On Wednesday, January 23rd, 2013, the Department of State will convene a meeting to discuss a proposal by the Hague Conference on Private International Law (“Hague Conference”) to developing a new “instrument” on the recognition and enforcement of judgments, including “new jurisdictional filters.”
This project is in the “preliminary” stages, and the Department of State event should provide some insight into the views of the Obama Administration and various industry lobby groups, and also about the nature of the Hague Conference ambitions, on a topic that is highly controversial and has been the subject to several earlier initiatives (See: http://www.cptech.org/ecom/jurisdiction/hague.html>
Most recently, the Hague Conference negotiated a “Convention on Choice of Court Agreements” on June 30, 2005.
KEI’s Manon Ress was a member of the US delegation for several years of this negotiation, having originally joined the US delegation under the Clinton Administration, and serving on the delegation during the Bush Administration through the conclusion of the a second diplomatic conference in 2005.
The Choice of Court convention began with much broader ambitions as regards the enforcement of foreign judgements, including such things as injunctions and torts involving speech, and the early drafts were largely modeled on the EU directive on the enforcement of cross border judgement.
CPTech (now operating as KEI) opposed the broader agreement, particularly as it applied to intellectual property issues, speech torts, non-negotiated contracts and business to consumer transactions. Eventually the Conference settled on a much narrower convention on choice of court clauses in business to business contracts.
While the Bush Administration concluded the negotiations for the 2005 Convention, and in general sought to narrow its scope, but did not sign the treaty until January 19, 2009, on the last day of office. The US Senate has not ratified the agreement.
One of the issues to be discussed on Wed will be whether the new Hague Conference project will aim for a binding treaty or a softer norm.
Role of EU and USPTO copyright officials in previous negotiation
Interestingly, both Maria Martin-Prat and Shira Perlmutter earlier lobbied on what became the 2005 the Hague Convention. Martin-Prat on behalf of the recording industry, and Shira for Time-Warner. Shira’s attached testimony expressed support for excluding consumer contracts and speech torts, and narrowing the Convention in other areas, but opposed a specific exclusion of intellectual property rights. (Undated PDF here, probably delivered at this meeting.). We also found an except from a 2002 meeting of the annual Fordham international IP conference, where Maria Martin-Prat expressed the IFPI opposition to proposals to exclude patent and copyright infringement cases from the earlier draft of the Convention.
From Hugh C. Hansen, Editor “International Intellectual Property Law & Policy – Volume 7, 2002.
Chapter 97, Panel Discussion on the Proposed Hague Convention
PROF. VISSER: We will open the discussion to the floor. Please state your name and affiliation.
QUESTION [Maria Martin-Prat, Director of Legal Policy, IFPI, London]: I am going to make a comment more than a question because I have the impression that I might be the only one here who is going to speak about trying not to kill, yet, the Hague process.
Let me tell you to start with that I am speaking from the point of view of phonogram producers, copyright holders, so what I am going to be thinking here is on copyright terms. I do fully take the point that specific problems for patents and for other rights that require registration exist.
But if we stay with copyright only, what is it that copyright holders will need from a jurisdiction Convention? They will need adequate grounds of jurisdiction and certainly they will need to avoid any exclusive jurisdiction rules. For the time being, there is no exclusive jurisdiction rule for copyright in Article 12 of Hague.
They will need as well to have the possibility to consolidate claims. It has already been said here that it is more and more important to be able to consolidate claims in an environment where you have infringements that happen in a multitude of jurisdictions. For the time being, there is a certain possibility to do so in Article 10 of the Draft. It might be improved; it might not be sufficient. That remains to be discussed.
It is important, third, to have recognition and enforcement of judgments, and these should include, as well, provisional or protective measures.
Now, those goals, are they met by the current Draft? Not yet. Does the current Draft provide sufficient clarity? Not yet, and this is a concern that the copyright community has as well.
But what is the alternative or what is the solution? I believe that the most rational solution is to get more time if need be, discuss longer if need be, but I am particularly concerned about talks to cut out IP in general or copyright. As I said, I am not saying anything about the need or not to cut out patents or registered trademarks.
Some of the reasons that have been given for the exclusion of copyright are not specific to copyright only and, from my point of view, do not function. It has been said very often these are intangible transactions. How are you going to be able to say where does the characteristic obligation of the contract take place? Well, that is something that happens with many services that are provided on-line. I do not see why this is specific to copyright.
Torts. It is difficult to say where the act is taking place, where the damages are occurring. Think about defamation. On-line defamation is not very different in the situation, or the lack of clarity.
So I, frankly, do not see where the difference of copyright or the need to carve it out lies. . . .
The documents distributed for the meeting are attached below. Here are a few paragraphs from the January 2013 “issues paper”.
ISSUES PAPER ON MATTERS OF JURISDICTION
(INCLUDING PARALLEL PROCEEDINGS)
drawn up by the Permanent Bureau
11. A broad substantive scope essentially means that a greater number of civil and commercial matters will be regulated, which may suggest a need for differentiated treatment. One way this can be managed is by excluding certain problematic subject matters from scope. For example, difficulties in reaching consensus at the Nineteenth Session on grounds of jurisdiction for consumer contracts, employment contracts and intellectual property could have been addressed by excluding these matters from scope.19 Another way to deal with this is to assume that, for the time being, accepted grounds are being developed for a “core” of common international transactions, i.e., cases arising out of transactions in the most common branches of commerce (e.g., the sale and carriage of goods, provision of banking and financial services, insurance and re-insurance, and business agency).
