WAKE FORESTipjournal.law.wfu.edu/files/2009/09/issue.9.2.pdfWAKE FOREST INTELLECTUAL PROPERTY LAW JOURNAL SPRING 2009 BEYOND THEORIES: INTELLECTUAL PROPERTY DYNAMICS IN THE GLOBAL

WAKE FOREST INTELLECTUAL PROPERTY LAW JOURNAL

SPRING 2009

BEYOND THEORIES: INTELLECTUAL PROPERTY

DYNAMICS IN THE GLOBAL KNOWLEDGE ECONOMY

Chidi Oguamanam 104

FASHION DESIGN: THE WORK OF ART THAT IS STILL

UNRECOGNIZED IN THE UNITED STATES

Biana Borukhovich 155

DIGITAL TURF WARS: ISSUES AND SOLUTIONS

RELATING TO THE CONCURRENT USE IN A

CYBERSPACE CONTEXT

Benjamin Prevas 177

Xiaoyong Yue

VOLUME 9 NUMBER 2

ABOUT THE JOURNAL

The WAKE FOREST INTELLECTUAL PROPERTY LAW JOURNAL is published

three times a year by the Wake Forest University School of Law. Established in

2001, the Journal is comprised exclusively of legal scholarship addressing issues

within the law of intellectual property. The Journal’s student staff members are

selected for membership based upon academic achievement, performance in an

annual writing competition, or extensive previous work experience in the field of

intellectual property.

The Journal encourages academicians, practitioners, students, and other

individuals to submit their legal scholarship for publication in the Journal.

Submissions are reviewed by the Manuscripts Editor, and those articles

considered for publication are further reviewed by a member of the Board of

Advisors. Decisions to extend an offer of publication are made by the Editorial

Board in conjunction with the Board of Advisors and the Faculty Advisor. The

editors then work closely and collaboratively with authors to prepare pieces for

publication.

Submitted articles should be accompanied by a cover letter and

curriculum vitae, and may be sent electronically to

[email protected], or by mail to:

Manuscripts Editor

WAKE FOREST INTELLECTUAL PROPERTY LAW JOURNAL

Wake Forest University School of Law

P.O. Box 7206 Reynolda Station

Winston-Salem, North Carolina 27109

Copyright © 2009 by the Wake Forest Intellectual Property Law Journal

BOARD OF ADVISORS

DANNY M. AWDEH

Finnegan Henderson Farabow Garrett & Dunner LLP; Washington, DC

CHARLES W. CALKINS

Kilpatrick Stockton LLP; Winston-Salem, North Carolina

BRIAN C. ELLSWORTH

Alston & Bird LLP; Charlotte, North Carolina

EDWARD R. ERGENZINGER, PH.D.

