20 Relationship between the Law Applicable toInfringements of Intellectual Property Rights and the Law
Applicable to Torts（*）
Research Fellow: Yusuke Tanemura
When an infringement of an intellectual property right is characterized as a tort, it shall be governed by thelaw applicable to torts. The Act on General Rules for Application of Laws of Japan determines the law applicableto torts flexibly, though characterization of legal relationships and flexible connecting factor. Thus, what should
we take into consideration when applying such a rule on the choice of the law in tort under said Act? In
particular, how should we deal with this issue in relation to the principle of territoriality, which is said to be
dominant over intellectual property rights in general, as well as the influence of this principle on the rule ofconflict of laws? From this standpoint, this study examines how the flexible choice of the law applicable to torts
changes the treatment of infringements of intellectual property rights, while focusing on the developments inarguments in common law countries, especially in England.

I

Introduction

to non-contractual obligations (Rome II), which
was adopted in July 2007 and came into effect as ofJanuary 11, 2009, the 1995 Act does not apply
within the coverage of Rome II Regulation(Articles 15A and 15B of the 1995 Act). Rome II
Regulation contains another rule on the choice of
law in tort that is different from the traditional
English rule, thus in England, a problem arises
concerning how one should think about the law
applicable to infringements of intellectual property
rights in light of the developments of the rule on
the choice of law in tort in these three forms. In
particular, due to the abovementioned influence ofthe territoriality of intellectual property rights onconflict of laws, to some extent special
consideration is required on the occasion ofchoosing the applicable law in England. Section III
discusses how such a point of view functions under
the respective rules as the main issue.
Section IV briefly contemplates, presupposing
the aforementioned basic point of view in England,
what would happen in the case of infringements ofintellectual property rights occurring via theInternet, and what can be done to respond to sucha case, including some suggestions for the situationin Japan. Section V concludes this study report,
presenting the challenges that remain to be tackled
in the future.

This study report is structured as follows.
Section II discusses the philosophical framework
which apparently serves as the background for theinternational intellectual property law of England.
Specifically, it examines what is meant bycommentators when they say that the territorialityof intellectual property rights has an influence on
conflict of laws in England, focusing on the status
of intellectual property rights which provides thebasis for their view, the exercise of jurisdiction bycourts, and the significance of such a view in thecontext of choice of the applicable law.
Following this, Section III reviews how
infringements of intellectual property rights havebeen dealt with under the English rule on the
choice of law in tort. In England, what is called the"double actionability rule" has long been adominant rule on the choice of law in tort. This
rule is one of the models of the Japanese rule
stipulated in Article 11, paragraphs (2) and (3) ofthe Act on General Rules for Application of Laws.
Except for some provisions, the double
actionability rule was abolished by the Private
International Law (Miscellaneous Provisions) Act
1995 (the 1995 Act), which now provides for adifferent rule. Hence, the 1995 Act is the rule on
the choice of law in tort that is currently in effectin England. However, as the United Kingdom
participates in the Regulation on the law applicable(*) This is an English translation of the summary of the report published under the Industrial Property Research
Promotion Project FY2011 entrusted by the Japan Patent Office. IIP is entirely responsible for any errors in expression
or description of the translation. When any ambiguity is found in the English translation, the original Japanese text shallbe prevailing.

IIP Bulletin 2012 Vol.21●

1 ●a claim for infringement of copyright of the present
kind, the claim is one over which the English court
has jurisdiction, provided that there is a basis for inpersonam jurisdiction over the defendant, or, to put
it differently, the claim is justiciable." 7 Thus,
English courts have been relaxing their restrictive
attitude gradually through the exercise of theirpersonal jurisdiction.
Although it may no longer be possible to findany contemporary meaning in drawing the local
actions rule from the conception of intellectual
property rights as the products of personal statutes
and discussing the limitation to jurisdiction ofEnglish courts in actions relating to infringementsof foreign intellectual property rights based on thisrule, the proposition raised in the beginning of thisreport—intellectual property rights are closely
connected with statutes—still survives. In thecontext of conflict of laws, this means that evenwhen an international action relating to an
infringement of an intellectual property right isfiled with a court in England and it is under thejurisdiction of an English court, the applicable law
to be designated by an English court according to
its own choice-of-law rule is an English or foreign
statute. As England is a common law country, themeaning of statutes in that country may bedifferent from the meaning in Japan as a naturalconsequence, and presumably this could be thebasis for the difference in terms of the views
concerning the choice of the applicable law, which
is discussed later. In this research, while reviewing
the arguments concerning the international judicial
jurisdiction and the applicable law relating to
infringements of intellectual property rights in
England and Australia, I think that it is necessary
to take into account what influence the nature ofintellectual property rights, which are thus
connected with statutes, would have on conflict oflaws. This point seems to be reflected most vividly
in the stance of regarding intellectual property law
as self-limiting substantive law on the occasion ofchoosing the applicable law. Such an understanding
is deep-rooted in England even after thedevelopments of the rule on the choice of law intort, and it may be one of the reasons for the strict
interpretation of the territoriality of intellectual
property rights in England.

