Las probabilidades pequeñas, pero no despreciables.— A menudo acontece que la probabilidad de algunos sucesos no es lo suficientemente pequeña para

The second limitation is not concerned with the Mocambique rule, but about whether an action can be brought in England for the infringement of a UK IP right by acts committed abroad.

In an early case of ‘Morocco Bound’ Syndicate, Ltd v Harris,476 Kekewich J. held that an English court had no jurisdiction to restrain a threatened infringement of English copyrights by acts done in Germany. But if the claimants have German copyrights in the same work, their German

475

Fawcett, J. J. and Torremans, P., Intellectual Property and Private International Law, Oxford University Press, 1998, at 291-292.

476

copyrights will be infringed by acts done in Germany and they can bring proceedings in Germany to protect their German copyrights from infringement.477 The English judge‟s denial of jurisdiction implies that there is a limitation in relation to acts of infringement committed abroad. In Def Lepp,478 the Vice-Chancellor pointed out that copyright under the English Act was strictly defined in terms of territory, which means that English copyright was merely a right to do certain acts exclusively in the UK. So only acts done in the UK constituted infringement either direct or indirect of such right.479 Based on this, he concluded that a successful action could not be brought in England for alleged infringement of UK copyright by acts done outside the UK,480 which suggests that there is such a limitation.

To get an idea of how the second limitation operates in the Internet context, we can consider a hypothetical case. The claimant X has an English trademark for the name „X‟. The defendant Y, who is domiciled in Japan, sets up a website using the trademark „X‟ for advertising and supplies products with counterfeit trademarks to many countries. As the website can be accessed worldwide and Y targets customers on a global basis, X‟s trademark rights can be infringed in many different countries. If the English court has jurisdiction over Y under the English rules, it is desirable for the court to determine the infringement committed both in England and abroad. Moreover, as there are multiple places of Internet IP infringement, it is difficult to fix the infringement in one place. Compared with non-Internet cases, Internet cases are more likely to involve parallel IP rights being infringed simultaneously. In the above case, if X owns twenty parallel trademarks for the name „X‟, all of these trademarks will be infringed. Like the position concerning a single IP right, as there are multiple infringements taking place in many different countries, it is impossible to fix the 477 ibid., 536-538. 478 [1986] R.P.C. 273. 479 ibid., at 275. 480 ibid., at 276-277.

infringement in one place, which means that this limitation on jurisdiction based on the place of infringement has become unrealistic.481

Another consideration is that due to the global nature of Internet IP infringement, whenever an English IP right gets involved, the infringing act will usually be deemed to be committed in England. So it makes no sense to have this limitation in the Internet context.

Therefore, as has been seen above, both subject matter limitations in relation to jurisdiction are undesirable in the Internet context482 and should be abolished.483

III. Conclusion

There are usually no particular problems in applying the normal rules on service of a claim form within the jurisdiction to Internet IP infringement cases.

When it comes to serve a claim form out of the jurisdiction, PD 6 B para.3.1 (9) is more likely to apply in Internet IP infringement due to the global nature of the Internet. As defendants still exist in the real world, applying PD 6 B para.3.1 (3) to the Internet context will not make any difference. According to PD 6 B para.3.1 (2), the English court can only order the defendant to refrain from infringing the claimant‟s IP rights within England. But as the defendant‟s infringing acts over the Internet have a worldwide effect, there is an enforcement problem under this provision.

Even though the English court has jurisdiction following the service of a claim form, it may decline to exercise that jurisdiction on the basis of forum non conveniens. In Internet IP

481

Fawcett, J. J. and Torremans, P., Intellectual Property and Private International Law, Oxford University Press, 1998, at 304.

482

Besides these considerations in the Internet context, there are other policy considerations against the limitations. For example, the limitations have the effect of widening the gap between the English rules on jurisdiction and those rules under the Brussels regime, which contain no such subject matter limitations; and the availability of the doctrine of forum non conveniens makes these limitations unnecessary. (ibid., 290-293 and 303-304.)

483

It is said that subject matter limitations have been rejected, obiter in Griggs (R) Group Ltd and Others v Evans and Others [2005] Ch. 153. (Dicey, Morris and Collins, The Conflict of Laws, London: Sweet & Maxwell, 14th ed., 2006, at 1909-1910.) See also Satyam Computer Services Ltd v Upaid Systems Ltd [2008] EWHC 31 (Comm).

infringement cases, it seems difficult to determine which forum is clearly more appropriate because the global nature of the Internet may lead to the conclusion that many courts are appropriate to hear the case.

Finally, the English courts may still be incompetent to try a case due to subject matter limitations in relation to jurisdiction. On the one hand, the English rules are subject to exclusive jurisdiction provided for by Article 22(4) of the Regulation. Assuming the English courts have infringement jurisdiction over UK registered IP rights, they would also be able to try the issue of validity. As for foreign registered IP rights, when the rights are registered in another Member State to the Regulation, the English courts should stay infringement proceedings until the courts of that State have decided the validity issue.484 When the IP rights are registered in a non-Member State, the English courts will have jurisdiction over both issues. On the other hand, the English courts have developed two subject matter limitations relevant to IP infringement: „foreign IP rights‟ and „acts of IP infringement committed abroad‟. But both limitations are undesirable in the Internet context and should be abolished.

484

We infer that the Advocate General in GAT supported the solution that the infringement court should stay the proceedings until the validity court has adjudicated on the validity issue in the mixed validity and infringement cases. Gesellschaft für Antriebstechnik mbH & Co KG (GAT) v Lamellen und Kupplungsbau Beteiligungs KG (LuK) [2007] I.L.Pr. 34 (at 438), at 442-449.

Chapter 7