Alston & Bird LLP; Research Triangle Park, North Carolina

JASON D. GARDNER

Kilpatrick Stockton LLP; Atlanta, Georgia

STEVEN GARDNER

Kilpatrick Stockton LLP; Winston-Salem, North Carolina

BENJAMIN R. HUBER

McDonnell Boehnen Hulbert & Berghoff, LLP; Chicago, Illinois

JAMES L. LESTER

MacCord Mason PLLC; Greensboro, North Carolina

STEPHEN M. LOBBIN

Russ August & Kabat; Los Angeles, California

DICKSON M. LUPO

Moore & Van Allen; Charlotte, North Carolina

PROFESSOR MICHAEL S. MIRELES

University of the Pacific, McGeorge School of Law; Sacramento, California

MARY MARGARET OGBURN

Blanco Tackabery Combs & Matamoros PA; Winston-Salem, North Carolina

MICHAEL E. RAY

Womble Carlyle Sandridge & Rice, PLLC; Winston-Salem, North Carolina

PROFESSOR SIMONE ROSE

Wake Forest University School of Law; Winston-Salem, North Carolina

J. MARK WILSON

Moore & Van Allen; Charlotte, North Carolina

WAKE FOREST

INTELLECTUAL PROPERTY

LAW JOURNAL

VOLUME 9 2008 - 2009 NUMBER 1

Editor-in-Chief

KRISTIN M. BECKER

Managing Editor

KRISTEN K. MURPHY

MANUSCRIPTS EDITOR

CLIFFORD R. LAMAR II Executive Articles Editor

VINCENT J. FILLIBEN III

Symposium Editor

FORBES THOMPSON

Senior Articles Editors

JENNIFER N. MANRING

LINDSAY BRONWEN TINGLEY

Articles Editors

TODD P. KOSTYSHAK

SCOTT J. MCCORMICK

IRENA POPOVA

CHRISTOPHER G. WALKER

Editorial Staff Members

MEGHAN F. BEDECS

ARTHUR BOOKOUT

LINDSAY K. COLASURDO

KATIE A. GRAMLING

JONATHAN KANDEL

PATRICK L. KARTES

ELENI S. KASTRENAKES

CHRIS LEINS

AARON C. MAYER

JEFFREY D. MCKINNEY

ALBERT J. MINN

LAURA C. PETRIE

MEREDITH A. PINSON

BENJAMIN B. PREVAS

ADAM C. RAUCHUT

ERIN SMITH

JACE VINING

Staff Members

AINDREA ALDERSON

KATY E. AULTMAN

SEEMA BHATT

MEGAN BODE

JIMMY BYARS

DAVID R. CARDAMONE

BURTIS HALL CONLEY III

MARK DICICCO

ANDREW K. DICKENS

JOSHUA R. ERNST

MARK E. FISHER

RANDY W. IVIE

JESSE H. JONES

DANIEL J. KINGSLEY

AMBER G. KIRBY

ALLEN MAULDIN

ALISON S. MCGEARY

BUE C. MCNEELY

BRANDY L. MILLS

TRAVIS MULLANEY

TIFFANI D. OTEY

MATTHEW S. PAOLILLO

HEIDI M. PERLMAN

MELANIE JOHNSON RAUBACH

ROBERT F. ROBINE

WALKER SHIELDS

EMILE C. THOMPSON

DANIEL WALSH

ROB WILSON

NORA E. WOLFE

Faculty Advisor

SIMONE ROSE

WAKE FOREST INTELLECTUAL PROPERTY

LAW JOURNAL


BEYOND THEORIES: INTELLECTUAL PROPERTY DYNAMICS IN THE

GLOBAL KNOWLEDGE ECONOMY

CHIDI OGUAMANAM*

ABSTRACT

This Article critically examines the inadequacy of theoretical postulates on intellectual property. It acknowledges that theorizing around intellectual property is an important ongoing but elusive intellectual adventure that is critical for law and policy direction on intellectual property. Perhaps, at no time is this fact more obvious than in the extant post-industrial epoch or the era of Global Knowledge Economy (“GKE”). The latter is spurred by advances in bio- and digital technologies. Both phenomena drive significant shift and transition in intellectual property jurisprudence and in the tide of innovation from physical to life sciences. They also supervise implosions in new and complex domains or sites for knowledge and information generation. As its feature, the global knowledge economic order is undergirded by an institutional and structural shift in international intellectual property lawmaking and governance, provoking a serendipitous counter-regime dynamic in diverse sites for contestations around intellectual property. The pivotal role of intellectual property in the GKE presents intellectual property as an increasingly multidisciplinary subject with complex issue linkages in virtually all fronts, including public health, human rights, biodiversity, biotechnology, biopiracy, the environment, ethics, culture, indigenous knowledge, electronic commerce, and research ethos. Overall, these and many more issue linkages to intellectual property are part of the latter’s open-ended dynamics in the GKE. They are constitutive of a myriad of factors that task and shape policy and theory on intellectual property as the knowledge economy continues to unravel.

2009 BEYOND THEORIES: INTELLECTUAL PROPERTY

DYNAMICS IN THE GLOBAL KNOWLEDGE ECONOMY 105

INTRODUCTION

There are a number of traditional justifications for intellectual

property rights.1 Each of the justifications tends to provide support for, or to influence, the jurisprudence and general objective of intellectual property. Despite subtle or nuanced distinctions between competing justifications, some of the reasons adduced for intellectual property tend to overlap. The weight and credibility of specific arguments in support of intellectual property do not apply in equal measure to individual regimes of intellectual property. In other words, none of the traditional or even emergent rationalizations for intellectual property rights fully or satisfactorily account for all intellectual property regimes. These include conventional regimes like patent, copyright, and trademark, as well as evolving ones.2 *LL.B (Hons) (Ife); LL.M (Lagos); LL.M; Ph.D. (British Columbia). Director, Law and Technology Institute, Schulich School of Law at Dalhousie University, Halifax, Canada, E-mail: [email protected]. This article is dedicated to the memory of Ifeoma Stella Obi (1982-2008). 1 See PETER DRAHOS, A PHILOSOPHY OF INTELLECTUAL PROPERTY RIGHTS (1996) [hereinafter PHILOSOPHY OF INTELLECTUAL PROPERTY]; William Fisher, Theories of Intellectual Property, in NEW ESSAYS IN LEGAL AND POLITICAL THEORY OF PROPERTY 168 (Stephen R. Munzer ed., 2001), available at http://cyber.law.harvard.edu/people/tfisher/iptheory.pdf (providing an overview of theories of intellectual property); Edwin C. Hettinger, Justifying Intellectual Property, in INTELLECTUAL PROPERTY: MORAL, LEGAL, AND INTERNATIONAL DILEMMAS 17 (Adam D. Moore ed., 1997); Justin Hughes, The Philosophy of Intellectual Property, 77 GEO. L.J. 287 (1988); Peter Drahos, The Universality of Intellectual Property Rights: Origins and Development, in INTELLECTUAL PROPERTY AND HUMAN RIGHTS (World Intellectual Property Organization (WIPO)/ Office of United Nations High Commissioner for Human Rights, ed., 1999), http://www.wipo.int/tk/en/hr/paneldiscussion/papers/pdf/drahos.pdf [hereinafter Drahos, Universality of Intellectual Property] (from the WIPO’s Panel Discussion to commemorate the 50th Anniversary of the Universal Declaration of Human Rights). 2 Intellectual property continues to evolve with the expansion of technologies. For example, it has been extended to relatively newer technologies such as integrated circuits and to specific biotechnology innovations such as plant breeding (plant breeders’ right). Also part of intellectual property dynamics is the use of legislative intervention to safeguard traditional intellectual property from technological erosion. At the international level, intellectual property has been adjusted for the global extension of electronic commerce via the two 1996 WIPO treaties, which came into effect in 2002. WIPO Copyright Treaty, Dec. 20, 1996, S. TREATY DOC. NO. 105-17 (1997), 36 I.L.M. 65 (1997) [hereinafter WCT]; WIPO Performances and Phonograms Treaty, Dec. 20, 1996, S. TREATY DOC. NO. 105-17 (1997), 36 I.L.M. 76 (1997) [hereinafter WPPT]. At the national level in the United States, this trend is demonstrated in the 1998 Digital Millennium Copyright Act (“DMCA”) and other digital rights management (“DRM”) initiatives designed to ensure that digital technologies do not undermine or circumvent the rights of copyright owners. Digital Millennium Copyright Act, Pub. L. No. 105-304, 112 Stat. 2860 (1998) (codified as amended in scattered sections of 17 U.S.C.).

