Beyond the UDRP: Global Intellectual Property Law Enforcement and Jurisdiction

by Judith Oppenheimer

We read weekly of new battles won and lost between domain name holders and trademark (intellectual property) owners, played out on the ICANN UDRP stage.

But beyond the sights of most domain name holders there's broader movement afoot that should be monitored, if not lobbied directly.

The National Intellectual Property Law Enforcement Coordination Council is seeking public comment on issues associated with the Council's mission: ''to coordinate domestic and international intellectual property law enforcement among federal and foreign entities.'' Co-chairing the Council, the U.S. Department of Justice and the U.S. Patent and Trademark Office.

On September 29, 1999, President Clinton signed into law the Treasury/Postal Appropriations Bill, Public Law No. 106-58, Section 653, which created the ''National Intellectual Property Law Enforcement Coordination Council''. The Council is required to ''report annually on its coordination activities'' to the President and to the Appropriations and Judiciary Committees of the House and Senate.

The statutorily designated Council Members are:

[All people no doubt, terribly well informed about and interested in the rights of domain name holders.]

The full Council and their staffs have met on several occasions, and are now asking intellectual property rights owners (and other interested parties) their opinions on the following:

  1. What, if any, domestic policy-level law enforcement issues should the Council address?
  2. What, if any, international policy-level law enforcement issues should the Council address? Council-Industry Cooperation
  3. In what ways can the Council assist the intellectual property industries in creating domestic and international environments conducive to enforcement of intellectual property rights?
  4. In what ways can the Council enhance the enforcement of intellectual property rights while facilitating legitimate trade?
  5. Are there gaps or impediments in existing law enforcement regimes that, if remedied, would enable rights-holders to better protect their intellectual property rights?
  6. In what ways can the intellectual property industries contribute to or assist the Council in carrying out its mission of coordinating domestic and international intellectual property law enforcement- related activities?
  7. In what ways can the Council assist U.S. Government interaction with its foreign counterparts on intellectual property law enforcement- related activities?

The Trademark Lobby bulldozed the UDRP into existence, complaining that trademark law wasn't enough. It bulldozed the U.S. Anti-Cybersquatting Act into existence, saying the UDRP pointed the way, but wasn't enough.

One can only imagine what 'gaps' and 'impediments' in existing law enforcement regimes theyll conjure up, to 'enable rights-holders to better protect their intellectual property rights.'

Comments are due a mere three days from now, June 20th. (See below for instructions.)*

On a related perhaps even more ominous front, a proposed Hague Convention on Jurisdiction would include provisions regarding business-to-consumer transactions in cyberspace, including rules for collecting private judgments across borders, and it will apply to nearly all private litigation, including trademark.

This forum is noticeable in its absence - although commenced in 1996, there has been no U.S. press coverage despite its obvious significance.

Within the Convention is a proposal by the Hague Secretariat to provide an exception from domestic laws on privacy or consumer protection when firms abide by industry self regulation schemes. The US has also voted against language in Article 7 that would permit consumers to always sue in their country of residence, in favor of the business proposal that you could be forced to waive that right as a condition of doing business.**

James Love of the Consumer Project on Technology notes in a March 1, 2000 memo on the subject (http://www.cptech.org/ecom/hague-march-2000.html),

"Taken together, the opposition by the US and others to the October 1999 draft Article 7 language, and the proposals to create "self regulation" mechanisms that would exempt sellers from national laws in the country where the consumers reside, raise the possibility that the Hague Convention will be used to privatize parts of our legal system and shift control of public policy from democratically elected governments to powerful industry trade groups."

This bears repeating.

There is the possibility that the Hague Convention will be used to privatize parts of our legal system and shift control of public policy from democratically elected governments to powerful industry trade groups.

We see phenomenon already in place in Internet regulatory body ICANN. And we know it isnt pretty.

Let's hope its not to late to turn it around.

*All comments are due by June 20. Persons wishing to offer written comments should address those comments to Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Box 4, Washington, D.C. 20231, marked to the attention of Elizabeth Shaw. Comments may also be submitted by facsimile transmission to (703) 305-8885, or by electronic mail through the Internet to elizabeth.shaw@uspto.gov. All comments will be maintained for public inspection in Room 902, Crystal Park II, 2121 Crystal Drive, Arlington, Virginia.

Written comments should include the name, affiliation, and title of the individual providing the written comments; and, if applicable, an indication of whether the comments offered represent the views of the respondent's organization or are the respondent's personal views.

Parties offering written comments should also provide their comments in machine-readable (electronic) format. Such submissions may be provided via Internet electronic mail or on a 3.5" floppy disk formatted for use in either a Macintosh or MS-DOS based computer. Machine-readable (electronic) submissions should be provided as unformatted text (e.g., ASCII or plain text) or as formatted text in one of the following formats: Microsoft Word (Macintosh, DOS, or Windows versions); or WordPerfect (Macintosh, DOS, or Windows versions).

Information that is provided pursuant to this notice will be made part of a public record and may be made available via the Internet. Therefore, parties should not submit information that they do not wish to be publicly disclosed or made electronically accessible. Parties who rely on confidential information to illustrate a point are requested to summarize, or otherwise submit the information in a way that will permit its public disclosure.

** U.S. contact is Jeffrey Kovar, Assistant Legal Adviser for Private International Law, US Department of State in Washington, D.C., (202) 776-8342.)

Follow these links for more details and background information.

http://www.cptech.org/ecom/hague-march-2000.html
http://www.hcch.net/e/events/press01e.html
http://cuiwww.unige.ch/~billard/ipilec/
http://www.hcch.net/e/members/members.html
http://www.state.gov/www/global/legal_affairs/whats_new.html
http://www.state.gov/www/global/legal_affairs/991030_forjudg.html

June 20, 2000

Judith Oppenheimer is President of ICB Inc., purveyor of accurate 800 & Dot Com News, Intelligence, Analysis, Consulting. http://ICBTollFree.com, http://1800TheExpert.com Copyright (c) 2000 ICB, Inc. All rights reserved.