[Federal Register: October 17, 2000 (Volume 65, Number 201)]
[Page 61306-61309]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]



United States Patent and Trademark Office

RIN 0651-AB25

Request for Comments on Preliminary Draft Convention on
Jurisdiction and Foreign Judgments in Civil and Commercial Matters

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.


SUMMARY: The Hague Conference on Private International Law is
negotiating a convention designed to create common jurisdiction rules
for international civil and commercial cases and to provide for
international recognition and enforcement of judgments issued under
these rules. A Diplomatic Conference to conclude these negotiations is
scheduled to begin in June 2001, with a final session sometime in early
2002. The United States Patent and Trademark Office (USPTO) is seeking
views of the public on this effort and the consequent potential changes
to United States law and practice.

DATES: Comments should be submitted on or before December 1, 2000.

ADDRESSES: Persons wishing to offer written comments should address
those comments to Director of the United States Patent and Trademark
Office, Box 4, United States Patent and Trademark Office, Washington,
DC 20231, marked to the attention of Elizabeth Shaw. Comments may also
be submitted by facsimile transmission to (703) 305-7575 or by
electronic mail through the Internet to elizabeth.shaw2@uspto.gov. All
comments will be maintained for public inspection in Room 902 of
Crystal Park II, 2121 Crystal Drive, Arlington, Virginia.

FOR FURTHER INFORMATION CONTACT: Jennifer Lucas by telephone at (703)
305-9300; by facsimile at (703) 305-8885; by electronic mail to
jennifer.lucas@uspto.gov; or by mail marked to the attention of
Jennifer Lucas, Attorney-Advisor, addressed to Director of the United
States Patent and

[[Page 61307]]

Trademark Office, Box 4, Washington, DC 20231.



    The Hague Conference on Private International Law is in the process
of negotiating a new convention on jurisdiction and the recognition and
enforcement of foreign judgments in civil and commercial matters. The
draft convention would create jurisdictional rules governing
international lawsuits and provide for recognition and enforcement of
judgments by the courts of Member States. Member States would be
required to recognize and enforce judgments covered by the Convention
if the jurisdiction in the court rendering the judgment were founded on
one of the bases of jurisdiction required by the Convention.
    Discussions began in 1992, at the request of the United States. The
impetus behind the request was to gain recognition and enforcement of
U.S. judgments in other countries. While U.S. courts generally
recognize and enforce judgments from other countries, U.S. judgments do
not always receive the same treatment abroad.
    The Hague Conference is planning a two-part Diplomatic Conference
to finalize the draft convention. The first session would take place in
June 2001, followed by a second session in late 2001 or early 2002.
    The text of the proposed convention and other documents relating to
the proposal are available via the Hague Conference's web site at

Brief Summary of Draft Convention

    The draft convention would create three categories of jurisdiction:
(1) required bases for jurisdiction (generally Articles 3-16); (2)
prohibited bases for jurisdiction (Article 18); and (3) everything else
not covered by (1) or (2) (Article 17).
    Articles 3-16 set out jurisdictional rules for specific types of
actions that the courts in Contracting States must provide, and from
which any resulting judgment may gain the benefits of the recognition
and enforcement provisions of the Convention.
    Article 12 creates exclusive jurisdiction for certain actions that
``have as their object'' the registration, validity, nullity, and
possibly revocation or infringement of patents, trademarks, or other
similar rights required to be deposited or registered, in the courts of
the country in which the deposit or registration has been applied for
or has occurred. Copyrights are excluded from the exclusive
jurisdiction rule; however, actions concerning copyrights could fall
under the other non-exclusive required jurisdictional provisions.
    Specifically, Article 12 provides:

    ``4. In proceedings which have as their object the registration,
validity, [or] nullity [, or revocation or infringement] of patents,
trade marks, designs or other similar rights required to be
deposited or registered, the courts of the Contracting State in
which the deposit or registration has been applied for, has taken
place or, under the terms of an international convention, is deemed
to have taken place, have exclusive jurisdiction. This shall not
apply to copyright or any neighboring rights, even though
registration or deposit of such rights is possible.
    [5. In relation to proceedings which have as their object the
infringement of patents, the preceding paragraph does not exclude
the jurisdiction of any other court under the Convention or under
the national law of a Contracting State.]
    [6. The previous paragraphs shall not apply when the matters
referred to therein arise as incidental questions.]''

