According to the English Supreme Court, there is a modern trend in favour of the enforcement of foreign intellectual property rights. This view is perhaps not surprising as the English High Court has been prepared to entertain actions involving the enforcement of foreign intellectual property rights since the mid 1990s. In the European context there has also been a great effort to harmonise the intellectual property rights available in Member States as well as their enforcement through the Enforcements Directive[i]. However, a recent proliferation of high profile cases shows that enforcing rights is not all plain sailing for IP owners.
English jurisdiction over foreign IP rights
There has been a longstanding rule, known as the Moçambique rule from the originating decision[ii], that English courts cannot entertain an action to determine title to immoveable property or damages by trespass to such property. However, its application in the field of intellectual property had been uneven with conflicting decisions particularly during the mid to late 1990s, a time when the Dutch courts were granting pan-European injunctions under IP rights encouraging lawyers elsewhere to test the limits of their home courts’ jurisdictions. In England, this had resulted in the 1997 decisions of Pearce v Ove Arup[iii], which found that the English courts in principle had the right to hear a case concerning Dutch copyright (the actual action was so weak it was struck out), and Coin Controls[iv], which said that it would be expedient to hear all disputes relating to infringement of identical national designations of European patents at the same time (so long as validity was not in issue).
The Supreme Court has now shown these cases to have been correctly decided and the earlier conflicting decision in Tyburn[v] incorrect: Tyburn had held that the English courts had no jurisdiction to hear an action asserting US copyright and trade marks in the Sherlock Holmes and Dr Watson characters. As has been widely reported, the Supreme Court held that Lucasfilm Ltd could assert US copyright in Stormtrooper helmets against Mr Ainsworth, who had made the helmet moulds for the original Star Wars films in the 1970s. In reaching that decision, the Supreme Court held that the Moçambique rule had been eroded and that EU Regulations gave courts in Member States jurisdiction to decide cases involving the infringement of foreign intellectual property rights, except where the validity of a registered was in issue[vi].
Welcome though the Supreme Court’s decision is for owners of foreign IP rights, jurisdiction to assert a right is only one consideration. As important is the ability to injunct infringers. Recent decisions in the Apple v Samsung litigation in Germany and Holland show that this can be problematic where foreign defendants are concerned.
German court suspends injunction against a non-EU company
Apple owns a Community registered design for its i-Pad, which it considered was infringed by Samsung’s Galaxy tablets. Accordingly it brought an action and, on 9 August 2011, obtained a preliminary injunction from the Dusseldorf district court in August against Samsung Electronics GmbH and Samsung Electronics Co. Ltd (the Korean parent company).
As provided for by the Community Designs Regulation, the injunction applied across Europe (except, at Apple’s request, the Netherlands where a separate action had been brought). However, a week later the Dusseldorf court suspended the pan-European aspect of the injunction against Samsung Korea on the basis it was neither domiciled nor had an establishment in Germany as required by the Community Design Regulations. Having a German subsidiary was not sufficient as it was a separate legal entity. The court therefore had no jurisdiction to grant an injunction effective outside Germany against Samsung Korea.
Dutch court grants limited pan-European injunction
Unlike the German court, the District Court of The Hague did not consider Apple’s registered designs to be infringed by the Galaxy tablet action. However, it did hold that Samsung’s Galaxy S type smartphones infringed one of Apple’s European patents. It therefore granted Apple a European-wide injunction against three Dutch Samsung subsidiaries but the injunction is limited in several respects.
First, unsurprisingly, the injunction applies only in those countries where Apple’s patent has been validated[vii]. Second, the Dutch court did not consider that it had cross-border jurisdiction against Samsung entities not resident in the Netherlands. Accordingly, in a parallel to the German decision, the injunction did not apply to Samsung Korea outside the Netherlands.
Court of Justice and Community trade marks
A third case illustrating the ways in which a right to a pan-European injunction may be qualified is DHL v Chronopost[viii]. Although DHL has a Community trade mark, and the Trade Mark Regulation provides for Community-wide injunctions when infringed, the Court of Justice of the EU held that if infringement is limited to a single Member State, or part of the EU only, the territorial scope of the injunction should be correspondingly limited.
The different aspects of these decisions will all feed into IP owners’ decisions on where to litigate when the IP rights and infringing acts cover several jurisdictions. It is too early to say if the Lucasfilm decision will lead to a spate of foreign copyright cases before the English courts but anecdotal evidence suggests that the Dusseldorf court’s infringement decision has led to increased interest in litigating there despite the limitations on the injunctions granted. Such forum-shopping is not condoned by the courts but it is inevitable.
What is also clear is that there is no ready assumption that European-wide rights means European-wide injunctions against infringers. Ambiguities in the phrasing of the German version of the Community Designs Regulation underlay the suspension of the injunction against Samsung Korea. But the Court of Justice’s decision does seem contrary to the unitary character of Community trade marks.