106 WAKE FOREST INTELL. PROP. L.J. Vol.9

The inadequacy of theoretical postulations around conventional intellectual property also extends to the ongoing contestation in regards to the extension of intellectual property to newer frontiers.3 The search for a unified theory of intellectual property is an ongoing, albeit elusive adventure.4 The inconclusive nature of the theoretical inquiry, coupled with the ever expanding and ubiquitous character of intellectual property, contributes to the inherently controversial nature of the concept of intellectual property. Thus, intellectual property is hardly a stranger to controversy in terms of its subject matter, its objective, its role in promoting and stifling creativity and in contributing to inequity in the private and public claims to the benefits of creative enterprise, as well as in its overall theoretical and philosophical foundation.5

The poverty of theorization around intellectual property is perhaps more evident in the extant global knowledge economic (“GKE”) order than, perhaps, any time in the evolution of intellectual property jurisprudence. Briefly, GKE refers to hi-tech-driven

3 The issue of the use of intellectual property for the protection of indigenous knowledge is, perhaps, a more compelling exemplification of the theoretical conundrum that assails the concept of intellectual property. Not many issues are as contentious as the applicability of intellectual property to indigenous knowledge and its theoretical justifications. See, e.g., Michael Blakeney, The Protection of Traditional Knowledge Under Intellectual Property Law, 22 EUR. INTELL. PROP. REV. 251 (2000) (U.K.); Christine Haight Farley, Protecting Folklore and Indigenous Peoples: Is Intellectual Property the Answer?, 30 CONN. L. REV. 1 (1997); Naomi Roht-Arriaza, Of Seeds and Shamans: The Appropriation of the Scientific and Technical Knowledge of Indigenous and Local Communities, 17 MICH. J. INT’L L. 919 (1996). But cf. Paul J. Heald, The Rhetoric of Biopiracy, 11 CARDOZO J. INT’L & COMP. L. 519 (2003) (challenging the basis for the intellectual property argument for indigenous knowledge). 4 See Hughes, supra note 1, at 288-90 (discussing application of labor and personality theories to intellectual property); Lior Zemer, On the Value of Copyright Theory, 1 INTELL. PROP. Q. 55, 56-57 (2006) (discussing the application of a “bundle” of theories of property to establish a theoretical framework for copyrights); see also Peter Lewin, Creativity or Coercion: Alternative Perspectives on Rights to Intellectual Property, 71 J. BUS. ETHICS 441, 441-42 (2007) (proposing an “efficiency approach” for understanding and evaluating intellectual property rights); Samuel E. Trosow, The Illusive Search for Justificatory Theories: Copyright, Commodification and Capital, 16 CAN. J.L. & JURIS. 217 (2003) (proposing a new legal framework for intellectual property based on neo-Marxian political economy). 5 See ROSEMARY J. COOMBE, THE CULTURAL LIFE OF INTELLECTUAL PROPERTIES: AUTHORSHIP, APPROPRIATION, AND THE LAW 6-11 (1998); Stephen Breyer, The Uneasy Case for Copyright: A Study of Copyright in Books, Photocopies, and Computer Programs, 84 HARV. L. REV. 281 (1970); see also Brian Fitzgerald, Theoretical Underpinning of Intellectual Property: “I Am a Pragmatist but Theory Is My Rhetoric”, 16 CAN. J.L. & JURIS. 179, 189 (2003); Adam D. Moore, Intellectual Property: Theory, Privilege, and Pragmatism, 16 CAN. J.L. & JURIS. 191, 191-93 (2003).



transformations in the global economic structure and outlook, spurred especially by innovations in the digital, information, communication, and biotechnology arenas. As its primary objective, this Article revisits the basic theoretical discourses around intellectual property in a deliberately basic but intensely critical manner and highlights the dynamics of the intellectual property landscape in the GKE. Recognizing that theorization around intellectual property is an ongoing philosophical and jurisprudential undertaking, the Article argues that such a project ought to critically articulate and accommodate the pivotal and ubiquitous role of intellectual property in the elaboration of the important features of the knowledge economy. The concept of GKE saddles contemporary intellectual property theorists and policy makers alike with the urgent task to reflect and elaborate a new vision and new dynamics of intellectual property in our changing times. In this foundational contribution, this Article identifies gaps in the conventional theories of intellectual property, and key issues in the intellectual property dynamics implicated in the GKE, which ought to be of interest for the direction in which new theories and policy around intellectual property may proceed.

