20

Intellectual Property Litigation andForeign Sovereign Immunity:
International Law Limit to the Jurisdiction over the
Infringement of Intellectual Property
Research Fellow：Akihiro Matsui
Foreign sovereign immunity is the international law rule that foreign states are entitled to immunity fromthe jurisdiction of municipal courts. Entities other than foreign states, such as state enterprises, are also entitledto immunity. The majority view now seems to be that immunity need not extend to "commercial" transactions,but it is not clear whether immunity extends to infringements of intellectual property. Infringements ofintellectual property are not always caused by breaches of contract, although breaches of license agreement may
be regarded as commercial.
This report reviews court decisions in several states and points out that immunity may extend to an
infringement of intellectual property where immunity is determined based on whether the infringing act iscommercial. And, this report analyses the provisions of treaties and municipal laws which deny immunity inintellectual property litigation. In addition, this report examines how foreign sovereign immunity is related tothe issue of jurisdiction over international infringements of intellectual property.

Ⅰ What Is Foreign
Immunity?

SovereignThis report empirically examines therelationship between intellectual property litigationand foreign sovereign immunity from theperspective of international law, in connection withconventions, draft articles for conventions,domestic laws and domestic judicial precedents.
“Foreign Sovereign immunity” means that aState itself and its property shall be immune fromthe jurisdiction of another State. More specifically,
it refers to “immunity from jurisdiction”, whichmeans that a State shall not stand as defendant in
the courts of another State, and “immunity fromexecution”, which means that a State property shallnot be subject to the compulsory execution of
judgments or pre-judgment preservative measuresrendered by the courts of another State(*1). Foreign
sovereign immunity is a rule concerning thejurisdiction of the domestic courts of a State.
Indeed, it does not directly solve the issue ofinternational
jurisdiction
overcross-borderinfringements against intellectual property rights,
which has been discussed at WIPO and the Hague
Conference on Private International Law. On theother hand, foreign sovereign immunity prevents
domestic courts from exercising their exclusive

jurisdiction, and it this respect, it is similar to“forum non convenience,” which is a legal theory
establishedinjudicial
precedents
under
Anglo-American law. However, foreign sovereign
immunity is recognized as a rule underinternational law.(*2) Furthermore, foreign sovereign
immunity becomes a problem in lawsuits in which a
foreign State is concerned in the domestic court ofanother State. In this regard, it is similar to “Act ofState Doctrine.” However, what matters under the
Act of State Doctrine is the “nature of the act that isa cause of right or fact which is the subject matterof the lawsuit,” whereas what matters in respect toforeign sovereign immunity is the “nature of theparty to the lawsuit.” (*3) Among the issues
concerning foreign sovereign immunity, this report
particularly addresses the issue of immunity fromjurisdiction in intellectual property litigation.

Ⅱ Interface between Intellectual
Property Infringement Litigation
and Foreign Sovereign Immunity
1

Arguments
Immunityon

Foreign

SovereignThis section considers what problems would
arise if immunity from jurisdiction is claimed in(*1) Sir Robert Jennings and Sir Arthur Watts, Oppenheim’s International Law (9th ed.), pp. 341-365 (1992); Helmut Steinberger,“State Immunity”, in Rudolf Bernhardt (ed.), Encyclopedia of Public International Law, pp. 615-638 (1992). See Matsui
Akihiro, Kokusaihōjō no kokkazaisan no kyouseishikkō karano menjo (Immunity from Execution against State Property
under International Law), Ritumeikan Hōgaku [Ritsumeikan Law Review (Japanese edition)], vol. 290 (2003).
(*2) Hazel Fox, The Law of State Immunity, p.1 (2002).
(*3) Matsui Yoshiro, “Kokusaihō ni okeru kokka kōi ron (The act of state doctrine under international law)”, Hōsei ronshō(Nagoya University), vol. 44, p.39 (1968).