Ⅱ Background:
InfluenceofTerritorialityofIntellectual
Property Rights on Conflict ofLaws
1

Significance of the fact that the law to be
designated as the applicable law should
be a statute

Under the English rule of conflict of laws,
intellectual property rights appear to be regarded
as being closely connected with statutes.
Accordingly, it seems that the idea that intellectual
property rights are inseparable with the scope of
application of the relevant statutes is prevailing inthis country.
Robinson v Bland in 1960 1 is a caseconcerning the law applicable to a contract that was
irrelevanttointellectual
propertyright
infringement. In this case, Lord Mansfield
differentiated local statutes and personal statutes
and stated that "local ones regard such things as
are really upon the spot in England."2 Supposingthat intellectual property rights are regarded as the
products of personal statutes, there may be someroom to take this as a foothold and consider actions
relating to intellectual property rights to be local
actions that must be commenced at a specific place,as opposed to transitory actions that may becommenced at any place.3 Taking advantage of thisclassical local actions rule, in Tyburn Productions
Ltd v Conan Doyle,4 the Chancery Division of theHigh Court clearly declared the limitation to thejurisdiction of English courts in actions relating to
infringements of foreign intellectual property
rights. However, as will soon be explained below,
one should say that the local actions rule is now
groundless and the theory of limitation tojurisdiction is in fact grounded on the exercise ofsovereign power. The limitation to jurisdiction
based on this sovereign theory is still deep-rooted
in common law countries, but one can say that it
has been overcome in a theoretical sense. Today,
the restrictive attitude of English courts in actions
relating to infringements of foreign intellectual
property rights should be accounted for from theperspective of effectiveness.5 In connection with
this, when revoking the Tyburn judgment inLucasfilm Limited and others v Ainsworth andanother,6 on July 27, 2011, the Supreme Court of
the United Kingdom held that, " …… in the case of

2

Actions relating to infringements offoreign intellectual property rights,
categorized as local actions

Among the effects in conflict of laws whicharise from the very fact that intellectual property●

2 ●IIP Bulletin 2012 Vol.21

rights are statutory rights, this section firstexamines the one that denies jurisdiction ofEnglish courts on the grounds that actions relating
to infringements of foreign intellectual property
rights are local actions.
As mentioned above, the restrictive attitude ofEnglish courts toward exercising jurisdiction inactions relating to infringements of foreign
intellectual property rights started from Tyburn
Productions Ltd v Conan Doyle,8 decided in 1990
by the Chancery Division of the High Court.
This case can be outlined as an action relating
to an infringement in the United States of a
copyright registered in the United States, which
was brought to a court in England.
Vinelott J. of the Chancery Division of theHigh Court held that such claim of a copyright
infringement cannot be accepted. He consideredthat the concept that is the basis for the ruleestablished in 1893 by the decision of the House ofLords9—the distinction between local actions andtransitory actions—, generally called theMozambique rule, would apply not only to actions
relating to land but also actions relating to validity
or infringements of intellectual property rights
including copyrights.10
The precedent case that Vinelott J. relied onwhen he categorized actions relating to
infringements of foreign copyrights as local actions
was Potter v Broken Hill,11 decided in 1906 by theHigh Court of Australia.
In this case, the plaintiff sought relief for an
infringement in the State of New South Wales ofhis patent right registered in the State of New
South Wales, by filing an action with a court in theState of Victoria.12
The High Court of Australia determined thatthe court does not have jurisdiction over the causeof action of this case. Griffith C.J. stated that
although patent rights are incorporeal personal
property, they share some features in common with
the immovables.13
In response to the question about themechanism of establishment of patent rights
having such a nature, Griffith C.J. answered thatthey are established through the exercise of thesovereign power by the State. 14 While citing
Underhill v Hernandez,15 the judgment of the U.S.
Supreme Court in 1897 which stated that "Everysovereign State is bound to respect theindependence of every other sovereign State, andthe Courts of one country will not sit in judgmenton the acts of the government of another done
within its own territory," he questioned whether
the exercise of the sovereign power, involved in

IIP Bulletin 2012 Vol.21

the grant of monopolies, is within the scope of thislegal theory,16 and gave an affirmative answer tothis question.17 Accordingly, he concluded that thedefendant was deemed to be challenging thevalidity of an act that is related to the sovereigntyof the State of New South Wales and such issue canbe addressed by no court except an appropriate
court of that state.18
The analysis of the High Court judgment on
the Potter Case suggests that it is only as a matterof convenience that the limitation to jurisdiction ofa court of one country in an action relating to an
infringement of a patent right granted by anothercountry (or more strictly, another state) has beendrawn from the reference to the Mozambique rule,and in reality, such limitation to jurisdiction of acourt is drawn based on the comprehension thatthe grant of patents is an act that has someconnection with the sovereign power.19
3Intellectual property law as self-limiting
internal rule

Next, I present views arguing that the notionthat "intellectual property rights are closely
connected with statutes" brings about some
limitation on the occasion of choosing theapplicable law.
This point is emphasized by Kurt Lipstein andRichard Fentiman, although there seems to besome difference between their understandings ofthis notion, as explained later.
Lipstein states, "Private International Law canprotect persons or property connected with thecountry of the forum or another country by
applying the lex fori or the law of another country
since these laws can be attached to the person or
object or change as a result of a physicaldeplacement."20 Then he continues, "However, thefloating incorporeal character of intellectual
property rights, which are without exception thecreation of statute, makes it impossible to attach
them to anything other than the statute to which
they owe their origin. At the same time theexclusive nature of intellectual property legislationprecludes the coexistence in the same country of
more than one system of such rights."21 How did
Lipstein arrive at such conclusion? His process of
thinking was as follows. "It is true that intellectual
property rights other than copyright require
scrutiny and confirmation of what is in effect alimited property right. It is a statutory creation of aright of a proprietary character which is spiritualand not directly economic. As such it is dependent
on the law which created it, not unlike corporate●