12. In addition, it is conceivable that provisions in a future instrument on jurisdiction could have a different substantive scope of application to those on recognition and enforcement. For instance, if consensus can only be achieved on grounds of jurisdiction dealing with certain subject matters, there is no reason why this should compromise the possible agreement on a recognition and enforcement scheme that applies to a broader range of matters.
2. Grounds of jurisdiction on which consensus is potentially achievable
13. Following the Nineteenth Session, Commission I on General Affairs and Policy identified a number of individual grounds of jurisdiction in the Interim Text that had met with (relatively) broad agreement among negotiating States, and which could be explored in further work on jurisdiction.20 These were:
a. jurisdiction based on a choice of court agreement (which is now
elaborated in the Choice of Court Convention);
b. jurisdiction based on the defendant’s forum;
c. jurisdiction based on the defendant’s branches;
d. jurisdiction based on the defendant’s submission;
e. jurisdiction for counter-claims;
f. jurisdiction for trusts; and
g. jurisdiction for physical injury torts.
14. In view of the observations made in the Introduction, the Permanent Bureau has focussed its preparatory work on identifying a general ground of jurisdiction (i.e., one that applies to all claims, regardless of their subject-matter or the connection between the claim and the forum) and that would address the above- mentioned grounds of jurisdiction under b, c and d (in addition to the defendant’s “centre of relevant interests” and the defendant’s “regular commercial activity”). If we accept that the objective of a general ground of jurisdiction is to establish a sufficient connection between the defendant and the forum, the deliberations of the Experts’ Group should focus on whether this list of grounds provides the required nexus.
e. Other possible grounds
25. In addition to a broadly accepted ground of jurisdiction, the Experts’ Group may wish to consider other possible grounds of jurisdiction, such as counter- claims, trusts and physical injury torts (as those further identified following the Nineteenth Session). At the same time, some of the grounds that proved to be more challenging in the past (such as contracts, economic torts and intellectual property) are also open to reconsideration in light of recent developments. A preliminary discussion on some of these other possible grounds (as jurisdictional filters) is contained in Note 1 (see paras 150 et seq.)
28. Most States recognise the potential risks associated with multiple forums, and have developed rules (whether at a national level, or in a bilateral, regional or international treaty) providing for their courts to decline jurisdiction in these situations. 56 Generally speaking, there are two approaches that States have adopted for declining jurisdiction: applying a “first-in-time” rule (commonly associated with civil law jurisdictions), which applies where proceedings have been commenced in the forum as well as the courts abroad, and applying a forum non conveniens analysis (which is commonly associated with common law jurisdictions), which applies regardless of whether proceedings have been commenced in courts abroad.
29. The experience of the Hague Conference suggests that it is feasible to accommodate both approaches in a single instrument.57 The Interim Text indeed includes a first-in-time rule alongside an exceptional rule for declining jurisdiction based on a forum non conveniens analysis.58 Articles 21 and 22 of the Interim Text may still represent a position on which consensus can readily be achieved. As Peter Nygh foreshadowed in 2002, the ideas and concepts that these provisions represent “will persist and have to be considered at some future stage, even if present negotiations do not produce an immediate result”. 59 This package received at least in-principle agreement at the Nineteenth Session 60 and, as Ronald Brand states, “indicates both the search for common ground and the willingness to reach out to unfamiliar systems in an effort to achieve global benefits”.61
30. The common basis achieved during past negotiations, as well as recent developments at an international, regional and national level, suggest that dealing with a multiplicity of forums remains at the forefront of policy-making in the area of international litigation. A closer look at recent developments may also
be helpful in the search for internationally acceptable solutions.
41. Elsewhere, there are signs that courts in South Africa might be willing to accept the doctrine of forum non conveniens, which had previously been rejected. 79 In the same vein, in India, the Division Bench of the High Court of Delhi has reaffirmed, after a detailed review of practice across the common law world, that the doctrine may be applied to stay proceedings before Indian courts in favour of a foreign forum.80
42. It is possible that such recent developments may prompt further reflection on the scope of the provisions set out in the Interim Text, and the Experts’ Group may wish to refer some of these matters to the Permanent Bureau for further preliminary study. Such issues may include the mandatory application of the first- in-time rule and the possibility of allowing a court seised to exercise some degree of discretion in deciding to suspend or dismiss proceedings (e.g., based on the considerations of the proper administration of justice). They may also include the nature of the review by the court seised of the foreign proceedings, and whether such a review should involve a control of the jurisdiction of other courts involved, an assessment of the prospects of resulting foreign judgments being recognised and enforced in the State of the court seised (the “recognition prognosis”), and / or an assessment of the appropriateness of proceedings before any one of the courts involved
Part III – Other techniques to co-ordinate the flow of judgments
45. A number of other techniques can be envisaged that regulate the flow of judgments without going as far as prescribing direct grounds of jurisdiction. Whereas Part V of Note 1 describes several “additional mechanisms” that could facilitate the application of the rules on recognition and enforcement, this section suggests that some of these mechanisms may also be considered at the jurisdiction stage (i.e., before a judgment is rendered). Reference is made to relevant precedents developed by the Hague Conference as well as recent developments at the national and international level
Part IV – Expected outcomes
2. The findings of the Experts’ Group will be consolidated in a set of conclusions and recommendations that will be submitted to Council. It is hoped that the February 2013 meeting will be a fruitful opportunity for the Experts’ Group to arrive at a clear position concerning future work in the area of jurisdiction (including parallel proceedings). Council would benefit from any further recommendations that the Experts’ Group might make on the core elements of a future chapter / instrument on matters of jurisdiction. This would help build on the confines of the Judgments Project in a foreseeable future. After all, the feasibility of any future instrument in this area is very much linked to the targeted goal and the procedure leading up to its successful conclusion.96