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intellectual property infringement litigation from atheoretical perspective. First of all, when outlining
the history of the development of arguments on
foreign sovereign immunity, we find the shift fromthe “Doctrine of Absolute Immunity” to the“Doctrine of Restrictive Immunity.” According to
the traditional concept which was established in the
middle of 19th century when the practice ofsovereign immunity became popular, a State may
stand as plaintiff but not as defendant in thedomestic courts of another State. Such a concept iscalled “Doctrine of Absolute Immunity.” However,since the beginning of the 20th century, States havecome to be engaged in economic activities andinvolved in more transactions with private persons
accordingly. If States were granted absolute
immunity even in such a situation, private persons
who have dealings with States would suffer
significant disadvantage. In light of this, the“Doctrine of Restrictive Immunity” has gained
ground that a State’s acts shall be divided into acts
by sovereign authority (acta jure imperiis) and acts
by management authority (acta jure gestionis) andthe State may only be immune from suits due to theformer acts. Indeed, the Doctrine of Absolute
Immunity had been dominant in U.K. and U.S.
precedents until domestic laws were enacted, and it
was also claimed in the Soviet Union and othersocialist states as well as in developing States evenafter the end of World War II. In current times, theDoctrine of Restrictive Immunity is broadly
accepted, but complicated issues remain concerning
foreign sovereign immunity. The first such issue isabout the entities eligible to enjoy sovereign
immunity. While “States and various organs of theirgovernments” are indisputably eligible to enjoy
sovereign immunity, discussions have been held
about the eligibility of other entities to enjoy
immunity. In connection with intellectual property
infringement litigation, the question is whether“State enterprises” and “central banks” are eligible
to enjoy immunity. Though there is not complete
convergence in current national practices including
domestic laws and academics’ views in individualstates, entities that have an independent status oflegal person such as central banks and State
enterprises may enjoy immunity, provided that they
conduct acts by sovereign authority of States. The
second issue is that there is no clear criterion for
distinguishing acta jure imperii and acta juregestionis.
2

Can Immunity from Jurisdiction Be
LimitedinIntellectual
Property
Infringement Litigation?

In intellectual property infringement lawsuits,
can a State or State enterprise standing as

defendant claim immunity from the jurisdiction ofanother State? Typical litigation in which immunityfrom jurisdiction will be denied is litigation
concerning “commercial activities” conducted by aState. There are two types of criteria for
determining what acts are deemed to be“commercial activities”, one focusing on the natureof the State’s act (“Nature of Act Theory”) and theother focusing on the purpose (“Purpose of Act
Theory”). Take, for example, a case where acompany owned by State A manufactures and sells
products that are indispensable to the daily life of
the citizens of State A, by working a patent owned
by X, who is a citizen of State B. State A concludes
a contract with X and agrees to pay money to X.
However, State A fails to pay any money, andfurthermore, the products are imported from State
A to State B. In this case, if X files a lawsuit against
State A and the company owned by State A with acourt of State B, can the company owned by State A
claim immunity? According to the Purpose of Act
Theory, the company’s act of manufacturing, sellingand importing the products is deemed to be
conducted in the same position as a private person,
and therefore exactly falls under “commercial
activity” or acta jure gestionis. However, according
to the Nature of Act Theory, it may become
possible to claim immunity. For instance, State A
might argue that the company owned by State A
had manufactured the products indispensable to thedaily lives of the citizens of State A in order tosecure an acceptable living environment for its
citizens and perform the sovereign functions ofState A. In response to the counterargument thatthe company owned by State A imports the
products to State B, State A might also argue thatits economic situation is becoming significantly
worse and therefore it is essential for State A toearn foreign currency to guarantee its existence.
Indeed, where a State is sued for infringing an
intellectual property right owned by a third party, it
does not seem too unreasonable to presume suchan act as a commercial activity, but this does notdeny the possibility of immunity from jurisdiction
being granted.
There is another possibility that intellectual
property infringement litigation may be deemed asa litigation concerning “property” situated in theState of the forum. However, following the
judgment rendered by the Exchequer Court of
Canada in Chateau-Gai Wines Ltd. v. Le
Gouvernment de la République Française, in which
an opposition was filed against a trademark
registration owned by a foreign State, it is difficult
to deem intellectual property infringement
litigation as such.(*4) The third possibility is that
intellectual property infringement litigation may bedeemed as litigation concerning “tort” by a State.

