The previous six modules in this series have examined substantive aspects of intellectual property rights in Cyberspace.  This final module, by contrast, deals with the following procedural issues:

• When can a court properly be said to have jurisdiction over alleged violators of intellectual property rights?
• What law, if any, should be applied when the parties to a lawsuit are located in different jurisdictions?
• Are courts the only or best institution for settling intellectual property disputes arising on the Internet?

    As you review the case study, required readings and optional readings for this week, consider the future of the procedures for resolving Internet-based conflicts over intellectual property rights. Consider whether conventional procedural tools may be modified to suit the new medium or whether other dispute-resolution structures of a private or quasi-private nature will be required.

Location: St. Louis, Missouri, USA
Date: January 1, 1999

    After a night of revelry to welcome the last year of the 20th century (including much dancing to the hit song, “1999,” by the artist formerly known as Prince), you arise to discover a mild hangover and an e-mail message from your pro-bono client, the Catholic Church's Archdiocese of St. Louis. The e-mail reads as follows:

    “Happy New Year. As you are aware, on January 26th and 27th, the people of the city of St. Louis will be blessed by a visit by the Pope. In anticipation of the Pontiffs visit, the Archdiocese has created a corporation, named Papal Visit 1999, which has been organizing events around the visit which is expected to attract hundreds of thousands of pilgrims. Additionally, Papal Visit 1999 and the Archdiocese have produced a number of commemorative items, such as books, CDs and wall hangings to enable pilgrims to remember the pontiff and his visit to our city. In preparation for the events to come and the marketing of Papal Visit commemorative items, the Archdiocese and Papal Visit 1999 registered the following trademarks and tradenames: “Papal Visit 1999,” “Pastoral Visit,” “1999 Papal Visit Official Commemorative Items,” and “Papal Visit 1999, St. Louis”.
    It pains me to inform you that a troubled individual has used, or should I say abused, this great and holy visit to market pornographic images over the Internet. It has been brought to the attention of the Archdiocese that web sites accessible through the addresses “papalvisit.com” and “papalvisit1999.com” have been set up. These web sites contain information about events surrounding the Pope’s visit, as well as advertising for pornographic web sites and outrageous stories concerning the Pope and the Roman Catholic Church. I am turning to you to stop this disgraceful manipulation of the Pastoral Visit to St. Louis."

    Turning to the Web, you visit the offending web sites to see for yourself what your client has described. You discover that the Archdiocese's trademark Papal Visit is indeed being used as a domain name by a web site (adult content), which contains links to pornographic materials and lewd humor regarding the Catholic Church, interspersed with information regarding the impending visit of the Pope. Consulting the "whois" database of domain name registrar, Network Solutions, you find that the domain name is registered by a corporation known as the Internet Entertainment Group (IEG), located in the Central American nation, Belize.

    Further research turns up the materials set forth in the required reading section, below. Please review those materials and then address the foregoing scenario in the Assignment section.
 
 

Background on traditional U.S. Personal Jurisdiction Law

    The doctrine of “personal jurisdiction” limits the set of persons over whom a court may exercise its power. Under personal-jurisdiction law, unless a defendant has some relationship with the territory in which a court is a valid decision maker, he is not subject to the power of that court. In the United States, the Due Process clause of the federal Constitution constrains courts' ability to issue binding judgments over persons' liberty and property. The Supreme Court has held that a court may impose its will upon "foreign" (meaning out-of-state or non-U.S.) defendants, only when they have evidenced some "minimum contacts" with the court's territorial jurisdiction. The Supreme Court has recognized that non-physical contacts with a jurisdiction can be sufficient to satisfy this requirement -- but only when the maintenance of the suit comports with "traditional notions of fair play and substantial justice." This principle is meant to subject persons to the jurisdiction of courts in states where they have "purposefully availed" themselves of the benefits of interacting with the jurisdiction in question. For further explanation of U.S. personal-jurisdiction law, see the following articles:

 Michael MacClary, Personal Jurisdiction and the Internet, 3 Suffolk J. Trial & App. Adv. 93, excerpted.
and
 Learning Law in Cyberspace, by Jay Kesan, University of Illinois at Urbana-Champaign, College of Law
 

Personal Jurisdiction in Cyberspace

Judicial Developments:

    The challenge for courts since the emergence of the Internet has been applying the doctrines summarized above to interactions taking place in the non-physical context of Cyberspace. As Dan Burk has described in his article, "Jurisdiction in a World Without Borders":

