Transcending Territoriality: International Cooperation and Harmonization in Intellectual Property Enforcement & Dispute Resolution

AuthorAlexandra George
Pages226-273
226 TSINGHUA CHINA LAW REVIEW [Vol. 10:2
!
TRANSCENDING TERRITORIALITY:
INTERNATIONAL COOPERATION AND HARMONIZATION
IN INTELLECTUAL PROPERTY ENFORCEMENT AND
DISPUTE RESOLUTION
Alexandra George
Abstract
Intellectual property owners often face difficulties when trying to enforce their rights in cross-
border and multi-jurisdictional disputes. Enforcement processes usually nee d to be litigated
jurisdiction-by-jurisdiction, which can be prohibitively co mplicated and expensive. Chinese
investors can find themselves facing unpredictable outcomes if they try to enforce their
intellectual property rights abroad, and outcomes may vary dramatically although similar facts
are presented in each dispute in different jurisdictions. Similarly, foreign intellectual property
holders may face quite diverse litigation environments and outcomes if they wish to enforce their
rights in different jurisdictions, e.g. in the European Union (EU), the United States of America
(US) and the People’s Republic of China (China). This article examines international steps
being taken towards addressing these issues, and it discusses ongoing concerns. Categorizing
developments as "cooperative" or "harmonizing", the article first examines cross-border
cooperation in intellectual property enforcement and dispute resolution that is found in
international treaties. Some agreements are specific to intellectual property law, while others
have broader applicability but nonetheless affect the adjudication of intellectu al property
disputes by domestic courts. Initiatives with respect to the intersection of public international
law and intellectual property may resolve many cross-border enforcement d ifficulties, and the
article also considers the use of arbitration to side-step existing problems. The second half of
the article examines harmonization. Horizontal and vertical harmonization are being used to
streamline laws and administrative processes concerning the acquisition of intellectual property
worldwide. This lays foundations from which harmonized enforcement mechanisms may evolve.
The article concludes that, in due course, it would not be surprising to see groups of nations
develop unitary patents, trademarks and/or designs, and international intellectual property
courts through which to enforce them. It would also be unsurprising if as its own intellectual
property system matures,1 and it becomes increasingly dominant in world trade China were
gradually to take a more leading role in shaping the future of cross-border cooperation and
harmonization in intellectual property enforcement and dispute resolution.
I. INTRODUCTION
Delineated by territorial boundaries and sourced from the national
laws of sovereign states, intellectual property laws have traditionally
been constrained by geography. Interconnectedness in cyberspace
presents challenges to intellectual property’s territorial underpinnings,
as does interconnectedness in international commerce. This article
examines problems faced by Chinese and foreign intellectual property
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1 For historical perspectives on the development of China’s intellectual property system and its
engagement with the international intellectual property system, see Peter K. Yu, The Middle Kingdom
and the Intellectual Property World, 13 OR. REV. INT'L L. 20962 (2011). Jennifer Wai-Shing Maguire,
Progressive IP Reform in the Middle Kingdom: An Overview of the Past, Present, and Future of Chinese
Intellectual Property Law, 46 INTL L. 893912 (2012). Natalie P. Stoianoff, The Influence of the WTO
over China’s Intellectual Property Regime, 34 SYDNEY L. REV. 6590 (2012).
2018] CROSS-BORDER IP ENFORCEMENT & DISPUTE RESOLUTION 227
holders alike when trying to enforce their rights across jurisdictional
borders. It examines existing measures th at smooth cross-border
acquisition and enforcement in a world in which technology and
globalization are challenging the geographical boundaries that lie at
the heart of intellectual property laws, and it suggests areas in which
existing legal structures could be extended to simplify cross-border
enforcement.
Under the principle of territoriality, national intellectual property
laws give rise to intellectual property rights that are enforceable within
a nation’s territorial boundaries. This creates a situation in which
registered rights, such as patents, designs and trademarks, need to be
formally recorded in each jurisdiction in which they are to be
protected. Even when intellectual property rights come about
automatically and without formal registration requirements,2 they
must be dealt with and protected separately in each jurisdiction.