(*4) Chateau-Gai Wines, Ltd. v. Le Gouvernment de la République Française, 1967, Canada, Exchequer Court, International Law
Reports (hereinafter cited as ILR), vol. 53, p. 284 (1979).
● 161 ●IIP Bulletin 2003

Indeed, in national practices, immunity fromjurisdiction is often denied in cases forcompensation for damage to property due to a
“tort” by a State. However, damage to property due
to a “tort”, which is referred to as an exception to
immunity from jurisdiction, is limited to damage totangible property. The main objective for denying
immunity from jurisdiction is to ensure that victimsof traffic accidents will not be deprived ofopportunities to file lawsuits. Consequently, an act of
infringing an intellectual property right is unlikely to
be deemed to be a tort, which is an exception to
immunity from jurisdiction. Considering all these
possibilities, intellectual property infringement
litigation can be deemed to be litigation concerning“commercial activities” conducted by a State.
However, in light of the fact that immunity fromjurisdiction is denied in litigation concerning
employment contracts in particular in national
practices, it may be possible to provide that
intellectual property infringement litigation is also
included in special types of litigation for which
immunity from jurisdiction shall be denied.

Ⅲ Criterionfor
Determining
Immunity regarding Intellectual
Property Infringement
1

Determination ofSpecial Criterion

Immunity

underThis section addresses national practices andacademic views. First, analysis is made on the“European Convention on State Immunity,” which
provides for a specific criterion for determining
immunity.(*5) Next, domestic laws concerning
sovereign immunity are analyzed. Such provisions
are not found in the Foreign Sovereign Immunity
Act of the U.S. (*6) and the State Immunity Act ofCanada(*7) whereas they are present in the State
Immunity Act of the U.K. (Article 7), (*8) the State
Immunity Act of Singapore (Article 9),(*9) theState Immunity Ordinance of Pakistan (Article 8),(*10)
the Foreign Sovereign Immunity Act of the
Republic of South Africa (Article 8)(*11) and theForeign States Immunities Act of Australia(Article 15).(*12) These domestic Acts haveaprovisions similar to those of the European
Convention on State Immunity, but there are also
difference with respect to which intellectual
property rights are included in the scope of
application of the special provisions, andparticularly whether a plant breeder’s right isincluded in the scope (See Appendix 1).
Furthermore, foreign sovereign immunity was a
subject in the process of codifying internationallaw. The “U.N. International Law Commission(hereinafter referred to as “ILC”)”, which isengaged in realizing one of the missions of the
U.N. General Assembly, “encouraging the
progressive development of international law andits codification” (Article 13(1)(a) of the Charter of
the United Nations), carried out codification andadopted the second draft articles for the“Convention on the Jurisdictional Immunities ofStates and Their Property” (hereinafter referred
to as the “second ILC draft”) in 1991.(*13) The
provisions concerning intellectual property
infringement litigation are also found in thesecond ILC draft (Article 14).
Article 14 of the second ILC draft [Intellectual
and industrial property]
Unless otherwise agreed between the Statesconcerned, a State cannot invoke immunity fromjurisdiction before a court of another State which isotherwise competent in a proceeding which relates
to:(a) the determination of any right of the State in apatent, industrial design, trade name or business
name, trade mark, copyright or any other form ofintellectual or industrial property, which enjoys ameasure of legal protection, even if provisional, in
the State of the forum; or(b) an alleged infringement by the State, in the
territory of the State of the forum, of a right of thenature mentioned in subparagraph (a) which
belongs to a third person and is protected in theState of the forum.
Similar provisions are also found in Article 3 of
the “Draft Article for a Convention on State
Immunity”(*14) adopted in 1994 by the International
Law Association, which is a global international law
association,
and
in
the
Resolution
on“Contemporary
Problems
Concerningthe(*5) European Convention on State Immunity 1972, reprinted in International Legal Materials (hereinafter cited as ILM ), vol.11,
p.470 (1972).
(*6) Foreign Sovereign Immunity Act, 1976, reprinted in ILM,, vol. 15, p. 1393 (1976).
(*7) State Immunity Act, 1982, reprinted in ILM, vol.21, p. 798 (1982).
(*8) State Immunity Act, 1978, reprinted in ILM , vol. 17, p. 1123 (1978).
(*9) State Immunity Act, 1979, reprinted in Materials on Jurisdictional Immunities of States and Their Property (United Nations
Legislative Series), U.N. Doc. ST/LEG/SER.B/20, p. 32 (1982).
(*10) State Immunity Ordinance, 1981, id., p.25.
(*11) Foreign Sovereign Immunity Act, 1981, id., p. 39.
(*12) Foreign State Immunities Act, 1985, Section 32(1), reprinted in ILM, vol. 25, p. 715 (1986).
(*13) Draft Articles on Jurisdictional Immunities of States and Their Property, reprinted in ILM, vol. 30, pp. 1565-1574 (1991).
(*14) Revised Draft Article for a Convention on State Immunity, International Law Association Report of the 66th Conference(held at Buenos Aires, 1994), pp. 22-28 (1994).

