El control del valor de las evaluaciones de probabilidad.— No es posible controlar el valor de la evaluación de la probabilidad de un único suceso aislado, a

In the Australian case Potter v The Broken Hill Pty Co Ltd,471 the Mocambique rule was extended to foreign patents. The claimant brought an action in the State of Victoria for infringement of a New South Wales patent. The Victorian Court held that an action for patent infringement was a local action and thus it had no jurisdiction over such an action.

The leading English case concerning the limitation of foreign IP rights is Tyburn Productions Ltd v Conan Doyle.472 In this case, Vinelott J. held that the distinction between transitory and local actions was fundamental to the Mocambique case and this distinction should be applied to IP rights so that an action concerning the validity or infringement of IP rights was a local action. He found further support for this view in Potter, Norbert Steinhardt and Son Ltd v Meth and Another473 and Def Lepp Music and Others v Stuart-Brown and Others.474

We will now consider how this limitation can apply to the Internet context. First, in the copyright area, there may be a dispute between a claimant X domiciled in England and a defendant Y

468 _{See Fawcett, J. J. and Torremans, P., Intellectual Property and Private International Law, Oxford University}

Press, 1998, at 280.

469

We will discuss these cases below.

470

Prior to the Brussels Convention, it had been established that the English courts could not hear actions concerning foreign IP rights because these actions were local and hence barred by the Mocambique rule. But in Pearce v Ove Arup Partnership Ltd and Others ([1997] F.S.R. 641; [1999] F.S.R. 525), it was held that the Brussels Convention had overridden the Mocambique rule and the subject matter limitation relating to foreign IP rights did not apply to cases falling within the Brussels regime. This view was confirmed by Coin Controls Ltd v Suzo International (U.K.) Ltd and Others ([1997] F.S.R. 660, at 675), Fort Dodge Animal Health Ltd and Others v Akzo Nobel N.V. and Another ([1998] F.S.R. 222, at 242) and Griggs (R) Group Ltd and Others v Evans and Others ([2005] Ch. 153, at 188). Although the Mocambique rule cannot apply to cases under the Brussels regime, it still applies to cases falling outside the regime, which means that the first limitation remains under the English rules.

471

[1905] V.L.R. 612. The decision was upheld by the High Court of Australia (1906) 3 C.L.R. 479.

472 [1991] Ch. 75. 473 (1960) 105 C.L.R. 440. 474 [1986] R.P.C. 273.

domiciled in New York. During his business trip in England, Y uploads X‟s US copyright material onto a website through the service provided by an ISP in England and via a server also located in England. As the dispute has a strong connection with England, it is convenient for an English court to decide it on the basis of PD 6 B para.3.1 (9). However, the limitation in relation to foreign IP rights will force the claimant to go abroad for trial, thereby incurring inconvenience and more expense.

In many circumstances, the copyright owner has not one but several copyrights in the same works. In the above example, assume that X owns the US, Canadian and Australian copyrights in his works. Once Y uploads the infringing material over the Internet, it can be accessed worldwide, which means that all three copyrights will be infringed. As the cause of action is the same, it is better to consolidate infringement claims of these copyrights in one court. However, the existence of this limitation makes such consolidation impossible and proceedings of essentially the same infringement will have to be split between the courts of three countries with the risk of conflicting decisions. Moreover, if X owns the copyrights in twenty or thirty different countries, all of his copyrights will be infringed simultaneously due to the global nature of Internet IP infringement. If these countries all have the same limitation, X will have to go to twenty or thirty countries to protect his rights, which is unacceptable and unreasonable.

Similarly, in the trademark or patent context, parallel IP rights are most likely to be infringed simultaneously over the Internet. For example, the claimant X owns three identical patents in the UK, France and Germany for the automatic downloading of embedded content. These three patents arise out of a single patent application made to the European Patent Office. The defendant Y, a Chinese company, develops Internet Explorer and sells it on the Internet, which means that the

infringing product can be bought from anywhere, including from the UK, France and Germany. X then sues Y for infringing its three patents in an English court. Due to this limitation, the English court cannot have jurisdiction in relation to the French and German patents. If France and Germany have the same limitation, X will have to bring separate infringing proceedings in three different countries and cannot claim damages resulting from the entire infringement of these rights in one court. Moreover, diverging judgments may be issued regarding essentially the same infringement in the courts of these States. It is possible that the English and French courts will make different decisions: the English court may decide that Y‟s acts have not constituted patent infringement and its sales of Internet Explorer on the Internet are lawful. Whereas the French court may take an opposite view and demand Y to cease further sales of Internet Explorer because Y has infringed X‟s patent rights. As the Internet patent is used worldwide, the judgment about it cannot be enforced in certain countries but on a global basis. Which one of the two judgments shall be enforced? So it is in the interests of both parties and the efficient administration of justice that such multiple litigation should be avoided.475