger audience can watch the film for free.
Another method of determination can be the first point of infringement. Going back to the same example again, the first point of infringement would be where A illegally copied the film. But the problem here is, it would be exceedingly difficult to find out the first point of infringement. Due to the huge reach of Internet and the anonymity that it provides, it would not be possible to pinpoint the first place of infringement. Therefore, going by the earlier method would be more feasible.
Another reason to support the previous method is the economic viability. A would not be economically capable of paying the fine or compensation for infringement. But an online streaming platform which has a mere cost of establishment in proportion to the revenue collected through advertisement has a better chance of having the capability to oblige with the fine and compensation amount.
What happens in a case where there is more than one point of infringement which have almost equal damages or the amount of damages is so big that it cannot be ignored? For example, if B does not sell the film to Freelm, but instead uploads it on his YouTube channel and Freelm copied it from there and uploaded it on its platform. Which law to choose then? In such a case, it would be feasible to look at the first point of infringement, which in this case would be B uploading the film on his YouTube channel. Both the infringement torts can then be governed by the law of the nation that B is a national of.
Although far-fetched, the second reason which is an important and basic point in support of lex loci delicti commissi and against lex loci protectionis is the principle of Ignorantia Juris Non-Excusat. Every national is supposed to know the law of their nation. It is assumed that they know the law and not knowing the law is not an excuse. By that logic, it can be assumed that the tort feasor knows the law and knows the punishment involved. But this is only limited to his nation, it does not extend to other nations, in this case the nation in which the work has been registered. He should not be held liable under a law he has no knowledge of, rather he should be held liable under the law of the nation where he committed the crime. Even in theexample where there were more than two jurisdictions involved, since Freelm was essentially copying the content from YouTube, it has the means to know the details of the person who uploaded the film including which nation he belongs to know. So, it would be unfair to him as well
Third reason for not supporting the universally accepted theory is, in copyright, registration is not mandatory. So, what happens when an unregistered copyright is infringed? Will there be no remedy at all? Since lex loci protectionisprovides protection according to the law within whose jurisdiction the work has been registered. This theory in some way or the other indirectly is not in consonance with the rule that the work does not have to be registered to claim copyright. From the perspective of other IPRs like Trademark, Patents, etc. which needs the work to be registered in order to claim IPR rights, the principle of lex loci protectionis works well, but it does not work in the case of copyright.
Conclusion
Although the principle being followed now is that of lex loci protectionis, it has certain loopholes which needs to be fixed. All the ABC issues of Private International Law- Application of Foreign Judgements, Basis of Jurisdiction and Choice of Law is hard to determine. But there must be some guidelines in place that prompts the court which factors to be considered while deciding on such preliminary issues. WIPO is one such organisation that has the means to come up with such guidelines. Without such guidelines, these issues will be forever debated on.
Author: Nandini Biswas, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing
[1]Duijnstee v Goderbauer; ECJ 15 Nov 1983
[2]Mariano Municoy, ‘Allocation of Jurisdiction on Patent Disputes in the Models Developed bythe Hague Conference in Private International Law: Asymmetric Countries and the Relationship ofPrivate Parties’(2004) 4(2) Chicago Kent J of IP<https://studentorgs.kentlaw.iit.edu/ckjip/wpcontent/uploads/sites/4/2013/06/16_4JIntellProp3422004-20051.pdf> accessed on 18 June 2023
[3]Novartis Ag v Union of India, (2013) 6 SCC 1
[4]Alexander Thunken, ‘Multi-State Advertising over the Internet and the Private International Lawof Unfair Competition’ (2002) 51(4)The International and Comparative Law Quarterly <https://www.jstor.org/stable/3663192?read-now=1#page_scan_tab_contents> accessed on 18 June 2023
[5] Paris Convention on Protection of Industrial Property 1883
[6] Berne Convention on Protection of Literary and Artistic Works 1886
[7]Annette Kur, UlgMaunsbach, ‘The Choice of Law and Intellectual Property’ (2019) 6(1) Oslo Law Review <https://www.idunn.no/doi/10.18261/issn.2387-3299-2019-01-07> accessed on 18 June 2023
[8]Lydia Lundstedt, ‘Territoriality in Intellectual Property Law’ (2016) Dissertation Paper Stockholm University <https://su.diva-portal.org/smash/get/diva2:972658/FULLTEXT01.pdf>
[9] Berne Convention on Protection of Literary and Artistic Works 1886, art 5(2)
[10]Supra Note 7
[11]Regulation (EC) 864/2007 (Rome II)
[12]Regulation (EC) 864/2007 (Rome II), art 8(1)
[13]Regulation (EC) 864/2007 (Rome II), art 8(2)
[14]Vandana Singh Private International Law Issues in Intellectual Property Law in India (Springer Nature Singapore Pte Ltd, S.R. Garimella and S. Jolly (eds.)2017) <https://www.researchgate.net/publication/312571000_Private_International_Law_Issues_in_Intellectual_Property_Law_in_India> accessed on 11 June 2023
