357Intellectual Property Rights Infringement Claims and Remedies: A Growing Territorial Discrepancy Problem[*]

Prof. Marketa Trimble

Samuel S. Lionel Professor of Intellectual Property Law, William S. Boyd School of Law, University of Nevada, Las Vegas

Introduction

Intellectual Property (“IP”) rights are territorially defined; notwithstanding their harmonization at the international level, the rights are created by national legislation, and their territorial scope is defined by national legislation[1]. It seems logical that any remedies awarded for infringements of the rights should correspond to and not extend beyond the territorial scope of the rights. Nevertheless, instances exist when courts have awarded remedies that reach beyond the territorial scope of the asserted IP rights and growing pressures for cross-border enforcement of IP rights seem to have led to a rise in the number of these instances. This article explains the problem of the territorial discrepancy between the scope of IP rights and the scope of the remedies for violations of those IP rights and discusses problems associated with the discrepancy.

The need for cross-border enforcement arises from increasingly frequent and intensifying cross-border interactions, which also concern or affect IP rights. IP ownership can easily be transnational; the early international IP treaties –the Paris and the Berne Conventions[2]– made it possible to acquire IP rights in foreign countries, and other treaties, such as the Madrid Agreement[3] and the Patent Cooperation Treaty[4], 358have facilitated the acquisition of registered IP rights in multiple countries. Cross-border business activities have led to more frequent dealings with IP across borders, presenting opportunities, but also challenges, be they for multi-national corporations, small or medium-size enterprises, or individuals. The global nature of economic and social exchanges, on the internet included, have exposed even purely domestic actors to cross-border interactions that affect IP rights.

Limits on IP Rights Enforcement

A growing interest in protecting IP rights in a manner that is as territorially broad as possible is therefore not surprising. However, IP owners are often unable to pursue enforcement actions in all the countries where the IP rights have been infringed because the owners face legal and practical hurdles that limit which claims the owners can bring and where[5].

Substantive IP law imposes limits on the scope of the claims that a rights owner may raise. The ownership of the rights can be fragmented, with rights being owned by different owners in different countries, sometimes as a result of the owners’ choice, but other times as a result of differences in the countries’ laws of IP ownership[6]. Additionally, the contours of individual IP rights can vary depending on national rules on protectible subject matter, the scope of the rights, and the exceptions and limitations to the rights. What an IP rights owner owns and may claim in one country might not correspond to what the owner owns and may claim in other countries.

Procedural matters further complicate cross-border IP enforcement. Actions for multi-jurisdictional IP infringements may not always be brought in a single court, since foreign IP rights infringements might not be justiciable in a particular court[7]. Non-justiciability 359not only prevents a concentration of proceedings over multi-jurisdictional infringements; it also means that an IP owner might not be permitted to bring a single foreign-country infringement case, which is particularly problematic when the court in which the plaintiff would bring the case is the defendant’s court of general jurisdiction. Proceedings in courts of specific jurisdiction are limited to causes of action linked to the ground for jurisdiction, and the scope of remedies in such proceedings is typically limited accordingly[8]. When foreign IP infringement claims are permitted to be raised, choice-of-law issues and the need to apply foreign law can complicate the proceedings and increase the costs of enforcement. Evidentiary issues, including proof of infringement and proof of damages, also constrain cross-border enforcement.

The practical limitations to the enforcement of IP rights in multiple countries –and sometimes even a single foreign country– are also substantial. The cost of litigation in a foreign country is significant, and the cost of multi-jurisdictional enforcement actions can be exorbitant. Parallel proceedings in multiple countries require careful planning, strategic considerations in the timing of the various actions and the uses of experts and other witnesses, and detailed coordination with other parties to the multiple disputes. Bringing multi-jurisdictional claims can backfire; IP owners risk alienating a court and damaging their public relations if their claims appear excessive.

In the face of the many difficulties, IP rights owners can resort to bringing a single action in a single court for infringement under a single country’s law, while also seeking to maximize the territorial effect of the action by requesting remedies to stop infringements and be compensated for infringements of their rights, even outside the country for which they have brought the infringement claim. If the court agrees, it can issue an award –an injunction and/or damages– that does not correspond to, but exceeds the territorial scope of the claims raised (and the scope of the substantive law applied) in the case.

