European Intellectual Property Review
Paul Edward Geller

Published in the Journal of Intellectual Property Rights, vol. 10 (2005), p. 133, by NISCAIR, and, with a Chinese translation, in Intellectual Property Studies, vol. 17 (2005), p. 1, by the CASS IP Center. Copyright © Paul Edward Geller 2005. This version updates the version published in the European Intellectual Property Review, vol. 22 (no. 3) (2000), p. 125, as well as in French translation in Les Cahiers de Propriété Intellectuelle, vol. 12, (no. 1) (1999), p. 227, and in German translation in GRUR Int. (2000), p. 659. The initial version was published in Essays in Honour of H. Cohen Jehoram (Kluwer, 1998), p. 29.

There are strategic points at which legal theories are put to the test of practice. Some of these are the points in law suits at which courts are asked to grant remedies, such as provisional injunctions and money awards. It shall here be argued that, in intellectual property, cross-border acts may best be localized, for purposes of resolving conflicts of laws, by considering consequences for judicial remedies. This method shall be tested by applying it to the hard case of infringement in global networks.

The Territorial Framework

Each community lives by its own law. As transport and media improve, transactions increase between distinct communities. As a result, conflicts tend to arise between the respective laws of these communities. For example, a judge may ask whether to apply the law of the forum community, or that of another community, in a case where one of the parties is from the other community or where a private transaction moves between the communities. In the middle ages, these communities were not necessarily territorial; they only became so with the modern advent of the nation-state.[1]

The nation-state arose as geographers were mapping the world in coordinates of latitude and longitude.[2] National law was then asserted as sovereign within territorial borders traced out in this geographical space. In the nineteenth century, von Savigny conceived of each set of legal relations as having its focal point in one such territory.[3] For example, rights of real property could be seen as assuring the power of the owner of land to control trespass and like behaviors of any and all legal subjects relative to that land. Such property claims, von Savigny concluded, were subject to the law in effect at the situs of the land.[4]

Von Savigny sought a method for choosing the same laws to govern the same legal claims, no matter where suit was brought or who brought it.[5] His method may be encapsulated in the following three steps: First, determine the appropriate focal point, sometimes called a connecting factor or point of attachment, for each category of legal claim.[6] Second, in order to know what points are appropriate in a given case, characterize (qualifier) each claim asserted in the case in terms of legal categories. Third, localize the corresponding point of attachment in a given state whose law then applies to the claim at issue. For von Savigny, there could be no interplay between characterization (qualification) and localization for a simple reason. He posited that legal relations developed inside, but without impacting on, geographic space.[7]

For broad-ranging torts like defamation or the infringement of intellectual property, the analysis is less simple. Nonetheless, the classic premise that geographic space is a fixed framework for conflicts analysis has not been questioned in the field of intellectual property. The Berne and Paris Conventions, and later treaties, impose the principle of national treatment supplemented by minimum rights, as well as the principle of the independence of rights.[8] That is, foreign treaty claimants enjoy the same rights as nationals of a treaty country, the so-called protecting country, unless they are entitled to more extensive minimum rights, and the rights in one state do not depend on those in others. This approach corresponds to the classic conflicts rule in the field of torts: the law of the place of infringing acts governs resulting claims.[9]


The Ambiguity of Territoriality

It is in this sense that laws of intellectual property are territorial. The category at the heart of the classic conflicts rule, the place of infringing acts, is territorial. In the nineteenth century, the meaning of this category seemed self-evident to courts considering infringement claims at home. They easily localized places where copyright works were put on stage or published, where trademarked goods were sold, and where patented inventions were used or made. Such acts took place where live performances, hard copies or products, or factories were found, on one side or the other of clear-cut borders, inside a patchwork of national markets.[10]

Unfortunately, the key category here, the place of infringing acts, can be doubly ambiguous. To start, before knowing what place that is, a court must localize the acts in question, but authorities differ about what law or laws provide terms in which to characterize infringing acts.[11] In addition, the place of such acts can be extended backwards to that of preliminary acts, like organizing the infringement, or forwards to the place of damages. At the end of the twentieth century, the meaning of this place, once apparently obvious in geographical space, is becoming impossible to pin down in cyberspace. Now transactions cross multiple borders simultaneously in global, interactive networks.[12]

