Edited by Jürgen Basedow, Giesela Rühl, Franco Ferrari and Pedro de Miguel Asensio
Chapter W.3: WIPO and private international law1
I. The World Intellectual Property Organization
The World Intellectual Property Organization (WIPO) is an international intergovernmental organization that was established ‘to promote the protection of intellectual property throughout the world through cooperation among states and, where appropriate, in collaboration with any other international organization’ (art 3(i) of the WIPO Convention (Convention of 14 July 1967 establishing the World Intellectual Property Organization (828 UNTS 4))).
The WIPO Convention defines intellectual property broadly as including
literary, artistic and scientific works,
performances of performing artists, phonograms, and broadcasts,
inventions in all fields of human endeavour,
trade marks, service marks, and commercial names and designations,
protection against unfair competition,
and all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields (art 2(viii) WIPO Convention).
WIPO became a specialized agency of the United Nations in 1974. According to art 1 of the Agreement between the United Nations and the World Intellectual Property Organization (Agreement concerning the relations between the two organizations. Approved by the General Assembly of the World Intellectual Property Organization on 27 September 1974, and by the General Assembly of the United Nations on 17 December 1974, 956 UNTS 405), WIPO is responsible ‘inter alia, for promoting creative intellectual activity and for facilitating the transfer of technology related to industrial property to the developing countries in order to accelerate economic, social and cultural development’.
Today, WIPO has become the global forum for intellectual property services, policy, information and cooperation with 189 Member States.
II. Origins of WIPO
Intellectual property rights are territorial so that rights established under a national law do not extend beyond the territory in which this law applies. Intellectual property rights are protected in individual countries, sometimes on a regional basis, but never on a global scale. Recognizing ‘foreign’ intellectual property rights would require a state to accept a foreign country’s policy choices, as to which intangible assets can (or cannot) be protected by way of an exclusive right. So far, however, countries have been reluctant to give such acceptance, and innovative or creative products need to satisfy each country’s requirements for protection. This territorial link is reinforced by registration requirements for some industrial property rights such as patents. →Territoriality also means that there can be different owners for the same or similar rights in different territories, which also means that if a trade mark has been registered in one country, third parties are not p. 1836prevented from applying for protection for the exact same trade mark in another country.
The territoriality of intellectual property rights constitutes a stumbling block for international trade and motivated international normsetting in intellectual property. The origins of WIPO go back to the first wave of globalization that followed the Industrial Revolution and the expansion of international trade in the late 19th century. The first treaties concluded in this area were the Paris Industrial Property Convention (Paris Convention for the Protection of Industrial Property, 20 March 1883, with later amendments, 828 UNTS 305) (176 contracting parties in 2014) and the Berne Convention (Berne Convention for the Protection of Literary and Artistic Works of 9 September 1886, completed at Paris on 4 May 1896, revised at Berlin on 13 November 1908, completed at Berne on 20 March 1914, revised at Rome on 2 June 1928, revised at Brussels on 26 June 1948, revised at Stockholm on 14 July 1967 and revised at Paris on 24 July 1971, 1161 UNTS 3 and amended in 1979 Treaty Doc No 99-27, and 1985, 828 UNTS 221) (168 contracting parties in 2014). In 1893, an international organization called the United International Bureaux for the Protection of Intellectual Property (commonly known by its French acronym BIRPI) was established, the predecessor of WIPO. Since then, these two basic intellectual property conventions have been amended several times and a number of further treaties concluded. Today, WIPO administers 26 international intellectual property treaties. Another important international intellectual property agreement, the TRIPS (Agreement of 15 April 1994 on Trade-Related Aspects of Intellectual Property Rights, 1869 UNTS 299) is not administered by WIPO (→TRIPS), but forms part of the World Trade Organization (→WTO and private international law). In the Agreement between the World Intellectual Property Organization and the World Trade Organization of 1 January 1996 (available at <www.wipo.int/treaties/en/text.jsp?file_id=305457>), both organizations have regulated their cooperation in the area of intellectual property.
III. Basic approaches in international intellectual property normsetting
Since its origins, international normsetting in intellectual property has aimed at facilitating the protection of intellectual property rights across borders and at mitigating the trade-restricting effects of territoriality. The Paris Industrial Property Convention and the Berne Convention addressed these concerns by introducing a number of general principles of uniform application, most notably the principle of national treatment (see III.1. below), and by harmonizing national laws on the basis of certain minimum standards. All contracting parties form a ‘Union’ (art 1 Paris Industrial Property Convention, art 1 Berne Convention) thereby excluding, within their scope of application, the principle of reciprocity.
