Conflicts in

Intellectual Property Rights

Group 9:
Panotes, Lorenz Angelo Mari M.
Oro, Carlo
Roque, Christian Ariel

Presentation for Conflict of Laws under

Atty. Clarisa Risel G. Castillo-Taleon
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BASIC CONCEPTS

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What is Intellectual Property?
Intellectual Property

• a work or invention that is the result of

creativity, such as a manuscript or a design, to
which one has rights and for which one may
apply for a patent, copyright, or trademark.

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What is Intellectual Property?
Intellectual Property Rights

• It refers to the general term for the

assignment of property rights through patents,
copyrights and trademarks.

• Under Sec. 4.1 of the IP Code of the

Philippines, the term consists of the following:
1. Copyright and Related Rights
2. Trademark and Service Marks
3. Geographic Indications
4. Industrial Designs;
5. Patents
6. Layout-Designs of Integrated Circuits
7. Protection of Undisclosed Information

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CONFLICTS OF LAW

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Intellectual Property
Conflicts in Intellectual Property
Rights

• Oftentimes, intellectual property rights are

infringed beyond the territory of registration.

• Laws protecting intellectual property rights

vary from one country to another.

• Intellectual property rights may be enforced

across borders only when both foreign law and
domestic law are the same to one another.

• Thus, problem arises when foreign laws differ

from domestic laws on intellectual property.

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Conflicts occur because states have differing
rules with respect to IP rights; example:

Computer programs may be In the United States, Hence, when the creator of
patentable in the United anything under the sun is a computer program patents
States but not in Europe or patentable while in the the same in the US, he
in the Philippines. Europe, only those cannot enforce the patent in
programs with a technical Europe, unless he has also
character are patentable – registered in Europe, which
otherwise the program is is not possible since
only copyrightable. computer programs are not
patentable there.

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Intellectual Property
The Internet and the World Wide Web have
made intellectual property protection a
complicated process since violation can occur in
cyberspace which can happen in different places
at the same time.

Since cyberspace transcends national

boundaries, the laws of different states may find
application to the problem.

Several approaches have been devised to solve

and harmonize conflicting laws of different
jurisdictions.

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Intellectual Property Code and
International Conventions
Textbook vs. Practical Application

• Most textbooks on intellectual property

states that intellectual property rights may be
enforced in other countries due to some
membership in an IP treaty or convention, but
the truth of the matter is that the IP owner‘s
rights are only limited to what is provided
under the domestic law.

• Example: Article 110 of Switzerland‘s Federal

Code on Private International Law which states
that intellectual property rights are governed
by the law of the state in respect of which
intellectual property protection is sought.

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Intellectual Property Code and
International Conventions
• A starting point for solving conflict of law
problems in Intellectual Property Law are the
national treatment provisions of the
aforementioned conventions including the
Intellectual Property Code.

• National treatment is the grant of reciprocal

rights to citizens of states who are signatories
to international conventions.
International Conventions include the Paris
Convention, Berne Convention, TRIPS (Trade-
Related Aspects of Intellectual Property Rights)

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Intellectual Property Code and
International Conventions
It is a concept embodied under Sec. 3 of
Republic Act No. 8293 (I.P. Code of the
Philippines) which states that ‘any person who is
a national or who is domiciled or has a real and
effective industrial establishment in a country
which is a party to any convention, treaty or
agreement relating to intellectual property
rights or the repression of unfair competition,
to which the Philippines is also a party, or
extends reciprocal rights to nationals of the
International Conventions include the Paris Philippines by law, shall be entitled to benefits
Convention, Berne Convention, TRIPS (Trade-
Related Aspects of Intellectual Property Rights)
to the extent necessary to give effect to any
provision of such convention, treaty or
reciprocal law, in addition to the rights to which
any owner of an intellectual property right is
otherwise entitled by this Act.‘

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Intellectual Property Code and
International Conventions
• The national treatment principle bars the
extraterritorial application of foreign copyright
laws for it mandates the application of local
laws for the equal treatment of the rights of
foreigners. Otherwise, there could be no
national treatment if foreign law is applied.

• However, this concept does not resolve

conflict of law issues in intellectual property. It
simply mandates that the same treatment be
International Conventions include the Paris
Convention, Berne Convention, TRIPS (Trade-
given to nationals of contracting parties to
Related Aspects of Intellectual Property Rights) international conventions. It does not answer
the question of what law to apply or what
approach to utilize to harmonize conflicting
laws.

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 Bridgeman Art Library Ltd. v Corel Corp.

Facts:

• Bridgeman sued Corel for infringement of its

copyright over certain photographic
transparencies of well-known works of art.

• Bridgeman claimed Corel copied these

photographic transparencies and marketed and
distributed them in compact discs containing
these images of the same works of art.

• Defendant moved for summary judgment

which was granted. Plaintiff‘s complaint for
infringment was dismissed.

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 Bridgeman Art Library Ltd. v Corel Corp.

Facts:

• In the memorandum opinion, the Court

stated that U.K. Law was the applicable law in
resolving the issue of copyrightability of the
transparencies.

• The plaintiff filed a motion for

reconsideration questioning the court‘s
decision.

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 Bridgeman Art Library Ltd. v Corel Corp.

Issue:

• Whether the Copyright Act is the source of

plaintiff‘s claims

Held:

• Copyright Act is the source of plaintiff‘s

claims.

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 Approaches to
Intellectual Property
Conflicts of Law

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Approaches to IP Conflicts of Law

1. Territorial Approach

• The basic approach.

• It states that laws have no extraterritorial

application. Since numerous intellectual
property conventions refer to national laws
as their point of focus, it has become the
better practice to apply intellectual property
laws within the territorial boundaries of a
state.