During the latter part of 1996, a wave of court decisions relating to personal jurisdiction surged out of United States trial courts. But these decisions for the most part have failed to seriously grapple with the nature of the Internet and the broader implications of stretching current legal doctrine to fit this new medium. The geographic transparency of the Internet may well place such adjudication of transborder disputes outside of any jurisdictional analysis yet contemplated by territorially-bound law. Although problems of multijurisdictional coordination and competition are not unique to regulation of the Internet, the unique nature of the Internet may necessarily trigger constitutional limitations designed to limit governmental regulation originating outside the state's physical borders. (1 Va. J.L. & Tech. 3)

    Numerous district and circuit courts in the federal system in the United States have wrestled with the application of traditional personal jurisdiction principles to the fluid, borderless arena of cyberspace transactions. As you read the following opinions, please consider whether, in combination, the facts and holdings of these cases provide a coherent view of which Internet interactions provide sufficient grounds for a court to assert its power.

 Inset Systems, Inc. v. Instruction Set, Inc., 937 F. Supp. 161 (D. Conn. 1996) (case abstract)

 Zippo Mfg. Co. v. Zippo Dot Com, 952 F. Supp. 1119 (W.D. Pa. 1997) (case abstract)

 Blumenthal v. Drudge, 992 F. Supp. 44 (D.D.C. 1998) (case abstract)

 Mink v. AAAA Development LLC, 190 F.3d. 333 (5th Cir. 1999)
 

Legislative Developments:

    The executive and legislative branches of various states have not been silent on the issue of personal jurisdiction. In particular, some states have attempted to expand the scope of their courts' power. The Attorney General of Minnesota, for example, issued a memorandum asserting both civil and criminal jurisdiction over "[i]ndividuals and organizations outside of Minnesota who disseminate information in Minnesota via the Internet and thereby cause a result to occur in Minnesota." Another example of a state's effort to expand its jurisdiction over cyber-acts is the "Virginia Internet Policy Act" (VIPA) signed into law on March 29, 1999. VIPA states that, "for purposes of obtaining personal jurisdiction..., use of a computer or computer network located in Virginia...will constitute an act in Virginia." Because several major ISPs, including AOL, PSInet and UUNet, as well as Network Solutions, the primary domain name registrar, are located in Virginia, VIPA could mean that Virginia courts will have the ability to issue binding judgments over foreign Internet users in numerous substantive legal areas, including intellectual-property issues such as domain name conflicts.

    Meanwhile, the U.S. Congress has attempted to clarify and expand the power of the federal courts, in particular with regard to the recent "cybersquatting" phenomenon. As discussed in the Domain Names and Trademarks module, Congress recently passed the Anti-Cybersqatting Piracy Act (ACPA), which provides a cause of action against anyone who, with a bad-faith intent to profit from the goodwill of another's trademark, registers, traffics in, or uses a domain name that is identical to, or confusingly similar to a distinctive mark, or dilutive of a famous mark, without regard to the goods or services of the parties. Revisit the ACPA and pay particular attention to Sections 3002(a)[d](2)-[d](4), in which Congress provides an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located. In rem is a legal term used to designate proceedings or actions instituted against the thing, as opposed to the more common actions which are against the person (known as in personam). Under the ACPA, in rem proceedings are available to the Plaintiff only where the domain name holder is not available because of lack of personal jurisdiction or not responsive to notice sent to the addresses filed with the Registrar.  Such suits are thus seen as supplementary to, not replacing, in personam actions. If you have time and are interested in the use of in rem jurisdiction as a means to solve problems of jurisdiction in cyberspace, consider the following article by Thomas Lee, entitled In Rem Jurisdiction in Cyberspace (optional), which examines the feasibility and constitutionality of in rem suits against domain names.

