N. 15, June - July 2004 
IP & RTD: Articles 

The law applicable to intellectual property right infringements under the Proposal for a Regulation Rome II
Aurelio Lopez-Tarruella Martinez
Lecturer of Private International Law
University of Alicante
 
  1. On 22 July 2003, the European Commission published the long awaited Proposal for a Regulation on the law applicable to non-contractual obligations (Doc. COM(2003) 427 final), more commonly known as the Rome II Regulation. Article 8 lays down special legal rules as regards intellectual property, which under Community Law covers both copyright and industrial property rights.

    The first paragraph of this rule, which refers to national intelectual property rights, establishes that "the law applicable to a non-contractual obligation arising from an infringement of a intellectual property right shall be the law of the country for which protection is sought". The second, regarding "a unitary Community industrial property right" - Community trade mark, Community design, plant breeders' varieties, Community designations of origin and geographical indications and, who knows, perhaps in the future the Community patent - indicates that the corresponding Regulations shall be applied, while any aspects excluded from their scope will be governed by the "the law of the Member State in which the act of infringement is committed".

    The decision to include this rule regulating conflicts of law in the Proposal for a Regulation Rome II came as a surprise to many for two reasons: the lack of a particular solution in previous versions of the proposal, and the large number of international conventions on the subject which already provide a solution to conflicts - the Berne Convention and the Paris Convention among others. As we shall see shortly, the option adopted presents undeniable advantages, but must also be the subject of certain criticisms.

  2. Art. 8 guarantees that, regardless of the country in which companies carry out the exploitation of their intellectual property rights, in international situations, the courts of the member States shall apply the same law to judge any infringements of these rights that may be commited. This favours legal security and the forseability of any solutions claimed by economic actors who carry out their activities in other member States and also, thanks to the universal character of the Regulation (Art.2), in third countries.

    As such, this provision will help to create an area of liberty, security and justice. On the one hand, the existence of a uniform rule on conflicts of law eliminates one of the main reasons for forum shopping. On the other, it facilitates the subsequent recognition and execution, in the rest of the member States, of judicial decisions on intellectual property right infringements adopted by national courts.

    Finally, this rule guarantees the respect of a high level of intellectual property protection and the furtherance of community policy on the matter in cases where the rights are subject to exploitation in the European Community. In effect, the lex loci protectionis ensures that the infringement of one of these rights in Community territory will at least be governed by the law of a member State which, necessarily, has incorporated institutionally-derived instruments into its internal legal order. The application of this law cannot be avoided by the parties since, contrary to other matters governed by Regulation Rome II, they do not have the possibility set out in Art.10 of choosing the law applicable to an infringement, once it has been commited.

  3. As regards the criticisms made about the rule established in Art. 8, the following three should be mentioned here: the falty drafting of the Spanish version, the limited scope of the applicable law and the lack of a specific solution for infringements of intellectual property rights in multiple locations.

    As stated above, Art.8.1 of the Spanish version establishes the application of "la ley del país en que se reclama la protección" - the "law of the country where protection is claim". This is the formula used in the international conventions on the subject, ad ex. Art. 5.2 of the Berne Convention. Nonetheless, it is a solution which does not take into account that Regulation 44/2001 permits the courts of a member State to hear a claim for an infraction of rights commited in another State. In such cases, the literal meaning of the rule can lead the Judge to apply his own law as the claim regarding the infringement is being made in his country when, in reality, the law of the country for which protection is sought should be applied or, as set out in the Spanish version of Art.8.2, the law of the State "in which the harm was caused" ("en el cual se produjo el daño"). For this reason, it is advisable to adapt the drafting of the Spanish version to the text used in English - "country for which protection is sought" - or French - "celle du pays pour lequel la protection est revendiquée".

    Another defect in the first paragraph is that it is only applicable to the extra-contractual aspects of intellectual property rights. This appears to be the case from the title of the Proposal for a Regulation, the drafting of paragraphs 1 and 2 of Art. 8 and the scope of the applicable law established in Art.11. The Regulation does not serve to determine the law applicable to these rights when there is no infringement. Questions such as the requirements to access protection, the validity and existence of the right, its ownership or the extension of the rights transferred in a licence, are left without a solution. As such it is a partial unification of the law applicable to intellectual property since some of its aspects continue to be regulated by the rules on conflicts of law set out by the national law of each member State.

    Lastly, Art. 8 should be criticised for not incorporating a specific solution for intellectual property right infringements when the effects are felt in several member States. These cases, which are very common on the Internet, oblige the competent Judge to apply a plurality of laws to the same case, which makes his job difficult and undermines legal security and the forseeability of any solutions claimed by the economic actors. The Commission could have taken the opportunity to establish a particular solution to this problem, but has not done so. Without going any further, according to Art.3.3 of the Proposal for a Regulation, the law designated by the Regulation's general rule on conflicts of law should cease to apply if, from the circumstances of the case, it can be seen that the situation has a stronger connection to another legal order. Nonetheless, given the drafting and until the Court of Justice has had the opportunity to give an interpretation, this provision is not applicable to situations contemplated by the special conflict rules provided by the Regulation, including Art.8. Without a doubt, the solution may be criticised: this escape clause could be used to designate, from all of the possible laws applicable to an infringement of intellectual property rights in multiple locations, only one for having the greatest link to the situation: the law which coincides with a preexisting contractual relation or the law of the habitual residence of the victim.

  4. Definitively, the inclusion of the lex loci protectionis in the Proposal for a Regulation Rome II should be welcomed for how much it will favour the fulfilment of Community objectives as regards intellectual property. Nonetheless, from the defects highlighted we can affirm that the solution is not entirely satisfactory. It would have been preferable to set out a conflict rule like that in the Austrian or Italian legal orders, which establishes the application of the law of the State of use or exploitation of the rights, regardless of the existence or not of an infringement. As such, the escape clause provided for in the Regulation should also be applicable when the applicable law is designated by the special conflicts of law rules. In any case, the Proposal for a Regulation faces a long legislative process meaning that it should not be at all surprising if Art.8 undergoes some important changes.