CONFLICT OF

LAWS
Intellectual Property
 Introduction
O Cases of infringement of intellectual property
(IP) rights are being committed beyond the
territory of registration.
O The Internet and the World Wide Web (WWW)
have made IP protection a complicated process
since violation can occur in cyberspace which
can happen in different places at the same time.
O Since Cyberspace transcends national
boundaries, the laws of different states may find
application in settling disputes relating to IP
rights.
What is Intellectual Property
(IP)
O It refers to creations of the mind: inventions,
literary and artistic works, symbols, names,
images, and designs used in commerce,
O According to World IP Organization, IP
Handbook, 2004:
O “It means the legal rights which result from
intellectual activity in the industrial, scientific,
literary and artistic fields.”
 Where Conflict Arises
O Generally, IP rights may be enforced across
borders, the same is true only when both
foreign law and domestic law are similar to
one another.
O The problem arises when laws protecting IP
rights vary from one country to another.
 Where Conflict Arises:
Example
O If a patent is obtained in one country and
this patent is infringed in another country
where such invention is non-patentable, a
need arises to determine which law is
applicable.
O To illustrate, in the United States (US),
anything under the sun is patentable while
only those programs with a technical
character are patentable in Europe;
otherwise, the program is only copyrightable.
 Where Conflict Arises:
Example
O This distinction is important since
infringement suit may only prosper in the
country of registration.
O Thus, under our existing laws and
jurisprudence, IP owner’s rights is only
limited to what is provided under the
domestic law.
Intellectual Property Code
(IPC) and International
Conventions (ICs)
O Despite efforts at standardizing intellectual
property laws through treaties and ICs,
conflicts still occur because states have
differing rules with respect to IP rights.
O Paris Convention, Berne Convention, TRIPS
(Trade-Related Aspects of Intellectual
Property Rights)
O The Intellectual Property Code (R.A. 8293,
as amended up to R.A. No. 10372)
 “National Treatment”
Principle
O The grant of reciprocal rights to citizens of
states who are signatories to international
conventions.
O However, this principle does not resolve
conflict of law issues for it does not answer
the question of what law to apply or what
approach to utilize to harmonize conflicting
laws.
Bridgeman Art Library, Ltd.
v. Corel Corp.
36 F. Supp. 2d 191
1999
Bridgeman Art Library, Ltd. v.
Corel Corp.
O U.S. Supreme Court held that choice of law
issues does not arise under the Berne and
Universal Copyright Conventions.
O Each adopts a rule of national treatment, for
example: “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 country
where protection is claimed.”
Bridgeman Art Library, Ltd. v.
Corel Corp.
O Hence, a British copyright who sues for
infringement in a US court is entitled to the
same remedies as holders of US copyrights.
O Thus, the National Treatment principle bars
the extraterritorial application of foreign
copyright laws for it mandates the
application of local laws for the equal
treatment of the rights of foreigners.
Approaches to IP Conflict of
Laws
O Territorial Approach
O Most Significant Relationship
O Lex Loci Delicti
O Public Policy Exception
 Territorial Approach
O Laws, generally, have no extraterritorial
application.
O IP rights are territorial in nature.
O IP rights do not extend beyond the territory
of the sovereign which has granted the
rights in the first place
 Subafilms, Ltd. v. MGM-
Pathe Communications Co.,
24 F. 3d 108
1994
Subafilms, Ltd. v. MGM-Pathe
Communications Co.
O The central thrust of Universal Copyright
Convention (UCC) and Berne Convention (BC) is
the principle of “national treatment.”
O A work of an American national first generated in
America will receive the same protection in a
foreign nation as that country accords to the
works of its own nationals.
O Although the treaties do not expressly discuss
choice-of-law rules, it is commonly
acknowledged that the national treatment
principle implicates a rule of territoriality
Most Significant Relationship
O The laws of the state which has the most
significant relationship to the parties of the
case are applied.
O The court should determine which state has
the most substantial connection to the
occurrence and the parties (Hasegawa v.
Kitamura, G.R. No. 149177, November 23,
2007).
Most Significant Relationship
O With regard to IP law, this becomes more
evident when the acts complained of are
perpetration through the use of the internet
or cyberspace.
 Itar-Tass Russian News
Agency v. Russian Kurier,
Inc.
153 F.3d 82
1998]
Itar-Tass Russian News Agency
v. Russian Kurier, Inc.
O Since the works at issue were created by
Russian nationals and first published in
Russia, Russian law is the appropriate
source of law to determine issues of
ownership of rights. Russia is the “country of
origin” of these works
 Lex Loci Delicti
O The law of State where the injury occurred
shall be applied in cases of torts committed
against an individual.
O This is based on the vested rights theory
considering that the rights of the parties
vested in the place where the injury
occurred and nowhere else.
Allarcom Pay Television v.
General Instrument Corp.
69 F.3d 381
1995
 Allarcom Pay Television v.
General Instrument Corp.
O For U.S. copyright law to apply, at least one
alleged infringement must be completed
entirely within the US, and that mere
authorization of extraterritorial infringement
was not a completed act of infringement in
the US.
O The potential infringement was only
completed in Canada once the signal was
received and viewed.
O Accordingly, U.S. copyright law did not apply
 Public Policy Exception
O When the application of a foreign law
conflicts with an established policy of the
forum, the foreign law shall not be applied
for being contrary to public policy.
Bank of America, NT & SA v.
American Realty Corp.
G.R. No. 133876
December 29, 1999
Bank of America, NT & SA v.
American Realty Corp.
O Foreign law should not be applied when its
application would work undeniable injustice
to the citizens or residents of the forum.
O To give justice is the most important
function of law; hence, a law, or judgment or
contract that is obviously unjust negates the
fundamental principles of Conflict of Laws
 Conclusion:
Overall Consideration
O The American Law Institute (IP: Principles
Governing Jurisdiction, Choice of Law and
Judgment in Transnational Disputes, 2008)
O “Any set of conflicts rules should be (and
should be perceived to be) fair and neutral.
The rules should neither favor an intellectual
property owner over an alleged infringer, nor
should they privilege users over owners.
 Conclusion:
Overall Consideration
O Moreover, the rules should put domestic and
foreign law on an equal footing; they should
not systematically designate the application
to local litigants of domestic legislation in lieu
of foreign law, nor should they otherwise
discriminate between local and foreign
claimants”
 Sources
O Pe Benito, Galahad. Conflict of Laws. Rex
Bookstore: Quezon City, Philippines.2016
O Funa, D. B. Trademark Law of the
Philippines. Central Book Supply: Quezon
City, Philippines. 2012.
O The American Law Institute: IP: Principles
Governing Jurisdiction, Choice of Law and
Judgment in Transnational Disputes, 2008.
 CONFLICT OF LAWS
Intellectual Property

O End of Presentation

O Jun Marr M. Denila,

O Milcielo Claire S. Villamayor , and
O John Emil F. Recuenco (4S)