This Article is not concerned with an exhaustive exploration of the complex theoretical, philosophical, or even historical, discourses on the evolution of intellectual property.6 Rather, in order to keep the present analysis on track with the Article’s objective and scope, I shun the temptation to detour by deliberately isolating, on their surface, just a few mainstream theoretical planks underlying the logic and concept of intellectual property rights, exploring their limitations and challenges. Due to the overlapping nature of these theoretical or justificatory postulates, their elaboration in literature does not seem to follow a predictable pattern or coherent order of discourse.7 Neither

6 See sources cited supra note 1, for a discussion of traditional justifications for intellectual property rights. 7 For instance, explorations of the philosophy of intellectual property are limited to labor, personality, and natural rights, utilitarian, and instrumental analysis. Others explore the philosophy of intellectual property from reward and incentive, or even from a strict contractarian, perspective. A number of these perspectives overlap to a substantial degree and each analytical approach tends to reflect a writer’s emphasis. See e.g., Carys J. Craig, Locke, Labour and Limiting the Author’s Right: A Warning Against a Lockean Approach to Copyright, 28 QUEENS L.J. 1, 2-5 (2002) (arguing against a Locke labor theory of copyrights as counter to the social policy goals of intellectual property law); Fisher, supra note 1, at 2-8 (applying four prevalent theoretical approaches: utilitarian theory, Locke’s labor theory, personhood/human expression theory, and social utility theory); Hughes, supra note 1, at 288-90 (discussing labor and personality theories of property); Adam D. Moore, A Lockean Theory of Intellectual Property, 21 HAMLINE L. REV. 65, 66 (1997) (arguing in favor


will the present exercise. In exploring the adequacy of conventional theorization around intellectual property in the GKE, this Article spotlights and interrogates natural rights, contract, reward and incentive, and social interest theories.

The Article is divided into three major parts. Part I revisits in a critical fashion select theories of intellectual property, highlighting their inadequacy in a knowledge-driven economic order. Part II explores the concept of the GKE and the pivotal role of intellectual property thereto. Part III offers reflective and concluding thoughts on the challenges of policy and theory for the intellectual property dynamics in the GKE.

PART I: INTELLECTUAL PROPERTY: THE LIMITS AND POVERTY OF

THEORIES A) NATURAL RIGHTS

One of the major, albeit contested, raisons d’êtres for intellectual property is anchored in the logic of natural rights.8 Historically rooted in continental European approaches to intellectual property, the crux of natural rights thinking is that creators’ or inventors’ entitlement to their work is akin to an inherent natural right which the state is under an obligation to protect and enforce.9 In its loose elaboration, the theory builds upon the primacy of personhood which promotes the notion of the inseparability of the creator from her creation.10 It is suggestive of a fusion of the individual with her

of a Locke labor theory of intellectual property and against social utility theory); Zemer, supra note 4 (applying a “bundle” of theories of property to establish a theoretical framework for copyright theory); Drahos, Universality of Intellectual Property, supra note 1, pt. 1 (discussing intellectual property rights in the context of human rights). Each of these writers has slightly different classifying frameworks for exploring the theoretical justifications of intellectual property under the specific objectives of their cited works. 8 See Adam Mossoff, Rethinking the Development of Patents: An Intellectual History, 1550-1800, 52 HASTINGS L.J. 1255, 1257-58 (2001) (restating the weakness of the natural rights thesis in the context of intellectual property and, nonetheless, making a strong case for the intellectual influence of natural rights philosophers such as John Locke, Hugo Grotius, and Samuel Pufendorf on patent jurisprudence). 9 See IKECHI MGBEOJI, GLOBAL BIOPIRACY: PATENTS, PLANTS, AND INDIGENOUS KNOWLEDGE 19 (2006). 10 See Craig, supra note 7, at 9-10; Jeanne L. Schroeder, Unnatural Rights: Hegel and Intellectual Property, 60 U. MIAMI L. REV. 453, 453-54, 459 (2006) (arguing that although G.W.F. Hegel is associated with a personality theory of intellectual property, namely, the role of property in the constitution of personality, many analysts have overstretched their extrapolation of the Hegelian thought to suggest that the state has an absolute obligation to recognize intellectual property claims,



creation as an aspect of self-expression, self-realization, identity, or possessive individualism.11 This thinking accounts for the primacy of authorial rights and the sanctity of moral rights in copyright jurisprudence, especially in continental Europe.12 On the surface, the appeal to natural rights highlights the human rights nexus of intellectual property. However, the intellectual property and human rights intersection implicates intrinsic and paradoxical dialectics, the exploration of which is outside the scope of this Article.13