• See: Subafilms, Ltd. v. MGM-Pathe

Communications Co.; Allarcom Pay
Television v. General Instrument Corp.

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 Subafilms Ltd. v. MGM-Pache
Communications Co.
Facts:

• Subafilms entered into a joint venture with

Hearst Corporation for the production of
“Yellow Submarine“ (the “Picture“). Hearst
negotiated an agreement with United Artists
Corporation (UA) for the distribution and
financing of the Picture.

• Years later, UA entered into several licensing

agreements to distribute a number of films on
videocasette to distribute a number of films on
videocasette, but it refused to license the
Picture because it was unsure whether it had
the authority to do so.

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 Subafilms Ltd. v. MGM-Pache
Communications Co.
Facts:

• UA was subsequently acquired by MGM/UA

Communications Co. (MGM/UA) and it notified
Warner Bros Inc. that it may now commence
the international videocassette distribution.

• Warner started distributing the Picture on

videocassette around the world.

• Subafilms and Hearst sued MGM/UA and

Warner for copyright infringement. The District
Court awarded damages in favor of the
plaintiffs.

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 Subafilms Ltd. v. MGM-Pache
Communications Co.
Issue:

• Whether the defendants are liable for

copyright infringement?

Held:

• No, because the Copyright Act has no

extraterritorial application.

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Approaches to IP Conflicts of Law
2. Most significant relationship

• Applies the law of the state that has the most

significant relationship to the parties to the
case.

• The law of the State which has the most

connection shall be applied in the resolution
of the conflict.

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 Itar-Tass Russian News Agency v. Russian
Kurier Inc.
Facts:

• The Kurier is a Russian language weekly

newspaper published in New York City by
defendant Kurier whose president and editor-
in-chief is defendant Pogrebnoy.

• They were sued by the publishing company,

Itar-Tass Russian News Agency and the Union
of Journalists of Russia for copyrighting the
plaintiffs‘ articles and reprinting the same in
New York City without permission.

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 Itar-Tass Russian News Agency v. Russian
Kurier Inc.
Facts:

• The District Court upheld Itar-Tass right to

sue, recognizing in the newspaper publisher‘s
exclusive rights to the articles, even though the
reporters also retained exclusive rights to these
articles.

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 Itar-Tass Russian News Agency v. Russian
Kurier Inc.
Issue:

• Whether Russian law or U.S. Law governs

ownership rights and infringement issues?

Held:

• Russian law applies to ownership issues

while U.S. Law governs infringement issues.

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Approaches to IP Conflicts of Law
2. Most significant relationship

The points of contact are as follows:

a) The place where the injury occurred;

b) The place where the conduct causing the

injury occurred;

c) The domicile, residence, nationality, place of

incorporation and place of business of the
parties;

d) The place where the relationship, if any,

between the parties is centered.

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Approaches to IP Conflicts of Law

3. Lex Loci Delicti

• This is the traditional rule that employs the

law of the place of injury.

• This is based on the vested rights theory

since the rights of the parties vested in the
place of injury and nowhere else. When
someone is wronged in a particular place,
the rights of the parties arise from that
jurisdiction whose law must then be applied
to determine the parties’ rights and
liabilities. Furthermore, the state where the
damage or injury is sustained has as much
interest in redressing the wrongs committed
within its jurisdiction.

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Approaches to IP Conflicts of Law

3. Lex Loci Delicti

• It requires the application of the law of the

state where the tort is committed.

• Example:
If an infringing act is committed within
the borders of the Philippines, it is the law of
Philippines that will govern the tort claim.

This approach offers simplicity, ease of

application, and stability and predictability in
judicial decisions.

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Approaches to IP Conflicts of Law
4. Public Policy Exception

• When the application of a foreign law

conflicts with an established policy of the
forum, the foreign law may not be applied as
being anathema to public policy.

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Approaches to IP Conflicts of Law
4. Public Policy Exception

• The problem with the traditional approach of

lex loci delicti is that it is harsh and inflexible.
It does not answer the complexities of
modern litigation.

• Where infringement happens in cyberspace,

or where the injury is felt in several
jurisdictions, it will be extremely difficult to
localize the place of commission of the tort.

• The rule may have to be discarded in favor of

a more inclusive approach like state of the
most significant relationship.

• See: Sarl Louis Feraud Intern v. Viewfinder

Inc.

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 Sarl Louis Feraud Intern. v. Viewfinder,
Inc.
Facts:

• A French court found Viewfinder liable for

copyright infringement when it published
photographs of plaintiffs Feraud‘s and
Balmain‘s fashion shows without their
permission.

• On appeal, it was upheld by another French

court.

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 Sarl Louis Feraud Intern. v. Viewfinder,
Inc.
Facts:

• Plaintiffs filed a case for enforcement with

the district court in New York.

• The district court dismissed the case on the

groud that enforcement would be repugnant to
public policy of New York. The court held that
the fashion shows were public events and that
Viewfinder had a First Amendment right to
publish the photographs.

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 Sarl Louis Feraud Intern. v. Viewfinder,
Inc.
Issue:

• Whether enforcement of the French court‘s

decision is violative of the public policy of
New York?

Held:

• It will be violative if enforcement will be

repugnant to the First Amendment.

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Summary:

Conflict of law problems in Introduction of Internet and Approaches to IP Conflicts

Intellectual Property Rights World Wide Web among of Law:
arises when foreign laws other technological
differ from domestic laws advancements have made 1. Territorial Approach
on intellectual property. intellectual property 2. Most significant
protection a more relationship rule
complicated process. 3. Lex Loci Delicti
4. Public policy exception

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Thanks For Listening
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