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[Nettime-bold] (fwd) [IPN] CPT comments in USPTO RFC on IPR and Hague Convention on Jurisdiction and Foreign Judgments]

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Date: Tue, 21 Nov 2000 23:26:51 -0500
From: James Love <love@cptech.org>
To: info-policy-notes <info-policy-notes@lists.essential.org>
Subject: [IPN] CPT comments in USPTO RFC on IPR and Hague Convention on 
         Jurisdiction and Foreign Judgments

Attached are the November 21, 2000 comments of the Consumer Project on
Technology, submitted in the current United States Patent and Trademark
Office (USPTO) request for comments on the intellectual property
provisions of the Hague Convention on Jurisdiction and Foreign
Judgments.  We are concerned that this proposed Convention would create
a "worst of all possible worlds" situation for intellectual property, as
all national IPR laws would have greater reach, creating particularly
significant risks for the Internet.  While we have asked for an
extension, the current deadline for comments is December 1, 2000. 
(People can email comments directly to the USPTO by email at this
address: elizabeth.shaw2@uspto.gov).  We encourage others to submit
comments to the USPTO on this issue.  Background on the Convention and
the USPTO RFC, and a new email discussion list for the Convention, are


  Jamie Love <love@cptech.org>

<---------CPT comments on Hague Convention------------>

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

        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

        Some countries will predictably issue overly broad 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
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

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

        In general, if countries think they can collect money abroad
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
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 courts.

    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
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 

        The Convention will have the practical effect of limiting
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
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
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 

        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

        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

Info-policy-notes mailing list

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