A tangled web of IP questions

It was only a matter of time before the Internet began to raise serious questions for the courts.

Now an action looks scheduled to become the High Court's first full-blown test case to centre on the Internet. The dispute is between Internet publisher and conference specialists Mecklermedia Corporation and Mecklermedia and a rival German concern, D C Congress GmbH.

Even at the interlocutory stage it has already resulted in what in intellectual property circles is considered a signpost ruling.

Mecklermedia is a leader in its field, running conferences throughout the world under the name Internet World.

It operates an Internet World web site giving details of its Internet World shows and publications. But now Meckler- media claims its business is being damaged by action in Germany from where it says D C Congress has mounted a similar operation also using the name Internet World.

Mecklermedia says that by operating from Germany and by, among other things, using the Internet, D C Congress has used the Internet World name to target Mecklermedia customers.

Mecklermedia instructed Andrew Inglis and Paul Stevens, intellectual property specialists and partners at Olswang. They issued passing off proceedings in the High Court against D C Congress in respect of its German-based activities both in and from Germany.

The decision of Mr Justice Jacob in an interlocutory application is regarded as highly significant. D C Congress asked the court to set aside Mecklermedia's writ on the grounds that the High Court in the UK had no jurisdiction; to stay the case on the grounds that the German courts are already seized of a related action; or to strike out the claim under the inherent jurisdiction of the court because, it alleged, Mecklermedia had no arguable case.

The strike-out application was made on the basis that D C Congress claimed its activities were legitimate in Germany – that is, the mailing of promotional material from Germany to the UK and the advertising of its services on the Internet using a German server.

Inglis and Stevens say major questions which have never been answered before in relation to jurisdiction and intellectual property rights were raised by the case.

Should, as D C Congress argued, this action take place in Germany, on the basis that that is where the computer activity leading to the allegedly infringing acts originated?

Or should the action take place in the jurisdictions where the allegedly infringing material has been received by Internet users and where it has done the damage claimed?

D C Congress argued that under the Brussels Convention the German courts should hear the case.

But Inglis and Stevens took the view that intellectual property rights were national and should be dealt with on that basis. They won backing for that view from Mr Justice Jacob.

"I think that normally the most convenient forum for deciding an English trade mark or passing off case is this court," said the judge.

"I think it would be very difficult for a court which uses a language other than English to form a reliable view on the question, especially if it was marginal."

Mr Justice Jacob added that if this case went to the German courts evidence and law would both have to be "imported" to the court, whereas that would be unnecessary if the case was heard in the High Court in the UK.

As the world gets increasingly wired, expect further Internet-based IP wrangles.