Hosam Hawamdeh
02-04-2010, 12:55 AM
JAMES J. FAWCETT
Professor of International Commercial Law,
University of Nottingham
PAUL TORREMANS
Lecturer in Law,
University of Leicester
OXFORD
UNIVERSITY PRESS
--------------------------------------------------------------
General Editor's Preface
When in 1990 in the course of a critical commentary upon the holding in
Tyburn Production Ltd v Conan Doyle [ 1991] Ch. 75 I advocated 'the con-
struction of a much needed private international law of intellectual prop-
erty' (61 B.Y.I.L. 202), I was, of course, advocating satisfaction of an
obvious need. In the years that have elapsed since then, although some,
albeit piecemeal, progress has been made, that need has become even
more pressing. This has largely been as a result of advances in technology,
both actual and prospective.
Historically the impact of private international law upon intellectual
property issues was slight. This may have been in part due to the 'territo-
rial' approach adopted by private international lawyers. The physical
location of non-physical phenomena presented difficulty. Even in the
immediate post-Beale era response to the criteria of 'closest connection',
'proper law', 'governmental interest analysis', etc., has not been free from
difficulty.
However, whatever the explanation of the past failure of private inter-
national law to meet the need to accommodate problems in the area of
intellectual property, that need is compelling. What is required is a com-
prehensive pattern of legal rules individually tailored to deal appropri-
ately with a wide and diverse variety of issues. Whether this is to be
satisfactorily achieved by statutory intervention alone is, especially in the
light of the likelihood of continuing and fairly rapid development, doubt-
ful. There is certainly room for creative judicial activity, which is now facil-
itated by the currently emerging flexible and justice orientated approach
to private international law generally. Moreover, legal writing obviously
has an important part to play in the achievement of the objective. The
avowed aim of Oxford Monographs in Private International Law is to publish
works of originality and quality on a number of important and develop-
ing areas of private international law. I think that both practitioners and
academics will regard this volume as not only providing a detailed and
illuminating analysis of the present position but as also constituting a
major contribution to the long overdue evolution of a comprehensive and
sophisticated private international law of intellectual property.
Wadham College, Oxford P. B. CARTER
1 May, 1998
Authors' Preface
This book is concerned with the application of the rules of private inter-
national law to intellectual property cases. Private international lawyers
have largely ignored this topic, and it has been left to intellectual property
lawyers to discuss this. This is a pity. It is a topic which raises unique ques-
tions for the private international lawyer which deserve an answer, and at
the same time tells us much about the rules of private international law
that are being applied. The aim of the book is to fill this gap in the litera-
ture. The emphasis in the book is on private international law rather than
on intellectual property law. Nonetheless, it is hoped that intellectual
property lawyers will find much to interest them here.
The book is divided up into sections to reflect the classic issues in pri-
vate international law: jurisdiction; choice of law; and recognition and
enforcement of foreign judgments. Within each section, there are chapters
to reflect the major issues that arise in relation to intellectual property: the
creation of intellectual property rights; the ownership of such rights; the
commercial exploitation of such rights by means of licensing and other
agreements; and the protection of such rights by means of the tort of
infringement and complementary causes of action.
A proper understanding of how jurisdictional and choice of law prob-
lems arise requires some knowledge of the substantive law background.
Moreover, when it comes to the application of the rules of private inter-
national law, it is necessary to characterise the issue and the cause of action
and, as regards the latter, to identify the constituent elements thereof.
There are limitations on jurisdiction which apply in relation to certain
types of intellectual property right but not others. The approach adopted,
therefore, is to start the treatment of each new issue with a discussion of
the substantive law background. This is followed by a discussion of how
jurisdictional or choice of law problems arise. Most of the book, though, is
taken up with the discussion of the relevant rules of private international
law and their application in the context of intellectual property law. A
major theme of the book is the extent to which there are special rules of pri-
vate international law for this area and whether there should be such
rules. Alternative private international law solutions will be considered by
looking at law in other jurisdictions, such as the United States, France,
Germany, Austria, Switzerland and the Netherlands. Where appropriate,
proposals will be put forward for a better solution.
We have relied upon the help and guidance of friends and colleagues
in preparing this book and would like particularly to thank Professor
John Adams, Michael Bowman, Professor W R Cornish, Professor Hector
MacQueen, David Ormerod, Dr Harry Duintjer Tebbens and Irini A
Stamatoudi for her invaluable research assistance. Especial thanks are due
to P B Carter, the General Editor of the Oxford Monographs in Private
International Law, for his encouragement and many helpful comments on
the text. All errors are, of course, our responsibility.