False Positives of Territorial Discrepancy

Some remedies are cross-border remedies but are consistent with the territorial scope of the law applied and therefore do not result in a territorial discrepancy. These remedies stem from the application of national laws that are extraterritorial, with a resulting award that corresponds to the extraterritorial scope of the law. In Transocean Offshore, the court applied section 271(b) of the US Patent Act, which concerns inducement of patent infringement, holding that an act in Norway that induced the infringement of a US patent in the United States was itself an act of infringement under the US Patent Act[9]. Remedies in such 360cases are cross-border awards, but the remedies do not exceed the territorial scope of the applied law.

Vaguely formulated injunctions in IP cases are also false positives. For example, in the United States, courts have sometimes granted injunctions without a clear territorial delineation, even though such injunctions run contrary to higher courts’ interpretations of the Federal Rules of Civil Procedure[10]. For example, in 3M Company et al. v. Asia Sun (Taiwan) Inc. and in O2 Micro Int’l v. Beyond Innovation et al., the courts broadly prohibited defendants “from otherwise infringing” the US patents at issue[11]. The scope of such vaguely formulated remedies can be corrected through interpretation.

Recent decisions by courts in several countries concerning FRAND licenses to standard-essential patents (“SEPs”) are also false positives. Some courts have issued judgments in which they resolved the licensing disputes globally[12] and critics have pointed out that by awarding licensing fees globally, these courts have de facto affirmed the existence of IP rights in multiple countries without scrutinizing the validity of the rights under those countries’ laws. However, the courts applied a single country’s contract law and, to the extent that that contract law governed the entire dispute, the resulting remedies correspond to the scope of the applied contract law and do not create the type of territorial discrepancy that this article addresses.

Many remedies in IP cases have effects that extend beyond the scope of the law that is applied, but not all such remedies present a territorial discrepancy. Remedies, even if formally designed to correspond to the territorial scope of the law applied, can carry significant reputational effects that reach far beyond the intended jurisdictions. Public apology[13] and the publication of a judgment[14] can affect parties globally. Other highly visible remedies are injunctions executed in public, such as orders and injunctions executed at large international trade shows, where business partners, customers, and the general public witness the results of an infringer’s actions. And some cross-border spillover may attach to any infringement remedies because the remedies can signal the legal and commercial weaknesses of the infringer.

361Territorial Discrepancy Cases

An actual territorial discrepancy has arisen in cases of IP rights enforcement on the internet. As it was originally a borderless medium, the internet did not make possible a territorial limitation on injunctions. Borderlessness is still the default on the internet, but the internet as a border-defying medium is ancient history. Constantly improving geolocation and geoblocking tools make it possible to constrain the acts of internet actors to particular jurisdictions and even smaller areas. Initially, courts had to design injunctions on the internet as territorially unlimited, but now, with improvements in geolocation and geoblocking, internet injunctions may be crafted with significant territorial specificity. In some instances, courts may still issue a territorially unlimited remedy for internet activities, as was the case, for example, in Equustek Solutions Inc. v. Google Inc., where a Canadian court issued an injunction affecting internet activity outside the territorial reach of the applied substantive law[15]. Territorially unlimited injunctions on the internet are cases of territorial discrepancy because the injunctions typically stem from the application of a single law or a limited number of national laws[16].

Territorial discrepancy is not a new phenomenon arising solely because of the internet. Courts have issued remedies with expansive territorial scope when those remedies have been necessary to protect IP rights. The US Court of Appeals for the Federal Circuit stated in a decision that “[a]n injunction […] can reach extraterritorial activities […], even if these activities do not themselves constitute infringement”, as long as the injunction is designed to “prevent infringement of a United States patent”[17]. For example, in Spindelfabrik Suessen-Schurr the court prohibited the infringer from making machines “for use in the United States” and “destined for delivery 362to the United States”[18]. The injunction’s territorial scope included Germany, while the underlying claim was based solely on acts committed in the United States. The appellate court upheld the injunction, calling its provisions “a reasonable and permissible endeavor to prevent infringement in the United States and not a prohibited extra-territorial application of American patent law”[19].