3 ●status, but unlike corporate status it is confined to
the geographical reach of the statute which createdit."2223 Here, while citing Article 60(1) of the 1977
Patents Act and Article 16(1) of the 1988 CopyrightAct, he states that in reality, similar rights can becreated independently in any other countries under
the laws of the respective countries orinternational agreements, so "the need arises tocurtail the effects of the concession of intellectual
property rights if a clash of identical intellectual
property laws is to be avoided."24 He also states,"Hence the strictly territorial and exclusive
substantial sphere of their operation which cuts
down the application of intellectual property
legislation to controversies in the country the law
or legislation of which created the rights inquestion
coupledwith
its
substantive
25
inapplicability elsewhere," and in other words,"This legislative self-restraint attributes tointellectual property law, and therefore tointellectual property rights, a territorial sphere ofoperation incapable of extending or of being appliedelsewhere." 26 Thus, by taking into consideration
the territoriality that is inherent in intellectual
property rights, Lipstein concluded that a court ofone country is unable to apply the intellectual
property law of another country.2728
Fentiman's argument is similar to the above.
According to Fentiman's view, completely ignoring
the territoriality of intellectual property rights,
which are national rights, would lead to rendering
applicable a law that is actually not applicable,
thereby misunderstanding the process of choice oflaw.29Lipstein's and Fentiman's views shown above
are consistent with each other in that they bothregard intellectual property law as a sort ofself-limiting internal rule and argue that the
territorial scope of its application should be taken
into consideration in the process of choice of law.
However, while Fentiman suggests that dependingon the intention to apply a foreign law that isdesignated under private international law, it ispossible to apply such designated foreign law andgrant protection, 30 Lipstein seemingly considers
that for all situations, no foreign intellectual
property law can be effectively applied. Thisdifference may be derived from the fact that
Lipstein has developed his argument based on theassumption that the scope of effect of the rules ofeach country relating to an infringement of an
intellectual property right should be limited to an
infringement "in that country" of a right "created inthat country.31

4Classification of the types of infringements

Looking at the descriptions of the referenceson the international intellectual property law ofEngland while taking into account the above
discussions, one can see that it is common toclassify the situations where an infringement of an
intellectual property right becomes an issue,
depending on whether the allegedly infringed rightis a UK right or foreign right, and whether the
infringement occurred in England or abroad. Morespecifically, these situations can be classified into
the following four types: (i) where a UK right isinfringed in England; (ii) a UK right is infringed
abroad; (iii) a foreign right is infringed in England;and (iv) a foreign right is infringed in the relevant
foreign country. This approach of classifying thetypes of infringements by the country in which theright is originated or by the country where theinfringement occurred is not popular in Japan. It
may be one of the characteristics of the arguments
seen in England. Accordingly, in England, thesedifferent types of infringements lead to different
types of consideration. The reason for making suchclassification may be that the territorial scope of
application involved in intellectual property law istaken into account, as discussed earlier.

Ⅲ Relationship between the law
applicable to infringements ofintellectual property rights andthe law applicable to torts
1

Double actionability rule(1) What is the double actionability rule?
Traditionally, in England, there had not been
any special rule on the choice of law applicable toinfringements of intellectual property rights, which
therefore had been treated as a kind of tort.
As an English rule on the choice of law in tort,
the approach of applying the lex loci delicti (law of
the place of the tort) and the lex fori (law of theforum) in combination—generally called double
actionability rule32—had long been dominant. This
rule was established by Willes J. in 1870 in Phillips
v. Eyre.33 About a century later, the decision of theHouse of Lords in 1969 in Boys v. Chaplin 34
approved a flexible exception to this rule.
(2) Classification by type of infringement(i) Where a UK right is infringed in England
There is a precedent ruling that in cases
where a tort is committed in England, the double
actionability rule shall not apply to the tort, at least●

4 ●IIP Bulletin 2012 Vol.21

as a matter subject to English law.35

as some common law rules that consisted of
exceptions to the double actionability rule (Article
10).45 Instead, this Act provides that the generalrule is that the applicable law is the law of thecountry in which the events constituting the tort ordelict in question occur (Article 11), with exceptionthat if it appears, in all the circumstances, from acomparison of (a)the significance of the factors
which connect a tort or delict with the country
whose law would be the applicable law under thegeneral rule; and (b)the significance of any factors
connecting the tort or delict with another country,
that it is substantially more appropriate for theapplicable law for determining the issues arising in
the case, or any of those issues, to be the law ofthe other country, the general rule is displaced andthe applicable law for determining those issues orthat issue (as the case may be) is the law of that
other country (Article 12).
By type of infringement, the situations areclassified as follows.

(ii) Where a UK right is infringed abroad
It was thought that this situation partially fails
to meet the first limbof the double actionability
rule, i.e. an act done in a foreign country must be
actionable as a tort according to English law, that is
to say, an infringement done in a foreign country isinactionable as a tort in England.36 This situation
also fails to meet the second requirement of therule, i.e. an act done in a foreign country must be
actionable according to the law of the foreigncountry where it was done, because it was deemed
to be unlikely that the foreign country where theact was done would afford relief with regard to aright of another country (the United Kingdom).37(iii) Where a foreign right is infringed in England
Although English law is applicable under the
double actionability rule, a claim for relief should
be rejected because relief cannot be afforded withregard to a foreign right under English law.

(i)(iv) Where a foreign right is infringed in therelevant foreign country[1] As explained in (ii) above, an infringement
done abroad is inactionable under English law. Thiswas confirmed by the Outer House of the Court ofSession of Scotland in James Burrough Distillers plc
v Speymalt Whisky Distributors Ltd38 [2] As English
law affords no relief with regard to any foreign right,
the first requirement of the double actionability
rule was considered not to be met. 39 The view
mentioned in [1] was denied by a subsequent
judgment, 40 which was subject to anotherjudgment ruling that the former would be valid
only within the EU region.41
In Pearce v Ove Arup Partnership Ltd andOthers42 in 1999, which denied [1], the court took
another step forward and held that in the case of an
infringement of a foreign right in the relevant
foreign country, it is permissible to apply the law of
the foreign country in which the infringement
occurred and the right was originated, provided
that the defendant would be held liable for a tort
under English law as well.43
2