It can be complicated, expensive and inefficient to register (or
otherwise acquire) the same intellectual property interests in multiple
jurisdictions, and to litigate the same dispute in each jurisdiction. The
costs and complexity of battling multifaceted intellectual property
disputes through the courts of each jurisdiction in which rights are
being enforced can be prohibitive. The Apple v. Samsung disputes
provide a good illustration. In 2012, the giant technology companies
Apple and Samsung were fighting over fifty patents and/or design
cases on similar issues in ten separate countries (Australia, Britain,
France, Germany, Italy, Japan, the Netherlands, South Korea, Spain,
and the US), at enormous expense.3
Issues of access to justice are raised when only the wealthiest
businesses are likely to be able to afford such litigation. It is also
questionable whether territorially-based intellectual property laws
work effectively in an increasingly globalized and interconnected
world in which the law’s jurisdictional boundaries can seem
mismatched with the way in which communication and commerce are
evolving. 4 With the arrival of the Fourth Industrial Revolution’s
"internet of things" and creativity by Artificial Intelligence (AI) both
of which can transcend nationality and territorial limits demand for
easier, more efficient trans-jurisdictional protection of intellectual
property interests is only likely to increase.
Developments in cross-border intellectual property protection and
enforcement suggest practical solutions are gradually being found to
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2 Such as copyright and passing off, and designs in some jurisdictions.
3 Florian Mueller, List of 50+ Apple-Samsung Lawsuits in 10 Countries, FOSS PATENT S (2012),
http://www.fosspatents.com/2012/04/list-of-50-apple-samsung-lawsuits-in-10.html. See also Florian
Mueller, Apple vs. Samsung: List of All 19 Lawsuits Going on in 12 Courts in 9 Countries on 4 Continents
FOSS PATENTS (2011), http://www.fosspatents.com/2011/08/apple-vs-samsung-list-of-all-19.html.
4 Sheldon W. Halpern & Phillip Johnson, Harmonising Copyright Law and Dealing with Dissonance: A
Framework for Convergence of US and EU law 3 (2014).
228 TSINGHUA CHINA LAW REVIEW [Vol. 10:2
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circumvent the limitations imposed on rights-holders by
geographically-based intellectual property jurisdiction. Some of these
trends are extensions and developments of existing laws; other
measures seem almost designed to thwart gaps in legal protection.
While not supplanting traditional enforcement mechanisms, these
trends are extending and enhancing protection for intellectual property
owners who seek to defend their rights in the context of cross-border
communications and trade.
This article outlines difficulties involved in applying traditional
international enforcement options in the contemporary environment,
and it considers trends in trans-border intellectual property
enforcement. Part II outlines the basic jurisdiction-by-jurisdiction
approach to trans-border acquisition of intellectual property and the
gaps it leaves for those trying to enforce their rights across national
boundaries. It summarizes the many practical challenges that can stand
in the way of enforcement in cross-border or multi-jurisdictional
disputes. Where relevant, this article takes particular note of China’s
approach to resolving structural problems around cross-border
intellectual property enforcement and dispute resolution.
The article then identifies two general trends in the ways in which
the international intellectual property community is responding to
these difficulties, first, through cooperation and, second, through
harmonization of intellectual property laws and administrative
practices. Part III discusses how international treaties have modified
the basic approach, engendering cooperation between nations with
respect to the acquisition of intellectual property. While these
agreements have greatly increased the ease by which intellectual
property can be obtained in another jurisdiction, they do relatively
little to assist intellectual property owners who seek to enforce their
rights across borders. Part IV analyses efforts to smooth intellectual
property acquisition and/or enforcement through harmonization of
national laws and administrative practices. Identifying two main
patterns of harmonization which may be characterized as
"horizontal" and "vertical" the article examines the ways in which
the trend towards increasing harmonization of intellectual property
laws and practices can assist those who seek to enforce their rights in
trans-border disputes.
The article concludes that particularly through collaborative
mechanisms for obtaining intellectual property outside a person’s
home jurisdiction foundations have been laid upon which more
widespread, comprehensive and streamlined arrangements could be
put in place to enable easier cross-jurisdictional enforcement of the
rights that attach to that property. There is already a diverse range of
precedents for this. It suggests that, while public international law
provisions continue to construct the legal conditions in which cross-

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