    The brackets identify potential language alternatives to be
considered and discussed in detail during the Diplomatic Conference.
    Article 4 provides that parties may enter into agreements
designating a choice of court; however, such agreements shall be
without effect if they conflict with the provisions of Article 12. In
addition, Article 5, which confers jurisdiction on a court when the
defendant proceeds on the merits without contesting jurisdiction, is
subject to Article 12 as well.
    Article 10 defines jurisdictional rules for tort actions. This
provision would cover copyright infringement proceedings. It also could
apply to patent and trademark infringement proceedings if the bracketed
language in Article 12(4) is not approved. Article 10 provides for
jurisdiction either in the State in which the act or omission causing
injury occurred, or the State in which the injury arose so long as the
injury in that State was reasonably foreseeable. Article 10(4) would
limit available damages, where jurisdiction is founded on the place of
injury, to the damage suffered in the place the suit is filed unless
that is also the plaintiff's habitual residence.
    Article 18 defines grounds of jurisdiction that are prohibited in
Contracting States. Article 18(1) would place a general limitation on
the exercise of jurisdiction based on the absence of a ``substantial
connection between that State and the dispute.'' Article 18(2)(e) is of
particular interest to U.S. litigants because it states that
jurisdiction cannot be based solely on the fact that the defendant
carries on commercial or other activities in that State, except where
the dispute is directly related to those activities. This provision
would prohibit the exercise of general ``doing business'' jurisdiction
as currently recognized under U.S. law. Article 18(2) also would
prohibit the exercise of ``tag'' jurisdiction in a court based on
service upon the defendant in the State.
    Everything that does not fall under either of these categories is
included in the ``gray area'' as defined in Article 17. With some
exceptions, countries can continue to act as they normally do under
their national law; however, judgments resulting from actions covered
by this provision will not get the benefits of recognition and
enforcement under the Convention.
    Chapter III provides rules for the recognition and enforcement of
judgments based on a ground of jurisdiction provided for in Articles 3-

Current U.S. Jurisdictional Law

    U.S. courts must have both personal jurisdiction over the parties
and subject matter jurisdiction over the case before a court can act on
a dispute.

I. Personal Jurisdiction

    Generally, in order to exercise personal jurisdiction over a
nonresident defendant, district courts interpret the long-arm statute
of the state in which they reside, as restricted by the limitations
imposed by the due process clause of the U.S. Constitution.
    Courts first apply the state long-arm statute, which defines what
types of conduct would bring a nonresident defendant within the
boundaries of the court's reach. Activities that can create
jurisdiction under most long-arm statutes include transacting business,
committing a tortious act within the forum, or committing a tortious
act outside the forum that has an effect within the forum.
    Once the court finds that the exercise of jurisdiction over the
nonresident defendant is consistent with the relevant long-arm statute,
the court then must determine whether the due process requirements are
satisfied. The due process rule of the U.S. Constitution requires that
a nonresident defendant have ``minimum contacts with [the forum] such
that the maintenance of the suit does not offend `traditional notions
of fair play and substantial justice.' '' International Shoe Co. v.
Washington, 326 U.S. 310, 316 (1945) (quoting Milliken v. Meyer, 311
U.S. 457, 463 (1940)). In evaluating whether minimum contacts have been
established in a given case, the courts ask if a

[[Page 61308]]

nonresident defendant, through his conduct and connection with the
forum, ``purposefully avails itself of the privilege of conducting
activities within the forum state, thus invoking the benefits and
protections of its laws.'' Burger King Corp. v. Rudzewicz, 471 U.S.
462, 475 (1985) (quoting Hanson v. Denckla, 357 U.S. 235, 253 (1958)).
    A court must establish that it has either general or specific
jurisdiction over a defendant before it can proceed with an action
against the defendant. General jurisdiction is personal jurisdiction
exercised over a defendant when the cause of action is unrelated to the
defendant's contacts, but the defendant has sufficient contacts with
the forum. Specific jurisdiction arises out of, or is related to, the
defendant's contacts with the forum. See Helicopteros Nacionales de
Colombia v. Hall, 466 U.S. 408, 414 (1984).
    General jurisdiction has been found where the defendant was
engaging in ``continuous and systematic [though unrelated to the cause
of action] business.'' Perkins v. Benguet Consolidated Mining Co., 342
U.S. 437, 438 (1952). To assert specific jurisdiction, a court is
required to find that the defendant purposefully directed activities at
residents in the forum, the claim arose out of those activities, and
the assertion of personal jurisdiction is fair and reasonable. See
Burger King, 471 U.S. at 471-76.
    Courts are cautious in exercise of jurisdiction over foreign
defendants. See Asahi Metal Industry Co. v. Superior Court, 480 U.S.
102, 114 (1987) (holding ``unique burdens placed upon one who must
defend oneself in a foreign legal system should have significant weight
in assessing the reasonableness of stretching the long arm of personal
jurisdiction over national borders.''). Considered critical to due
process analysis is whether the foreseeability exhibited by defendant's
conduct and its connections with the forum State demonstrate that the
defendant would reasonably anticipate being brought into the forum
court. See World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297-
298 (1980).
    With respect to Internet-related cases, the law of personal
jurisdiction is in flux. The traditional minimum contacts approach has
been used to determine whether a court has jurisdiction over a non-
resident defendant in Internet-related intellectual property disputes.
In such cases, the courts have looked to a variety of factors,
including but not limited to the level of interactivity of the Web
site; whether the tortious act was committed in state or out-of-state
with impact in the state; the number of hits on the Web site; or the
foreseeability of use by forum residents. See, e.g., Cybersell, Inc. v.
Cybersell, Inc., 130 F.3d 414 (9th Cir. 1997); Zippo Mfg. Co. v. Zippo
Dot Com, 952 F. Supp. 1119 (W.D. Pa. 1997); Eskofot A/S v. E.I. Du Pont
De Nemours & Co., 872 F. Supp. 81 (S.D.N.Y. 1995).