While intellectual property law has become one of the most internationalized areas of the law, private international law, which might require the application of foreign intellectual property law, hardly played a minimal role in this process. None of the international intellectual property treaties contains a clear, let alone comprehensive, treatment of private international law issues in the modern sense (James Fawcett and Paul Torremans, Intellectual Property and Private International Law (2nd edn, OUP 2011) para 12.05). However, these treaties have developed specific ways of determining issues of applicable law that are largely based on the basic principles of national treatment and territoriality. In the following paragraphs, this approach will be demonstrated for the basic international intellectual property treaties, the Paris Industrial Property Convention and the Berne Convention (see the comprehensive treatment in James Fawcett and Paul Torremans, Intellectual Property and Private International Law (2nd edn, OUP 2011) ch 12).
1. Industrial property: the Paris Industrial Property Convention of 1883
The Paris Industrial Property Convention applies to all industrial property rights listed in art 1(2), ie ‘patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition’. The connecting factor that triggers the Convention’s application is the applicant’s or owner’s →nationality or domicile (art 3 Paris Industrial Property Convention) ‘of a country of the Union’. Article 2(1) Paris Industrial Property Convention stipulates that
[n]ationals of any country of the Union shall, as regards the protection of industrial property, p. 1837enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention. Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with.
This norm contains first the national treatment principle for issues of substantive law regarding ‘protection’ and ‘legal remedy’, but it does not apply regarding administrative or judicial procedures or jurisdiction as art 2(3) Paris Industrial Property Convention specifies. This means that the Paris Industrial Property Convention does not require the application of a foreign intellectual property law, but rather the uniform application of domestic intellectual property law – even in cases that contain a foreign element. Furthermore, art 2(1) Paris Industrial Property Convention also contains a somewhat indirect or imperfect choice-of-law rule (Jürgen Basedow, ‘Foundations of Private International Law in Intellectual Property’ in Jürgen Basedow, Toshiyuki Kono and Axel Metzger (eds), Intellectual Property in the Global Arena (Mohr Siebeck 2010) 3; James Fawcett and Paul Torremans, Intellectual Property and Private International Law (2nd edn, OUP 2011) para 12.54; Eugen Ulmer, Die Immaterialgüterrechte im internationalen Privatrecht (Carl Heymanns 1975) 10) calling for the (uniform) application of the lex loci protectionis, since for matters of protection, each country is required to apply its substantive domestic industrial property law without differentiation as to nationality, and without →renvoi. This rule is reinforced by art 4bis Paris Industrial Property Convention (for patents) and art 6(3) Paris Industrial Property Convention (for marks), according to which the various national rights protected under the domestic laws of individual countries of the Paris Union are independent of each other. This means that the territorial scope of this protection is limited to the territory of the respective countries, and that the domestic law, shielded from external influences, determines protection. This expression of the →territoriality principle seems rather obvious here, since many of the industrial property rights covered by the Paris Industrial Property Convention are registered rights. On an international level, it leads to a ‘patchwork’ (James Fawcett and Paul Torremans, Intellectual Property and Private International Law (2nd edn, OUP 2011) para 12.55), or rather a mosaic of national rights protected under the individual laws of the countries of the Paris Union. The national treatment principle guarantees that, wherever protection is needed, there is always an applicable law, regardless of the nationality (or country of origin) of the right holder, ‘provided that the conditions and formalities imposed upon nationals are complied with’ (art 2(1) Paris Industrial Property Convention).
In order to mitigate the difficulties of obtaining protection in more than one country, the Paris Industrial Property Convention also provides, in art 4, a right of priority for patents (and utility models), trade marks and industrial designs. Once an application for any of these rights has been filed in one contracting party, applicants are granted a certain period (12 months for patents (and utility models), six months for the other industrial property rights) during which they can file applications in the other countries of the Paris Union. All Union countries are required to consider such subsequent applications under their domestic laws as having been filed on the date of filing of the original application. In other words, the original application, a foreign element, must be treated as a domestic application. During the priority period, an application therefore preserves its original filing date throughout the Union and applicants are protected against intervening applications by other persons for the same invention, mark or design. Rather than having to file in all countries at the same time, they have six or 12 months at their disposal during which they can decide in which countries they require protection.