In some cases, courts may impose foreign labelling requirements to keep infringing products out of a jurisdiction[20] and injunctions in trade secrets cases may require secrecy to be maintained without regard to any territorial limits because “[g]eographic limitations on the scope of injunctive relief in trade secret cases are ordinarily inappropriate”[21]. Mareva injunctions also target a party’s conduct outside the jurisdiction of an IP claim because they are issued to prevent defendants from transferring their assets abroad[22].

The examples in the previous paragraphs are well-established scenarios of territorial discrepancy in IP cases. The following scenarios are the more problematic examples of territorial discrepancy that have arisen in IP cases; the examples are the remedies that courts have awarded based on the predicate act doctrine or the diversion-of-sales theory.

Under the predicate act doctrine as developed by US courts, a finding of an act of infringement in the United States (a predicate act) can lead to an award of remedies covering all related follow-up acts outside the United States. In Los Angeles News Service v. Reuters Television International Limited, the defendant made a videotape copy of the copyright-protected work in the United States and then transmitted the copy to its subscribers in Europe and Africa. The US Court of Appeals for the Ninth Circuit held that although “the Copyright Act does not apply extraterritorially, an exception may apply where an act of infringement is completed entirely within the United States and that such infringing act enabled further exploitation abroad”[23]. In a 363later decision, the court held that the copyright owner could recover the infringer’s profits from the infringer’s exploitation outside the United States of the US-made illegal copy[24].

The court in Los Angeles News Service v. Reuters Television International Limited found support for the predicate act doctrine in the constructive trust theory, which Judge Learned Hand explained in his 1939 decision in Sheldon v. Metro-Goldwyn Pictures Corp.[25]. In this earlier case, the defendants had reproduced a copyright-protected film in the United States and then the reproductions were used to show the film abroad. The judge explained that the copyright owners “acquired an equitable interest in [the reproductions of the film] as soon as they were made, which attached to any profits from their exploitation, whether in the form of money remitted to the United States, or of increase in the value of shares of foreign companies held by the defendants”[26]. The defendants held the profits in trust for the copyright owners, who could recover them even when the profits accrued abroad. Related to the issue of the territorial discrepancy, the judge stated that the court “need not decide whether the law of those countries where the negatives were exploited recognized the plaintiffs’ equitable interest”[27].

A similar scenario has arisen under US patent law, which makes it illegal to supply components from the United States that will be assembled abroad into a product that would infringe a US patent if the product were made in the United States[28]. In WesternGeco LLC v. ION Geophysical Corp., the parties disputed whether the patent owner could recover lost profits emanating from the sales of the product made outside the United States[29]. The US Supreme Court applied its then-new two-step framework to determine the territorial scope of US statutes and held that the US Patent Act allows the patent owner to recover lost foreign profits. The court held that because the focus of the infringement provision was on the domestic infringement (on the supply of components from the United States), and the damages provision is linked to the infringement provision, the award of the lost profits was “a domestic application” of the damages provision[30]. From the perspective of US law under this US Supreme Court interpretation of the law, no territorial discrepancy arises in this scenario because the infringement provision, when combined with the remedies provision, covers the results of the infringing 364conduct outside the United States. But this perspective might not necessarily be shared by courts in other countries.

A second problematic example of a territorial discrepancy in IP cases involves the diversion-of-sales theory, under which a recovery should include all of the infringer’s sales that have affected the IP rights owner, including any infringer’s sales abroad. The notion is that the effects of the foreign conduct are felt by the IP rights owner in the United States, where the IP rights owner suffers monetary injury. In Hetronic Int’l Inc. v. Hetronic Germany GmbH, the US Court of Appeals for the Tenth Circuit affirmed the use of the theory, stating that “[w]hen diverted sales that would have otherwise flowed to a US company instead inure to a foreign defendant, the loss to US commerce is clear”[31].

Whether the diversion-of-sales theory under US law may capture foreign sales is questionable. In June 2023, the US Supreme Court vacated the Tenth Circuit Court’s decision in Hetronic and remanded the case after the Supreme Court held that the infringement provisions at issue –the registered trademark and unregistered mark infringement provisions of the US trademark law– do not apply extraterritorially[32]. While this Supreme Court holding affects the outcome of the Hetronic case, in which the foreign defendants’ US activities were limited, it is yet to be determined whether the diversion-of-sales theory may be applied to foreign sales in other cases in which defendants act in and from the United States, including in cases in which the localization of the acts is arguably ambiguous, such as in cases of remote acts on the internet[33].