This ambiguity arises out of the increasing efficacy of the media and technology. Legal relations develop within spaces in which, with increasing speed and power, subjects communicate with each other and control objects at a distance.[13] To the extent that legal claims bear on communication and control itself, as they will in fields such as defamation and intellectual property, a principle of indeterminacy comes into play. Depending on what laws govern claimants' rights in such fields, their respective positions of power will change in what might be called social space, that is, in the relevant communication and control networks. Thus characterization and localization are not categorically independent of each other, but rather tied together to the extent that they impact on the values at stake in the overall resolution of any conflict of laws which they help to formulate. In these threshold inquiries to determine the places of infringing acts, the public policies underlying conflicts analysis, ultimately considerations of ordre public, already come into play. Courts in the United States may approach this cluster of issues functionally by following the Second Restatement, which expressly allows for resolving conflicts in the light of public policies.[14] Courts in Europe tend to approach these issues in more categorically rule-bound analyses, although notions such as ordre public exceptionally allow for taking account of underlying values.[15]

Localizing acts taking place within the Internet dramatizes the policies at stake in conflicts analysis. In localizing an infringing act in one spot or another, a court might apply the law of one country or another throughout any global network. That is, improper localization, especially of Internet transactions, can lead to extraterritorially spilling the policy effects of one country's law over into another country. In particular, if the law of one country provides too little protection, or another too much protection, applying one or the other law can result in pirate havens or choke points for data flow in the network. For example, what law should govern transmitting raw data from a European database via the Internet to the United States or China? Suppose, on the one hand, that a court localizes the relevant acts in the United States or China, where data is received but not strongly protected: then, to European eyes, pirates may find havens in these countries, from which data might be more or less freely retransmitted.[16] Suppose, on the other hand, that a court localizes inside Europe all unauthorized transmissions of raw data from Europe: then a European law granting property rights in the data[17] might apply to the transmissions, even to the United States or China. That choice of law might well choke off data flow to or at points within the Internet that policies in these countries would still leave open.[18]

Typically, while reasoning in terms of fixed territorial categories, courts vacillate in localizing infringing acts and choosing applicable laws. Courts in the United States have not been consistent in choosing copyright laws to apply to cross-border transactions, often but not always avoiding the application of domestic law to foreign acts.[19] These same courts continue to apply domestic trademark law more or less aggressively to cross-border transactions including foreign acts, speaking of its "extraterritorial" application.[20] European courts had held that cross-border broadcasts infringed copyright or neighboring rights in the countries where the broadcasts were received.[21] A Community directive now compels localization of satellite-relayed broadcasts in those countries where transmissions are respectively initiated, but contemplates basing compensation for cross-border transmissions on "the actual audience, the potential audience, and the language version".[22] Decisions sounding in copyright and patent laws have vacillated about localizing the infringing use of software across borders.[23]


Resolving the Ambiguity

Recall that conflicts of laws arise as transactions increase in frequency between distinct communities with different laws, while smaller communities tend eventually to come together into larger communities.[24] Courts have a choice here: either they treat conflicting laws as arising out of communities that are static and unchanging, or they resolve conflicts in the light of the historical dynamics that have been bringing communities together. Under the static view, it is difficult to transcend the incoherence that tends to arise when courts respectively follow their own established laws in formulating conflicts of laws. Under the dynamic view, it is possible to look to globalizing law that is emerging to govern many smaller communities as they come together into larger communities. The Internet has now accelerated just such processes.[25]

Law may emerge in many forms to bring communities together. Supranational law, like that of the European Union, effectively recognizes a larger community as an autonomous law-making entity. Public international law stops short of this point, rather recognizing smaller communities, notably nation-states, as autonomously submitting to overriding law that binds a group of such states, most clearly by virtue of treaty language.[26] Private international law, optimally following such emerging law between communities, is subject at least to treaty provisions and, more broadly, to considerations of international public policy, ultimately to ordre public international.[27] Traditionally, only after conflicts analysis resulted in possible choices of law would a court refer to ordering principles or public policies, ultimately to ordre public, as grounds for rejecting any of these choices as objectionable.[28] Under the analysis proposed here, the court is to take account of the policy goals of the international regime of intellectual property at the very threshold of analysis, that is, as soon as it starts localizing infringement.[29]

Fortunately, a treaty regime rather systematically governs conflicts of law in the field of intellectual property. Furthermore, it is common ground that courts must interpret key legal terms consistently with the treaties applicable in a given field.[30] This article will accordingly ask: What remedial desiderata should guide interpreting the notion of the "country where protection is sought" in order to achieve the goals of the treaty regime in intellectual property? The TRIPs Agreement has most recently restated treaty goals for intellectual property as providing "adequate standards" and "effective and appropriate means for . . . enforcement" worldwide, while "taking into account differences in national legal systems."[31] On the one hand, the goal of "effective and appropriate means for . . . enforcement" implies a globally seamless fabric of remedies in which neither pirates nor counterfeiters might find havens. In particular, the TRIPs Agreement provides for seizures of infringing copies and goods to stop them from crossing borders to reach markets in geographical space.[32] The new WIPO treaties in the field of copyright contemplate "effective" and "expeditious remedies" to protect markets against pirates in cyberspace as well.[33] On the other hand, the goal of "taking into account differences in national legal systems" implies a globally coherent fabric of remedies. Here the principle of national treatment comes into play.[34]

