CPT's Comments to USPTO on the Hague Conference on Private International Law's
Proposed Convention on Jurisdiction and Foreign Judgments in Civil and Commercial Matters

To:     Elizabeth Shaw <elizabeth.shaw2@uspto.gov>

From:   James Love <love@cptech.org>

Re:     Public Comments on IPR aspects of Hague Convention
        on Jurisdiction and Foreign Judgments in Civil and
        Commercial Matters

Date:   November 21, 2000

I request that the United States Patent and Trademark Office extend the
deadline for this comment period to January 15, 2000, to permit broader
public debate on this issue.  In addition, I present the preliminary
comments of the Consumer Project on Technology to the 16 questions
raised in the USPTO's October 17, 2000 Federal Register Notice, that is
on the web here:

Preliminary Answers to 16 questions by the Consumer Project on

    1. What are your experiences in having judgments involving
intellectual property from one jurisdiction recognized in a foreign

    No personal experience.

    2. Have you had different experiences in having those judgments
recognized in U.S. courts?


    3. Are uniform rules for international enforcement of judgments

        As a general rule, no, if the uniform rules are bad rules.  The
benefits or disadvantages of uniform rules will depend upon the content
of the rules.  Harmonization on bad rules is a bad thing.  Harmonization
on good rules is a good thing.  But since not everyone agrees on what
would be good or bad rules, this presents a problem.  In the area of
intellectual property rules, there are special reasons to avoid
extending the reach of all foreign IPR regimes.

        The US has strong traditions for fair use that are not followed
in all countries.

        The US has a stronger system for patent examination than do some
countries, and indeed, some countries have a registration system that
places every greater burdens on the public to defend infringement suits.

        Some countries will predictably issue overly broad patents,
patents that do not represent real or important inventions, or patents
that offend the sensibilities, such as patents on life forms or business

        Some countries have sui generis IPR regimes that lead to
anticompetitive or monopolistic outcomes.  The European laws on
protection of databases create rights in facts that do not exist in the
United States.

        Some countries have crown copyrights in government documents,
and use those rights to prevent citizens from publishing information
about governments on the Internet.

        The United States issues ill advised patents on business
methods, creating a nightmare of litigation and anticompetive outcomes,
and these patents should not be forced on the whole world.

        Some countries have trademark or unfair competition laws which
make it illegal to engage in comparative advertising, or even to
criticize commercial products.

        In some countries, it is against the law to link to documents
from a web page, without a license.

        In some countries, the first sale doctrine is extremely limited.

        Trade secret protections in some countries can be used as a
weapon against whistle blowers or to prevent criticism or debate on
company practices.

        In general, if countries think they can collect money abroad
more easily, they will have incentives to be even more aggressive in
issuing intellectual property, including overly broad patents, sui
generis rights that don't make sense, restrictive copyright rights, etc,
because the "consumers" will often be foreign consumers, and the
countries will seek to exploit the foreign consumers.

    4. Do you support or oppose the United States becoming party to a
jurisdiction/enforcement of judgments convention?

    We oppose the United States entering into a treaty on the
enforcement of judgments for intellectual property claims at this time.
The laws on intellectual property on the Internet are undergoing
enormous change and are subject to much controversy.  It makes no sense
at all to lock in the whole world to a system that extends every
nation's IPR regime to everyone.  The fact that IPR regimes are so
different now, and undergoing so much change, is a good reason to
exclude IPR issues from the Hague Convention, as has been done for
maritime law and other areas where there is not agreement upon
jurisdiction issues.

    5. What would be the benefits or drawbacks of the United States
becoming a party to the proposed Hague convention?

        The drawback would be an enormous shrinkage of the public's
rights, as people would be subject to the most restrictive IPR regimes
in the world.  Publishers, patent owners and others could pursue
litigation in the most restrictive jurisdictions.  People who do nothing
more than publish web pages or use the Internet would be exposed to all
sorts of new risks, including the costs of defending oneself in foreign

    6. Would the elimination of tag or general ``doing business''
jurisdiction have any impact on intellectual property owners' ability to
protect their rights either domestically or internationally?

        Under review.

    7. What other changes to U.S. law would be needed to implement the
proposed convention? Please identify any drawbacks and/or advantages to
such changes.

        The Article 4 provisions regarding contracts determining
jurisdiction will place burdens on US citizens who are forced to
litigate disputes in foreign courts.

    8. What effect, if any, could this Convention have on other
international intellectual property obligations, including, but not
limited to, the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS), the Paris Convention, and the Berne Convention?

        The Convention will have the practical effect of limiting
country freedom to authorize certain exceptions and limitation on
intellectual property rights, as the rights will be determined by
contracts, and litigated in foreign courts, often under foreign laws.

    9. What effect, if any, could this Convention have on the
enforcement of intellectual property with respect to the Internet?

        The Convention will create enormous risks for those who develop
free software that is distributed over the Internet, or used for
Internet servers or applications software.  Volunteer developers may
find themselves the subject of foreign infringement suits involving
infringements of patents, trade secrets, copyrights or other rights,
even when their efforts are completely legal under the laws of the
country where they live.

        Anyone who links web pages, reports facts or news, or forwards
articles in newsgroups or mailing lists will risk being sued in foreign
courts where IPR laws are very restrictive.

    10. Would application of Article 10 change existing jurisdictional
principles as applied to intellectual property infringement actions? If
yes, please describe any changes in detail and provide any relevant
legal authority.

        Under review.

    11. Would the limitation of worldwide damages in Article 10(4) have
any significant impact in cases involving worldwide infringement of
trademark or other intellectual property rights?

        Under review.

    12. With respect to Article 12(4), under what circumstances would
application of this subsection change existing jurisdictional
principles, with and without the bracketed language included? Please
describe any changes in detail and provide any relevant legal authority.

        Under review.

    13. What effect, if any, would Article 12(4) have on trademark
owners seeking to litigate rights related to registered versus common
law marks?

        Under review.

    14. Is exclusive jurisdiction needed for infringement and/or
validity actions involving patents, trademarks, and/or copyrights?

        IPR should be excluded from the Convention, as is maritime law.

    15. What changes, if any, should be made to the proposed Convention?
Please describe any changes in detail and provide any relevant legal
authorities that support such suggestions.

        IPR should be excluded from the Convention, as is maritime law.

    16. Please identify any other potential concerns or advantages
raised by the proposed convention.

        I do not believe the US government appreciates the extend to
which this Convention would shrink the public's rights, harm the
development of free software, or create incentives for countries to
adopt bad IPR regimes.

        The Consumer Project on Technology has created a web page on the
Convention here:


        We have also created a public discussion list on the Convention


James Love, Consumer Project on Technology v. 1.202.387.8030,
fax love@cptech.org, http://www.cptech.org

Questions, comments and suggestions to Vergil Bushnell vbushnell@cptech.org

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