The law is stated as at 31 December 1997.
Nottingham and Leicester JAMES J. FAWCETT
PAUL TORREMANS
Contents
General Editor's Preface v (http://www.questia.com/read/74377443)
Authors' Preface vii (http://www.questia.com/read/74377445)
Table of Cases xi (http://www.questia.com/read/74377449)
Table of Legislation xxxv (http://www.questia.com/read/74377473)
Table of Conventions and Treaties xlvii (http://www.questia.com/read/74377485)
SECTION I JURISDICTION
Preliminary remarks 1 (http://www.questia.com/read/74377495)
1 Creation and validity of intellectual property rights:
jurisdiction 5 (http://www.questia.com/read/74377499)
2 Entitlement to the grant and ownership of intellectual
property rights: jurisdiction 49 (http://www.questia.com/read/74377543)
3 Contracts in relation to the exploitation of intellectual
property rights: jurisdiction 73 (http://www.questia.com/read/74377567)
4 Infringement: preliminary matters 119 (http://www.questia.com/read/74377613)
5 Infringement: jurisdiction under the European Community/
European Free Trade Association rules 139 (http://www.questia.com/read/74377633)
6 Infringement: jurisdiction under the traditional rules 239 (http://www.questia.com/read/74377733)
7 Jurisdictional issues in relation to European Community rights 317 (http://www.questia.com/read/74377811)
8 Complementary torts and other causes of action:
jurisdiction 359 (http://www.questia.com/read/74377853)
to continue reading click here (http://www.questia.com/read/74377441?title=Intellectual%20Property%20and%20Pri vate%20International%20Law)
SECTION II THE APPLICABLE LAW
Preliminary remarks 455 (http://www.questia.com/read/74377951)
9 Choice of law elements in the intellectual property
conventions 459 (http://www.questia.com/read/74377955)
10 Creation, scope and termination of intellectual property
rights: the applicable law 483 (http://www.questia.com/read/74377979)
11 Contracts in relation to the exploitation of intellectual
property rights: the applicable law 543 (http://www.questia.com/read/74378039)
12 Infringement: the applicable law 595 (http://www.questia.com/read/74378091)
13 Complementary torts and other causes, of action: the
applicable law
Professor of International Commercial Law,
University of Nottingham
PAUL TORREMANS
Lecturer in Law,
University of Leicester
OXFORD
UNIVERSITY PRESS
--------------------------------------------------------------
General Editor's Preface
When in 1990 in the course of a critical commentary upon the holding in
Tyburn Production Ltd v Conan Doyle [ 1991] Ch. 75 I advocated 'the con-
struction of a much needed private international law of intellectual prop-
erty' (61 B.Y.I.L. 202), I was, of course, advocating satisfaction of an
obvious need. In the years that have elapsed since then, although some,
albeit piecemeal, progress has been made, that need has become even
more pressing. This has largely been as a result of advances in technology,
both actual and prospective.
Historically the impact of private international law upon intellectual
property issues was slight. This may have been in part due to the 'territo-
rial' approach adopted by private international lawyers. The physical
location of non-physical phenomena presented difficulty. Even in the
immediate post-Beale era response to the criteria of 'closest connection',
'proper law', 'governmental interest analysis', etc., has not been free from
difficulty.
However, whatever the explanation of the past failure of private inter-
national law to meet the need to accommodate problems in the area of
intellectual property, that need is compelling. What is required is a com-
prehensive pattern of legal rules individually tailored to deal appropri-
ately with a wide and diverse variety of issues. Whether this is to be
satisfactorily achieved by statutory intervention alone is, especially in the
light of the likelihood of continuing and fairly rapid development, doubt-
ful. There is certainly room for creative judicial activity, which is now facil-
itated by the currently emerging flexible and justice orientated approach
to private international law generally. Moreover, legal writing obviously
has an important part to play in the achievement of the objective. The
avowed aim of Oxford Monographs in Private International Law is to publish
works of originality and quality on a number of important and develop-
ing areas of private international law. I think that both practitioners and
academics will regard this volume as not only providing a detailed and
illuminating analysis of the present position but as also constituting a
major contribution to the long overdue evolution of a comprehensive and
sophisticated private international law of intellectual property.
