LAW BOOKS | IP LAW

After years of relative neglect and gradual emergence from obscurity, the new millennium has witnessed ever more intense research projects, comments and case law on various issues falling within the area where the private international law and intellectual property law interconnect. Benedetta Ubertazzi’s book on exclusive international jurisdiction in intellectual property cases, her third book and first one in the English language, fits squarely into this trend, aptly bringing into the picture also the public international law principles. The trilogy of legal branches dealt with in this book creates an innovating line of reasoning which culminates in the Ubertazzi’s claim that the exclusive jurisdiction (of the courts of the country for which the protection is sought, i.e. the country of registration for registered intellectual property rights) in intellectual property cases is not only unsupported by classical private international law arguments, but also in contravention of the public international law principle guaranteeing access to justice.

In order to arrive at this final conclusion, the book is divided into seven chapters: the central five chapters state the arguments substantiating individual doctrines or principles justifying the exclusive international jurisdiction in intellectual property cases, while the first and the last chapters expectedly offer general introduction and overall conclusions respectively. In the opening Chapter I, the reader is familiarised with the subject and scope of exclusive international jurisdiction in intellectual property cases, and the fact that the book is focused mainly on the cases involving infringement of registered and unregistered intellectual property rights and their validity, irrespective of whether validity is raised as a principal claim or incidentally (p. 15). Further preliminary notes concern private international law and public international law dimensions of such cases, as well as the current state on the subject expressed in the judicial decisions deriving from different jurisdictions worldwide.

Chapter II intends to prove that both national and international provisions on exclusive international jurisdiction related to intellectual property situations do not amount to rules of customary international law. The main arguments in favour of this hypothesis are lack or limited scope of such provisions in the vast majority of jurisdictions as well as tendency of their rejection in the recent scholarly initiatives in the field, except for the validity of registered intellectual property rights principally raised and, within the Brussels I and Lugano regimes, also of those incidentally raised.

In Chapter III, Ubertazzi examines the act of State doctrine and the principle of comity and presents arguments to disapprove their capacity to serve as justifications for the exclusive international jurisdiction provisions in cross-border intellectual property cases. This seems to be a particularly complex task as many of the judicial decisions upholding such exclusive jurisdiction invoke the act of State doctrine and/or comity. Nonetheless, the argument is extended even further to prove that the act of State doctrine and comity are contrary to the public international law principle assuring access to justice.

The next Chapter IV is dedicated to establishing that the principle of territoriality of intellectual property rights, deriving out of the State sovereignty, does not unavoidably endorse the provisions on exclusive international jurisdiction in intellectual property cases. In addition to dilution of the principle of territoriality of intellectual property rights over time and increasingly so in recent times due to the risk of transnational misappropriation, the argument in favour of universal international protection of these rights is based on the analogies to the international means to fight piracy, cybercrimes and biopiracy, to the human rights protection, and to the protection of tangible cultural objects. It is effectively argued that although the exclusive jurisdiction rules might seem to be the manifestations of the principle of territoriality, they are better explained by the principle of proximity, the cornerstone principle of private international law.

The Chapter V tackles a number of additional arguments used in different legal systems and different context to uphold the exclusive international jurisdiction rules for cross-border intellectual property cases. Those are:  the application of the Moçambique rule, the application of the double actionability rule, the principles of sound administration of justice and judicial economy, the premise of the best placed court, the difficulty in applying foreign intellectual property law, the impossibility to recognise and enforce foreign judgments in the country for which the protection is sought, i.e. the country of registration, including the impossibility to recognise the judgments amending the public registers of intellectual property rights, and the effects of the common law forum non conveniens doctrine and the Japanese special circumstances test equivalent to exclusive jurisdiction rules.

Following the above mentioned propositions, which express disapproval of the classical arguments favouring the exclusive jurisdiction of the country of protection/registration of an intellectual property right for validity and/or infringement, the reader arrives to the crux of the book where Ubertazzi asserts that such jurisdiction entails a denial of justice and violates the right to access the courts. The denial of justice is argued on the basis of the fact that a typical multistate case is dismissed although sufficiently connected to the forum country, and because the parties to such a case are consequently forced to turn to the courts of each of the respective countries, which is both unreasonable and inefficient. The violation of human right to access the court is contended based on, inter alia, uncertain content of exclusive jurisdiction rules owing to the fact that these rules are anchored in the previously challenged public international law principles, disproportion between the objective of the exclusive jurisdiction rules and their highly restrictive nature, as well as ineffectiveness resulting from the necessity to multiply the proceedings in each and every state concerned. The chapter closes by addressing the de lege lata and de lege ferenda actions which the courts should take in such circumstances: to rely on the rules of forum necessitatis to overturn the exclusive jurisdiction provisions, to revisit the rationale tied to the classical justifications, and ultimately to declare unconstitutional the provisions on exclusive jurisdiction.

In the concluding Chapter VII, Ubertazzi reiterates the main interim conclusions and calls the attention to the issues of litigating the disputes concerning the EU unitary intellectual property rights, which may also come in conflict with the right of access to courts. Moreover, she claims that her proposal is effectively preventing economic inequalities occurring in the course of litigating in each and every country of protection/registration especially for the SMEs, contributes to avoiding forum shopping, and raises the level of legal certainty.

It should be also pointed out that the book is published as 273rd title in a series of books Studien zum ausländischen und internationalen Privatrecht (StudIPR) and available in print as well as an e-book. As such it is equipped with a rich bibliography in many languages, table of cases from fifteen national jurisdiction and five international forums, table of international treaties, conventions and other legal instruments, and a practical keyword index.

This brief insight into the reviewed book reveals its most valuable features. The book explains the fundamentals of intellectual property rights in the global environment and as such may be recommended to anyone generally interested in private international law aspects of intellectual property rights. Since it points to and analyses the major hard and soft law instruments and judicial decisions originating from different jurisdictions around the world, this book may also be suggested as an essential reading to lawyers involved in the litigation concerned with intellectual property rights as well as to academics researching into the subject. In fact, it is unavoidable for any person whether still inexperienced or already knowledgeable of the intricacies of the field in question.  Besides, anyone who reads this book will most certainly feel the need to reopen to it in the future due to its resourcefulness and abundant references to various jurisprudential and judicial materials.

Ivana Kunda

Ivana Kunda is the Head of the Department for International and European Private Law at the University of Rijeka, Faculty of Law. She teaches various legal courses and provides expert legal advice in the fields of conflict of laws and European private law for clients all over Europe. She is a member of the International Law Association and the International Association for the Advancement of Teaching and Research in Intellectual Property.