Lex loci protectionis

The lex loci protectionis, or law of the country for which protection is claimed, is the conflict of laws rule that subjects the existence, content and enforcement of an intellectual property right to the law of the State in whose territory protection is sought. It is enshrined in Article 5(2) of the Berne Convention for copyright, and in Article 8 of the Rome II Regulation for non-contractual obligations arising from an infringement of any intellectual property right.

Basis and scope of the rule

The rule derives from the principle of territoriality: each State determines in its sovereignty the conditions on which it grants an exclusive right in its territory. The law of the country of protection governs the protectability of the subject matter, the term of the right, its limitations and exceptions, the acts that constitute infringement and the sanctions. The country for which protection is sought must not be confused with the country of the court seised: a French court may perfectly well be called upon to apply Spanish law to acts committed in Spain. Likewise, the law of the country of protection is not the law of the place of damage within the meaning of the general law of liability, although the two most often coincide.

Disputed questions

Initial ownership of copyright has given rise to a controversy between the law of the country of origin of the work, known as the lex originis, and the law of the country of protection. The Court of Cassation in principle applies the law of the country where protection is claimed to determine the owner, a solution that commentators question because of its consequences for works created under a foreign regime that vests the rights in the employer or the producer. Contracts concerning the rights are governed by the law of the contract, determined by the Rome I Regulation, which requires a careful distinction between the law applicable to the assignment or licence and the law applicable to the right itself. For registered titles, the law of the country of grant governs the existence and validity of the title.

Application to online infringements

The online dissemination of content accessible from every State raises the question of the countries for which protection is claimed. For jurisdiction, the Court of Justice applies the criterion of accessibility of the website for copyright and that of targeting of the public for trade marks, and the French courts transpose this analysis to the determination of the applicable law by examining whether the content is directed at the French public. In multi-territorial disputes, the rule leads to a distributive application of several laws, which operates alongside the jurisdiction determined by the Brussels I bis Regulation.

Key points

The law of the country for which protection is claimed governs the existence, content and enforcement of intellectual property rights, with no choice open to the parties. It is distinct from the law of the forum and from the law of the contract. For each territory covered by an action, identify the law applicable to ownership, infringement and compensation, and check the law governing any assignment or licence agreements relied upon.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. When the question arises in a real case, the right moment is almost always before proceedings are issued.

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