The first desideratum, a globally seamless fabric of remedies, should lead courts to stop infringing transactions in their tracks. A distinction may be drawn between inward-bound and outward-bound transactions relative to any given country, often but not always the forum country, which this article will call the "home" country.[35] Inward-bound transactions commence outside the home country, for example, with preparatory acts such as authorizing and organizing infringement and fabricating infringing copies or products abroad, but end up in acts of marketing inside the home country; outward-bound transactions commence in the home country but are consummated in acts of exploitation in foreign markets. The case law provides instances of U.S. and European courts that, with jurisdiction over parties abroad who are engaging in inward-bound infringing transactions that threaten markets at home, localize these transactions as taking place in the home country in that they enjoin them under that country's law.[36] By parity of reasoning, courts should localize outward-bound transactions, not where they commence in the home country, but in the other countries whose markets they target, and should apply the laws of these foreign countries, respectively, to enjoin acts at home that authorize or otherwise generate infringing exploitation abroad. Some cases fall outside this distinction, notably where copies that are illicit under the law of the home country transit that country's territory on their way to another country where they may be marketed, perhaps legitimately. Special provisions may still mandate seizure in the home country.[37]

Some or all of these relations can operate across global, interactive networks at the same time. To the extent that this takes place, the inquiry into localization, as well as the fashioning of remedies, becomes more complex. For example, in the 1980s Playboy Enterprises had the Italian magazine Playmen enjoined from infringing its trademark in the United States.[38] In the 1990s, the Italian publisher set up a Playmen website in Italy, after having registered that title as a trademark in Italy. The Southern District of New York then ordered the publisher either to stop access to the website in the United States or to shut down the site entirely.[39] In imposing the latter alternative, the court would seem to have lapsed into the questionably extraterritorial application of domestic trademark law. One fact, however, distinguishes the case: as the court noted, Playboy Enterprises had succeeded in asserting its mark against Playmen in European countries besides Italy.[40] Thus the website effectively also infringed foreign marks, making the case one in which infringing transactions were potentially inward-bound relative to many countries at once, although infringement outside the United States was neither pleaded nor remedied as such. It has been argued that, in such cases where infringement ostensibly takes place in many jurisdictions at once, the courts should apply the most protective of the laws effective in all these possible protecting countries.[41] This argument has the merit of providing grounds for a preliminary injunction to stop the unauthorized hemorrhaging of protected materials into a global network, but it risks imposing the policy effects of one country's law on other countries.[42] Optimally, a court would explore more differentiated solutions, for example, as the facts would have allowed in the Playmen case, basing a wide-ranging injunction on law common to most of the overall marketplace threatened by the infringing act.[43]

The second desideratum, a coherent web of remedies, becomes critical as courts reach final judgment, specifically in granting monetary awards. The international regime of intellectual property is predicated on national treatment, so that enterprises normally consult the law of a country before marketing in that country.[44] To be coherent with this principle, the law of a given country should apply to ascertaining monetary awards to remedy infringement which prejudices or usurps the market for protected materials in that country. Unfortunately, national courts have not adopted fully consistent approaches to granting monetary awards in cross-border cases, sometimes applying their own home laws in ascertaining damages or profits incurred abroad. Consider this pair of cases with similar holdings but not necessarily consistent results across borders. In a U.S. case, videos of the 1992 Los Angeles riots were copied in New York and transmitted across the Atlantic for exploitation in Europe without consent, and plaintiff was ultimately allowed to invoke U.S. law as a basis for sharing in defendant's profits from exploitation overseas.[45] In a Canadian case, a court followed a similar approach, applying only Canadian law, indeed rejecting defenses akin to U.S. fair use, while it awarded profit shares deriving from sales in the U.S. market.[46] However, in cases of infringement in both the United States and Canada, such precedents could allow courts in both countries to grant overlapping awards, or they could allow a court in one country to apply its approach to establishing and assessing monetary liability to prejudice actually incurred in the other country.[47] Now consider a pair of cases with globally more consistent approaches to awards. Faced with an award of about two million dollars, half due to exploitation in the United States and half outside, one U.S. court, with an eye on the "international regime", refused to apply home law as the basis for awarding monetary relief for marketing abroad.[48] More emphatically, a French court rejected the argument that French law should apply to imposing damages just because the claimant was headquartered in France, and it rather applied Swedish, Dutch, and British laws, respectively, to award damages incurred in each of these countries.[49] Following such precedents, courts would grant monetary awards more coherently by applying, respectively, the law of each country where damages were sustained or undue profits gained.[50]