This interplay of the national treatment rule, the principle of independence of rights as an expression of territoriality, and the application of the lex loci protectionis does not (directly) lead to international harmonization, since it does not itself reduce the differences between national intellectual property laws. However, the international level of protection is further reinforced by a number of substantive rules (‘rights specifically provided for by this Convention’ in the terms of art 2(1) Paris Industrial Property Convention) that have a harmonizing effect by requiring that certain minimum standards of substantive protection be granted under the domestic laws of countries of the Paris Union.
p. 1838Later treaties in the area of industrial property, such as the Madrid Agreement of 14 April 1891 concerning the international registration of marks (available at <www.wipo.int/treaties/en/text.jsp?file_id=283530>) and the Protocol of 27 June 1989 relating to the Madrid Agreement of 14 April 1891 concerning the international registration of marks (828 UNTS 389, available at <www.wipo.int/treaties/en/text.jsp?file_id=283484>), the Hague Agreement Concerning the International Registration of Industrial Designs of 6 November 1925 (WIPO Publication No 269), or the Patent Cooperation Treaty (PCT) of 19 June 1970 (WIPO Publication No 274, 1160 UNTS 231), all build on the Paris Industrial Property Convention and establish international mechanisms that centralize the application for the registration of certain types of industrial property rights in a multitude of Member States thus facilitating international protection.
2. Copyright: the Berne Convention for the Protection of Literary and Artistic Works of 1886
The approach chosen in the Berne Convention is similar but slightly more complex, partly due to the fact that copyright is more ‘fluid’ than industrial property in that it requires no registration. Like the Paris Industrial Property Convention, the Berne Convention determines its applicability by way of certain factors that connect the ‘work’ (definition in arts 2 and 2bis Berne Convention) to be protected to a Member State of the Berne Union. These factors most notably include the →nationality of the author, their place of habitual residence, or the place of first publication of the work in question (arts 3, 4 Berne Convention). The country so identified is considered the work’s country of origin (art 5(4) Berne Convention). The work enjoys protection under the country of origin’s domestic copyright law, independent of the author’s nationality (art 5(3) Berne Convention). This is an expression of the national treatment principle. Article 5(1) Berne Convention extends the national treatment rule to all other countries of the Berne Union:
[a]uthors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention.
Hence, copyright protection must be determined in accordance with each Member State’s domestic law, not in accordance with the law of country of origin. This is confirmed by art 5(2) second sentence Berne Convention, which states that ‘[c]onsequently, apart from the provisions of this Convention, the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed’.
Article 5(2) Berne Convention clearly excludes application of the law of the country of origin, because referring issues of protection back to the country of origin might lead to a differential treatment between nationals and foreigners, a result that the Berne Convention seeks to prevent (Jürgen Basedow, ‘Foundations of Private International Law in Intellectual Property’ in Jürgen Basedow, Toshiyuki Kono and Axel Metzger (eds), Intellectual Property in the Global Arena (Mohr Siebeck 2010) 3, 14). Cases where the country of origin – exceptionally – retains significance, are specifically provided for in the Berne Convention. They refer to industrial designs (art 2(7) Berne Convention), to the term of protection (art 7(8) Berne Convention) and the resale right or droit de suite (art 14 Berne Convention).
There has been some controversy whether the country of origin retains significance, at least for determining authorship or initial ownership of the work, as suggested by a ‘universalist’ approach which has advantages especially in the digital environment (proponents eg Haimo Schack, Zur Anknüpfung des Urheberrechts im internationalen Privatrecht (Duncker & Humblot 1979); Haimo Schack, Urheber- und Urhebervertragsrecht (6th edn, Mohr Siebeck 2013) para 1026 ff; Mireille van Eechoud, ‘Alternatives to the lex protectionis for Initial Ownership of Copyright’ in Josef Drexl and Anette Kur (eds), Intellectual Property and Private International Law (Hart 2005) 289–306; Paul Goldstein and Bernt Hugenholtz, International Copyright: Principles, Law, and Practice (3rd edn, OUP 2013) 136–8; against this approach James Fawcett and Paul Torremans, Intellectual Property and Private International Law (2nd edn, OUP 2011) paras 12.39–12.47; André Lucas, Private International Law Aspects of the Protection of Works and of the Subject p. 1839Matter of Related Rights Transmitted over Digital Networks, WIPO document WIPO/PIL/01/1 PROV, 18 December 2000 (<www.wipo.int>) 10–12). Unlike with industrial property rights, copyright protection follows from the mere act of creation (in the case of nationals of a Union country) or the first act of publication in a country of the Union (this is also the reason why the Berne Convention, unlike the Paris Industrial Property Convention, has no need to address matters of priority). This protection would then, in principle, be valid in all countries of the Berne Union. At the same time, art 5(2) Berne Convention introduces a territorial element by stating that ‘the extent of protection, as well as the means of redress afforded to the author to protect his rights’ may vary between countries.
