Westphalian principles (II): applicable law in the online infringement of...

I started my previous article by quoting a phrase from Muñoz Machado, “the internet does not acknowledge Westphalian principles,” and tried to explain that the absence of an international regulation for the internet has left us with no choice but to turn to the tools of private international law.  We have already seen the difficulty involved in determining which courts are competent to prosecute an intellectual property right infringement. What remains to be examined is which law the competent court should apply. The difficulty of this matter is aptly described by Xalabarder: while markets globalize, copyright laws remain anchored to their territories of origin. This problem has been exacerbated by the arrival of the internet.

The primary international instrument for copyright protection is the 1886 Berne Convention for the Protection of Literary and Artistic Works. Its primary conflict rule, article 5.2), is based on the principle of territoriality: “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.” The reader can imagine how complicated it is to apply this rule to a case such as the one we previously studied, the Hejduk case. Recall that despite having a German domain, the EnergieAgentur company’s website, which made Ms. Hejduk’s photographs publicly available, was accessible from other countries. The rule in article 5.2) leads to the application of as many laws as there are countries where the work subject to infringement may have been viewed.

Spanish conflict rules are also inspired by the principle of territoriality. Article 10.4 of the Civil Code establishes that intellectual and industrial property rights shall be protected within Spanish territory in accordance with Spanish law, without prejudice to the provisions of international treaties and conventions to which Spain is a party. The unilateralism of this precept does not prevent the possibility of applying foreign law. Spanish courts may be competent to hear a case on the infringement of an intellectual property right whose protection is sought in relation to a foreign country. The lex loci protectionis, the law of the country whose territory is linked to the requested protection, would then be applied.

Fernández Rozas states that this protection covers the aspects related to the ownership, content and scope of the right. However, to determine the law applicable to liability for the harm derived from its usurpation, we must turn to the conflict rules of Regulation (EC) 864/2007 of 11 July 2007, on the law applicable to non-contractual obligations (Rome II). This Regulation is important because, despite a single court hearing the infringement case, if its jurisdiction is not limited only to the harm caused in the forum of said court (either because it is the general forum of the defendant’s domicile, or because it is that of the causal event), it will be necessary to determine the specific scope of the infringement, i.e. the harm which occurred in each territory, in order to establish the applicable law or laws. This is where article 8 of the Rome II Regulation comes in, which tells us that: “the law applicable to a non-contractual obligation arising from an infringement of an intellectual property right shall be the law of the country for which protection is claimed.”

Case law is aware that the application of the principle of territoriality entails the risk of a lack of international protection of intellectual property rights, which is why international instruments in this subject matter abound. Thus the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), annexed to the Agreement establishing the World Trade Organization in 1994, or the trend towards harmonization within the European Union manifested by the creation of industrial property rights which cover the entire territory of the European Single Market.

I started this series of articles by quoting a beautiful phrase by Muñoz Machado which accurately describes the legal challenge that the internet represents. As a counterpoint, I would like to bring up an opinion of Calvo Caravaca and Carrascosa González that is no less meaningful and enlightening: “The emergence of the internet in the legal world impacts all branches of law, but especially and fundamentally private international law. Thus far, the internet represents the most refined way of globalizing private situations: it increases the number and variety of private international situations. This makes private international law the main protagonist of the internet’s impact on the legal world.”

Perhaps through private international law, Westphalian principles are being introduced to the internet.
Luis Ramírez
Partner at ICN LEGAL

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