This analysis then localizes the place of infringement in the country of the targeted market. Thus the law of this country will generally apply to incoming transactions to the extent that these threaten or actually prejudice this country's market, but this law will not normally apply to outgoing transactions aiming at foreign markets. In Internet cases where many markets are targeted at once, the court may find it sufficient to base a provisional injunction on law common to most of the overall marketplace being threatened; however, the court should base final monetary awards on the law of each country whose market is prejudiced.[51] In extreme cases, it might be possible to argue for exceptions to this general approach by invoking international public policy, the ordre public international, that underlies the treaty regime of intellectual property. Such policy is most authoritatively manifest in the TRIPs Agreement, which provides for specific injunctive remedies to stop cross-border piracy, while it generally contemplates "remedies which constitute a deterrent to further infringements."[52] Thus, in a case where no other remedy is available to stop proliferating cross-border infringement, this policy could be invoked to support applying home law which specifically contemplates relief against outgoing transactions that target foreign markets.[53] Sparse case law imposes special awards, such as statutory or punitive damages, under the law of a single country in order to adjust monetary liability for prejudices incurred in other countries.[54] However, following the analysis proposed here, a court would better impose any such special award under one country's law by looking only to the impact of the transaction at issue in that country. Where special awards apply country by country in cross-border cases, they may accumulate, with globally deterrent effects.[55]

Remedial anomalies complicate matters here. To start, the lex fori determines the procedures for obtaining injunctions and establishing monetary awards. Where suit is brought in one court for infringement in many countries, this court's procedures might lead to results different from those otherwise resulting in the courts and under the laws of these other countries.[56] Further, courts may well differentiate cross-border remedies when digital content is protected in one country but not in another, but there is no assurance that computers routing such content within global networks can always be easily reprogrammed to comply with such differentiated relief. Still other problems will arise as computerized systems are introduced to manage or police digital content.[57]



Courts will increasingly encounter difficult conflicts of laws in the field of intellectual property. Many difficulties may be resolved by localizing infringing acts with an eye to satisfying the remedial desiderata of the international regime. Accordingly, the laws of the countries whose markets are respectively targeted or prejudiced by the transactions at issue in a case will most often best provide bases for relief. Other difficulties, however, arise out of basic disharmonies, some substantive and some procedural, and courts will have to exercise their ingenuity to resolve them as equitably as they can from case to case.[58] Progress toward a systematic international code of intellectual property, or toward globalized dispute-resolution regimes in the field, would eventually help us transcend such difficulties.[59]

[1] See Kurt Lipstein, Principles of the Conflict of Laws, National and International, The Hague, Nijhoff, 1981, at 3-12; Ferenc Majoros, Le droit international privé, Paris, Presses Univ. de France, 3d ed., 1990, at 20-25.

[2] See Paul Alliés, L'invention du territoire, Grenoble, Presses Univ. de Grenoble, 1980, part 2; Nicholas K. Bromley, Law, Space, and the Geographies of Power, New York, Guilford Press, 1994, ch. 3.

[3] See Friedrich Carl von Savigny, A Treatise on the Conflict of Laws, Wm. Guthrie (trans.), Edinburgh, T.&T. Clarke, 2nd ed., 1880, at 132-142 (§§ 360-361).

[4] See ibid., at 174-181 (§§ 366).

[5] See ibid., at 70 (§ 348).

[6] See ibid., at 221-233 passim (§§ 372-373).

[7] See ibid., at 56-57 (§ 345).

[8] Paris Convention for the Protection of Industrial Property, 20 March 1883, as last revised at Stockholm, 14 July 1967, art. 2(1), reprinted in K. Zweigert and J. Kropholler (eds.), Sources of International Uniform Law, Leiden, Sijthoff, 1973, vol. 3, at 129; Berne Convention for the Protection of Literary and Artistic Works, 9 Sept. 1886, as last revised at Paris, 24 July 1971, art. 5(1), ibid., at 21. See also Agreement on Trade-Related Aspects of Intellectual Property Rights, including Trade in Counterfeit Goods, 15 April 1994, GATT Doc. MTN/FA II-A1C, art. 3, reprinted in (1994) 25 I.I.C. 209 (requiring "treatment no less favourable" than nationals receive).

[9] See Eugen Ulmer, Intellectual Property Rights and the Conflict of Laws, Deventer, Kluwer, 1978, at 11-14. See also Paul Edward Geller, "Conflicts of Laws in Copyright Cases: Infringement and Ownership Issues", (2004) 51 J. Copyright Society USA 315, 325-355 (reviewing cases and commentary on point and recasting the argument that national treatment leads to applying the law effective at the place of infringement).