Territorial Discrepancy Problems

In whatever scenarios a territorial discrepancy between claims and remedies arises, it can cause significant problems. As was discussed earlier, many remedies have effects that extend beyond the scope of the claims raised in the underlying cases, including significant reputational effects. But more problematic are instances in which the discrepancy leads to a de facto exportation of a country’s IP laws and an expansion of IP rights to other countries with different IP laws, even laws that are only slightly different, or where the IP rights, particularly registered IP rights, might not even exist[34]. Understandably, countries, especially those with different laws, 365may perceive this exportation as impinging on their sovereignty. The potential effects of the exportation concern not only IP rights, but also human and other fundamental rights with which IP rights are typically calibrated in national legal orders. Conflicting remedies –remedies granted by different courts that contradict or overlap– can create complications for the parties and the courts. For example, an award of foreign profits may conflict with an award of the same profits in a foreign country.

No national legislation or international treaty presently addresses the problem of territorial discrepancy generally, or in IP cases specifically. National lawmakers typically leave the territorial design of remedies up to the courts[35] and national rules of international jurisdiction are not subject to any large-scale international treaty. The Hague Convention on the Recognition and Enforcement of Foreign Judgments has not addressed specifically the problem of territorial discrepancy and it also left most IP cases outside of its scope. Proposals for principles to govern transnational IP cases discuss extraterritorial remedies only to a limited extent; the proposals suggest that in cases in which courts could issue extraterritorial injunctions, an addressee has an opportunity to request that the issuing court excludes from the scope of its injunction the countries for which the addressee proves that the injunction should not apply[36]. The proposals remain non-binding.

Countries have limited means for fighting the territorial discrepancy that affects their jurisdiction. Some pushback is possible in individual cases if the prevailing party seeks recognition and enforcement of a judgment; courts can deny the recognition and enforcement of a foreign judgment, for example, on the ground that the foreign judgment is repugnant to a significant public policy of the forum[37]. This result occurred in Equustek Solutions Inc. v. Google Inc., mentioned above, where a US court declared a Canadian judgment unenforceable in the United States[38].

Countries may attempt to intervene as amici curiae to highlight a potential discrepancy and influence a court’s decision in a particular case. When Hetronic reached the US Supreme Court, the European Commission filed an amicus brief on behalf 366of the European Union[39]. In the brief, the Commission pointed out that in the case, “both parties actually invoked the European and German systems and courts” and that “Union law and the corresponding German law provide ample tools to address trademark infringement in Germany without allowing United States courts to intervene or apply United States law”[40]. As is apparent from its opinion, the Court considered the Commission’s arguments.

Countries can seek to address the territorial discrepancy problem at an international forum, such as the World Trade Organization, if the discrepancy violates an international treaty. In February 2022, the European Union initiated the WTO dispute resolution process by requesting consultations with China regarding the enforcement of IP rights, specifically regarding the Chinese courts’ handling of SEP FRAND cases[41]. Canada, the United States, and Japan asked to join the consultations in the EU WTO case against China[42]; in December 2022, the European Union requested that a panel be established to decide the case, and in July 2023, China and the European Union agreed on arbitration procedures for the case[43]. The request for consultations targets primarily the practice of issuing anti-suit injunctions that prohibit parties from pursuing their rights outside of China[44]; the European Union alleges that the practice results in China’s violating Articles 1.1 (in conjunction with Article 28.1 and 28.2) and 44.1 of the TRIPS Agreement because the practice prevents patent owners from exercising their rights and seeking remedies for the violation of their rights in other countries.

While it is questionable whether a common procedural tool, such as an anti-suit injunction[45], may be generally prohibited through interpretation of the TRIPS Agreement, it is conceivable that in some instances a territorial discrepancy[46] could raise 367significant concerns about the discrepancy’s broader impact as a “barrier to legitimate trade”[47].

Conclusion

There are three possible approaches to addressing a territorial discrepancy between IP claims and remedies. Under the first approach, courts would adjust the scope of remedies to meet the scope of an underlying claim, and only issue remedies to the territorial extent of a claim; if a party proposes that the territorial extent of remedies be larger than that of a claim, the party must raise its claims under the laws of all countries covered by the requested remedies[48]. Although this approach seems straightforward, it creates several problems, the most important of which is that it inhibits courts from issuing remedies that might be necessary to effectively protect IP rights –and vindicate the infringements of the IP rights to protect the rights against future infringements. In some cases, extraterritorial reach might be necessary to achieve the legitimate goals of effective protection of IP rights under the law applied.