Wadham College, Oxford P. B. CARTER
1 May, 1998
Authors' Preface
This book is concerned with the application of the rules of private inter-
national law to intellectual property cases. Private international lawyers
have largely ignored this topic, and it has been left to intellectual property
lawyers to discuss this. This is a pity. It is a topic which raises unique ques-
tions for the private international lawyer which deserve an answer, and at
the same time tells us much about the rules of private international law
that are being applied. The aim of the book is to fill this gap in the litera-
ture. The emphasis in the book is on private international law rather than
on intellectual property law. Nonetheless, it is hoped that intellectual
property lawyers will find much to interest them here.
The book is divided up into sections to reflect the classic issues in pri-
vate international law: jurisdiction; choice of law; and recognition and
enforcement of foreign judgments. Within each section, there are chapters
to reflect the major issues that arise in relation to intellectual property: the
creation of intellectual property rights; the ownership of such rights; the
commercial exploitation of such rights by means of licensing and other
agreements; and the protection of such rights by means of the tort of
infringement and complementary causes of action.
A proper understanding of how jurisdictional and choice of law prob-
lems arise requires some knowledge of the substantive law background.
Moreover, when it comes to the application of the rules of private inter-
national law, it is necessary to characterise the issue and the cause of action
and, as regards the latter, to identify the constituent elements thereof.
There are limitations on jurisdiction which apply in relation to certain
types of intellectual property right but not others. The approach adopted,
therefore, is to start the treatment of each new issue with a discussion of
the substantive law background. This is followed by a discussion of how
jurisdictional or choice of law problems arise. Most of the book, though, is
taken up with the discussion of the relevant rules of private international
law and their application in the context of intellectual property law. A
major theme of the book is the extent to which there are special rules of pri-
vate international law for this area and whether there should be such
rules. Alternative private international law solutions will be considered by
looking at law in other jurisdictions, such as the United States, France,
Germany, Austria, Switzerland and the Netherlands. Where appropriate,
proposals will be put forward for a better solution.
We have relied upon the help and guidance of friends and colleagues
in preparing this book and would like particularly to thank Professor
John Adams, Michael Bowman, Professor W R Cornish, Professor Hector
MacQueen, David Ormerod, Dr Harry Duintjer Tebbens and Irini A
Stamatoudi for her invaluable research assistance. Especial thanks are due
to P B Carter, the General Editor of the Oxford Monographs in Private
International Law, for his encouragement and many helpful comments on
the text. All errors are, of course, our responsibility.
The law is stated as at 31 December 1997.
Nottingham and Leicester JAMES J. FAWCETT
PAUL TORREMANS
Contents
General Editor's Preface v (http://www.questia.com/read/74377443)
Authors' Preface vii (http://www.questia.com/read/74377445)
Table of Cases xi (http://www.questia.com/read/74377449)
Table of Legislation xxxv (http://www.questia.com/read/74377473)
Table of Conventions and Treaties xlvii (http://www.questia.com/read/74377485)
SECTION I JURISDICTION
Preliminary remarks 1 (http://www.questia.com/read/74377495)
1 Creation and validity of intellectual property rights:
jurisdiction 5 (http://www.questia.com/read/74377499)
2 Entitlement to the grant and ownership of intellectual
property rights: jurisdiction 49 (http://www.questia.com/read/74377543)
3 Contracts in relation to the exploitation of intellectual
property rights: jurisdiction 73 (http://www.questia.com/read/74377567)
4 Infringement: preliminary matters 119 (http://www.questia.com/read/74377613)
5 Infringement: jurisdiction under the European Community/
European Free Trade Association rules 139 (http://www.questia.com/read/74377633)
6 Infringement: jurisdiction under the traditional rules 239 (http://www.questia.com/read/74377733)
7 Jurisdictional issues in relation to European Community rights 317 (http://www.questia.com/read/74377811)
8 Complementary torts and other causes of action:
jurisdiction 359 (http://www.questia.com/read/74377853)
to continue reading click here (http://www.questia.com/read/74377441?title=Intellectual%20Property%20and%20Pri vate%20International%20Law)
SECTION II THE APPLICABLE LAW
Preliminary remarks 455 (http://www.questia.com/read/74377951)
9 Choice of law elements in the intellectual property
conventions 459 (http://www.questia.com/read/74377955)
10 Creation, scope and termination of intellectual property
rights: the applicable law 483 (http://www.questia.com/read/74377979)
11 Contracts in relation to the exploitation of intellectual
property rights: the applicable law 543 (http://www.questia.com/read/74378039)
12 Infringement: the applicable law 595 (http://www.questia.com/read/74378091)
13 Complementary torts and other causes, of action: the
applicable law