
International Litigation in Intellectual Property and Information Technology
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Content
- Intro
- Title Page
- Copyright Page
- Summary Table of Contents
- Table of Contents
- Editors' Note
- Table of Cases
- Chapter 1: Cross-Border Litigation in IP/IT Matters in the European Union: The Transformation of the Jurisdictional Landscape
- I. Introduction
- II. From Strict Territoriality to Cross-Border Litigation
- A. Territoriality of Rights Matched with Territoriality of Procedure
- B. The Change of Thinking Brought about by the Brussels Convention
- III. The Cross-Border Litigation Machinery
- A. How the Machinery Started
- 1. Cross-Border Injunctions
- 2. Jurisdiction over Joint Defendants
- 3. Recognition and Enforcement of Foreign Judgments
- B. How It Got Blocked and Was Then Fixed
- 1. Abuse of Joinders and Remedies from Domestic Courts
- 2. Pre-emptive Litigation and Remedies from Domestic Courts
- C. And How It Got Blocked Again
- 1. Stumbling Block: How to Sever the Validity from the Infringement?
- 2. Is There Any Web for the Spider?
- D. Heading for the Future: Instead of Fixing the Machinery, Setting Up a New One?
- IV. Copyright Litigation under the Brussels Regime
- V. Impact of Information Technology on the Litigation of IP Rights under the Brussels Convention/Regulation
- VI. Conclusion
- Chapter 2: The Community Framework for Cross-Border Intellectual Property and Information Technology Litigation
- I. Introduction
- II. Yesterday: International Litigation prior to the Development of an EU Framework
- A. International Regulations
- B. International Litigation Strictly Speaking
- III. Today: Changes in International Litigation Due to the Establishment of an EU Framework
- A. Establishment of an EU Framework for Intellectual Property Law
- B. The Establishment of a Community Framework for Information Technology Law
- C. The Establishment of a Community Framework for Private International Law
- D. The Changing Face of International Litigation
- IV. Tomorrow: What Type of International Litigation and What Type of Community Law Can Be Expected?
- APPENDIX
- I. International Multilateral Texts Specific to Intellectual Property
- II. Community Texts Specific to Intellectual Property
- III. Community Texts Specific to Information Technology
- IV. Community Texts Specific to International Private Law Containing Provisions Relating to Intellectual Property or Information Technology
- Chapter 3: The Widening Reach of Exclusive Jurisdiction: Where Can You Litigate IP Rights after GAT?
- I. Introduction
- II. The Judgment
- A. A Somewhat Unusual Factual Basis
- B. The Case before the German Courts
- C. The Court of Justice Goes Back to Duijnstee
- D. The Questionable Link with National Offices and National Law
- E. Article 22 and Its Position in the Scheme of the Regulation
- F. Further Points Raised in Support of Its Approach by the Court of Justice
- III. The Position Adopted by the Court
- IV. The Implications of the Judgment
- A. Patent Cases
- B. Policy
- C. Other Registered Rights
- V. Towards a Solution
- A. Objectives
- B. The Role of Articles 2 and 5
- C. The Role of Article 22
- D. A Decision Inter Partes
- VI. Conclusion
- Chapter 4: Is There Any Web for the Spider? Jurisdiction over Co-defendants after Roche Nederland
- I. Introduction
- II. The Brussels Convention
- III. National Case-Law before Roche
- IV. The Roche Decision
- V. Critical Evaluation of the Outcome of the Roche Case
- VI. Perspectives after Roche
- Chapter 5: The Appropriate Venue for Cross-Border Patent Disputes: Heading (Far) West?
- I. Introduction
- II. The Compartmentalized Approach to Patent Disputes
- A. Introduction
- B. The 'State of the Art' on Foreign Patent Infringement Claims
- 1. Same Case or Controversy
- 2. Exercise of Jurisdiction Is 'within the Discretion of the District Court'
- a. Lack of International Regime
- b. Patents Are Local Rights
- c. Judicial Economy, Convenience and Fairness
- C. Cross-Border Patent Enforcement in the US: Any Future Perspectives?