especially moral rights. Schroeder argues that a true construction of Hegel suggests that there is no such absolute obligation on the state); see also PHILOSOPHY OF INTELLECTUAL PROPERTY, supra note 1, at 73-91 (exploring the Hegelian thought on the fusion of the creator with her work as a component of personhood); Pascal Kamina, Author’s Right as Property: Old and New Theories, 48 J. COPYRIGHT SOC’Y U.S.A. 383, 390 (2001); Jeremy Waldron, From Authors to Copiers: Individual Rights and Social Values in Intellectual Property, 68 CHI.-KENT L. REV. 841, 879 (1993). 11 See C.B MACPHERSON, THE POLITICAL THEORY OF POSSESSIVE INDIVIDUALISM: HOBBES TO LOCKE (Oxford Univ. Press 1964) (1962) (discussing the author’s perspective on possessive individualism); PHILOSOPHY OF INTELLECTUAL PROPERTY, supra note 1. 12 See Craig, supra note 7, at 7, 35-36; Zemer, supra note 4, at 67; see also BENJAMIN KAPLAN, AN UNHURRIED VIEW OF COPYRIGHT 117 (1967) (cited by Zemer, supra note 4); Peter Jaszi, On the Author Effect: Contemporary Copyright and Collective Creativity, in THE CONSTRUCTION OF AUTHORSHIP: TEXTUAL APPROPRIATION IN LAW AND LITERATURE (Martha Woodmansee & Peter Jaszi eds., 1994). See generally PHILOSOPHY OF INTELLECTUAL PROPERTY, supra note 1. The primacy accorded to moral right in Europe provides support for the concept of the “romantic author” which has been a flashpoint of scholarly discourse and a counter narrative around the concept of “authorial deconstructionism.” The latter is a dedicated critique of the notion of the romantic author in a way that seeks to deconstruct authorship as a sole/individual enterprise while promoting the author as a collaborator or partner in the creative enterprise and “a vessel through which many influences and experiences are poured.” Lior Zemer, THE IDEA OF AUTHORSHIP IN COPYRIGHT 19 (2007) (“For scholars engaged in research and authorial constructionism, the author is deconstructed into a vessel through which many influences and experiences are poured.”) See generally Oren Bracha, The Ideology of Authorship Revisited: Authors, Markets, and Liberal Values in Early American Copyright, 118 YALE L.J. 186, 188-92 (2008) (discussing the competing interests that shape the notion of authorship in copyright law). 13 See Audrey R. Chapman, The Human Rights Implications of Intellectual Property Protection, 5 J. INT’L ECON. L. 861, 861-63 (2002) (U.K.); Laurence R. Helfer, Human Rights and Intellectual Property: Conflict or Coexistence?, 5 MINN. INTELL. PROP. REV. 47, 47-49 (2003); Peter K. Yu, Reconceptualizing Intellectual Property Interests in a Human Rights Framework, 40 U.C. DAVIS L. REV. 1039, 1041-47 (2007); see also Christopher R. Eppich, Patenting Dilemma: Drugs for Profit Versus Drugs for Health, 43 SANTA CLARA L. REV. 289, 289-91 (2002); James Thuo Gathii, Rights, Patents, Markets and the Global AIDS Pandemic, 14 FLA. J. INT’L L. 261 (2002).


Despite its attraction and logic, in practice the claims to intellectual property rights are hardly staked on absolute terms or in the form suggestive of the inalienability inherent in natural rights philosophy.14 Indeed, contrary to sentiments in continental Europe, the American approach to intellectual property does not accord primacy to natural rights.15 Even in regard to real or fixed property, “propertarian” absolutism is an anathema, more so in relation to intellectual property or right claims on rivalrous goods and products of the intellect.16

There are ample checks, at least theoretically, on intellectual property rights that reflect social policy leveraging of such rights as society negotiates and balances competing interests, including costs and benefits implicated in granting to creators exclusive and absolute rights to their works.17 Conceivably more important, intellectual property rights, for the most part, are statutorily created rights rather than inherent and inalienable natural rights.18 Statutes, case law, and contracts, including general common law traditions and other regulatory and quasi-regulatory regimes, control the ambit of rights over intellectual products, taking such rights well outside natural rights’ unfettered terrain.

Traditionally, special exceptions or rights are created under common law and statute reflecting the non-absolute character of rights to intellectual property. Notable in these regards are such accommodations relating to education, “fair use,” “fair dealing,”19 14 See Schroeder, supra note 10, at 453. 15 Strictly, natural rights are not contingent upon specific law; they are inherent and “naturally” arising. However, in the United States, there is a direct and independent constitutional justification for intellectual property. Article 1 Section 8, Clause 8 of the U.S. Constitution vests Congress with the power to make laws to promote “the Progress of Science and useful Arts.” U.S. CONST. art. I, § 8, cl. 8. 16 Traditionally, property rights are subject to overriding public interests which are often invoked to mediate the competing claims to private and public entitlements. See Lawrence Lessig, The Creative Commons, 55 FLA. L. REV. 763, 776 (2003). 17 MGBEOJI, supra note 9, at 19-20. 18 But for a number of exceptions including trade secrets and in some jurisdictions moral rights and common law trademark, virtually all other regimes of intellectual property are now statute-based. However, in all common law jurisdictions and the United States, copyright, trademark, and ancillary rights concurrently derive from both statute and common law. 19 “Fair dealing” in the United Kingdom and Canada and “fair use” in the United States are similar exemptions to copyright protection, covering such uses as research/study, criticism, satire, parody, review, news reporting, etc. For contemporary perspectives on the scope and ramifications of these statutory provisions in two jurisdictions, see Melissa De Zwart, A Historical Analysis of the Birth of Fair Dealing and Fair Use: Lessons for the Digital Age, 1 INTELL. PROP. Q. 60, 63 (2007). Unlike the United States’ “fair use” doctrine, Australia, Canada and the United Kingdom have a “fair dealing” provision. See Giuseppina D’Agostino,