As for industrial property, the interplay between national treatment and →territoriality under the Berne Convention results, on the international level, in a bundle (or mosaic) of ‘copyrights’ protected under each Member State’s domestic law (James Fawcett and Paul Torremans, Intellectual Property and Private International Law (2nd edn, OUP 2011) para 12.31). This protection is independent of whether and how the work is protected in its country of origin. Thus art 5(2) first sentence Berne Convention states that ‘[t]he enjoyment and the exercise of these rights shall not be subject to any formality; such enjoyment and such exercise shall be independent of the existence of protection in the country of origin of the work’.
As a result, the Berne Convention refers to the lex loci protectionis. This is the law of the country where the extent of protection for the work needs to be determined because the work is about to be used or exploited there. It is not necessarily the law of the country, where the copyright is being infringed or enforced, for example through litigation (Jürgen Basedow, ‘Foundations of Private International Law in Intellectual Property’ in Jürgen Basedow, Toshiyuki Kono and Axel Metzger (eds), Intellectual Property in the Global Arena (Mohr Siebeck 2010) 3, 12–13; James Fawcett and Paul Torremans, Intellectual Property and Private International Law (2nd edn, OUP 2011) para 12.25–12.26; Eugen Ulmer, Die Immaterialgüterrechte im internationalen Privatrecht (Carl Heymanns 1975) 11). If, for example, a book is first published in France, it receives copyright protection under the French country of origin of the work, independent of the author’s →nationality, domicile or residence (art 5(3) Berne Convention). If copies of the books are exported to England, English law determines the ‘extent of protection’ (art 5(2) Berne Convention), for example against unauthorized copying. If unauthorized copying in England was committed by a Belgian national, English law applies even if the infringer is sued in his home country. As with the Paris Industrial Property Convention, this choice-of-law rule in the Berne Convention is somewhat implicit, in that it leaves →territoriality intact and deals with the question whether the law where protection is requested should apply even though there is a foreign element. The Berne Convention does so ‘from the inside’ by requiring the uniform application of the lex loci protectionis, and excluding the law of the country of origin. What matters under both Conventions is that there is always a law that regulates protection, independent of questions of nationality or origin.
As under the Paris Industrial Property Convention, the level of protection granted by the Berne Convention is reinforced internationally by a number of substantive rules (‘rights specifically provided for by this Convention’ in the terms of art 2(1) Berne Convention) that have a harmonizing effect by requiring that certain minimum standards of substantive protection be granted under the domestic laws of countries of the Berne Union (art 19 Berne Convention).
3. Common approach: the ‘inside view’
What is common in the treatment by both Conventions of international issues is that, perhaps contrary to expectations in private international law, they do not approach the question from an international perspective by determining which from among many national laws is applicable to a given fact pattern, in this case intellectual property protection. Rather the Conventions approach the issue ‘from the inside’, by regulating how a domestic law must treat intellectual property protection within its territory, namely without regard for the country of origin and for issues of nationality. Together with the territoriality principle, as also expressed in the principle of independence of (national) rights, this leads to a situation where there is an international patchwork – as large as the respective Unions – where national laws provide protection, based on certain common minimum standards. Thus wherever the issue of protection arises, there is an applicable law.
IV. p. 1840Later developments: adapting territoriality to digitization and the Internet
While the basic Conventions provide a degree of guidance on private international law issues by pointing in essence to lex loci protectionis, it might still be said that, in consequence of the →territoriality principle and the subsequent efforts to mitigate its effects, intellectual property and private international law have a history of avoiding each other. International progress has been achieved by the establishment of common principles, by international harmonization, or by the establishment of international procedures. This approach has hardly changed. However, what has changed is the urgency with which international aspects have invaded intellectual property law in the context of the most recent wave of globalization (→Globalization and private international law), which itself has largely been fuelled by digitization and the Internet. So far, the intellectual property rights most affected have been copyright and trade marks, and in both areas intellectual property-specific responses have been developed on the basis of the traditional structures.