Conflicts of Law in Cyberspace

   A second procedural issue with significant implications for the application of substantive law to Cyber-acts is the question of Conflicts of Law. Different geographic sovereigns commonly have different policy preferences, which are implemented through law.  Typically, each sovereign wants its law to govern disputes involving its citizens or territory. However, Internet activity commonly involves persons and computer networks located in many territories, whose laws may be contradictory. In the readings below, you will be presented with an example of such a conflict involving the "moral rights" laws of France and the United States -- an issue that, as you will recall, we explored several weeks ago in conjunction with the Respect and Integrity module. Although the Internet is a recent phenomenon, transnational interaction is not, and courts over several decades have developed the doctrine of Conflicts of Law to resolve the question of which jurisdiction's law shall apply. Traditionally, U.S. courts decided conflicts of law through deference to the principle of lex loci delicti, "the law of the place of the wrong." In the geographically fluid environment of Cyberspace, however, the place of the wrong often is not obvious.
    Modern courts and scholars have developed several other principles for the resolution of conflicts of law, including the "most significant relationship" test, the "center of gravity" approach, and the "interest" approach. None of these tests has been universally accepted.
    This primer on Conflicts of Law and the Internet will provide further explanation of the conflicts-of-law doctrine and its suitability for the world wide web.

ICANN Uniform Dispute Resolution Policy

    In response to the difficulties and confusion resulting from the awkward imposition of conventional procedural and substantive law on Internet activities, various bodies have explored radically different approaches to the issue of jurisdiction. As discussed in the Domain Names and Trademarks module, in an attempt to standardize the resolution of conflicts between trademark owners and domain name holders, ICANN (Internet Corporation for Assigned Names and Numbers) developed a mandatory Uniform Dispute Resolution Policy (UDRP), which deals with questions of personal jurisdiction and conflicts of law by requiring disputes to be heard by an administrative panel.

As you may recall, the ICANN UDRP is a forum for the resolution of disputes unique to the Internet: conflicts between trademark law and the first-come-first-served domain-name allocation system.  ICANN's policy calls for a mandatory administrative procedure to settle disputes alleged to involve all of the following circumstances: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the holder of the domain name has no rights or legitimate interests in respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Revisit the UDRP and pay particular attention to the jurisdictional aspects of the policy and the manner in which ICANN negotiates potential conflicts of judgments with conventional courts of law (see paragraph 4.k.).
 

Alternative Dispute Resolution in Cyberspace

    Proponents of Alternative Dispute Resolution have advocated dispute resolution fora to be operated "in" cyberspace, as a solution to conflicts that arise between persons within Cyberspace.

Please read the following excerpt of an article by Robert C. Bordone, discussing online Alternative Dispute Resolution (ADR) and proposing a workable system for a cyber-forum for settling cyber-disputes.
 Robert C. Bordone, Notes: Electronic Online Dispute Resolution: A Systems Approach - Potential, Problems, and a Proposal, 3 Harv. Negotiation L. Rev. 175

Among the recent online ADR efforts are the Online Ombuds Office (OOO) of UMass-Amherst and the Virtual Magistrate Project. Please skim the web site of OOO and read the following article on VM: David Loundy, Virtual Magistrate becomes a reality, sort of.
 

The Future of Territorial-based Legal Systems in the Borderless World of the Internet

Commentators disagree concerning whether traditional legal doctrines, grounded in specific bordered territories, will continue to have relevance and legitimacy in the increasingly international and fluid "jurisdiction" of cyberspace.  In particular, for intellectual-property law, as defined by territorial sovereigns, it is unclear whether the traditional doctrinal tools of personal jurisdiction and choice of law will be able to handle the ever more ubiquitous cross-border transactions occurring on-line.

To illustrate the pressure brought to bear on intellectual-property law by electronic communications, consider the following excerpt: Alexander Gigante, Ice Patch on the Information Superhighway: Foreign Liability for Domestically Created Content, 14 Cardozo Arts & Ent. L.J. 523 (1996)

In the following article, Professor Jack L. Goldsmith takes on what he calls the "regulation skeptics," who contend that conventional territorial regulation of cyberspace activities, whether by criminal laws or by civil laws such as intellectual-property protection, is illegitimate and unworkable because cyberspace transactions take place both in all national jurisdictions and outside all national jurisdictions:   Jack L. Goldsmith, Against Cyberanarchy, 65 U. Chi. L. Rev. 1199 (Fall 1998).
 
 

The assignment this week contains two parts, both of which should be addressed in your answers. The first part is related to the case study above, and the second requires a more global look at the future relationship between intellectual-property law and Cyberspace.

• Having reviewed the materials in the required reading section (in particular those on personal jurisdiction, ICANN's UDRP and online ADR), please prepare a strategy for protecting the Archdiocese's trademarks. Consider which forum is likely to be most efficacious in stopping the abuse of the Archdiocese's intellectual property. (300 words)
• After considering the articles by Gigante and Goldsmith, please sketch the likeliest and brightest future for the protection of intellectual property rights in Cyberspace. (200 words)

If you are a member of group B, you are not required to submit an answer to the assignment but should feel free to discuss the issue in the Plenary Conference.

