Improving International Copyright Enforcement – Reconciling the Question of Jurisdiction
The Berne Convention, the WTO/TRIPs accord, the WTC and the Universal Copyright Convention have done a good job of harmonizing copyright protection in the international setting. Because of these treaties, authors of creative works can feel more comfortable knowing that they will receive at least a standard minimum amount of protection from each member state. However most of the treaties were created before the digital age. New technology has made infringement easier while enforcement has stayed relatively expensive. A procedural mechanism for international litigation would be a step forward for authors trying to protect from infringement in foreign countries. One of the major hurdles to creating this procedural mechanism is the difficulty of achieving an international standard on the question of jurisdiction. The differences in the way civil law countries and common law countries deal with jurisdictional questions have made it difficult to find a common ground.
An example of how a civil law country deals with jurisdiction is the European Union Council Regulation on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters (EC Regulation). The general rule is that “persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State.” EC Regulation, Art. 2. An exception to this rule is found in Article 5(3), which says that a Member State may be sued in another Member State “in matters relating to tort, in the courts for the place where the harmful event occurred or may occur.” EC Regulation, Art. 5(3). While this exception exists in the EC Regulation, it is important to keep in mind that it is not common in all civil law countries. There is one final basis for jurisdiction in civil law countries that needs to be noted before a discussion of how to reconcile civil and common law jurisdictional questions can begin. Article 6(1) of the EC Regulation says that a court may exercise jurisdiction over a nonresident defendant if he is part of a group of defendants and “it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.” EC Regulation, Art. 6(1). This is true in most civil law countries. If there are multiple defendants in different countries, the plaintiff can choose to sue them all in one particular defendant’s country. As we will see, this would be completely unacceptable in a common law country like the United States.
The United States approach has two important aspects that are not found in civil law countries. First, U.S. federal courts can exercise jurisdiction over a foreign defendant committing infringing acts abroad that have effects in the United States. See 2 International Copyright Law and Practice, ch. USA §8(3)(a). To establish personal jurisdiction over a foreign defendant, where the infringement has occurred abroad (but has effects in the forum), the court must first look at the long arm statute of the state where the court is sitting. If the situation meets the statutory requirements, then the court looks to see whether exercise of jurisdiction is constitutional. Bensusan Rest. Corp. v. King, 126 F. 3d 25 (2d Cir. 1997). Whether or not exercise of jurisdiction is constitutional is usually determined by a three part test: (1) the nonresident defendant must perform some act by which he purposely avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections of its laws; (2) the claim must be one which arises out of or results from forum-related activities; and (3) exercise of jurisdiction must be reasonable. Ballard v. Savage, 65 F.3d 1495, 1498 (9th Cir. 1995). Acts that can establish the first part of the test include economic transactions within the state, an agent within the state, or targeted market activities. This type of jurisdiction may not sit well with lawyers and judges from civil law countries, where they are only used to actions in the court of the place where the defendant lives. It also differs from EC Regulation Article 5(3), in that the US requires minimum contact with the forum. The second aspect of the US approach that differs from civil law is the doctrine of forum non conveniens. Under this doctrine, a court can dismiss a case if there is another forum for the action and factors like administrative difficulties or access to sources of proof weigh in favor of dismissing the case. In contrast, most civil law countries do not have this doctrine, and require judges to hear all cases filed properly before them.
As we can see, the difference between way civil law and common law countries exercise jurisdiction creates a substantial hurdle to the creation of an international procedural mechanism. However, some authors believe that it is possible to find a suitable point of convergence that would be acceptable to lawyers of both legal traditions. In an article from the Marquette Intellectual Property Law Review, Professor Roberto Garza Barbosa proposes such a mechanism. 11 Marq. Intell. Prop. L. Rev. 77 (2007). He proposes that jurisdiction will only be exercised under two grounds. His first recommendation is to adopt Article 2 or the EC Regulation. If a defendant resides in one state, he may be sued in that state. His second basis of jurisdiction would be to subject nonresidents conducting actions abroad with consequences in the forum. The approach would be similar to Article 5(3) of the EC Regulation, which establishes jurisdiction in the place where the harmful event occurred or in the place where damages were suffered. Unlike Article 5(3) however, he would require the U.S. principle of minimum contacts be met. This could create a problem since civil law can be formalistic and may not be comfortable without a concrete definition of what acts would meet the minimum contacts. To try and solve this problem, professor Barbosa proposes that certain acts that have already been found to meet minimum contacts in U.S. cases be codified. Id. at 119-120.
In order to find an acceptable middle ground, Barbosa has also recommended that certain aspects of each legal tradition be left out of the international procedure. The first thing he would leave out is provisions like Article 6(1) of the EC Regulation. These are the provisions that enable a plaintiff to sue multiple defendants in the court of the domicile of any one defendant. He leaves this out because it would not be compatible with the U.S. constitution. A potential defendant may not have any contacts in the forum or have committed any actions that caused damages in the forum. Additionally, provisions like these encourage plaintiffs to add defendants so that they can choose where to bring their action. The second thing he would leave out is the U.S. basis for jurisdiction based on the presence of the defendant for service. This is too unfamiliar to civil law tradition countries according to Barbosa. Finally, he would do away with the doctrine of forum non conveniens. The doctrine goes against the constitutions of many civil law countries, which were influenced by the French revolution, and its distrust of the judiciary. The constitutions attempt to restrain judges from making public policy decisions, and require them to hear all cases brought properly before them. Id. at 115-119.
Professor Barbosa should be applauded for attempting to create an international procedural mechanism for copyright litigation. His article attempts to reconcile much more than just the question of jurisdiction. He makes some very persuasive arguments but I feel he glosses over some important details that will be harder to agree upon in reality than in theory. For instance, he proposes to codify certain acts that will show a defendant to have minimum contacts in a forum. I believe he underestimates the difficulty that this will entail. As he himself said, new technology brings new opportunities for infringement. I think it would be nearly impossible to codify all the ways one could meet minimum contacts, especially as new technologies emerge. I agree with his thinking that a procedural mechanism for international copyright litigation would be extremely valuable to the enforcement of copyright in foreign countries. It will be interesting to see if an acceptable harmonization can be reached between many different countries, and many different legal systems.