[10] See generally Alois Troller, Das internationale Privat- und Zivilprozeßrecht im gewerblichen Rechtsschutz und Urheberrecht, Basel, Verlag für Recht u. Gesellschaft, 1952, at 45-47 (noting that rights of intellectual property, protecting potentially ubiquitous subject matters, are territorial to the extent that remedies can only be enforced at specific points in geographical space).

[11] Compare Yvon Loussouarn and Pierre Bourel, Droit international privé, Paris, Dalloz, 3d ed., 1988, at 289-290 (favouring lex fori), and Martin Wolff, Private International Law, London, Oxford Univ. Press, 2d ed., 1950, at 153-166 (favouring lex causae), with Ernst Rabel, The Conflict of Laws: A Comparative Study, Ann Arbor, Univ. of Michigan Press, 2d ed., 1958, vol. 1, at 47-56 (criticizing both approaches as methodologically unsound and proposing to characterize facts in terms common to forum law and to all arguably applicable foreign laws in any given case). See also Gerhard Kegel, Internationales Privatrecht, Munich, C.H. Beck, 6th ed., 1987, at 208-215 (adopting Rabel's "breakthrough" because it allows conflicts analysis to become independent both of lex fori and, progressively, of lex causae).

[12] See Paul Edward Geller, "Conflicts of Law in Cyberspace: International Copyright in a Digitally Networked World", in P.B. Hugenholtz (ed.), The Future of Copyright in a Digital Environment, The Hague, Kluwer, 1996, at 27, also in revised forms in (1996) 20 Columbia-VLA J. of Law & Arts 571, (1996) 44 J. Copyright Society USA 103, (1997) 31/1 UNESCO Copyright bull. 3; Richard G. Fentiman, "Conflicts of Law in Cyberspace", paper given at the Symposium held by the International Federation of Computer Law Associations, Brussels, 27-28 June 1996.

[13] See generally Harold A. Innis, Empire and Communications, Oxford, Oxford Univ. Press, 1950 (seminal study correlating media and technology history with social and legal development).

[14] See American Law Institute, Restatement, Second, Conflict of Laws, St. Paul, American Law Institute, 1971, vol. 1, at 412-413. See generally Brainerd Currie, "Notes on Methods and Objectives in the Conflict of Laws", in Selected Essays on the Conflict of Laws, Durham, N.C., Duke Univ. Press, 1963, at 177; Albert A. Ehrenzweig, "Characterization in the Conflict of Laws: An Unwelcome Addition to American Doctrine", in K.H. Nadelmann, A.T. Von Mehren, and J.N. Hazard (eds.), XXth Century Comparative and Conflicts Law: Legal Essays in Honor of Hessel E. Yntema, Leyden, Sythoff, 1961, at 395 (critiquing characterization insofar as it is used to avoid untoward results of categorical choice-of-law rules without admitting policy reasons for seeking different results).

[15] See generally Jean-Sylvestre Bergé, La protection internationale et communautaire du droit d'auteur: Essai d'une analyse conflictuelle, Paris, L.G.D.J., 1996, at 206-226 (distinguishing characterization and the resolution of conflicts as distinct phases of analysis). See, for example, James J. Fawcett and Paul Torremans, Intellectual Property and Private International Law, Oxford, Clarendon Press, 1998, at 236-237, 646-647 (localizing Internet infringement categorically at points of input into network).

[16] Compare National Basketball Assoc. v. Motorola, Inc., 105 F. 3d 841, 848-853 (2d Cir. 1997) (U.S.) (opining that raw data may be protected against misappropriation as hot news under U.S. law), with Guangxi Broadcasting and T.V. Newspaper v. Guangxi Coal Worker's Newspaper, [1996] China Law Rep. 843 (Intermediate People's Court, Liuzhou Prefecture) (China) (not protecting television-program data under copyright law and awarding conditional relief under tort law), translated and commented by Zheng Chengsi, Intellectual Property Enforcement in China, Hong Kong, Sweet & Maxwell Asia, 1997, at 34-42.

[17] Council Directive 96/9 of 11 March 1996 on the legal protection of databases, arts. 7-11, [1996] O.J. L077, reprinted in (1996) 27 I.I.C. 821.

[18] See generally J.H. Reichman and Pamela Samuelson, "Intellectual Property Rights in Data?", (1997) 50 Vanderbilt L. Rev. 51, available at (critiquing E.C. directive along with other initiatives and presenting policy arguments against granting property rights in raw data).

[19] Compare Allarcom Pay Television, Ltd. v. General Instrument Corp., 69 F.3d 381, 387 (9th Cir. 1995) (not applying U.S. copyright law to the unauthorized unscrambling of satellite transmissions only received in Canada), with Nat'l Football League v. PrimeTime 24 Joint Venture, 211 F.3d 10 (2d Cir. 2000), cert. denied, 532 U.S. 941 (2001) (applying U.S. law to the capture and retransmission of signals in the United States, though reception only occurs in Canada). See also the Tariff 22 decision, SOCAN v. Canadian Assoc. of Internet Providers, 2004 SCC 45 (Supreme Court) (Canada), available at (equivocating about where to localize Internet transmissions that cross borders).