1. Copyright: WIPO Copyright Treaty 1996 (WCT) and WIPO Performances and Phonograms Treaty 1996 (WPPT)
The WCT (WIPO Copyright Treaty (WCT) of 20 December 1996, WIPO Publication No 226) and the WPPT (WIPO Performances and Phonograms Treaty (WPPT) of 20 December 1996, WIPO Publication No 227) were the first reactions in international intellectual property normsetting to the challenges brought about by the Internet. The purpose of both Treaties is to extend the level of copyright protection (WCT) and of the protection for performances and phonograms (WPPT) to the Internet. Both Treaties do so on the basis of the traditional means of requiring the harmonization of national laws according to certain international standards. The WCT requires protection for computer programs as literary works (art 4 WCT) and databases provided they qualify as ‘intellectual creations’ (art 5 WCT). Both Treaties specify certain rights (distribution, rental), and introduce a new right of communication to the public (art 8 WCT, art 14 WPPT), in particular, on-demand, interactive communication through the Internet. Also new in both Treaties is the obligation on contracting parties to provide legal →remedies against the circumvention of technological protection measures (art 11 WCT, art 18 WPPT), and against the removal of electronic rights management information (art 12 WCT, art 19 WPPT). Neither Treaty addresses issues of private international law.
2. Trade marks
In the area of trade marks, WIPO has followed a dual approach. On the one hand, a Joint Recommendation (World Intellectual Property Organization, Joint Recommendation Concerning Provisions on the Protection of Marks, and Other Industrial Rights in Signs on the Internet, adopted by the Assembly of the Paris Union and the General Assembly of WIPO from 24 September to 3 October 2001 (WIPO Publication No 845, available at <www.wipo.int>)), a ‘soft law instrument’, was developed that seeks to translate trade mark protection to the Internet, by making its territorial basis Internet-compatible. On the other hand, a more radical departure from traditional intellectual property normsetting approaches introduces a new international alternative dispute resolution mechanism to remedy certain extreme cases of bad-faith trade mark infringements. Both will be explored in the following paragraphs.
a) The Joint Recommendation Concerning Protection of Marks, and Other Industrial Property Rights in Signs on the Internet 2001
The WIPO Joint Recommendation Concerning the Protection of Marks, and Other Industrial Property Rights in Signs on the Internet was adopted in September 2001 by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of WIPO (analysis in Graeme B Dinwoodie, Private International Aspects of the Protection of Trademarks, WIPO document WIPO/PIL/01/4, 19 January 2001 (available at <www.wipo.int/edocs/mdocs/mdocs/en/wipo_pil_01/wipo_pil_01_4.pdf>) paras 101–10; Johannes Christian Wichard, ‘The Joint Recommendation Concerning Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet’ in Josef Drexl and Anette Kur (eds), Intellectual Property and Private International Law (Hart 2005) 257–64). While the Joint Recommendation lacks the legal force of an international treaty, it has strong persuasive authority as an expression of international consensus in this particular area of the law.
p. 1841The Joint Recommendation seeks to address problems that arise when trade marks and other distinctive signs, such as trade names or geographical indications, are used on the Internet. Three issues are addressed: (i) when the use of a sign on the Internet can be deemed to have taken place in the territory of a specific country; (ii) how conflicts between rights in signs that belong to different owners in different countries can be resolved, so that both owners can use their signs on the Internet without infringing each other’s rights; (iii) how remedies for infringing use of a sign on the Internet can be limited to the territorial scope of protection of the infringed right.
In line with the tradition of international normsetting in trade mark law, the Joint Recommendation addresses international dimensions of trade mark use within the framework of national trade mark laws. It accepts both the territorial character of existing trade mark laws as well as the global nature of the Internet as given factors, and resolves the issue ‘from within’ a given domestic law by providing guidance on how to apply it in a way that does justice to both factors in an ‘Internet-compatible’ way. The Joint Recommendation specifically states that it does not address choice-of-law issues (note 0.04 Joint Recommendation: ‘The question of determining the applicable law is not addressed by the present provisions, but left to the private international laws of individual Member States’).