(access to information, news reporting, parody/satire, criticism, review, etc.), and other uses in relation to copyright works. Similarly, in regard to patents, discoveries, scientific theories, and mathematical methods enjoy special exception.20 Also, discretion, such as compulsory licenses are used to reconcile the monopoly rights of intellectual property owners and to check the abuse of such rights.21 Discretionary powers are also applied to exclude inventions from patentability, especially for reasons of national security and exigencies of war, such as is the case regarding inventions in atomic and nuclear energies and aeronautics in the United States and Canada.22

Life forms (plant and animal varieties, and the essential biological processes employed in their production),23 mental arts, games,

Healing Fair Dealing? A Comparative Copyright Analysis of Canada’s Fair Dealing to U.K. Fair Dealing and U.S. Fair Use, 53 MCGILL L.J. 309, 312-14 (2008) (Can.). 20 For instance, Section 27(8) of the Canada Patent Act provides that “[n]o patent shall be granted for any mere scientific principle and abstract theorem.” Patent Act, R.S.C., ch. P-4, § 27(8) (1985) (Can.). This is a standard provision in most patent statutes. 21 See MGBEOJI, supra note 9, at 19. 22 See id. at 19-20 & nn. 88-89. In the United States and Canada, patent statutes and specific legislation on atomic energy, aeronautics, and space have special provisions that subordinate innovations in those areas to national security considerations. Indeed, as sovereigns, governments have ample discretion to access or otherwise exercise special rights or privileges over patents under a number of guises. For instance, in Canada, the federal government may apply to use patented inventions; it may also use existing patents for international humanitarian purposes to address public health needs. Patent Act, R.S.C., ch. P-4, § 19 (1985) (Can.). Furthermore, the Canadian government reserves to itself the right to access information related to nuclear inventions before the invention’s patent application is evaluated by a patent examiner. . See id. § 22. 23 Canada’s Patent Act defines “invention” in language that seems to exclude these developments. See Patent Act, R.S.C., ch. P 4, § 2 (1985) (Can.); see also Harvard College v. Canada (Commissioner of Patents), [2002] 4 S.C.R. 45 (holding that higher life forms “cannot be conceptualized as mere compositions of matter in the context of the Act”). Sections 101 and 102 of the United States Patent Code, the United States’ counterpart to Canada’s Patent Act, which uses identical words to articulate the scope of patentable subject matter, are subject to the interpretational dynamics of the courts, resulting in convoluted or equivocal outcomes. See 35 U.S.C. §§ 101-102 (2006); Murray Lee Eiland, Patenting Traditional Medicine, 89 J. PAT. & TRADEMARK OFF. SOC’Y 45, 53-56 (2007) . Article 27 of the Agreement on Trade-Related Aspects of Intellectual Property Rights also makes a similar pretension to the exclusion of categories of life forms from patents. General Agreement on Tariffs and Trade: Multilateral Trade Negotiations Final Act Embodying the Results of the Uruguay Round of Trade Negotiations, Annex 1C: Agreement on Trade-Related Aspects of Intellectual Property Rights, art. 27, Apr. 15, 1994, 33 I.L.M. 1125 [hereinafter TRIPS Agreement].


considerations regarding public morality,24 and, to some extent, business methods25 are equally sites for leveraging the reach or limits of patents. In addition to all the aforementioned categories of control, form prescriptions, such as in the nature of patent specifications, term limits and general limitations on patentable subject matter and patentability assist to put checks on the intellectual property system. These examples support the idea that rights to intellectual property are not absolute in the nature of natural rights thinking. B) CONTRACT THEORY

The second major theoretical account of intellectual property is

essentially a “contractarian” or contract-based argument.26 This appears more obvious in regard to patents and less so regarding copyrights. As to the latter, the contractarian thesis is self-evident in its early evolution when registration and deposit of copyrighted works was part of the consideration for their protection.27 Under the contractarian narrative, the inventor notionally agrees to disclose her invention to the state, for example, by way of filing a patent specification in consideration or exchange for the exclusive right, like a monopoly, to exploit the invention for a fixed term. At the expiration of the term, the public is free to exploit the invention

24 See TRIPS Agreement, supra note 23. The jurisprudence around the doctrine of public morality is well developed in Europe. However, in the United States, for a season it was merely sustained by case law, under the doctrine of moral utility. But that line of reasoning did not seem to have survived close academic scrutiny. Now, it no longer enjoys respect in contemporary judicial thinking. See Margo A. Bagley, Patent First, Ask Questions Later: Morality and Biotechnology in Patent Law, 45 WM. & MARY L. REV. 469 (2003). 25 The exemption of business methods from patents is gradually losing its respect in scholarship and judicial decisions on the subject matter. With the advent of digital technologies and the pivotal role of software in business and services delivery, judicial decisions and policy outlooks now seem to cast doubt on the integrity of the jurisprudence that exempt business methods from patentability, as evidenced by decisions from the United States Patent and Trademark Office and the expansion of patent applicability to software in countries such as Japan and Australia. 26 See MGBEOJI, supra note 9, at 20-21; Ikechi Mgbeoji & Byron Allen, Patent First, Litigate Later! The Scramble for Speculative and Overly Broad Genetic Patents: Implications for Access to Health Care and Biomedical Research, 2 CAN. J. L. & TECH. 83, 83 (2003); see also Ruth L. Gana, Has Creativity Died in the Third World? Some Implications of Internationalization of Intellectual Property, 24 DENV. J. INT’L. L. & POL’Y 109 (1995); A. Samuel Oddi, Beyond Obviousness: Invention Protection in the Twenty-First Century, 38 AM. U. L. REV. 1097 (1989). 27 See John Feather, Authors, Publishers and Politicians: The History of Copyright and the Book Trade, 12 EURO. INTELL. PROP. REV. 377, 377-79 (1988) (U.K.); see also Peter K. Yu, Of Monks, Medieval Scribes, and Middlemen, 2006 MICH. ST. L. REV. 1, 15-18 (2006).