[20] Compare Reebok International, Ltd. v. Marnatech Enter., Inc., 970 F. 2d 552, 553-557 (9th Cir. 1992) (applying broad test to effects of Mexican transactions and applying U.S. trademark law), with Sterling Drug, Inc. v. Bayer, 14 F. 3d 733, 744-747 (2d Cir., 1994) (applying narrow test relative to retailoring an injunction of trademark use outside the United States). See also Babbit Electronics, Inc. v. Dynascan Corp., 828 F. Supp. 944, 958-959 (S.D. Fla. 1993), affirmed, 38 F. 3d 1161, 1166-1172, 1182-1183 (11th Cir. 1994) (awarding treble damages, under U.S. law, for marketing with infringing trademarks in specific Latin American countries). But see Aerogroup International, Inc. v. Marlboro Footworks, Ltd., 955 F. Supp. 220, 229-232 (S.D.N.Y. 1997) (applying U.S. trademark law to one Canadian defendant but not another and refusing to apply a U.S. design patent to either). See generally Curtis A. Bradley, "Territorial Intellectual Property Rights in an Age of Globalism", (1997) 37 Virginia J. of International Law 505 (reviewing and critiquing application of U.S. trademark law to foreign transactions).

[21] See, for example, Radio Monte Carlo c. SNEP, Cour d'appel, 1e ch., Paris (France), 19 Dec. 1989, [1990] 144 RIDA 215 (localizing in France broadcasts from Monte Carlo since they were received in France); the Directsatellitensendung case, Oberlandesgericht Vienna (Austria), 30 Nov. 1989, [1990] GRUR Int. 537 (localizing broadcast via satellite in Austria, the receiving country, to discourage transmission from states with inadequate protection), affirmed, Oberster Gerichtshof, 16 June 1992, [1992] GRUR Int. 933, excerpts translated in (1993) 24 I.I.C. 665; Landesgericht Stuttgart (Germany), 21 April 1994, [1995] GRUR Int. 412 (localizing in Germany a Swiss broadcast relayed by satellite into Germany). See generally Roberto Mastroianni, Diritto internazionale e diritto d'autore, Milan, Giuffrè, 1997, at 413-425 (suggesting that the rule applying the laws of receiving countries remains generally valid in cases of satellite-relayed broadcasts, as well as in cases of on-line dissemination).

[22] E.C. Council Directive 93/83 of 27 September 1993 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission, Recital 17 and art. 1.2, [1993] O.J. L248/15, reprinted in (1994) 25 I.I.C. 887. See, for example, the Felsberg decision, Bundesgerichtshof (Germany), 7 Nov. 2002, [2003] GRUR 328 (applying German law to a broadcast made from Germany, but addressed to a French public and possibly received by some Germans, on the basis that "control" of the broadcast was exercised at the point of broadcasting in Germany, but mandating the court on remand to assess royalty claims in the light of the legal situation in France, where much of the audience was located).

[23] Compare Quantitative Fin. Software, Ltd. v. Infinity Fin. Tech., Inc., 47 U.S.P.Q.2d 1764 (S.D.N.Y. 1998) (U.S.) (refusing to localize copyright infringement in the United States where, ostensibly from off-shore, a foreign software module "will control huge volumes of trades" in New York City), with Menashe Business Mercantile, Ltd. v. Willliam Hill Org., Ltd., [2003] 1 All E.R. 279 (C.A. 2003) (U.K.) (finding patent infringement in the United Kingdom because the patented computer system was interactively used there, that is, the end-users worked the system in the United Kingdom, even though the server was abroad).

[24] See text accompanying n. 1 above.

[25] See Paul Edward Geller, "From Patchwork to Network: Strategies for International Intellectual Property in Flux", (1998) 31 Vanderbilt J. Transnational Law 553 at 567-574, also in (1998) 9 Duke J. Comparative & International Law 69 at 82-90.

[26] See Paul Reuter, Introduction to the Law of Treaties, London, Kegan Paul, 2d English ed., 1995, at 32-33; also Ian Brownlie, Principles of Public International Law, Oxford, Clarendon Press, 4th ed., 1990, at 4-31 passim (explaining other sources of public international law besides treaties).

[27] Compare Lipstein, n. 1 above, at 63-81 (exploring relations between public and private international law), with Loussouarn and Bourel, n. 11 above, at 65-66 (taking the position that public international law has no control over private international law).