- III. Comparative Approach and Future Developments
- A. Law Lags Behind the Needs of the International Patent Community
- B. The Initiatives towards New Enforcement Regimes
- C. Legislative Progress on the Current Jurisdictional Settings
- 1. A Chance for Europe to Tackle Current Difficulties?
- 2. The Way Forward
- Chapter 6: Suing At the Place of Infringement: The Application of Article 5(3) of Regulation 44/2001 to IP Matters and Internet Disputes
- I. Introduction
- II. Legal Basis for Suing at the Place of Infringement
- III. Types of Actions that Can Be Brought at the Place of Infringement
- IV. Determination of the Place of Infringement
- A. The Place of the Causal Event of Infringement
- B. The Place where Damage Is Sustained
- V. Territorial Limitation of Jurisdiction
- Chapter 7: Cross-Border Litigation of Unfair Competition over the Internet
- I. Introduction
- II. Special Features of Unfair Competition Claims
- III. The Law Applicable to Unfair Competition Claims
- IV. Jurisdiction over Unfair Competition Claims
- A. Domicile of the Defendant
- B. Place where the Event Giving Rise to the Damage Took Place
- 1. Place where the Data was Uploaded
- 2. Place where the Server is Situated
- 3. Establishment of the Defendant
- C. Place where the Damage Occurred (Is Sustained)
- 1. What Kinds of Claims are Covered by Article 5, Paragraph 3?
- 2. Does the Accessibility of the Website in One Country Justify the Possibility of Accepting Jurisdiction by the Courts of that Country?
- 3. Possible Ways to Limit Jurisdiction
- 4. Proposal of a Wide Interpretation of the 'Place where Damage is Sustained' in Case of Torts Committed over the Internet
- V. Conclusions
- Chapter 8: Justiciability, Discretion and Foreign Rights
- I. Introduction
- II. A Case Study: English Law
- A. Three Issues
- 1. Entitlement
- 2. Infringement
- 3. Exploitation
- B. Critique
- 1. Entitlement
- 2. Infringement
- 3. Exploitation
- C. The Foreign Law (Non-) Problem
- D. Conclusion
- III. National Law and Community Law
- B. Pearce and the Scope of Community Law
- C. Possible Solutions
- D. Five Measures of Consistency
- E. Consistency Undermined?
- F. Two Cases
- G. Consistency and Intellectual Property
- IV. Conclusion
- Chapter 9: Torpedoes and Actions for Negative Declarations in International IP Law Litigation
- I. Introduction
- II. Cross-Border Litigation of IP Rights Infringement within the European Judicial Area
- III. The Torpedo Actions
- IV. Torpedoes within the EU Judicial Area: Consistency or Inconsistency?
- A. Suing at the Defendant's Domicile
- B. Suing at the Place of the Tort
- C. Successful Torpedoes: Establishment of lis pendens and Stay of Proceedings in other Member States
- V. Flaws in the Torpedo: The Infringement and Validity Interface. Territorial Nature of IP Registered Rights and Obstacles to Cross-Border Infringement Litigation
- VI. The ECJ's GAT v. LuK Decision
- VII. GAT v. LuK and Roche Cases: Adverse Effects on Torpedo Practice
- VIII. Negative Attitude of Domestic Courts in Respect of Torpedoes
- IX. (In)Consistency of Negative Declarations with Article 5(3) Convention/Regulation?