Private International Law (Miscellaneous
Provisions) Act 1995

The Private International Law (Miscellaneous
Provision) Act 199544 (hereinafter referred to as
the "1995 Act"), which is a UK statute, came into
effect as of May 1, 1996. The 1995 Act abolishedthe conventional double actionability rule as well

IIP Bulletin 2012 Vol.21●

Where a UK right is infringed in England
Article 9(6) of the 1995 Act clearly states thatthe rules in Part III of said Act apply in cases
where events that constitute torts occur in the
country of the forum, England.46(ii) Where a UK right is infringed abroad
Pursuant to Article 11 of the 1995 Act, the law of
the foreign country where the infringement occurred
shall apply. In practice, such infringement is notconsidered to be actionable under the foreign law.
Some point out the possibility that if a foreign
law applicable under Article 11 is to render a UK
right actionable, an England court would avoid theapplication of the foreign law by applying Article 12of the 1995 Act or invoking public policy, on the
grounds that the foreign law would negate theinternationally accepted view concerning theterritorial scope of application of intellectual
property rights by granting protection for a right ofanother country (the United Kingdom).47(iii) Where a foreign right is infringed in EnglandPursuant to Article 11 of the 1995 Act, the lawof England, the place where the infringement
occurred, shall apply. The infringement isinactionable because English law does not grant
protection for a foreign right.48 Some are proactive
about displacing the general rule in accordancewith Article 12 and applying the foreign law as "thelaw of the country which governs the intellectual
property right"49 in this situation, whereas othersargue that such foreign law is unlikely to render

5 ●actionable such infringement that occurred inEngland, so if the foreign law is to acknowledge
actionability, an English court should avoid theapplication of the foreign law by invoking public
policy, although this would not affect theconsequence.50(iv) Where a foreign right is infringed in therelevant foreign country
Pursuant to Article 11 of the 1995 Act, the lawof the foreign country, the place where theinfringement occurred, shall apply. Since theforeign law renders actionable such infringement of
the right of the relevant foreign country that
occurred in that country, in this situation it ispossible to obtain the same consequence as thatobtained through an exception to the double
actionability rule.
3

Regulation on the law applicable tonon-contractual obligations (Rome II)

Article 8(1) of Rome II Regulation adopts what
is called principle of the law of the protecting
country.51 Rome II Regulation exclusively applies
the law of the protecting country as the law
applicable to infringements of intellectual property
rights, and the application of any other law as an
exception to this is considered to be impermissible.
Rome II Regulation explicitly precludes freedom of
choice of the applicable law by the parties.

Ⅳ Contemplation
1

Response to multi-State infringements
and ubiquitous infringements, andconsideration of the territorial scope of
application

When the principle of the law of the protecting
country is adopted, a multi-State infringement or aubiquitous infringement which is a special case of
the former will result in the distributive applicationof the laws of the respective counties of protection.
In this connection, some rules have been proposed
depending on the definition of the law of theprotecting country, such as the de minimis rule
which limits the subject infringements to thosethat had a substantial impact on the domestic
markets,52 and the rule elaborated for the case of aubiquitous infringement, which states that if it is
impossible to distinguish the major infringementfrom minor infringements, only one law of thecountry that is most closely connected with the
infringement should be chosen as the applicable●law.53 The latter rule will form an exception to theprinciple of the law of the protecting country which
is provided for in Rome II Regulation, but at thesame time, it implies that it is not always
appropriate to apply this principle to an
infringement that involves multiple countries.
However, when it comes to the exception to
the principle of the law of the protecting country,
difficult problems might arise, given the argumentsthat take into consideration the territorial scope of
application involved in English intellectual
property law, which have been discussed earlier inthis study. Specifically, in the case of an
infringement that involves multiple countries, if
only one law that is different from the laws of therespective protecting countries is chosen as theapplicable law in order to avoid difficult problems
that may arise from the distributive application of
the laws of the protecting countries, this would
cause the situations described above in relation to
England as type (ii) or type (iii) infringement. In
other words, as the law of a country that isdifferent from the law of the country where theallegedly infringed right was created is chosen as
the law applicable to the infringement, the country
that created the right would have to judge whether
or not relief can be afforded for the right under theapplicable law of a foreign country.
On this point, in the context of theinterpretation of the 1995 Act, some scholars
suggest the possibility that in the case where aforeign right is infringed in England (type (iii)
infringement), when relief cannot be afforded if theterritorial scope of application of English law,which is the law of the place of the tort, is taken
into consideration, an English court would displace
the law of the place of the tort in accordance withthe displacement rule under Article 12 and apply
the "law of the country which governs theintellectual property right" instead.54 Others criticize
this view, arguing that in that case, relief will never
be afforded unless the law of a foreign country
regards an infringement in England of the right ofthat country as actionable (even if relief is to beafforded, they seem to consider that suchapplication of the foreign law is contrary to public
policy of England). 55 If one adheres to theunderstanding of the latter view, relief would not be
afforded at all with regard to an infringement of an
intellectual property right for which the country
where the right was created was different from thecountry where the infringement occurred.
Nevertheless, such a view that strictly interprets
the territorial scope of application also suggests
the possibility that in the case where a UK right is
6 ●IIP Bulletin 2012 Vol.21

infringed abroad (type (ii) infringement), an
English court would avoid applying the law of theforeign country where the infringement occurred,pursuant to Article 12 of the 1995 Act (although it
is more desirable to invoke public policy). 56 In
other words, with regard to the latter type of
infringement, even those who support the viewthat strictly interprets the territorial scope of
application draw a conclusion that English law shallapply, obviously for the purpose of ignoring theterritorial scope of application of the applicableforeign law.
The view that advocates the application of the"law of the country which governs the intellectual
property right" to type (iii) infringement pursuant
to Article 12 of the 1995 Act should rather be
understood as assuming that relief be afforded, orthat is, considering the "law of the country whichgoverns the intellectual property right" should beapplied by ignoring the territorial scope of
application to an infringement that occurred "inEngland." Based on this understanding, Article 12
could be interpreted as a provision that allows
precluding the intention to apply a foreign law as
the case may be, if it is "substantially more
appropriate" to do so.
2

