INTL LAW EXAM 3
Franchising
Licensing outside the technological context, an arrangement in which the licensor permits the licensee to sell certain goods under the licensor's trademark or service mark under the terms of a franchising agreement
Trademarks
- Paris Convention - Right of priority to a trademark holder if the foreign registrations are made within six months after the original registration - Madrid Protocol - WIPO administers the prosecution and notifies designated countries
TRIPS
- Requires every member of the WTO to abide by the Paris and Berne conventions - 50 year copyrights protection - Patent protection
Field of use limitations
restrict the applications for which the licensee may employ the IPR
Mobile Communications Service Inc. v. WebReg, RN
Domain name transferred to complainant mobile communications service
Sebago Inc. c. GB UNIE
EU Trademark's directive to permit reimport from one union country to another, but to forbid reimport from other countries - "regional trademark exhaustion"
Notification-registration
a system more open to technological transfer but still only make exceptions for areas with high concern
Expropriation
a taking of an isolated item of property, merits full compensation
Repatriated
paid out to the U.S. person, typically in the form of a dividend
Inconvertibility/non transfer policy
a type of political risk insurance, investors can purchase to insure against hard blockages or soft blockages
Privatization
can be accomplished by the outright sale of assets or ownership interests in a state-owned enterprise being sold to private investors, by granting concessions that allow private entities to operate and derive profit from state-owned infrastructure
Franchise tax laws
can impose taxes based on the franchisor's worldwide operations even if its local operations fizzle
Passive investment
can involve a passive debt investment (making a loan to a foreign business) or a passive equity investment (purchasing an equity interest in the foriegn business as a portfolio investment
Countertrade
payments to the franchiser with goods instead of hard currency
Unitary index adjustment
formulaic adjustment of payment terms based on an accepted unitary index
Patent Law Treaties Implementation Act of 2012
harmonizes IS law for design patents
Currency exchange rights
if an investor proposes bringing a desired industry to the soft-currency nation it can negotiate with the government in advance for preferential access to hard currency
Toxic Substances Control Act
imposes reporting and record-keeping requirement on all chemical substances
Bad faith
intentional wrongful behavior, includes some negligence without a finding of intent
Counterpurchase agreement
involves the sale of goods to a buyer, often a foreign government which requires as a condition of the sale that the seller buy other goods produced in that country
Paris Convention
- Convention for the Protection of Industrial Property - Each country must give the same intellectual property protection to the other countries - Targeted discrimination against foreigners in obtaining patents
Uniform Domain Name Dispute Resolution Policy
"first to file" rules for domain names, but accepted bad-faith filings
Gray Market
(parallel trade) the importation of merchandise produced and sold abroad and then imported back into the United States for sale in competition with the U.S. trademark owner Gray market imports/parallel imports
Patent Cooperation Treaty
- established a centralized utility patent application process - PCT application is filed on a standard form with WIPO - priority claim
Copyright Term Extension ACt
- mickey mouse act - copyrights are protected for 70 years after authors death or 95 from publication
Transfer firms
1. International IPR clearinghouse 2. International IPR brokers 3. IPR aggregation funds for open source software 4. Firms that identify and acquire patents for the purpose of preventing violations and litigation costs
Methods of FDI
1. Opening a foreign Branch or Forming a new Foreign Subsidiary 2. Acquiring a Foreign Branch 3. Joint Ventures
Mechanics of IPR Transfer Regulations
1. Pre Approval 2. Notification-registration 3. No regulation (good for entrepreneurship)
Copyrights
The Berne Convention
Prior informed consent
The Federal Insecticide, fungicide, and Rodenticide Act requires that before a U.S. seller can export pesticides that are not registered fro use in the United States, it must obtain the PIC of the purchaser and give notice to the appropriate official in the recieving country
Joint Commission on Commerce and Trade
U.S. uses to get results on IPR protection and enforcement
K Mart Corp. v. Cartier Inc.
