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Tuesday, 20 January 2015

Cross-Border Enforcement of Intellectual Property: at last, the book review

Earlier this month, this Kat posted an announcement concerning the publication of The Research Handbook on Cross-Border Enforcement of Intellectual Property, and explained that, as an interested party (being editor of the publisher's Research Handbooks in Intellectual Property series, of which this is the eighth), he was not in a position to deliver an arm's-length review of it.  Fortunately he was able to find a more objective reviewer in the form of London-based barrister Ashley Roughton, who writes as follows:
"This book is a collection of chapters written by a variety of authors under four different headings: National and Regional Assessments, A Private International Law Perspective, Judges and Arbitrators and Special Issues. Within each part there are a series of chapters written by well known authors on specific jurisdictional issues and questions which relate to the part heading.

Some borders cause
few problems ...
I must confess that, when I was handed this book and asked to review it, I was expecting a book which would tell me how to enforce, i.e. how to stop somebody from using, some IP abroad, i.e. a manual. Most IP is parochial; the EU apart, there is no international IP right which may exist as the same right in two states. To be sure it is possible, in the right circumstances, to apply to a foreign court to restrain the use by others of certain creations and the means of enforcement for any foreign court you care to use may be identical, as will be the work relied upon but in most, nearly all, cases such rights are given (and sometimes taken away) on a national basis. Hence it is never going to be possible to enforce one’s UK copyright in Australia so as to take effect in Australia. You’ll need your Australian copyright to do that. However, one cannot ignore the fact that such rights are usually fairly similar and that most court systems will readily adopt judicial reasoning from another jurisdiction if it avoids duplication and cost. 
... while others are not so relaxed
This is not a question of binding precedent; it is a question of economy. Even then that is not to say that if one IP right in one jurisdiction is protected in that jurisdiction then the same type of right in relation to the same subject matter, but where infringement takes place in another jurisdiction, will necessary be protected in that other jurisdiction. Likewise though it is perfectly possible in this jurisdiction at least to litigate foreign IP rights, the enforcement of them is a matter for national law. The question is whether if one obtains a judgment then can one obtain an injunction in a court other than the one which granted the judgment? The answer to this question is, obviously, it depends.

On what may the enforcement of an IP right depend (I hear you ask)? This is where the book comes in and seeks to tell you of some limited experiential matters in various specific countries and regions (the USA, China, Thailand, Japan, Vietnam, Africa and the EU). As one can immediately see, the list is incomplete and, even if one was going to have an incomplete list of countries, there are some notable exceptions such as Russia, and the regions of Australasia and South America. 

How lawyers cross borders ...
That omission may be understandable as a world-wide review of how different jurisdictions enforce their IP or foreign IP is the subject of a compendium, not a book. One would expect therefore a series of chapters to cover the principles of the application of private international law which most courts of the world are likely to apply ... so far as they exist, anyway. Apart from a sector-specific chapter written by Professor Torremans (about the Brussels Regulation) I am not sure that the book achieves this; though that is not to say that any book on the subject would. Two specific chapters written about choice of law (in, I assume, agreements) and recognition and enforcement of judgments (written by Carmen Otero Carcía-Castrillón and Pedro A. DeMiguel Asensio respectively) make the purchase of this book worthwhile. Though the first of these chapters is necessarily state-specific, the second of them does not need to be (and yet is). Sophie Neumann tries to come to the rescue in her chapter on “Ubiquitous and multistate cases” (I think that this means cases where similar facts are in issue across international borders) but, as she appears to recognise, there is little which actually binds courts in terms of legal principle. For instance she makes mention of TRIPS but readily admits (as to other authors in the book) that it is a weak means by which IP rights may be protected in the same way in relation to the same type of infringement in many states. One should not expect too much of this chapter however; Neumann is correct, the situation is uncertain. But if that be the case, it is not made any more certain by the writing of a book about it. 

... cats too
Necessarily weak though (the subject matter of) Neumann’s chapter may be -- and she is not to be criticised -- her work is well augmented by Peter Ellis who gives a good overall and practical view of how to enforce foreign IP rights here. Nothing he says is controversial (though he reveals a controversy concerning conflicts in patent decisions between the UK and Germany) and he provides a good round-up and commentary on the relevant principles which a litigant here may wish to know when attempting to enforce a foreign IP right here. If you want a good place to dive in, then Peter Ellis’ chapter would be it.

The book closes with a series of chapters on sector-specific enforcement and, more often than not, Euro based. One could gain a feeling that, when it came to IP, there was something special about IP and Europe.

It is important not to lose sight of the fact that the book has two stated objectives, one which is to “provide a complete overview of the issues that arise in a cross-border enforcement context” and the other which is to provide “an in-depth analysis of the current state of affairs in legal science.” Apart from the omissions of any analysis of the Russian, Australasian and South American systems, the books is certainly the best attempt one could hope for. The analysis is certainly in-depth but the conclusions are understandably disappointing and readers should be prepared for this. The book is not an enforcement manual but is a (well written) commentary on where we are.
Bibliographic data:  publication date December 2014. ix + 889 pages. Hardback ISBN 978 1 78195 579 6;  ebook ISBN 978 1 78195 580 2. Price £195 (online price £175.50). Rupture factor: quite considerable.  Book's website here.


Anonymous said...

Arnold had no issues in deciding on foreign infringement in Actavis Group hf v Eli Lilly & Company (USA)/Medis ehf v Eli Lilly & Company (USA) [2012] EWHC 3316 (Pat) (see I don't know if the fact that infringement was of the same European patent made a difference there.

Anonymous said...

The book is an admirable work and helps to iron out some of the fuzzy areas those outside of practice (young and old scholars) are working on.

P.S. Morris/Helsinki

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