In Japan, if the law applicable to theintellectual property right in dispute, that is, thelaw of the protecting country, is different from thelaw applicable to the tort or the infringement of theright, the relationship between these laws is likely
to raise an issue in terms of the distinction
between the matters to be governed by the law
applicable to the previous question and those to be
governed by the law applicable to the mainquestion.60 In such situation, when the law of theplace where the harmful act was done is to be
applied pursuant to the proviso to Article 17 of the
Act on General Rules for Application of Law, it issuggested that the law of the country that is
obviously more closely connected with the
infringement be chosen as the law of the protecting
country, as an exception to the exception
pertaining to Article 20 of said Act.61 On the other
hand, if the infringement is of ubiquitous orpervasive nature, the first possible approach would
be to apply the law of the place of the act (lex lociactus) pursuant to the proviso to Article 17, but if
necessary, it is possible to apply a law other thanthe law of the place of the act. 62 Thus, when
applying Article 20 of the Act on General Rules forApplication of Law to infringements of intellectual
property rights, different interpretations would be
admitted on a case-by-case basis, such as adheringto the principle of the law of the protecting country
in some cases, while allowing an exception to thisprinciple in other cases.

Suggestions for JapanAs well known, in Japan, there is acontroversy concerning the characterization of
infringements of intellectual property rights as
torts under private international law and applying
thereto the provisions of Article 17 and thefollowing of the Act on General Rules forApplication of Law. 57 The essence of this issue
seems to be the point of whether or not there is
the necessity to exclude infringements ofintellectual property rights from the influence of
these provisions.
However, when we draw some suggestions forthe situation in Japan from the arguments
concerning England, we should take note of thefollowing points. Under private international law
accepted in Japan, there is no view that regards
intellectual
propertylaw
asself-limiting
substantive law (which means that the intention to
apply the applicable foreign law is in principle
excluded from consideration.58)59 Accordingly, it isinappropriate to bring the classification by type of
infringement discussed in III.1 and 2 into thediscussions concerning the relationship between
the law applicable to infringements of intellectual
property rights and the law applicable to torts inJapan, without making modifications.

IIP Bulletin 2012 Vol.21

Ⅴ Conclusion
The last section concludes this research bypointing out the challenges for which the necessityof tackling in the future became apparent to theauthor the course of carrying out this study.
One point that is considered to have acquired
importance in recent years in relation to flexibility
in the choice of law in tort is an agreement by theparties on the law applicable to torts.63 The rule on
the choice of law in tort under the UK 1995 Act
does not allow such agreement by the parties on
the law applicable to torts, and as briefly
mentioned in this study, Rome II Regulation alsoprecludes freedom of choice of the applicable law inthe course of determining the law applicable to an
infringement of an intellectual property right.
However, by joining Rome II Regulation, theUnited Kingdom will tallow freedom of choice ofthe law applicable to general torts, so how such
freedom of choice of the applicable law is acceptedin this country in relation to the conventional
arguments, including the impact thereof, is an●

7 ●interesting issue.
In connection with the discussions shown
above, also in cases where the rule concerning the
choice of law in tort under the Act on General
Rules for Application of Law of Japan is to be
applied to an infringement of an intellectual
property right, the change of the applicable law byagreement by the parties (Article 21 of said Act)
could become an issue. Some legislative proposals
acknowledge the principle of party autonomy withregard to the choice of the law applicable to an
infringement of an intellectual property right, buteven among them, there is a conflict in opinions
concerning to what extent party autonomy shouldbe permitted.64 An action relating to an infringementof an intellectual property right is the type of
dispute that has an influence only on the parties
concerned, and what is more, if the application of
the proviso to Article 21 of the Act on General
Rules for Application of Law of Japan would lead toharming the rights of any third party, the parties in
dispute cannot duly assert the change of theapplicable law against the third party.65 In view ofthese points, I consider that at this moment, there
is no need to set any particular restriction on suchchange.66 However, due to time constraints, I havenot been able to inquire into this issue in detail. In
the future, with these matters in mind, I willcontinue study while considering the possibility toresearch the influence occurring after anagreement by the parties on the choice of the law
applicable to torts has been permitted in England.
1
2
3