US supreme court allowed the entry of gray market imports as long as the foreign manufacturer and the domestic trademark owner were subject to common control
Currency swaps
a broad assortment of financial contracts purchased from financial intermediaries to hedge against fluctuation risk
Royalty
a license fee
Grant back
a licensor may seek a grant back of ownership in or at least the right to use - often without compensation - such new technology
Vorstand
a management board that manages the firm from day to day
Geographical indications
a product, particularly a wine or liquor, is marketed by reference to a geographic location
Worldwide system
all income earned anywhere in the world, regardless of source, by U.S. persons is taxable by the U.S. government
Formulary Apportionment System
all income earned by a person is put in a single category and then it is apportioned between the various nations that have some claim to tax the person on the basis of a predetermined formula that relies on factors such as proportion of sales, assets, or payroll location in a jurisdiction
Reinsurance treaty
an agreement among insurance companies that spreads the risk among its members
Multilateral Investment Guarantee Agency
an independent affiliate of the world bank, issues insurance guarantees to protect foreign investors from losses relating to political risk issues (15 year term)
patent protection
at least 20 years, available for "any new inventions whether products or processes, in all fields of technology, provided that they are new, involve an inventive step (nonobvious) and are capable of industrial application (useful)
Friendship, Commerce, and Navigation treaties
between the United States and other nations allow a foreign employer to choose its own executives and experts to run its operations in the other signatory nations
Soft blockages
delays in processing conversion requests by the local authorities
Barter
direct exchange of goods for goods (or services)
Bona Fide Occupational Qualification
employer may engage in discrimination if it is "reasonably neccessary to the normal operation of the particular business or enterprise"
Geneva Act
established protection of Design Patents
FRAND
fair, reasonable, and nondiscriminatory licesning that can significatly reduce the risk of patent "hold-up" and the perceived advantages of litigation
Foreign Sovereign Immunities Act
foreign states are generally immune from jurisdiction of U.S. courts unless: - The foreign state waives immunity - The state's action constitutes "commercial activity" carried on by the state - Rights in property are taken in violation of international law - Rights in property are acquired through inheritance or gifts of the US - The suit involves non commercial torts within the us - The suit involves maritime liens based on the foreign state's "commercial activity" - The suit involves certain types of counterclaims and the foriegn state instituted the lawsuit against a US citizen
Aufsichtsrat
large supervisory board that represents shareholders' interests
Language politics
laws requires that companies conduct business in a certain language, system franchisers beware
Restatement (Third) of Foreign Relations Law
less than full compensation may be acceptable in "exceptional circumstances" such as agricultural land reform
license
limited permission to use the U.S. firm's trademarks, copyrights, know-how in making products for sale in the vicinity of the foreign company's country
Foreign Tax Credit
limits U.S. worldwide taxation to reduce the incidence of double taxation the U.S. offers a dollar-for-dollar tax credit for foreign income taxes paid on foreign source of income
Geographical limitations
limits the licensee's sale of that IPR within a specific region
Prior Approval
more intrusive type of regulatory scheme, indicative of relatively protectionist government policy
All-China Federation of Trade Unions
national labor organization shapes the local work council's efforts
Kiobel v. Royal Durch Petroleum Co
nigerian citizens sued for abuse/crimes, US supreme court dismissed the case for failure to state a cause of action because of forum of non conviens
Hard blockages
occur when a foreign government passes a law that prevents conversion or transfer
Soft currency
one that is not freely exchangeable for currencies of other nations
Apple v. Samsung
originally granted apple damages for samsung's infringement on their design patent of a rectangular phone, but it was later reversed saying they did not have a patent
Modern-traditional theory
permits takings but imposes certain requirements on the nation exercising its takings power 1. Must be for public purpose 2. Nondiscriminatory 3. Accompanied by prompt, adequate, and effective compensation
Lloyd's of London/insurance syndicates
pools of money provided by investors to insure specific projects - provide such insurance on a case-by-case basis
Anticybersquatting Consumer Protection Act
prohibits registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark owner
Overseas Private Investment Corporation
promote exports by insuring domestic firms that do business abroad against expropriation, nationalization, revolution, insurrections, and currency inconvertibility