without the patent holder’s interference. It is expected that the inventors or writers and their sponsors would recoup the cost and profit from their investment of labor, time, and ingenuity in innovation within the term of the patent or copyright.28

The aspect of recoupment of cost and profit-making is an incentive to the inventor and a boost to the future of the inventive or creative enterprise. Profit as incentive constitutes a component of the contractarian narrative of intellectual property. It also underlies the instrumental imperative that is at the core of other competing and complementary theories of intellectual property, simultaneously highlighting the inchoate character of theoretical delineation within the discourse on intellectual property. Essentially, in the contractarian model, the residual claim of the state or the public to a hitherto exclusive right at the expiration of the specified term ensures that the public has access to the invention. That way, the invention remains resourceful for further innovation in order to support the growth of knowledge and, ultimately, a richer public domain. Ideally, maintaining or achieving such a robust public domain is the crux of the public-regarding purpose of intellectual property.29

The contractarian narrative is undermined by other non-contractual approaches to intellectual property, such as trade secrets30 or, to a lesser extent, moral rights. Trade secrets and moral rights are not subject to term limits. Moral rights are interminable and permanently residual. Holders of trade secrets are entitled to exploit them as long as a secret remains uncompromised and economically valuable.31 For the two categories, there is no contractarian form of mediation by statute to primarily secure competing interests other than those of rights holders.

As already noted, for the most part, the contract theory finds traction with the patent regime of intellectual property as circumscribed by statutory term limit. However, recent efforts at a progressive extension of intellectual property, especially patents, to arenas for which there was no initial enthusiasm, such as life forms including genes, discoveries, business methods, etc., chip away the

28 See MGBEOJI, supra note 9, at 20-21. It is, however, possible that the inventor or writer may never receive compensation for his or her invention; for instance, the fax machine was invented in 1842 but did not enter commercial use until the early 1980s. Id. at 21. 29 See Lessig, supra note 16, at 764; see also Craig, supra note 7, at 5-6. 30 See James Pooley, The Ten Top Issues in Trade Secret Law, 70 TEMP. L. REV. 1181, 1181-82 (1997); see also Nisvan Erkal, On the Interaction Between Patent Policy and Trade Secret Policy, 37 AUSTL. ECON. REV. 427, 427-28 (2004). 31 See Bluebonnet Petroleum, Inc. v. Kolkhorst Petroleum Co., Inc., 2008 WL 4527709 at *4 (Tex. App. Oct. 9, 2008).


credibility of the contractarian doctrine. The initial exclusion of intellectual property claims from those arenas is arguably pursuant to a social contract of sorts and within the matrix of the contract theory. Public interest considerations influence the exclusion of those categories from exclusive private ownership claims under an unwritten and putative social contract. For example, complex socio-cultural, religious, and ethical perceptions of life raise multifaceted questions over biotechnology or technological innovations in the realm of life forms and their resulting privatization through intellectual property.32

A significant demonstration of the systemic undermining of the contractarian thesis is the emboldened industrial practice, with judicial and legislative connivance, in support of the phenomenon of patent ever-greening.33 Ever-greening is one of the prominent weapons in the hands of industry to undermine statutorily-sanctioned or contractarian term limits and to scuttle early onset of the residual rights of the public, especially generic drug makers, to access and exploit information contained in patent specifications. Specifically, ever-greening is a deliberate creative device used by patent owners to indirectly extend the term of existing patents through the creation of artificial updates thereto. Such revisions qualify as improvements on existing knowledge. Consequently, they are subject to a fresh patent that indirectly elongates the life of an existing one.

The practice of patent term elongation is not alien to the patent tradition. From its historical evolution, a patent term was open-ended and subject to the discretion of the issuing sovereign.34 Progressively, it has been tossed up and down by statute. It has been stretched from the initial statutory seven years, by some accounts, up to the current historic high of twenty years in most jurisdictions.35 The same

32 See Bagley, supra note 24, at 495; see also Hartley Gorenstein, The Regulation of Biotechnology in Canada: Social and Moral Issues, 2 MED. L. INT’L 169 (1996) (U.K.). See generally Jasper A. Bovenberg, PROPERTY RIGHTS IN BLOOD, GENES & DATA: NATURALLY YOURS? 75-81 (2006). 33 For a discussion of the phenomenon of patent ever-greening as practiced in the pharmaceutical industry, see Aaron S. Kesselheim, Intellectual Property Policy in the Pharmaceutical Sciences: The Effect of Inappropriate Patents and Market Exclusivity Extensions on the Health Care System, 9 AM. ASS’N PHARM. SCIENTISTS J. E306, E308-09 (2007), available at http://www.aapsj.org/view.asp?art=aapsj0903033. 34 See Mossoff, supra note 8, at 1264-67. 35 See Lessig, supra note 16, at 764 (discussing expansion of copyright terms by Congress); Mossoff, supra note 8 (chronicling the history of patents from 1550-1800); see also ADAM B. JAFFE & JOSH LERNER, INNOVATION AND ITS DISCONTENTS 78-95 (2004) (comparing modern debates about patent terms to historical controversies on the subject).