4
5

6
7
8

9

British South Africa Co v Companhia de Moçambique[1893] AC 602 (HL).
10
Tyburn v Conan Doyle (n 4) 80-85. Vinlott J. did not
mention that intellectual property rights are "theimmovables" in a strict meaning under the Mozambiquerule. He addressed this issue only briefly, but herejected, though implicitly, the assertion that Article 30of the Civil Jurisdiction and Judgments Act 1982, which
partially abolished the Mozambique rule, was applicable
to anything other than land. Id 82. See also Wadlow (n 8)349, 356-358 ([6-56], [6-68]-[6-70]).
11(1906) 3 CLR 479. To understand the outline of thiscase, the author also made reference to Wadlow (n 8)384 ([6-118]). Here, the author mentions this judgment
only in relation to the Mozambique rule. For the
relevance between this judgment and the double
actionability rule, refer to Section III. 1.
12
Prior to the establishment of the Commonwealth ofAustralia and the enactment of the Patent Act 1903
(Commonwealth), in accordance with the Constitution ofAustralia, patent rights in general had been granted
under the colonial laws of individual states, whichcorresponded to the England law. See Staniforth
Ricketson, The Law of Intellectual Property (1st edn,
The Law Book Company Limited 1984) 867-868([46.23]).
13
Potter v Broken Hill (n 11) 493-494 per Griffith CJ.
14"The grant of monopolies was originally regarded as an
exercise of the Royal Prerogative. In England thisexercise of the sovereign power is now in effect (whether
it is or is not in form) exclusively regulated by Statute.
And in New South Wales, whether the Royal Prerogative
could or could not have been exercised without
legislation, the power of creating monopolies is now, andhas been since 1852, regulated by Statute." Ibid.
15
168 US 250 (1897) 252 per Fuller CJ.
16
Potter v Broken Hill (n 11) 495 per Griffith CJ.
17"I apprehend that any exercise by a de facto repositaryof any power of sovereignty, which results in thecreation of a any power of sovereignty, which results inthe creation of a right of property that can only becreated by such an exercise, must be regarded as an actof the State itself.)" Id 496.
18
Id 500.
19
See Wadlow (n 8) 385-386 ([6-119]-[6-121]).
20
K Lipstein 'Intellectual Property: Jurisdiction or Choiceof Law?' (2002) 61 Cambridge Law Journal 295,
296-297.
21
Id 297.
22
Id 296.
23
Lipstein also suggests that "no registration or any otherprocedure exists to establish a previous right ofprotection," so these arguments may be valid to the"protection of copyrights, and not of industrial property
right." See Id 299.
24
Id 297.
25
Ibid.
26
Ibid.
27
See id 298-299. See also K Lipstein, 'Intellectual
Property: Parallel choice of Law Rules' (2005) 64
Cambridge Law Journal 593, 595.
28
In view of the fact that the UK statute relating tointellectual property territorially limits the scope of its
application "by only providing redress in respect of UK(1760) 1 W Bl 234, 96 ER 129.
Id 246.
On this point, see G W Austin, 'The Infringement of
Foreign Intellectual Property Rights' (1997) 113 The
Law Quarterly Review 321, 328.
[1991] Ch 75.
See K Lipstein ‘Intellectual Property: Jurisdiction or Choiceof Law?' (2002) 61 Cambridge Law Journal 295, 297.
[2011] UKSC 39.
Id 36 ([105]).
Tyburn v Conan Doyle (n 4). To understand the outlineof this case, the author also made reference to thefollowing: Christopher Wadlow, Enforcement ofIntellectual Property in European and International Law(Sweet & Maxwell 1998) 345-346 ([6-50]); Akira Saito,"Kokusaika shakai ni okeru chitekizaisan to kokusaishihō: Jissenteki taiō no hōkōsei" (Intellectual property
and private international law in the globalized society:Direction of practical response), Institute of Intellectual
Property (IIP), Chitekizaisan wo meguru kokusaiteki nafunsō ni kansuru chōsa kenkyū hōkosho (heisei 12
nendo tsūshō hōki funsō kanren chōsa kenkyū)(Research report on international disputes overintellectual property (FY2000 research on commercial
law disputes), at 98-100 (2001).

●

8 ●IIP Bulletin 2012 Vol.21

38

rights and normally only when these have been
infringed in England," some argues that the UK rules
concerning infringement are intended to be applied as
the mandatory rules of the country of the forum,
regardless of the law that governs tort of infringement(see Jack Beatson, 'Intellectual Property and Part III of
the Private International Law (Miscellaneous
Provisions) Bill' in House of Lords, Proceedings ofSpecial Public Bill Committee (HL Paper 36, 1995) 61,
63 ([11])). Such mandatory rules, which are to be
applied regardless of the applicable law, form an
exception to the ordinary application of the rule on the
choice of law. For details on this point, see James J
Fawcett and Paul Torremans, Intellectual Property andPrivate International Law (2nd edn, OUP 2011) 822-828([15.57]-[15.86]). However, as discussed soon below,
Lipstein does not seem to be based on theunderstanding that the UK intellectual property law isapplicable as a mandatory rule, regardless of whichcountry's law is applicable.
29
Ibid.
30
Fentiman states that if the law of a Utopia is applicable toa given copyright infringement, no court is able to apply
said law unless the conditions for the application of thelaw are met as stipulated by that law. Id 138-139. To put
it differently, if the Utopian law, which is an applicablelaw, "desires" to be applied to a given case, a foreigncount may apply said law.
31
Lipstein argues this in the context of regarding the UK
statutory rules concerning infringement as mandatory
rules of the country of the forum that are to be applied
regardless of the applicable law ordinarily designatedunder the choice-of-law rule. For details on this point,
see Fawcett and Torremans (n 28) 824 ([15.66]). See
also Mölnlycke AB v Procter & Gamble Ltd [1992] 1
WLR 1112, 1118 per Dillon LJ.
32"As a general rule, in order to found a suit in England fora wrong alleged to have been committed abroad, twoconditions must be fulfilled. First, the wrong must be ofsuch a character that it would have been actionable ifcommitted in England……. Secondly, the act must nothave been justifiable by the law of the place where it
was done." Id 28-29 per Willes J.
33(1870) LR 6 QB 1.
34[1971] A.C. 356. This judgment has already beenaddressed in many prior studies in Japan. The
representative studies include: Akitaka Kaku, "Dōrokōtsū jiko no junkyohō: Bōizu hanketsu wo chūshin ni
shite" (Law applicable to road traffic accidents: Focusing
on the Boys judgment), Fukuoka Daigaku Hogaku Ronso(Fukuoka University law journal) Vol. 19, No. 2 and 3, at
485 et seq. (1974); Yutaka Orimo, Shōgai fuhōkōihō ron(Theory of international tort law), at 197 et seq.
(Yuhikaku, 1976); and Shoichi Honnami, Eibei kokusaishihō hanrei no kenkyū, Kokusai saikenhō no dōkō(Study on private international law cases in the UK and
the US, Trends of international law of obligations), at
125 et seq. (Kansai University Press, 1994)
35
Szalatnay-Stacho v. Fink [1947] KB 1.
36
Def Lepp Music v Stuart-Brown [1986] RPC 273, 276
per Sir Nicholas Browne-Wilkinsin V-C.
37
Norbert Steinhardt and Son Ltd v Meth (1960) 105 CLR
440, 443 per Fullagar J. See also Fawcett and Torremans(n 28) 831 ([15.96]).