Export credit agencies
promote investment from their own countries
Madrid Protocol
provides a centralized filing system on a standard form and a designation of the countries in which trademark registration is sought
Cybersquatting
registering a domain name with the intent to profit from the goodwill of a trademark belonging to another, then sells for inflated price
Tied-purchase clauses
require the franchisee to buy certain goods from the franchiser (competition laws)
Resource Conservation and Recovery Act
requires that the exporter to provide notice to the EPA of any forthcoming shipment, then the government of the receiving country must expressly accept the shipment and provide written consent to EPA
Active investment
results in a U.S. investor having an ownership interest in the foreign business as either a foreign branch or subsidiary , the assets of the business will be legally owned by a business entity organized under the laws of the foreign host country
Nationalization
taking of an entire industry or natural resource as part of a plan to restructure the nation's economic system
Deferral Principal
tax from foreign corporation will be deferred until it is repatriated
Import substitution rights
the U.S. investor may seek these if the preferential currency exchange rights are not available, these rights are available when the new venture will manufacture a product in the soft-currency country that the nation had previously imported
Section 301 of the Trade Act of 1974
the USTR publishes the Special 301 report that is an annual review of the global state of intellectual property rights
priority claim
the applicant has up to 30 months after filing to begin administrative processing (prosecution) of the application in the countries in which is wants to obtain protection
Rights of priority
the date of an applicant's foreign application is deemed to be the same as the date of the applicant's original application on the same invention, so long as the foreign applicant's was filed before the first anniversary of the original application
Creeping expropriation
the effect of laws and regulations that subject the investor to discriminatory taxes, legislative controls over management of the firm, price controls, forced employment of nationals, license cancellation, and restriction on currency convertibility
German Works Constitution Act
the employer must inform and cosult with the works council before anything is done
Trade creditors
the entities that sell supplies or services to the venture
Foreign Direct Investment
the investor owns and actively controls the productive assets of ongoing business concerns in a foreign country ( the investing business carriers on operations directly in the host country)
Informal Consortia or Parallel Exchange
the investors - all committed to the local incontrovertibility risk - spread that risk over a larger group, with the hopes of reducing the vagaries of local bureaucracy
Output or customer restrictions
the licensee will be expected to pledge its "best efforts" to develop a market for the products manufactured with the IPR and mist meet specific marketing targets under pain of losing its license
Fluctuation risk
the possibility that the currency of the country in which the U.S. investor has put its money will devalue against the U.S. dollar
Profit margin preservation
the price or payment to the foreign investor will be adjusted periodically to maintain the same profit margin (discloses foreign company's cost structure)
ADC Affiliate et al. v. The Republic of Hungary
the privatization of the airport was a violation of the agreement the investors - unlawful expropriation
Buy-back agreement
the provider of the equipment or technology used in manufacturing will receive, as its payment, a portion of the goods manufactured by the supplier's equipment of the factory in which the equipment is installed
Hukou
the registration of households that categorizes citizens according to their place of residence, essentially dividing the population into agriculture and urban, mechanism for determining social entitlements
Currency risk
the risk that profits in the foreign host country's currency will not translate into equivalent profits in the investor's home country
Political risk
the risk that profits will be affected by changes in the host country's political structure or instability
Inconvertibility risk
the risk that the government of a country with "soft currency" will hinder the U.S. entrepreneur from trading the foreign currency back to U.S. dollars
Biopiracy
they extract plants and animals indegenous to the emerging nation for research (with the help of local knowledge), alter the plant or animal (such as through genetic engineering), and then obtain patents related to this research without providing the host country with compensation or affordable access to the inventions
Anti-Counterfeiting coalition
trade group that pressures governments to enforce IPR laws
Exclusive rights
within some geographic area in order to enhance its chances of earning an adequate return on its investment