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Immunity of States in Relation to Questions ofJurisdiction and Enforcement”(*15) adopted in 1991
by the Institut de Droit International, which
consists of world-famous scholars of internationallaw.
Why shall immunity from jurisdiction bedenied in intellectual property infringement
lawsuits? In the discussion at the ILC, it wasconsidered that the best forum for settling a dispute
over an intellectual property right (forum
convenience) was “a forum where a system forregistering and protecting intellectual property
rights is applied and rules for protecting intellectual
property rights are recognized.” It was also
considered that immunity shall be denied inintellectual property infringement lawsuits “for the
purpose of protecting interests pertaining tointangible property
andencouraging
fairtransactions.”(*16) On the other hand, such a denial“does not always arise from a motivation forcommercial or economic interests,” it wasconsidered necessary to insert a special provisionin the convention.(*17) The relation with a lawsuit
concerning a “tort” by a State may be pointed to as
another reason that the special provision wasinserted in the domestic Acts.(*18) In the codification
process of international law, several problems wereactually pointed out with respect to establishingsuch a special provision. First, when inserting a
special provision on not only intellectual property
infringement lawsuits but also all types of lawsuits
concerning intellectual property rights, it would benecessary to define the scope of intellectual
property right, in particular a plant breeder’s right,
to be subject to the special provision.(*19) The
second argument was that insertion of such a
special provision would expand the North-Southeconomic gap. Some members of the ILC argued
that developing States would be prevented frommisappropriating developed States’ technology orthat, ultimately, intellectual property rights were no

more than a system for protecting developed Statesthat were far more advanced than developing States
in respect of science and technology.(*20) Third,
there was concern that, if a special provision wasinserted in respect to intellectual property
infringement
lawsuits,
nationalization
or
expropriation by a State would be judged by a courtof another State.(*21) However, these problems did
not become obstacles against inserting a special
provision on intellectual property infringement
lawsuits in the draft convention.(*22)
2Determination of Immunity
Comprehensive Criterion