The second approach calls for courts to adjust the scope of claims according to the scope of the associated remedies. As it is for the first approach, one problem is that of perspective; one country may view certain claims as sufficient to warrant certain remedies (e.g., because a country’s courts interpret the law of a claim as covering the remedies), but another country may interpret the same claims as insufficient for the remedies that were awarded in the first country in the case. A benefit of this second approach, as it is for the first approach, could be that courts would be cognizant of and explicit about the potential territorial discrepancy and could address territorial discrepancy concerns in their judgments. Judgments could more clearly delineate the territorial scope of remedies, which would be a welcome improvement.

The third approach, and perhaps the best approach, might be to address discrepancy problems on a case-by-case basis and reflect on the particular circumstances of a case and the particular remedies sought in the case. Many factors will affect whether a territorial discrepancy is justified; a significant reason for omitting the territorial discrepancy issue from national laws and international treaties is the 368multiplicity of the factors. An individualized approach seems to be the best option for addressing the territorial discrepancy and problems that stem from the discrepancy. And improvements in geolocation and geoblocking technologies will be useful in eliminating or limiting territorial discrepancy problems on the internet.

[*] This contribution is based on an earlier article by the author· Marketa Trimble, The Territorial Discrepancy Between Intellectual Property Rights Infringement Claims and Remedies, 23 Lewis & Clark L. Rev 2019. 501.

[1] The same principle applies at the regional level to regional unitary rights created by regional law, such as the EU trademark and EU design created by EU regulations.

[2] Paris Convention for the Protection of Industrial Property, 1883· Berne Convention for the Protection of Literary and Artistic Works, 1886.

[3] Madrid Agreement Concerning the International Registration of Marks, 1891.

[4] Patent Cooperation Treaty, 1970.

[5] The limitations also constrain other parties that may enforce IP rights.

[6] See, for example, differences in the national rules on initial ownership of copyrights and patents to works and inventions created by employees in the scope of their employment; e.g., Law of the People’s Republic of China on the Laws Applicable to Foreign-Related Civil Relations, Article 48· Civil Code of Portugal, Article 48· Toshiko Takenaka, Inventorship Standards for Biotechnology Inventions Under the US and Japanese Patent Acts, 52 IIC 2021. 556· Lukas Gotthardt, Inventorship Standards, Joint Inventorship and Procedures in Inventorship Disputes in US Patent Law and German Patent Law, 72(2) GRUR Int’l 2023. 109.

[7] Courts typically refuse to adjudicate foreign patent validity and sometimes extend this rule to patent infringement cases. See Voda v. Cordis Corp., 476 F.3d 887, 892, 897 (Fed. Cir. 2007). In some cases, courts have been willing to adjudicate infringements of foreign patents when the parties have stipulated to the validity of the patents or agreed not to raise the issue of validity in the infringement proceeding. See Actavis UK Limited v. Eli Lilly & Co., [2014] EWHC 1511 (Pat)· Fairchild Semiconductor Corp. v. Third Dimension (3D) Semiconductor Inc., 589 F. Supp. 2d 84, 86, 99 (D. Me. 2008). In some countries, courts have held foreign copyright infringements to be justiciable. See London Film Productions Ltd. v. Intercontinental Communications Inc., 580 F. Supp. 47 (SDNY 1984)· Lucasfilm Ltd. v. Ainsworth, [2011] UKSC 39, [2011] 1 AC 208.

[8] See, e.g., Shevill v. Presse Alliance SA, ECJ, C-68/93, 1995.

[9] Transocean Offshore Deepwater Drilling Inc. v. Maersk Contractors USA Inc., 617 F.3d 1296 (Fed. Cir. 2010).

[10] E.g., KSM Fastening Sys. Inc. v. H.A. Jones Co. Inc., 776 F.2d 1522, 1526 (Fed. Cir. 1985)· see also Abbott Labs. v. Torpharm Inc., 503 F.3d 1372, 1382 (Fed. Cir. 2007).