(1) Legal relevance of Internet use
Trade mark use is fundamentally territorial in that it must be linked to a particular territory in order to gain legal relevance. Use of a sign can only establish, maintain or infringe a trade mark in a particular country if the sign has been used in that country. This link may be difficult to establish where a sign has been used on the Internet. For the Joint Recommendation, this link consists in the ‘commercial effect’ of Internet use. Only use that has a ‘commercial effect’ in a particular territory will be treated as having occurred in that territory (art 2 Joint Recommendation). Mere visibility on a computer screen alone is insufficient. Article 3 Joint Recommendation provides a detailed, but non-exhaustive, list of factors that can be relevant for determining commercial effect, such as the interactivity of the website in question, registration under a country code Top-Level Domain (such as ‘.de’ for Germany), etc. With a commercial effect, use on the Internet is relevant for establishing or maintaining trade mark rights under a national or regional trade mark law (art 5 Joint Recommendation). Similarly, such use can be regarded as infringing a right protected in the territory concerned (art 6 Joint Recommendation), while use without a commercial effect is legally irrelevant.
(2) Avoiding and resolving conflicts
Because the scope of trade mark rights is territorially limited, different owners can hold rights in identical or similar signs in different countries. Such rights that coexist offline in different territories may enter into conflict on the Internet. Requiring a comprehensive worldwide search for conflicting registered and unregistered rights would in many instances be impossible or at least not commercially viable. To provide a practicable way for addressing such conflicts, the Joint Recommendation suggests a ‘notice and avoidance of conflict’ procedure (Part V, arts 9 to 15 Joint Recommendation). Under certain conditions, use of a sign on the Internet is exempt from liability up to the point when the user is notified of a conflicting right (art 9 Joint Recommendation), provided that the user owns a right in that sign, or that the use is legitimate under the law of a country to which the user has a close connection, for example because it is the user’s personal name or because the term is considered generic or descriptive, and provided that such use has not been made in bad faith. Once a user has been notified of a conflicting right, they have to take certain measures in order to avoid liability. The Joint Recommendation suggests a qualified disclaimer (art 12 Joint Recommendation) as a sufficient measure and therefore provides a way to avoid the mutual blocking effect of conflicting rights.
(3) Proportionality of remedies
The effect of an →injunction prohibiting every use of a sign on the Internet is as global as the Internet and far exceeds the territorial scope of the infringed right. →Remedies should, however, be limited as far as possible to the territory in which the right is recognized. These issues are addressed in Part VI (arts 13 to 15) of the Joint Recommendation, which introduces a general principle of proportionality. Injunctions should generally be limited to what is necessary to prevent or remove the commercial effect in the Member State (or Member States) in which the infringed right is protected, and damages should cover only use that has a commercial effect in the country concerned. The Joint p. 1842Recommendation mentions ‘qualified disclaimers’ (as set out in art 12), gateway webpages and the like. It recognizes that ‘global injunctions’ may be unavoidable in certain cases, for example if the user has targeted a well-known mark in bad faith (as in the case of ‘cybersquatting’). Pursuant to art 15 Joint Recommendation, however, such global injunctions may not be granted against good-faith users who hold a right in the sign or who are otherwise permitted to use the sign.
(4) The ‘inside view’
In substance, the Joint Recommendation is an example of the traditional approach in international intellectual property law described above. Like the Paris Industrial Property Convention and the Berne Convention, the Joint Recommendation is concerned with the way a national intellectual property law is applied to certain international facts. Thus it takes an ‘inside view’, rather than determining which from among many national laws may be applicable to govern the case at hand. At the same time this approach bears some similarity to private international law methods, since it also seeks to link a certain fact pattern, in the case of the Joint Recommendation the use of a sign on the Internet, to a certain territory. However, its purpose is not to use this link as a means to determine the applicable law, but rather to locate the facts within the framework of a given substantive law. Thus ‘use’, a substantive legal requirement, is only relevant in a particular country if it has a ‘commercial effect’ in that country. At the same time, the factors listed in art 3 Joint Recommendation to assist in this determination may also be helpful wherever a certain activity on the Internet needs to be linked to a certain territory, for example, in the context of determining jurisdiction for Internet-related disputes.
b) Domain names: Uniform Domain Name Dispute Resolution Policy
The Uniform Domain Name Dispute Resolution Policy (UDRP; Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on 24 October 1999 (<www.icann.org/en/help/dndr/udrp/policy>)) is an example of an approach that transcends territoriality and departs from traditional means of normsetting in intellectual property. The UDRP establishes an international dispute resolution system with a built-in enforcement mechanism that is only loosely connected to any national law. The UDRP is the product of WIPO recommendations (<www.wipo.int/amc/en/processes/process1/report/index.html>) that were made as a result of the WIPO Internet Domain Name Process, an international consultative process in which everyone, not only states, could participate. These recommendations were approved by WIPO’s decision-making bodies and transmitted to the then newly established Internet Corporation for Assigned Names and Numbers (ICANN). The recommendations were largely adopted and implemented as the UDRP (<www.icann.org/en/help/dndr/udrp/policy>), which entered into effect in December 1999. The WIPO Arbitration and Mediation Centre was appointed as one among several dispute resolution providers under the UDRP. It has administered the highest caseload from among all providers, reaching a total of 35,000 disputes at the end of 2016.