under

a

(1) Problems caused by applying acomprehensive criterion
This section examines the possibility for a
State to be granted immunity from jurisdiction byregarding an intellectual property infringement
lawsuit as a lawsuit concerning “commercial
activity” by a State, through analysis of judicial
precedents in States that do not have a special
provision. Whether the act of infringing an
intellectual property would fall under “commercial
activity” was rarely disputed in the following cases:
Dralle v. The Republic of Czechoslovakia (Austria),
which is a leading case on this issue;(*23) James K.
Gilson v. the Republic of Ireland and Gaeltarra
Eireann (U.S.), in which the Irish State enterprise
was sued for illegal use of the patent relating toquartz crystal, which was owned by a U.S.
engineer;(*24) and BP Chemicals Ltd. v. Jiangsu Sopo
Corporation Ltd. and SPECO (U.S.), in which thepoint of issue was illegal acquisition and illegal
dissemination of trade secrets by the Chinese State
enterprises.(*25) On the other hand, in lawsuits
concerning infringement of copyright, whether theact of infringing a copyright fell under a“commercial activity” was a significant point ofdispute. In the following cases, the act of infringing(*15) Contemporary Problems Concerning the Immunity of States in Relation to Questions of Jurisdiction and Enforcement,
Resolution adopted at Basel, 1991, Annuaire de l’Institut de Droit International, vol. 64-I, pp. 84-89 (1991).
(*16) Sucharitkul, Yearbook of International Law Commission (hereinafter cited as YbILC), 1984-I, p. 113, para. 14; YbILC,
1984-II, Part 2, p. 68.
(*17) YbILC, 1984-II, Part 2, p.68; YbILC, 1988-II, Part 2, p. 102, para.517; Commentary to Article 14, YbILC, 1991-II, Part 2,
p.47.
(*18) Australian Law Reform Commission, Foreign State Immunity (Report No. 24), pp.67-68, para. 115; Council of Europe,
Explanatory Reports on European Convention on State Immunity, para. 41 (1972).
(*19) Comments from United Kingdom of Great Britain and Northern Ireland, U.N. Cod. A/CN.4/410, pp. 54-55 (1988); Ogiso,
3rd Report, U.N. Doc. A/NC.4/431, p.27 (1990).
(*20) Akinjide, YbILC, 1984-I, pp. 116-117, paras. 11-12; Sinclair, id., p. 120, para. 29; McCaffrey, id., p. 137, para. 10.
(*21) YbILC, 1984-II, Part 2, pp.59, 69; Jagota, id., p. 130, paras. 9-10.
(*22) Virginia Morris, Sovereign Immunity: the Exception for Intellectual or Industrial Property, Vanderbilt Journal ofTransnational Law, vol. 19, p. 100 (1986).
(*23) Dralle v. Republic of Czechoslovakia, 1950, Austria, Supreme Court, ILR , vol.17, p. 155 (1956).
(*24) James K. Gilson v. Republic of Ireland and Gaeltarra Eireann, 1982, United States, Court of Appeals for the District ofColumbia Circuit, 682 F. 2d 1022, pp. 1026-1027.
(*25)BP Chemicals Ltd. v. Jiangsu Sopo Corporation Ltd. et al, 2002, United States, Court of Appeals for the Eighth Circuit, 285 F.
3d 677, p. 682.
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the copyright was judged as falling under“commercial activity” and immunity was denied: X
v. Spanish Government Tourist Bureau (Germany),
in which the lawsuit was filed based on the
allegation that the Spanish Government Tourist
Bureau’s act of lending video films that showedscenic spots in Spain, which were used for public
relations by travel agencies, infringed the copyrightowned by the plaintiff who composed thebackground music for the films;(*26) Los Angeles
News Service (LANS) v. Canadian Broadcasting
Corporation (CBC) (U.S.), in which the lawsuit was
filed based on the allegation that CBC broadcasted,
in its news program, a video showing the civil
unrest that had occurred in Los Angeles, which wastaken by LANS, and the video broadcasted in
Canada was also able to be received and viewed in
the United States, which resulted in an
infringement of the LANS’s copyright;(*27) andHenry Leutwyler v. Office of Her Majesty Queen
Rania Al Abdullah, in which the lawsuit was filed
based on the allegation that an employee of the
Office of the Queen of the Hashimite Kingdom of
Jordan provided photographic portraits of the
Queen of Jordan, beyond the use conditions
permitted by the U.S. photographer who took the
portraits, to the publisher of “The 2000 Jordan
Diary”, which was sold in various States across theworld including the United States, and thereby
infringed
thephotographer’s
copyright.(*28)
However, in International Dictionary Series v. The
Australian National University (U.S.), in which theAustralian National University was sued for
infringing the copyright by compiling a language
dictionary, the university was granted immunity on
the ground that its act of compiling a dictionary was“academic” (See Appendix 2).(*29) In summary, theoutcome would be different between the casewhere a special provision on intellectual property
infringement lawsuits is established and the casewhere immunity is determined by including theinfringing act in the scope of “commercial activity.”In this respect, let us take, for example, a caseconcerning a patent related to a medical drug. A
drug manufacturer X owns a patent necessary for
manufacturing a medical drug in a developed State
A. Though X has licensed a company Y, which isowned by a developing State B, to manufacture andsell the drug by working the patent only in the
territory of State B, the drug manufactured in State
B is found to be imported to another developing
State C to which X also exports the drug. When X