[11] 3M Co. v. Asia Sun (Taiwan) Inc., No. 2:04-cv-00417-TJW, slip op. at 3 (E.D. Tex. Jun. 17, 2005)· O2 Micro Int’l v. Beyond Innovation, No. 2:04–CV–32–CE, 2009 WL 2047617 (E.D. Tex. Jul. 10, 2009).

[12] Unwired Planet Intl. Ltd. v. Huawei Techn. (UK) Co. Ltd., [2020] UKSC 37· OPPO v. Sharp Corp., (2020) Zui Gao Fa Zhi Min Xia Zhong No. 517 (Intellectual Property Court of the Supreme People’s Court of China).

[13] Andrea Zwart-Hink et al., Compelled Apologies as a Legal Remedy: Some Thoughts from a Civil Law Jurisdiction, 38 U. W. AUSTL. L. REV 2014. 100, 122.

[14] E.g., Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, Article 15.

[15] Google Inc. v. Equustek Solutions Inc., [2017] 1 S.C.R. 824 (Can.)· Equustek Solutions Inc. v. Jack, [2018] 10 W.W.R. 715 (Can.).

[16] It is very likely that no party could litigate under the laws of all countries connected to the internet. One possibility that would create that effect would be if a court applied a single country’s law for infringements everywhere. This approach is sometimes referred to as the “emission principle”. See Council Directive 93/83/EEC of 27 September 1993 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission, Article 1(2)(b).

In some countries, parties may choose to have a single country’s law apply to infringement in another country or countries. In such cases, the law is deemed to be the applicable law for all the countries, meaning that the claims are deemed to be raised under the laws of all the countries. In countries where parties must raise, plead, and/or prove foreign law, the choice of a single country’s law, applied everywhere, may be tacit when a party does not raise, plead, and/or prove foreign law and the other party does not object, or where parties agree that the foreign law is identical to the forum law and therefore the forum law applies, e.g., Petition for a Writ of Certiorari, World Programming Inc., 874 F.3d 370 (No. 17-1459) at *9 {“[T]he parties agreed that there was no difference between [the laws of the state of North Carolina and the United States] and English law” (internal quotations omitted)}.

[17] Johns Hopkins University v. CellPro Inc., 152 F.3d 1342, 1366-1367 (Fed. Cir. 1998).

[18] Spindelfabrik Suessen-Schurr v. Schubert & Salzer Maschinenfabrik Aktiengesellschaft, 903 F.2d 1568 (Fed. Cir. 1990).

[19] Id. at 1578. See, also, Fun-Damental Too Ltd. v. Gemmy Indus. Corp., 111 F.3d 993, 997 (2d Cir. 1997).

[20] E.g., O2 Micro Int’l v. Beyond Innovation Tech. Co., No. 2:04-cv-00032-TJW, 2009 WL2047617, at *1 (E.D. Tex Jul. 10, 2009)· Asetek Danmark v. CMI USA Inc., No. 13-cv-00457-JST, 2016 WL 31674 (N.D. Ca. Jan. 4, 2016).

[21] RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 44 cmt. d (AM. LAW INST. 1995). For examples of trade secret cases in which a territorial limitation on an injunction was found to be justified, see Nordson Corp. v. Plasschaert, 674 F.2d 1371, 1377 (11th Cir. 1982)· Autopartsource LLC v. Bruton, No. 3:13cv54-HEH, 2013 WL 3766524 (E.D. Va. Jul. 16, 2013).

[22] Nippon Yusen Kaisha v. Karageorgis [1975] 3 All ER 282· Mareva Compania Naviera SA v. Int’l Bulkcarriers SA [1980] 1 All ER 213.

[23] LA News Serv. v. Reuters Television Intern. (USA) Ltd. (Reuters IV), 340 F.3d 926, 928 (9th Cir. 2003) [summarizing LA News Serv. v. Reuters Television Int’l Ltd. (Reuters III), 149 F.3d 987, 991-992 (9th Cir. 1998)].

[24] LA News Serv. v. Reuters Television Intern. (USA) Ltd. (Reuters IV), 340 F.3d 926, 931-932 (9th Cir. 2003).

[25] Sheldon v. Metro-Goldwyn Pictures Corp., 106 F.2d 45 (2d Cir. 1939), aff’d, 309 US 390 (1940).

[26] Id., 52.

[27] Id.