• Can U.S. personal-jurisdiction jurisprudence be applied coherently to cyberspace transactions? Have the courts properly considered the implications of the geographic indeterminacy of Internet activity? Can the judicial opinions you read in the required readings section be mapped coherently onto the sliding scale described above?
• Should the constitutional principles underpinning personal-jurisdiction doctrine be applied liberally or narrowly when faced with an infringement of intellectual property in cyberspace?
• What factors should courts consider in determining whether to exercise personal jurisdiction over alleged violators of intellectual-property rights over the Internet? Should there be differences among the doctrines introduced in the previous modules: trademark, copyright, patent, moral rights, domain names, etc.?
• Is in rem jurisdiction over domain names, such as is provided for in the Anticybersquatting Piracy Act, a workable and fair alternative to in personam jurisdiction in the resolution of domain name disputes.
• Are the traditional legal tools for settling conflicts of law applicable to cyberspace? Or is the application of territorially defined laws a poor fit for an a-territorial medium such as the Internet.
• Could the ICANN Uniform Dispute Resolution Policy, an international quasi-public forum for settling disputes involving intellectual property rights, serve as a model for the resolution of intellectual-property disputes beyond the domain name context?
• Are private dispute-resolution institutions viable protectors of intellectual property rights?
• Does a territorially applied legal doctrine, such as intellectual-property regulation, make sense in the a-territorial context of Cyberspace? What alternatives exist or could be imagined?

Personal Jurisdiction Caselaw

Liu v. DeFelice, 6 F. Supp. 2d. 106 (D. Mass. 1998)

Panavision International v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) (edited version of case) (holding that the exercise of personal jurisdiction is proper where defendant knew that the effects of his registration of domain names would be felt in the home state of the trademark holder)

Personal Jurisdiction Secondary Sources

Principles of Jurisdiction on the Internet Primer (produced by Betsy Rosenblatt; includes Conflicts of Law primer provided in required readings above)

Reaching into Cyberspace with Maine's Long-Arm Statute, by Rita Logan, Maine Bar Journal (an excellent review of US caselaw on personal jurisdiction and Internet activities with particular attention to the Maine long-arm statute)

Jurisdictional Issues in Domain Name Disputes, (informational website of the Perkins Coie law firm)
 

Richard Phillip Rollo, "The Morass of Internet Personal Jurisdiction: It is time for a Paradigm Shift," 51 Fla. L. Rev. 667 (September 1999)

"Cyberspace Regulation and the Discourse of State Sovereignty," 112 Harv. L. Rev. 1680 (May 1999)

Todd D. Leitstein, "A Solution for Personal Jurisdiction on the Internet," 59 La. L. Rev. 565 (Winter 1999)

Asfoon Hamid, "Jurisdictional Reach on the Internet," 1 J. Legal Advoc. & Prac. 120 (1999)

Howard B. Stravitz, "Personal Jurisdiction in Cyberspace: Something More is Required on the Electronic Stream of Commerce," 49 S.C.L. Rev. 925 (Summer 1998)

Katherine C. Sheehan, "Predicting the Future: Personal Jurisdiction for the Twenty-First Century," 66 U. Cin. L. Rev. 385 (Winter 1998)

Timothy B. Nagy, "Personal Jurisdiction and Cyberspace: Establishing Precedent in a Borderless Era" 6 CommLaw Conspectus 101 (Winter 1998)

Christian M. Rieder & Stacy P. Pappas, "Personal Jurisdiction for Copyright Infringement on the Internet," 38 Santa Clara L. Rev. 367 (1998)

Dan L. Burk, "Jurisdiction in a World Without Borders," 1 Va. J.L. & Tech 3 (Spring 1997)
 

Conflicts of Law

Conflicts of Law, an Overview, Legal Information Institute

Kai Burmeister, "Jurisdiction Choice of Law, Copyright, and the Internet: Protection against Framing in an International Setting," 9 Fordham I.P., Media & Ent. L.J. 625 (Winter 1999)

Jane C. Ginsburg, "Copyright Without Borders? Choice of Forum and Choice of Law for Copyright Infringement in Cyberspace," 15 Cardozo Arts & Ent. L.J. 153 (1997)