files a lawsuit against State B and the company Y
with the court of State C, if State C has provisions
similar to those of the U.K. Act or precedents that
denied immunity from jurisdiction in intellectual
property infringement lawsuits, State B and thecompany Y shall not be granted immunity fromjurisdiction. However, if State C determines
immunity on the basis of whether the act relating to
the lawsuit is a commercial activity, diverse
outcomes would become possible. The act ofmanufacturing and exporting the drug is an act thatis also carried out by a private person and therefore
may be deemed to be a commercial activity and be
denied immunity from jurisdiction. On the other
hand, in light of the fact that, but for the drug, many
people would die in State B and this would threaten
the existence of these States, if the State B argues
that the act of manufacturing the drug may iscarried in the exercise of the sovereign authority,
immunity from jurisdiction may be granted for thereason of the purpose of the act. State B may be
granted immunity from jurisdiction with respect toits act of exporting the drug to State C. State B canargued that there is the diplomatic necessity toemergency assistance because many people would
die in State B without the drug. State B may also
argue that many people in State B would face aserious crisis if State C runs out of the drug thedisease is passed from State C to State B, becauseof the frequent transfer of people between State B
and State C. Thus, problems would arise on the
ground that the criteria for determining immunity
are not completely unified. Due to the possibility
that domestic courts would render different
determinations on immunity in accordance withdifferent criteria, it cannot be denied that forum
shopping would occur. It would be difficult to define
the “nature of the lawsuit” in the determination of
immunity even in accordance with a special
criterion.
(2) Connection between the infringement
against intellectual property rights andthe State of the forum, as a criterion for
determining immunity
Another issue remains to be considered: theState of the forum shall never exercise its
jurisdiction unless the act of infringing theintellectual property right is caused in the State of
the forum. Sovereign immunity is a ground for adomestic court not to exercise its inherent
jurisdiction. More logically, under international law,whether the State of the forum actually has(*26) X v. Spanish Government Tourist Bureau, 1977, Germany, Superior Provincial Court (Oberlandesgericht) of Frankfurt, ILR,
vol. 65, pp. 141-143 (1984).
(*27) Los Angeles News Service v. Canadian Broadcasting Corporation, 1997, United States, District Court for the Central
District of California, 969 F. Supp.579, pp. 585-586.
(*28) Henry Leutwyler v. Office of Her Majesty Queen Rania Al Abdullah, 2001, United States, District Court for the Southern
District of New York, 184 F. Supp. 2d 277, p. 280.
(*29) Intercontinental Dictionary Series v. The Australian National University et al., 1993, United States, District Court for theCentral District of California, 822 F. Supp. 622, pp. 672-674.
IIP Bulletin 2003

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jurisdiction over the lawsuit shall be considered
before determining sovereign immunity.(*30)
However, in actual State practices, whether theState of the forum has jurisdiction over the lawsuit
is considered at the stage of determining immunityfrom jurisdiction. Although the issue of whether theState of the forum has jurisdiction over the lawsuit
shall logically precede the determination in respectof immunity from jurisdiction, this issue is treatedas a criterion for determining immunity fromjurisdiction as far as intellectual property
infringement lawsuits are concerned. However, noconsensus has been established concerning in whatcases an infringing act would be deemed to haveoccurred in the State of the forum. Consequently, it
is necessary to consider how the issue ofjurisdiction over an intellectual property
infringement is judged in lawsuits between private
persons. Since the rules on jurisdiction are includedin the rules on immunity, courts may at least makedifferent decisions in regard to the jurisdiction of aforeign State from those in lawsuits between
private persons.

existence.(*34) Accordingly, immunity is also likely to
be denied in intellectual property infringement
lawsuits in Japan, and therefore further
consideration should be given in this respect. It isnecessary to consider the issue of the limit to theexercise of the jurisdiction by the State of theforum over the infringing act, in respect tointellectual property infringement lawsuits between
private persons. Furthermore, in order to examine
judicial precedents rendered by States in which
immunity is determined on the basis of whether the
infringing act is a “commercial activity” by a State,such as the United States, it will also be necessary
to examine lawsuits that relate to all sorts of“commercial activities” in addition to intellectual
property infringement lawsuits.