[28] See generally Kegel, n. 11 above, at 324-336; Loussouarn and Bourel, n. 11 above, at 392-414 (both unpacking policies that fall under ordre public, which exceptionally justifies not applying foreign rules otherwise applicable pursuant to normal conflicts analysis). See, for example, Bragance c. Michel de Grèce, Cour d'appel, Paris (France), 1e ch., 1 Feb. 1989, [1989] 142 RIDA 301 (refusing to apply a contractual waiver of French moral right concluded in the United States because it was contrary to ordre public international).

[29] See text accompanying ns. 13-18 above. See generally Geller, "Conflicts of Laws in Copyright Cases", n. 9 above, at 321-341 (showing how policy goals enter into both U.S. and European conflicts analyses).

[30] See generally Brownlie, n. 26 above, at 36 ("there is a general duty to bring internal law into conformity with obligations under international law"); Majoros, n. 1 above, at 14-17 (expanding the principle in favor of interpreting and prioritizing laws and treaties consistently with optimizing their goals). See, for example, Rickless v. United Artists Corp., [1987] Fleet St. Rep. 362 at 371 (Court of Appeal) (U.K.) (interpreting U.K. Performers Protection Act 1963 to give effect to Rome obligations).

[31] TRIPs Agreement, n. 8 above, Preamble.

[32] TRIPs Agreement, n. 8 above, arts. 51-60. See also Paris Convention, n. 8 above, art. 9, and Berne Convention, n. 8 above, art. 16 (providing for seizure of infringing goods or copies on importation).

[33] WIPO Copyright Treaty, arts. 11, 12, and 14, and WIPO Performances and Phonograms Treaty, arts. 18, 19, and 23, both adopted by the Diplomatic Conference in Geneva on 20 Dec. 1996 and reprinted in (1997) 28 I.I.C. 208.

[34] See Hans Ullrich, "Technology Protection According to TRIPs: Principles and Problems", in F.-K. Beier and G. Schricker (eds.), From GATT to TRIPs, Weinheim, VCH Verlagsgesellschaft, 1996, 357 at 366-369 (noting that national treatment leaves countries free to fashion laws of intellectual property pursuant to national policies).

[35] See generally Max Planck Institute, "Stellungnahme des Max-Plank-Instituts für ausländisches und internationales Patent-, Urheber- und Wettbewerbsrecht zum Entwurf eines Gesetzes zur Ergänzung des internationalen Privatrechts (außervertragliche Schuldverhältnisse und Sachen)", [1985] GRUR Int. 104 at 105-107 (elaborating this distinction in applying it to hypothetical cases).

[36] See, for example, Spindelfabrik Suessen-Schurr v. Schubert & Salzer, 903 F. 2d 1568, 1578 (Fed. Cir. 1990) (U.S.) (enjoining preparatory acts in Germany leading to patent infringement in the U.S.); The Doors case, Bundesgerichtshof (Germany), 18 Feb. 1993, [1993] GRUR Int. 699, excerpts translated in (1995) 26 I.I.C. 305 (confirming application of German law as basis of injunction against the importation of sound recordings legally fabricated abroad).

[37] See n. 32 above and accompanying text. See, for example, Grammophone Co. of India Ltd. v. Pandey, AIR 1984 SC 667, [1985] Fleet St. Rep. 136 (Supreme Court) (India), excerpts in (1987) 18 I.I.C. 139 (ordering seizure of copies in India on their way to Nepal), commented by Praveen Dalal, "The Long Arm Jurisdiction of Courts Regarding Copyright Law in India", (2004) 9 Journal of Intellectual Property Rights (CSIR) 557, at 564-565.

[38] Playboy Enterprises, Inc. v. Chuckleberry Publ. Inc., 687 F. 2d 563 (2d Cir. 1982).

[39] Ibid., 939 F. Supp. 1032 (S.D.N.Y. 1996).

[40] Ibid. at 1034.

[41] See François Dessemontet, "Internet, le droit d'auteur et le droit international privé", [1996] Revue suisse de jurisprudence 285. But see "Stellungnahme des Max-Plank-Instituts", n. 35 above, at 105-107 (critiquing project to codify application of the most protective law in cases of cross-border infringement).

[42] For a hypothetical example, see text accompanying ns. 16-18 above. See generally Lawrence B. Solum and Minn Chung, "The Layers Principle: Internet Architecture and the Law", 79 Notre Dame Law Review 815 (2004), available at (exploring the spillover effects of transterritorial injunctions of Internet transmissions).

[43] See Geller, "Conflicts of Laws in Copyright Cases", n. 9 above, at 342-346, 352-355.

[44] See Henri Desbois, André Françon, and André Kéréver, Les conventions internationales du droit d'auteur et des droits voisins, Paris, Dalloz, 1976, at 153.