IIP Bulletin 2012 Vol.21

James Burrough Distillers plc v Speymalt Whisky
Distributors Ltd [1989] SLT 561, 566 per Lord Coulsfield.
39"……[A]n infringement of a foreign copyright cannot
constitute a tort under English law." Tyburn v Conan
Doyle (n 4) 87.
40
Pearce v Ove Arup Partnership (n 42) 445.
41
Lucasfilm v Ainsworth [2010] Ch 503, 548 ([174]). "Wehave decided that there is no binding authority. So wemust decide now whether English law regards claims forinfringement of foreign, non-EU (or Lugano) copyrights
as non-justiciable here."42[2000] Ch 403. For details on this judgment, see also:
Yasuto Komada, "2. Igirisu" (2. United Kingdom), Shoichi
Kidana, ed., Kokusai chitekizaisanken shingai soshō nokiso riron (Basic theory of international litigation
relating to intellectual property rights), at 179-180(Research Institute of Economy, Trade and Industry,2003), Sato, supra note 8, at 100-101.
43
Komada, Id,. at 179, Saito, id., at 101. This is based on
the interpretation of the decision of the Privy Council in
1994 in Red Sea Insurance Co Ltd v Bouygues SA[1995] 1 AC 190, which followed the decision of theHouse of Lords in Boys v Chaplin (supra note 34). For asimilar view presented prior to the Pearce case, see
Christopher Floyd and Iain Purvis, 'Can an English
Court Restain Infringement of a Foreign Patent?' [1995]
3 EIPR 110, 114､Austin (n 3) 323. For the Red Sea case,see Tanemura, "Fuhōkōi no puropā rō riron to komon rō
jō no reigai (2. kan)" (Theory of proper law in tort andthe exception under common law (2. fin.)), Waseda
Daigaku Daigakuin Hoken Ronshu (Graduate School ofLaw, Waseda University, quarterly law journal) No. 135,
at 210 et seq. (2010).
44
Private International Law (Miscellaneous Provisions)
Act 1995. For details on this Act, see Akira Saito,"Rengō Ōkoku ni okeru fuhōkōi teishokuhō no kaisei:
Fuhōkōi junkyohō ni tsuiteno kokusai shihō wo kaisei
suru seiteihō no seiritsu ni tsuite" (Amendment of therule of conflict of laws in tort in the United Kingdom:
Enactment of the statute to amend private internationallaw concerning the law applicable to torts), Kansai
Daigaku Hogaku Ronshu (Kansai University collectionof law articles) Vol. 46, No. 3, at 683 et seq. (1996),
Masaru Nishi, Hikaku kokusai shihō no dōkō (Trends ofcomparative private international law) at 85 et seq.
(Koyoshobo, 2002).
45
The conventional rule is still applicable to a judgment on
points in contention arising from a claim of defamation.
See Article 9(3) and Article 13 of the 1995 Act.
46
See Nishi, supra note 44, at 97.
47
Fawcett and Torremans (n 28) 843 ([15.149]).
48
Id 843 ([15.150]).
49
Lawrence Collins and Others, Dicey, Morris & Collins on
The Conflict of Laws (14th edn, Sweet & Maxwell 2006)
1909 ([35-030]).
50
Fawcett and Torremans (n 28) 843 ([15.150]).
51
For the draft of Rome II Regulation, see Naoshi Takasugi"Yōroppa Kyōdōtai no keiyakugai saimu no junkyohō nikansuru kisoku (Rōma II) an ni tsuite: Fuhōkōi no
junkyohō ni kansuru rippōronteki kentō" (Draft of theEuropean Community regulation concerning the law
applicable to non-contractual obligations (Rome II):
Review from the legislative perspective of the law
applicable to torts), Kokusai Ho Gaiko Zasshi (Journal of●