II. Subject Matter Jurisdiction

    Federal district courts have jurisdiction over civil actions
involving patents, trademarks and copyrights pursuant to 28 U.S.C.
1338(a), which provides: ``The district courts shall have original
jurisdiction of any civil action arising under any Act of Congress
relating to patents, * * * copyrights and trademarks. Such jurisdiction
shall be exclusive of the courts of the states in patent * * * and
copyright cases.''
A. Patents
    As mentioned above, federal courts have exclusive jurisdiction over
all suits ``arising under any Act of Congress relating to patents.''
This includes all patent validity and infringement actions.
Jurisdiction under this section extends ``only to those cases in which
a well-pleaded complaint establishes either that federal patent law
creates the cause of action or that the plaintiff's right to relief
necessarily depends on resolution of a substantial question of federal
patent law.'' Christianson v. Colt Industries Operating Corp., 486 U.S.
800, 809 (1988).
B. Trademarks
    Actions involving trademark infringement under the Lanham Act can
be heard in either state or federal courts in the United States.
However, most trademark actions arising out of the Lanham Act take
place in federal court. Federal district courts have subject matter
jurisdiction over all actions arising under the Lanham Act pursuant to
Sec. 39 of that Act, 15 U.S.C. 1121, as well as 28 U.S.C. 1338(a).
    Section 14 of the Lanham Act creates an administrative proceeding
within the USPTO where a party can petition to cancel a registered
trademark. 15 U.S.C. 1064. Federal courts have concurrent jurisdiction
with the USPTO to hear proceedings to cancel a mark, so long as the
challenge arises from an existing trademark-related proceeding, as a
result of Sec. 37 of the Lanham Act. 15 U.S.C. 1119. Section 37
provides that a court may order the cancellation of a trademark
registration ``[i]n any action involving a registered trademark.'' This
section, however, does not create an independent ground for exercising
jurisdiction over an action--the court must have subject matter
jurisdiction based on another ground before considering cancellation of
a registered trademark. See 5 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, Sec. 30:110, pp. 30-186-88 (4th ed.
C. Copyrights
    Federal courts have exclusive jurisdiction over actions based on
the Copyright Act, including copyright infringement proceedings. 28
U.S.C. 1338(a).

Issues for Public Comment

    The USPTO is interested in assessing support for or opposition to
the effort to negotiate a convention on jurisdiction and enforcement of
judgments and in obtaining comments on the proposed convention as it
relates to intellectual property. Interested members of the public are
invited to present written comments on any issues they believe to be
relevant to protection of intellectual property or any aspect of the
proposed convention as it relates to intellectual property. Comments
also are welcome on the following specific issues:
    1. What are your experiences in having judgments involving
intellectual property from one jurisdiction recognized in a foreign
    2. Have you had different experiences in having those judgments
recognized in U.S. courts?
    3. Are uniform rules for international enforcement of judgments
    4. Do you support or oppose the United States becoming party to a
jurisdiction/enforcement of judgments convention?
    5. What would be the benefits or drawbacks of the United States
becoming a party to the proposed Hague convention?
    6. Would the elimination of tag or general ``doing business''
jurisdiction have any impact on intellectual property owners' ability
to protect their rights either domestically or internationally?
    7. What other changes to U.S. law would be needed to implement the
proposed convention? Please identify any drawbacks and/or advantages to
such changes.
    8. What effect, if any, could this Convention have on other
international intellectual property obligations, including, but not
limited to, the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS), the Paris Convention, and the Berne
    9. What effect, if any, could this Convention have on the
enforcement of intellectual property with respect to the Internet?

[[Page 61309]]

    10. Would application of Article 10 change existing jurisdictional
principles as applied to intellectual property infringement actions? If
yes, please describe any changes in detail and provide any relevant
legal authority.
    11. Would the limitation of worldwide damages in Article 10(4) have
any significant impact in cases involving worldwide infringement of
trademark or other intellectual property rights?
    12. With respect to Article 12(4), under what circumstances would
application of this subsection change existing jurisdictional
principles, with and without the bracketed language included? Please
describe any changes in detail and provide any relevant legal
    13. What effect, if any, would Article 12(4) have on trademark
owners seeking to litigate rights related to registered versus common
law marks?
    14. Is exclusive jurisdiction needed for infringement and/or
validity actions involving patents, trademarks, and/or copyrights?
    15. What changes, if any, should be made to the proposed
Convention? Please describe any changes in detail and provide any
relevant legal authorities that support such suggestions.
    16. Please identify any other potential concerns or advantages
raised by the proposed convention.
    In your response, please include the following: (1) clearly
identify the matter being addressed; (2) provide examples, where
appropriate, of the matter being addressed; (3) identify any relevant
legal authorities applicable to the matter being addressed; and (4)
provide suggestions regarding how the matter should be addressed by the
United States.

    Dated: October 11, 2000.
Q. Todd Dickinson,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 00-26634 Filed 10-16-00; 8:45 am]