Ⅳ Suggestions for Japan
In conclusion, brief consideration is given towhat determination will be rendered when
immunity from jurisdiction is claimed in an
intellectual property infringement lawsuit in Japan.
Since Japan has no domestic Act that provides forsovereign immunity, determination would be
dependent on judicial precedents. The former
Supreme Court decision adopted the Doctrine of
Absolute Immunity in 1928,(*31) and this principle
seems to have remained unchanged since then.(*32)
Recently, in the decision on the Yokota Air Basecase, though it cannot be quite said that theSupreme Court of Japan has shifted to the Doctrineof Restrictive Immunity, this decision implies that
immunity may not be granted depending on thenature of the act.(*33) In addition, when the second
ILC draft becomes a treaty and Japan ratifies thistreaty, immunity will be denied in intellectual
property infringement lawsuits in Japan. The draft
is currently being discussed, and in the near future,a treaty on sovereign immunity may come into(*30) Case Concerning the Arrest Warrant of 11 April 2000 (Democratic Republic of the Congo v. Belgium), 2002, International
Court of Justice, reprinted in ILM, vol, 141, p. 548, para. 46 (2002).
(*31) Matsuyama v. Republic of China, Great Court of Judicature (former supreme court of Japan), December 28, 1928, 7 Taihan
Minshū 1228, translated in Annual Digest, vol 4, p. 168.
(*32) Iwasawa Yuji, Japan’s Interactions with International Law: The Case of State Immunity, in Ando Nisuke ed., Japan andInternational Law, p. 126 (1999); Taijudo Kanae, “Kokusai hō ni okeru kokka no saibanken menjo (State’s jurisdictional
immunity under international law)”, Hōgaku ronsō [Kyoto Law Review], vol. 68, no. 5/6, pp. 118-122 (1961).
(*33) Yamaguchi v. United States (Judgment upon the case concerning sovereign acts of a foreign state and exemption from civil
jurisdiction of the court), April 12, 2002, Supreme Court of Japan, 56 Minshū 729. Mizushima Tomonori, Yamaguchi v.
United States, American Journal of International Law, vol. 97, pp. 406-411 (2003).
(*34) Report of the Ad Hoc Committee on Jurisdictional Immunities of States and Their Property, U.N. Doc. A/58/22, p. 2, para.
12 (2003).

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Appendix 1: Comparison in the Convention and Domestic Acts Having aSpecial Criterion(Determination of Immunity under a Special Criterion)

European
United Kingdom
Singapore
Convention on
State Immunity Act State Immunity Act
State Community
Article 7
Article 9
Article 8

PatentTrademarkDesignServicemark

Plant
breeder'sright

Copyright

Republic of South
AfricaForeign Sovereign
Immunity Act
Article 8Australia
Foreign States
Immunities Act
Article 15

Determinationof right

○

○

○

○

○

○

Infringement

○

○

○

○

○

○

Determinationof right

○

○

○

○

○

○

Infringement

○

○

○

○

○

○

Determinationof right

○

○

○

○

○

○

Infringement

○

○

○

○

○

○

Determinationof right

○

×

×

×

×

×

Infringement

○

×

×

×

×

×

Determinationof right

△

○

×

○

○

×

Infringement

△

○

×

○

○

×

Determinationof right

×

×

×

×

×

○

Infringement

○

○

○

○

○

○

○

○

○

○

○

○

Trade name

○ : There is a special criterion.
×： There is no special criterion.
△： May be included in “other similar rights.”

IIP Bulletin 2003

PakistanState Immunity
Ordinance
Article 8● 166 ●

Appendix 2: Intellectual Property Infringement Lawsuit in Which Immunityfrom Jurisdiction Was Determined under a Comprehensive Criterion(Determination of Immunity under a Comprehensive Criterion)
Was the infringement
deemed to haveoccurred in the state of
the forum?

Was
immunity
granted?

Czechoslovakia Trademark○

×State agency

Copyright

○

×

State
enterprise

PatentDistrict Court for
the Central
District ofCalifornia

State agency

Copyright

×○District Court for
Los Angeles News
the Central
Service v. Canadian1997 United States
District ofBroadcasting Corporation
California

State agency

Copyright○

×District Court forHenry Leutwyler v.
the Southern
Office of Her Majesty
2001 United States District of New
Queen Rania Al AbdullahYorkState agency

Copyright○

×District Court for
BP Chemicals Ltd. v.
the Eastern
Jiangsu Sopo Corporation 2002 United States
District ofLtd. et al
MissouriStateenterpriseTradesecrets

×○

BP Chemicals Ltd. v.
Court of Appeals
Jiangsu Sopo Corporation 2002 United States for the Eighth
CircuitLtd. et al

StateenterpriseTradesecrets

○

×

Case

Year

State of the
forum

Court

Dralle v. Republic ofCzechoslovakia

1950

Austria

Supreme Court

X v. Spanish Government
1977
Tourist Bureau

Germany

Superior
Provincial Courtof Frankfurt

James K. Gilson v. theRepublic of Ireland andGaelttarra Eireann1982 United States for the District ofIntercontinental
Dictionary Series v. The
Australian National
University et al

1993 United States

Court of Appeals

Columbia Circuit

Defendant● 167 ●

Allegedly
infringed
right×○ for the act relevant to
the infringement

×

IIP Bulletin 2003