[28] US Patent Act, 35 USC 271(f).

[29] WesternGeco LLC v. ION Geophysical Corp., 1378 S. Ct. 2129 (2018).

[30] Id., 2138.

[31] Hetronic Int’l Inc. v. Hetronic Germany GmbH, 10 F.4th 1016, 1045 (10th Cir. 2021), vacated and remanded sub nom. Abitron Austria GmbH v. Hetronic Int’l Inc., No. 21-1043, 2023 WL 4239255 (US June 29, 2023).

[32] Abitron Austria GmbH v. Hetronic Int’l Inc., No. 21-1043, 2023 WL 4239255 (US June 29, 2023).

[33] On the ambiguity of localization, particularly in IP cases, see Marketa Trimble, The Territorial Discrepancy Between Intellectual Property Rights Infringement Claims and Remedies, 23 Lewis & Clark L. Rev 2019. 501, 507-511.

[34] Instances exist in which such exportation will not be problematic, for example if the same owners own corresponding rights in the other countries.

[35] In the United States, the territorial scope of IP laws has been legislated, for example, in the US Patent Act in 35 USC § 271(a), (c), (f), and (g). Nevertheless, localization of infringing acts may complicate the application of the provisions within their territorial scope.

[36] AM. LAW INST., INTELLECTUAL PROPERTY: PRINCIPLES GOVERNING JURISDICTION,

CHOICE OF LAW, AND JUDGMENTS IN TRANSNATIONAL DISPUTES (2008), at § 321· CONFLICT OF LAWS IN INTELLECTUAL PROPERTY: THE CLIP PRINCIPLES AND COMMENTARY (2013), at 3:603.C03.

[37] See, e.g., Sarl Louis Feraud Int’l v. Viewfinder Inc., 489 F.3d 474 (2d Cir. 2007). It depends on the private international law rules of the country where recognition and enforcement are sought whether the application of an incorrect substantive law in an original proceeding is, on its own, a ground for non-recognition and non-enforcement.

[38] Google LLC v. Equustek Solutions Inc., No. 5:17-cv-04207-EJD, 2017 WL500834 (N.D. Cal. Nov. 2, 2017). See, also, Sarl Louis Feraud Int’l S.A. v. Viewfinder Inc., 489 F.3d 474 (2d Cir. 2007).

[39] Abitron Austria GmbH v. Hetronic Int’l Inc., No. 21-1043, Brief of Amicus Curiae European Commission on Behalf of the European Union in Support of Neither Party, 27 December 2022.

[40] Id., 6.

[41] China – Enforcement of Intellectual Property Rights, Request for Consultations by the European Union, WT/DS611/1, 22 February 2022.

[42] WT/DS611/2, WT/DS611/3, and WT/DS611/4, 8 March 2022.

[43] WT/DS611/5, 9 December 2022, and WT/DS611/7, 7 July 2023.

[44] The other two parts of the request for consultations concern allegations regarding China’s failure to comply with the TRIPS Agreement’s obligations to publish and provide information about certain judicial decisions. China – Enforcement of Intellectual Property Rights, Request for Consultations by the European Union, WT/DS611/1, 22 February 2022, 6-8.

[45] On antisuit injunctions in general, see Olusoji Elias, Judicial Remedies in the Conflict of Laws (2001), 140-141.

[46] It is notable that antisuit injunctions do not necessarily present a territorial discrepancy. Under US law at least, a court will not issue an antisuit injunction when the territorial scope of the claims in the forum and abroad is different. Under US law, an antisuit injunction “is appropriate only in cases where the parties are the same, the issues are the same, and resolution of the US action will be dispositive of the action to be enjoined”· Microsoft Corp. v. Lindows.Com Inc., 319 F. Supp. 2d 1219, 1222 (W.D. Wash. 2004). See, also, Computer Assocs. Int’l Inc. v. Altai Inc., 126 F.3d 365 (2d Cir. 1997)· Stein Associates Inc. v. Heat and Control Inc., 748 F.2d 653 (Fed. Cir. 1984)· Zynga Inc. v. Vostu USA Inc., 816 F. Supp. 2d 824 (N.D. Cal. 2011).

[47] TRIPS, Article 41.1.

[48] See supra note 17 on the possibility of applying a single national law to multi-jurisdictional infringements.