The UDRP is an →alternative dispute resolution procedure that is based on a contractual agreement. Everyone who registers a domain name in one of the generic Top Level domains (such as ‘.com’, ‘.org’, ‘.biz’), submits, as part of the agreement, to the UDRP. The scope of the UDRP is clearly limited to cases of bad faith abusive registration of trade marks as domain names, so-called ‘cybersquatting’ – this was the international lowest common denominator at the time of the WIPO Internet Domain Name Process. The complainant must prove that he/she owns a (registered or unregistered) trade mark right in the alphanumerical string that was registered as a domain name, that the registrant has no right or even a ‘legitimate interest’ that would be recognized under any national law, and that the registration and use of the domain name took place in bad faith. In the words of s 2(a)(i)–(iii) UDRP (taking the perspective of a domain name registrant): ‘(i) your domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith’.
Whether the domain name registrant files a substantive response or not, a neutral and independent panellist (list of all WIPO panellists at <www.wipo.int/amc/en/domains/panel/panelists.html>) is appointed to decide the case on the basis of the arguments and documentary p. 1843evidence submitted. The only remedies that can be granted under the UDRP are cancellation of the domain name or transfer to the complainant (see s 3(c) UDRP). These remedies can be implemented within the domain name system on the basis of the domain name registration contract, and no recourse to a national law enforcement agency is required. Unlike in arbitration, either party can bring the dispute before a competent national court of justice instead of a UDRP procedure, or to appeal its outcome. This happens only very rarely. The procedure is very effective; the overall duration of a typical UDRP procedure is around two months.
The UDRP establishes an international procedure that transcends →territoriality. It is almost ‘supranational’ in the sense that it is hardly connected to any national legal system. The UDRP relies on national laws only to determine whether the complainant holds a sufficient trade mark right, and whether the respondent has no right or legal interest under any national law. Its enforcement system, cancellation or transfer of the disputed domain name, does not rely on national law either. Over the years, an elaborate international case law has been established that is accessible through WIPO tools like the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (<www.wipo.int/amc/en/domains/search/overview2.0/>), or the Index of WIPO UDRP Panel Decisions (<www.wipo.int/amc/en/domains/search/legalindex.jsp>), which provide guidance to parties and panellists and have contributed to ensuring a reasonable level of predictability and legal certainty. The UDRP has de facto become an (almost) self-contained international legal system – albeit with a very narrow substantive scope.
V. WIPO and private international law?
WIPO has addressed private international law issues directly only on two occasions by providing a forum for discussion among experts in both areas. In December 1998, WIPO convened a Group of Consultants on the Private International Law Aspects of the Protection of Works and Objects of Related Rights Transmitted through Global Digital Networks (papers available at <www.wipo.int/edocs/mdocs/mdocs/en/gcpic/gcpic_2.pdf>). On 30 to 31 January 2001, WIPO organized a Forum on Private International Law and Intellectual Property (all papers available at <www.wipo.int/meetings/en/details.jsp?meeting_id=4243>). This Forum was followed by a one-day consultation session organized by the →Hague Conference on Private International Law, on the proposed Hague Recognition and Enforcement Convention (Hague Convention of 1 February 1971 on the recognition and enforcement of foreign judgments in civil and commercial matters, 1144 UNTS 258). Negotiations on this draft instrument had stalled since no agreement could be reached on how to address intellectual property disputes (report at <www.hcch.net/upload/wop/jdgmpd13.pdf>).
The above remarks have demonstrated that WIPO has largely avoided addressing issues of private international law directly. In its normative activities, it has instead followed an approach that leaves the territorial basis of intellectual property rights unchallenged; the potentially negative impact of territoriality on international trade is addressed through the establishment of basic general principles (eg national treatment) and the harmonization of national laws. International issues are addressed from ‘inside’ national laws, and this approach has been followed even in response to new challenges brought about by the Internet and digitization. The UDRP is an exception; it is a ‘policy’ that relies on the basis of contracts established under private law, and provides a unique example for an international system that has been established almost completely outside any national legal system.