9 ●International Law and Diplomacy) Vol. 103, No. 3, at 15(2004), Hiroshi Sano, "Keiyakugai saimu no junkyohō nikansuru Ōshū Gikai oyobi Rijikai kisoku (Rōma II) an ni
tsuite" (Draft of the Regulation on the law applicable tonon-contractual obligations (Rome II)), Okayama
Diagaku Hogakkai Zasshi (Okayama University, Law
Journal) Vol. 54, No. 2, at 67 (2004), Kiyomune
Nakagawa, "Shōgaiteki na chitekizaisanken no shingai ni
okeru hogokokuhō shugi ni tsuite no kōsatsu:
Keiyakugai saimu no junkyohō ni kansuru Ōshū Gikai
oyobi Rijikai kisoku (Rōma II) an wo tōshite" (A study on
the principle of the law of the protecting country forinternational infringement of intellectual property
rights: Based on the Regulation on the law applicable tonon-contractual obligations (Rome II)), Tokai Hogaku(Tokai University law journal) No. 36, at 88-89 (2006).
52
For example, see Art 3:602 Principles for Conflict ofLaws in Intellectual Property, Prepared by European
Max Planck Group on Conflict of Laws in Intellectual
Property (CLIP), final text December 1 2011, available at
http://www.cl-ip.eu/ (last accessed as of March 21, 2012;
hereinafter referred to as the "CLIP Final Text").
53
See Axel Metzger, Applicable Law under CLIP
Principles: A Pragmatic Revaluation of Territoriality,translated by Toshiyuki Kono and Ai Murakami,
Toshiyuki Kono, ed., Chitekizaisanken to shōgai minjisoshō (Intellectual property rights and international civil
litigation), at 151-155 (Kobundo, 2010). See also CLIP
Final Text, Article 3:603, the American Law Institute(ALI), "Intellectual Property: Principles Governing
Jurisdiction, Choice of Law, and Judgments inTransnational Dispute" (Kono, id., at 26; hereinafterreferred to as the "ALI Principles"), Article 321, andWaseda University Global COE Program, "Principles ofPrivate International Law on Intellectual Property
Rights (Joint Proposal Drafted by Members of thePrivate International Law Association of Korea andJapan)," dated October 14, 2010, (Kikan Kigyo to Ho
Sozo (Quarterly Review of Corporation Law and Society)Vol. 7, No. 3, at 306 (2011); hereinafter referred to as the"Korea-Japan Joint Proposal"), Article 306. ProjectManaging Group of "Transparency of Japanese Law
Project" (2004-2009), Transparency Proposal on
Jurisdiction, Choice of Law, Recognition and Enforcementof Foreign Judgments in Intellectual Property (Kono, id.,
at 6; hereinafter referred to as the "Transparency Project
Proposal"), Article 302 , provides that a ubiquitous
infringement of an intellectual property right shall begoverned by the "law of the place where the results of the
exploitation of intellectual property are or to be
maximized." For details on this point, see also Ryu Kojima,"Junkyohō: (1) "Chitekizaisanken shingai no junkyohō"(Applicable law: (1) Law applicable to infringement ofintellectual property rights), Kono, id., at 302-303.
54
Collins and Others (n 49) 1909 ([35-030]). For details on
this point, see III.2.(4)(iii)(b).
55
Fawcett and Torremans (n 28) 843 ([15.150]). For details
on this point, see III.2.(4)(iii)(b).
56
Id 843 ([15.149]). For details on this point, see
III.2.(4)(iii)(b).
57
For details on the controversy concerning this point, see
Shoichi Kidana, Kokusai chitekizaisanhō (International
intellectual property law), at 248-249 (Nippon Hyoron
Sha, 2009). For claims for damages based on copyright●

infringements, see Yusuke Tanemura, "Hanrei Hihyo"(Law review), Jurist No. 1422, at 154 (2011), and otherreferences cited therein.
58
See Hidefumi Egawa, Kokusai shihō (Private internationallaw), at 7-8 and 67 (Yuhikaku, revised edition, 1970), Jun
Yokoyama, "Chiikitekini jōkenzukerareta gaikoku jisshitsu
hōki no tekiyō" (Application of the spatially conditioned
internal rules of foreign countries), Dokkyo Hogaku No.
14, at 1 (1980).
59
Dai Yokomizo, "Chitekizaisanhō ni okeru zokuchishugi
no gensoku: teishokuhō jō no ichizuke wo chūshin ni"(Principle of territoriality under intellectual property
law: Focusing on the status of conflict of laws),
Chitekizaisan Hoseisakugaku Kenkyu (Intellectual
Property Law and Policy Journal) No. 2, at 25-26 (2004).
60
Kidana, supra note 57, at･249.
61
Kidana, id., at 251.
62
Kidana, id., at 251.
63
For the arguments under the former version of the Act
on General Rules for Application of Law, see Shunichiro
Nakano, "Fuhōkōi ni kansuru junkyohō sentaku no gōi"(Agreement on the choice of the law applicable to torts),
Minshoho Zasshi (Civil and commercial law journal), Vol.
102, No. 6, at 770, et seq. (1990), Nakano, "Fuhōkōi
junkyohō to tōjisha no ishi" (Law applicable to torts andintention of the parties), Takao Sawaki and Junichi Akiba,
eds., Kokusai shihō no sōten (Points at issue on privateinternational law), at 140 (Yuhikaku, new edition, 1996).
For ex post agreement, see Zenpachi Okamoto, "Kokusaishihō ni okeru hōtei saiken" (Statutory claims under
private international law), Doshisha Hogaku (Doshisha
University law journal), Vol. 42, No. 1, at 65 (1990).
64
CLIP Final Text, Article 3:606, provides for freedom of
choice of the applicable law for remedies forinfringements of intellectual property rights. ALI
Principles, Article 302, literally does not limit freedomof choice to methods of relief but admits freedom of
choice of the applicable law more broadly to the extent
not prejudicial to the interest of a third party (Kono,
supra note 53, at ･ 23). The Transparency Project
Proposal, Article 304, provides that the parties to an
intellectual property infringement may "change the law
governing the formation and effect of claims arising
therefrom," to the extent not prejudicial to the rights ofa third party. This provision can be understood asallowing an ex post facto change to be made in relation
to relief claimable, such as an injunctive order andcompensation for damage, except for a determination on
the existence, original ownership, and effect of theintellectual property right (Kojima, supra note 53, at309). Korea-Japan Joint Proposal, Article 302, broadly
defines the scope of choice of the applicable law by theparties, and in connection with this, Article 304 allows
freedom of choice of the applicable law, which covers the"matters of an intellectual property right as such,including its existence, validity, revocation andtransferability," on condition that the choice be effective
only between the parties (for details on this point, see"Commentary on Principles of Private International Law
on Intellectual Property Rights (Joint Proposal Draftedby Members of the Private International Law
Association of Korea and Japan) as of October 14, 2010,"
Kikan Kigyo to Ho Sozo (Quarterly Review ofCorporation Law and Society) Vol. 7, No. 3, at 93

10 ●IIP Bulletin 2012 Vol.21

(2011)).
Kidana, supra note 57, at 249.
66
Article 304 of the Korea-Japan Joint Proposal seems to
be based on the same view.
65

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