Peter Nicolas, The Use of Preclusion Doctrine, Antisuit Injunctions, and Forum Non Conveniens Dismissals in Transnational Intellectual Property Litigation, 40 Va. J. Int'l L. 331 (1999), https://digitalcommons.law.uw.edu/faculty-articles/310
Virginia Journal of International Law
intellectual property, transnational law
Conflicting standards among the federal circuits over the applicability of inherent powers in the transnational intellectual property context and the divided authority regarding the jurisdiction of U.S. federal courts over foreign intellectual property claims severely hamper the ability of federal district courts to use these tools in such a manner so as to prevent parties in transnational intellectual property suits from engaging in strategic behavior. This Comment seeks to reconcile these conflicts where possible and, where irreconcilable, to demonstrate that the text and history of federal statutes conferring subject matter jurisdiction on federal courts and placing limits on their issuance of antisuit injunctions, as well as historical developments in federal common law, strongly support the exercise of jurisdiction over, and the use of preclusion doctrine, antisuit injunctions, and forum non conveniens dismissals in, transnational intellectual property disputes.
Part II of this Comment examines the conflict among the federal courts over whether U.S. federal courts have subject matter jurisdiction to hear claims brought under foreign intellectual property laws, and concludes that in most circumstances, federal courts can exercise subject matter jurisdiction over such claims under a number of different statutory grants of jurisdiction. Part III examines the question whether the Act of State doctrine prevents U.S. courts from adjudicating claims of infringement arising under foreign intellectual property laws, and concludes that the doctrine does not bar the adjudication of such claims.
Part IV examines whether infringement actions in foreign fora under foreign intellectual property laws can raise the bar of res judicata or collateral estoppel, and concludes that U.S. courts can and should make more aggressive use of these doctrines, notwithstanding substantial precedent that on its face suggests otherwise. Part V examines the conflict over whether U.S. courts should hear intellectual property claims arising under foreign law or instead dismiss them on forum non conveniens grounds and concludes that the equities weigh in favor of taking whatever action is necessary to ensure that all claims surrounding a given act of infringement are consolidated in the same forum.
Finally, Part VI examines the competing criteria for issuing antisuit injunctions, and concludes that U.S. federal courts should apply the more liberal standard, which gives them the power to issue such injunctions whenever necessary to avoid vexatious behavior or unnecessary duplication and expense.