Graeme Austin, Private International Law and Intellectual Property Rights: A Common Law Overview, WIPO document WIPO/PIL/01/5, 15 January 2001 (<www.wipo.int/edocs/mdocs/mdocs/en/wipo_pil_01/wipo_pil_01_5.pdf>);
Jürgen Basedow, ‘Foundations of Private International Law in Intellectual Property’ in Jürgen Basedow, Toshiyuki Kono and Axel Metzger (eds), Intellectual Property in the Global Arena (Mohr Siebeck 2010) 3;
Adler Bernard, ‘The Proposed New WIPO Treaty for Increased Protection for Audiovisual Performers: Its Provisions and Its Domestic and International Implications, Fordham Intellectual Property’  Media and Entertainment Law Journal 1089;
Torsten Bettinger, Handbuch des Domainrechts: Nationale Schutzsysteme und internationale Streitbeilegung (Carl Heymanns 2008);
Torsten Bettinger, Tony Willougby and Sally Abel (eds), Domain Name Law and Practice: An International Handbookp. 1844 (OUP 2005);
Fritz Blumer, Patent Law and International Private Law on Both Sides of the Atlantic, WIPO document WIPO/PIL/01/3, 17 January 2001 (<www.wipo.int/edocs/mdocs/mdocs/en/wipo_pil_01/wipo_pil_01_3.pdf>);
Georg Hendrik Christiaan Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property (BIRPI 1968);
Graeme B Dinwoodie, Private International Aspects of the Protection of Trademarks, WIPO document WIPO/PIL/01/4, 19 January 2001 (<www.wipo.int/edocs/mdocs/mdocs/en/wipo_pil_01/wipo_pil_01_4.pdf>);
Masato Dogauchi, Private International Law on Intellectual Property: A Civil Law Overview, WIPO document WIPO/PIL/01/8, 24 January 2001 (<www.wipo.int/edocs/mdocs/mdocs/en/wipo_pil_01/wipo_pil_01_8.pdf>);
Mireille van Eechoud, ‘Alternatives to the lex protectionis for Initial Ownership of Copyright’ in Josef Drexl and Anette Kur (eds), Intellectual Property and Private International Law (Hart 2005) 289;
James Fawcett and Paul Torremans, Intellectual Property and Private International Law (2nd edn, OUP 2011);
Jane Ginsburg, Private International Law Aspects of the Protection of Works and Objects of Related Rights Transmitted through Digital Networks (2000 Update), WIPO document WIPO/PIL/01/2, 17 December 2000 (<www.wipo.int/edocs/mdocs/mdocs/en/wipo_pil_01/wipo_pil_01_2.pdf>);
Paul Goldstein and Bernt Hugenholtz, International Copyright: Principles, Law, and Practice (3rd edn, OUP 2013);
André Lucas, Private International Law Aspects of the Protection of Works and of the Subject Matter of Related Rights Transmitted over Digital Networks, WIPO document WIPO/PIL/01/1 PROV, 18 December 2000 (<www.wipo.int/meetings/en/doc_details.jsp?doc_id=12385>);
Haimo Schack, Zur Anknüpfung des Urheberrechts im internationalen Privatrecht (Duncker & Humblot 1979);
Haimo Schack, Urheber- und Urhebervertragsrecht (6th edn, Mohr Siebeck 2013);
Eugen Ulmer, Die Immaterialgüterrechte im internationalen Privatrecht (Carl Heymanns 1975);
Johannes Christian Wichard, ‘The Joint Recommendation Concerning Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet’ in Josef Drexl and Anette Kur (eds), Intellectual Property and Private International Law (Hart 2005) 257; WIPO, The Management of Internet Names and Addresses: Intellectual Property Issues. Final Report of the WIPO Internet Domain Name Process (WIPO 30 April 1999);
WIPO, ‘The Management of Internet Names and Addresses: Intellectual Property Issues, Final Report of the WIPO Internet Domain Name Process’, 1999 (<www.wipo.int/export/sites/www/amc/en/docs/report-final1.pdf>); WIPO, Intellectual Property on the Internet: A Survey of Issues (WIPO 2002);
WIPO, Guide to the Copyright and Related Rights Treaties Administered by WIPO and Glossary of Copyright and Related Rights Terms (WIPO 2003);
The views expressed in this contribution are entirely those of the author.