CPT's Comments to USPTO on the Hague Conference on Private International Law's Proposed Convention on Jurisdiction and Foreign Judgments in Civil and Commercial Matters |
To: Elizabeth Shaw <elizabeth.shaw2@uspto.gov> From: James Love <love@cptech.org> Re: Public Comments on IPR aspects of Hague Convention on Jurisdiction and Foreign Judgments in Civil and Commercial Matters Date: November 21, 2000 I request that the United States Patent and Trademark Office extend the deadline for this comment period to January 15, 2000, to permit broader public debate on this issue. In addition, I present the preliminary comments of the Consumer Project on Technology to the 16 questions raised in the USPTO's October 17, 2000 Federal Register Notice, that is on the web here: (http://www.uspto.gov/web/offices/com/sol/notices/prdrconjud.html) Preliminary Answers to 16 questions by the Consumer Project on Technology: 1. What are your experiences in having judgments involving intellectual property from one jurisdiction recognized in a foreign court? No personal experience. 2. Have you had different experiences in having those judgments recognized in U.S. courts? N/A 3. Are uniform rules for international enforcement of judgments desirable? As a general rule, no, if the uniform rules are bad rules. The benefits or disadvantages of uniform rules will depend upon the content of the rules. Harmonization on bad rules is a bad thing. Harmonization on good rules is a good thing. But since not everyone agrees on what would be good or bad rules, this presents a problem. In the area of intellectual property rules, there are special reasons to avoid extending the reach of all foreign IPR regimes. The US has strong traditions for fair use that are not followed in all countries. The US has a stronger system for patent examination than do some countries, and indeed, some countries have a registration system that places every greater burdens on the public to defend infringement suits. Some countries will predictably issue overly broad patents, patents that do not represent real or important inventions, or patents that offend the sensibilities, such as patents on life forms or business methods. Some countries have sui generis IPR regimes that lead to anticompetitive or monopolistic outcomes. The European laws on protection of databases create rights in facts that do not exist in the United States. Some countries have crown copyrights in government documents, and use those rights to prevent citizens from publishing information about governments on the Internet. The United States issues ill advised patents on business methods, creating a nightmare of litigation and anticompetive outcomes, and these patents should not be forced on the whole world. Some countries have trademark or unfair competition laws which make it illegal to engage in comparative advertising, or even to criticize commercial products. In some countries, it is against the law to link to documents from a web page, without a license. In some countries, the first sale doctrine is extremely limited. Trade secret protections in some countries can be used as a weapon against whistle blowers or to prevent criticism or debate on company practices. In general, if countries think they can collect money abroad more easily, they will have incentives to be even more aggressive in issuing intellectual property, including overly broad patents, sui generis rights that don't make sense, restrictive copyright rights, etc, because the "consumers" will often be foreign consumers, and the countries will seek to exploit the foreign consumers. 4. Do you support or oppose the United States becoming party to a jurisdiction/enforcement of judgments convention? We oppose the United States entering into a treaty on the enforcement of judgments for intellectual property claims at this time. The laws on intellectual property on the Internet are undergoing enormous change and are subject to much controversy. It makes no sense at all to lock in the whole world to a system that extends every nation's IPR regime to everyone. The fact that IPR regimes are so different now, and undergoing so much change, is a good reason to exclude IPR issues from the Hague Convention, as has been done for maritime law and other areas where there is not agreement upon jurisdiction issues. 5. What would be the benefits or drawbacks of the United States becoming a party to the proposed Hague convention? The drawback would be an enormous shrinkage of the public's rights, as people would be subject to the most restrictive IPR regimes in the world. Publishers, patent owners and others could pursue litigation in the most restrictive jurisdictions. People who do nothing more than publish web pages or use the Internet would be exposed to all sorts of new risks, including the costs of defending oneself in foreign courts. 6. Would the elimination of tag or general ``doing business'' jurisdiction have any impact on intellectual property owners' ability to protect their rights either domestically or internationally? Under review. 7. What other changes to U.S. law would be needed to implement the proposed convention? Please identify any drawbacks and/or advantages to such changes. The Article 4 provisions regarding contracts determining jurisdiction will place burdens on US citizens who are forced to litigate disputes in foreign courts. 8. What effect, if any, could this Convention have on other international intellectual property obligations, including, but not limited to, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), the Paris Convention, and the Berne Convention? The Convention will have the practical effect of limiting country freedom to authorize certain exceptions and limitation on intellectual property rights, as the rights will be determined by contracts, and litigated in foreign courts, often under foreign laws. 9. What effect, if any, could this Convention have on the enforcement of intellectual property with respect to the Internet? The Convention will create enormous risks for those who develop free software that is distributed over the Internet, or used for Internet servers or applications software. Volunteer developers may find themselves the subject of foreign infringement suits involving infringements of patents, trade secrets, copyrights or other rights, even when their efforts are completely legal under the laws of the country where they live. Anyone who links web pages, reports facts or news, or forwards articles in newsgroups or mailing lists will risk being sued in foreign courts where IPR laws are very restrictive. 10. Would application of Article 10 change existing jurisdictional principles as applied to intellectual property infringement actions? If yes, please describe any changes in detail and provide any relevant legal authority. Under review. 11. Would the limitation of worldwide damages in Article 10(4) have any significant impact in cases involving worldwide infringement of trademark or other intellectual property rights? Under review. 12. With respect to Article 12(4), under what circumstances would application of this subsection change existing jurisdictional principles, with and without the bracketed language included? Please describe any changes in detail and provide any relevant legal authority. Under review. 13. What effect, if any, would Article 12(4) have on trademark owners seeking to litigate rights related to registered versus common law marks? Under review. 14. Is exclusive jurisdiction needed for infringement and/or validity actions involving patents, trademarks, and/or copyrights? IPR should be excluded from the Convention, as is maritime law. 15. What changes, if any, should be made to the proposed Convention? Please describe any changes in detail and provide any relevant legal authorities that support such suggestions. IPR should be excluded from the Convention, as is maritime law. 16. Please identify any other potential concerns or advantages raised by the proposed convention. I do not believe the US government appreciates the extend to which this Convention would shrink the public's rights, harm the development of free software, or create incentives for countries to adopt bad IPR regimes. The Consumer Project on Technology has created a web page on the Convention here: http://www.cptech.org/ecom/jurisdiction/hague.html We have also created a public discussion list on the Convention here: http://lists.essential.org/mailman/admin/hague-jur-commercial-law/ -- James Love, Consumer Project on Technology v. 1.202.387.8030, fax 1.202.234.5176 love@cptech.org, http://www.cptech.org
Questions, comments and suggestions to Vergil Bushnell
vbushnell@cptech.org
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