[45] Los Angeles News Service v. Reuters Television Int'l, 340 F.3d 926 (9th Cir. 2003), modifying 149 F. 3d 987, 991-993 (9th Cir. 1998), cert. denied, 119 S. Ct. 1032 (1999), reversing 942 F. Supp. 1265, concl., 942 F. Supp. 1275 (C.D. Cal. 1996)

[46] Hager v. ECW Press Ltd., (1998) 85 C.P.R. (3d) 289.

[47] For other examples, see text accompanying ns. 16-18 and 42 above.

[48] Subafilms, Ltd. v. MGM-Pathe Communications Co., 24 F. 3d 1088, 1094-1099 (9th Cir. 1994) (en banc), cert. denied, 513 U.S. 1001 (1994).

[49] SISRO c. Sté. Ampersand Software, Cour d'appel, 4e ch., Paris, Feb. 8, 2002, Expertises 2002, 230, affirmed Cass. civ. I, 5 Mar. 2002, JCP 2002 II, 10082, 994, excerpts translated in (2003) 34 I.I.C. 701.

[50] See Geller, "Conflicts of Laws in Copyright Cases", n. 9 above at 346-349, 352-355.

[51] See text accompanying ns. 35-50 above.

[52] See text accompanying n. 32 above; also TRIPs Agreement, n. 8 above, art. 41(1). See generally Thomas Dreier, "TRIPs and the Enforcement of Intellectual Property Rights", in From GATT to TRIPs, n. 34 above, at 248 (examining these provisions in context).

[53] See, for example, AT&T Corp. v. Microsoft Corp., 71 U.S.P.Q.2d 1118 (S.D.N.Y. 2004) (U.S.) (applying section 271(f) of the U.S. Patent Act as a basis for relief against exporting software information for installation in computers made abroad for marketing to foreign end-users); BBC Enterprises Ltd. v. Hi-Tech Xtravision Ltd., [1992] 9 R.P.C. 195 (House of Lords) (U.K.) (invoking section 298 of U.K. Copyright, Designs and Patents Act to enjoin the illicit marketing of decoders abroad; otherwise, the law could "readily be bypassed by decoders being made" in one country and sold in another).

[54] See, for example, Nat'l Football League v. PrimeTime 24 Joint Venture, 131 F. Supp. 2d 458, 479 (S.D.N.Y. 2001) (U.S.) (finding that infringement by capturing work-carrying signals in the United States and transmitting the works abroad was "knowing or at least reckless" and awarding statutory damages for such acts under U.S. law), on remand from 211 F.3d 10 (2d Cir. 2000), cert. denied, 532 U.S. 941 (2001); Regina v. AFC Soccer, 22 C.P.R. (4th) 369 (Man. Prov. Ct. 2002) (Canada) (assessing a fine under domestic law by taking account, inter alia, of the extent of illicit sales abroad, some via the Internet).

[55] By parity of reasoning, we would not follow the commentary that contemplates attenuating monetary liability by applying the law of the home country of an infringer who, on the basis of that law and comparable laws elsewhere, could not have reasonably foreseen that his acts would have constituted infringement abroad. See André Lucas, "Private International Law Aspects of the Protection of Works and of the Subject Matter of Related Rights Transmitted over Digital Networks," paras. 89-90, 101, in WIPO Forum on Private International Law and Intellectual Property, WIPO Doc. PIL/01/1 Prov., 17 Dec. 2000, available at

[56] See Donald S. Chisum, "Normative and Empirical Territoriality in Intellectual Property: Lessons from Patent Law", (1997) 37 Virginia J. of International Law 603 at 614. See also Dieter Stauder, "Einheitliche Anknüpfung der Verletzungssankionen im Gemeinschaftspatentübereinkommen", [1983] GRUR Int. 586 (asking how to overcome differences between national remedies in a unified European patent system).

[57] See Geller, "From Patchwork to Network", n. 25 above, at 561-566, also in (1998) 9 Duke J. Comparative and International Law at 76-82; for examples, WIPO Workshop on Service Provider Liability, 9 Dec. 1999, at

[58] See generally Jan J. Brinkhof, "Internationalisation of Patent Law, Transborder Injunctions and Summary Proceedings in the Netherlands", [1995] 1 CEIPI Texts on Intellectual Property 1 at 12-13 (pointing out that Dutch courts may decline to impose remedies not known to the foreign legal system of another protecting country).

[59] See, for example, Laurence R. Helfer and Graeme B. Dinwoodie, "Designing Non-National Systems: The Case of the Uniform Domain Name Dispute Resolution Policy" (2001) 43 William and Mary Law Review 141, available at (explaining such a regime for domain-name disputes); Paul Edward Geller, "An International Patent Utopia?", [2003] 11 European Intellectual Property Review 515 (contemplating such a regime for patent disputes).