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Re: CDDL, OpenSolaris, Choice-of-venue and the star package ...

On 9/9/05, John Hasler <jhasler@debian.org> wrote:
> If I find that Nokia is selling phones that infringe my copyright by
> violating the terms of the license on my software I should not have to fly
> to Finland to sue them.  Fortunately, I do not, even in the absence of a
> choice of venue clause.

That's correct (AIUI, IANAL) -- _if_ those phones are sold, by Nokia
or their authorized agent, in your home country, giving your home
court personal jurisdiction (license or no license), and _if_ their
non-conformance to the provisions of your offer of contract is
sufficient to deny them the defensive claim of license under your
jurisdiction's rules.  (In the US, for instance, a "violation" that
does not strike to the heart of the bargain contained in the offer of
contract is unlikely to result in any remedy other than a conditional
injunction, i. e., start complying in good faith with whatever terms
survive contract construction or else cease and desist.)

The Berne Convention specifies more or less that you can exercise the
same rights as a local copyright holder in other signatory countries,
and that any registration formalities involved in the prosecution of
your copyright are streamlined by presenting evidence of publication
in your home country.  It does not automatically give your home courts
personal jurisdiction over people who make and distribute unauthorized
copies, derivative works, etc. without a foothold on your home soil. 
In the hypothetical Nokia case -- a major company engaged in
international commerce -- if Nokia has a branch office in your
country, you may be able to file suit locally against them (in the
forum where that branch is located) for breach of contract, using the
fact that they are knowingly distributing your code in some other
Berne Convention signatory as evidence that they have accepted the
terms of your offer of contract.

If they successfully defend by claiming that they never accepted the
offer and hence there is no contract, then you should have an
open-and-shut case for willful infringement -- but you're going to
have to file it in the country where the infringement is happening. 
(That court should rule that the defendant is estopped from turning
around and claiming license in the copyright case -- judicial estoppel
crosses jurisdictional boundaries.)  In any case, you have to start in
a forum where there is a plausible case for jurisdiction over the
breach of contract claim, and if neither the company's business
activities nor the copying and distribution are located near you, you
have to travel or face the likelihood of dismissal for forum non
conveniens and/or lack of personal jurisdiction.

> If someone in Indonesia is infringing my copyright in Indonesia I will, of
> course, do nothing regardless of the presence or absence of a choice of
> venue clause in my license: suing him in the US would be a complete waste
> of time and I have no money for international ventures.
> > ...Or get him extradited somehow.
> Extradition has nothing to do with civil lawsuits.

Note that, in any case, a choice of venue clause in a license (a
species of offer of contract, remember?) only affects your ability to
sue under contract.  It cannot magically grant the licensor a right to
sue under the statutory tort of copyright infringement in a
jurisdiction where he otherwise could not; nor does it prevent his
opponent from pleading license as a defense to copyright infringement.
 It might actually prevent the licensor from bringing a claim of
breach of contract, as a counter-argument against the claimed license,
in the court where the copyright claim must be pled, if that is not
the specified venue; that depends on whether the court decides neither
to strike the forum selection clause nor to rule that the claim of
license within the copyright proceeding brings it into the proper
scope of judgment anyway.  (That's how contract topics wind up in US
federal courts to begin with; some statutory consideration like
copyright brings the case into federal subject matter jurisdiction, so
the court also has to rule on contract issues under the appropriate
state governing law.)

In my opinion, choice of venue (forum selection) clauses are just not
a good idea in situations like shrink-wrap licenses where the "minimum
contact" standard of personal jurisdiction is not met.  They're
legitimate when they're used to reduce uncertainty about recourse in a
negotiated contract.  But they don't belong in form contracts unless
there is a halfway legitimate reason why the _offeror_ shouldn't have
to face lawsuits in a zillion jurisdictions from one event, and they
shouldn't give the offeror access to a forum where personal
jurisdiction over the _offeree_ wouldn't otherwise apply.  Whether or
not you approve of boilerplate on cruise tickets requiring that claims
of negligence, vicarious liability, etc. (as well as straight breach
of contract) be brought in the cruise line's home court, or shortening
the period within which claims must be brought, you can at least point
to a public policy justification and a transaction initiated by the
passenger that is fundamentally a contract for services rather than
purchase of a thing.

As I understand it, even in countries (like the US) in which copyright
violation on a sufficiently grand and deliberate scale can result in
criminal penalties, you're unlikely to see an indictment followed by a
request for extradition without presenting evidence of a successful
civil suit for copyright violation, and you can't get anywhere on that
without personal jurisdiction.  IANAL and I suppose there could be a
way around this, but what district attorney would seriously pursue a
criminal charge when the copyright holder hasn't bothered to exercise
his right to civil enforcement first?

- Michael

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