- A. The Requirement of an Injury Having Already Occurred
- B. The Amendment to Article 5(3) by Regulation EC n. 44/2001: Inclusion of Threatened Wrongs
- C. The Notion of Matter Relating to Tort
- D. Forum Actoris, Proximity Principle and Negative Declarations
- E. Proposals to Avoid Abusive Litigation in Cross-Border Negative Declarations
- X. Consistency of Negative Declarations with the Convention/Regulation Framework: The Interface with Admissibility Preconditions Provided for by National Law
- XI. Concluding Remarks
- Chapter 10: Jurisdiction to Grant Provisional and Protective Measures in Intellectual Property Matters
- I. Introduction
- II. Definition of Provisional and Protective Measures
- III. International Jurisdiction to Order Provisional Including Protective Measures
- A. Interim Relief Application Before a Court Having Jurisdicition as to the Substance of the Case
- 1. Domicile of the Defendant
- 2. Domicile of One of the Defendants
- B. Proceedings Instituted Under Article 31
- 1. Conditions of Application of Article 31
- a. Notion of Provisional, Including Protective, Measures
- b. Territorial Scope of the Relief
- 2. Autonomous Character of Article 31
- a. An Old Debate: Is Article 31 an Autonomous Head of Jurisdiction?
- b. A New Element: Is Article 31 Applicable Regardless of the Domicile of the Defendant?
- IV. Conclusion
- Chapter 11: Interactions between Community Instruments and International Conventions (Including the Draft New Lugano Convention) in Intellectual Property Matters
- I. Introduction
- II. The Determining Factors
- A. In General
- B. The Opinion of the European Court of Justice on the Competence of the Community to Conclude the Revised Lugano Convention
- C. The Community Patent
- III. The Results
- A. In General
- B. The Revision of the Lugano Convention
- C. The Hague Convention on Choice of Court Agreements of 30 June 2005
- IV. Final Considerations
- Chapter 12: The Impact of the Enforcement Directive on the Brussels I Regime
- I. Directive 2004/48/EC: General Aspects
- A. Purpose and Scope of Directive 2004/48/EC
- B. General Aspects: The Directive and EC Instruments of Private International Law
- II. Obtaining of Evidence v. Provisional and Precautionary Measures
- A. The Directive: Scope
- 1. Obtaining Evidence
- 2. Preserving Evidence and Preserving the Right to Be Adjudicated on the Merits
- B. The Respective Roles of BIR and ER
- C. Jurisdiction to Order 'Provisional, Including Protective, Measures' under Article 31 BIR
- III. Jurisdiction on the Merits
- A. Remedies Provided for in the Directive and Roles of Articles 2 and 5.3 BIR
- B. Reach of Exclusive Jurisdiction under BIR (Article 22.4 BIR) and Enforcement of Intellectual Property Rights
- C. Enforcement of Intellectual Property Rights and the Co-Defendants Rule of Jurisdiction (Article 6.1 BIR)
- IV. Recognition and Enforcement of Decisions
- A. Ex Parte Directive Measures
- B. Exclusive Jurisdiction, Public Policy and Irreconcilable Judgments Exceptions
- 1. Exclusive Jurisdiction
- 2. Public Policy and Irreconcilable Judgments
- V. Concluding Remarks
- Chapter 13: Preservation and Taking of Evidence in Cross-Border Proceedings - Comparative Remarks in the Context of IP Litigation
- I. Introduction
- II. The Different National Systems
- A. Gathering of Information and Preservation of Evidence
- B. Provisional Measures for the Preservation of Evidence
- III. The EC-Framework
- A. The Evidence Regulation EC 1206/2001
- B. The Brussels I Regulation EC 44/2001
- C. The Enforcement Directive 2004/48/EC
- D. The ECJ's Decision in St Paul's Dairy - A Missed Opportunity
- E. The Tedesco Case
- F. The Preservation of Evidence under Articles 31 and 32 of the Judgments Regulation
- IV. Concluding Remarks
- Chapter 14: Concluding Remarks: Territoriality, International Governance and Cross-Border Litigation of Intellectual Property Claims
- I. Introduction
- II. The Evolving Intellectual Property Paradigm
- III. Evolving International Regimes of Intellectual Property Protection
- IV. Territoriality in Intellectual Property
- V. Conclusion
- Index
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