legislative practice is even more visible, and certainly more pronounced, in regard to copyright.36

Similar to the creative trend of intellectual property term expansion is the practice of extending protection to regulatory or test data, especially in pharmaceutical, chemical and agricultural-allied industries, in regional and national jurisdictions.37 Regulatory data are forms of secondary information, such as clinical trial data, regulatory approval documentation and other pre-marketing details or data generated in the process of securing regulatory approval for the commercialization of patents of innovation, especially in pharmaceutical, biotechnology, environmental, natural food and allied industries.38 Emboldened by the agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”),39 many national and regional intellectual property regimes have extended protection to regulatory data, considering such data as proprietary.40

36 See Kenneth D. Crews, Copyright Duration and the Progressive Degeneration of a Constitutional Doctrine, 55 SYRACUSE L. REV. 189, 205-14 (2005) (chronicling the U. S. Congress’ unmitigated addition to the upward review of the copyright term). 37 See TRIPS Agreement, supra note 23, art. 39.3 (“Members, when requiring, as a condition of approving the marketing of pharmaceuticals or of agricultural products which utilize chemical entities, the submission of undisclosed test or other data, the origination of which involves a considerable effort, shall protect such data against disclosure, except where necessary to protect the public, or unless steps are taken to ensure that the data are protected against unfair commercial use.”); North American Free Trade Agreement, U.S.-Can.-Mex., art. 1711, Dec. 17, 1992, 32 I.L.M. 605, 675 (1993). For an interpretational perspective on Article 39.3 of the TRIPS Agreement, see Shamnad Basheer, Protection of Regulatory Data Under Article 39.3 of TRIPS: The Indian Context, INTELL. PROP. INST., available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=934269; see also Council Directive 2004/27/EC, 2004 O.J. (L 136/34) (EU). 38 See TRIPS Agreement, supra note 23, art. 39.3. 39 See id. 40 In the United States and Canada, even before the TRIPS Agreement, legislative and regulatory regimes aimed at the protection of regulatory data and indirect extensions of patent terms were in place. For example, the 1993 Notice of Compliance (“NOC”) regulation, made pursuant to the Patent Act in Canada, compensates for delayed time in the course of seeking regulatory approval by extending the patent term. The NOC also extends protection to regulatory data, including clinical trial information associated with brand name drugs, by five years beyond the life of the patent. See Trudo Lemmens & Ron A. Bouchard, Regulation of Pharmaceuticals in Canada, in CANADIAN HEALTH LAW POLICY 311, 348 (Jocelyn Downie, Timothy Caulfield & Colleen M. Flood, eds., 3rd ed. 2007), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=958929. In 1984, the United States enacted the Drug Price Competition and Patent Term Restoration Act, commonly referred to as the Hatch-Waxman Act, which extends a pharmaceutical patent term by compensating for time lost to the approval process. A year before, pursuant to the 1983 Orphan Drugs Act, the United States extended the patent term for orphan drugs, drugs that target diseases statutorily classified as rare,


In the pharmaceutical industry, for example, protection of regulatory or test data continues to undermine the interest of generic drug manufactures and the general public seeking access to vital information required to exploit inventions after the expiration of their patent term. Despite arguments in support of tightening access to test data,41 in the pharmaceutical context, such a practice is often targeted at generic drug makers, escalating the lack of access to essential drugs for use by needy populations across the globe.42 Protection of regulatory data is an indirect safeguard for patent term expansion and market maximization.43 Thus, without access to regulatory data, generic drug manufacturers’ ability to encroach into the monopoly enjoyed by the holder of an expired patent on an important drug is scuttled.44

The practices of extending intellectual property to novel domains, patent ever-greening, and the protection of regulatory data cumulatively undermine a key aspect of the contractarian narrative. In particular, these trends stultify the idea of a term limit by creating interminable intellectual property terms, stifling and circumscribing the public and specific stakeholders’ residual interests in vital information to which they would otherwise be entitled. At the core of the contractarian theory is the exchange of a limited monopoly right for the promise of access to vital information at the end of a specified term. The creative ease with which the practice of term elongation is entrenched underscores a deficit in the contractarian theory of intellectual property rights. C) REWARD AND INCENTIVE

barring the introduction of their generic version by seven years after patent expiration. Drug Price Competition and Patent Term Restoration Act of 1984, Pub. L. No. 98-417, 98 Stat. 1585 (codified in scattered sections of 15, 21, 28, and 35 U.S.C.); Orphan Drug Act, Pub. L. No. 97-414, 96 Stat 2049 (1983) (codified in scattered sections of 15, 21, 26, 35, and 42 U.S.C.). For a summary of regulatory data protection in a number of countries, including Japan, see Jonathan de Ridder, Data Exclusivity: Further Protection for Pharmaceuticals, FINDLAW AUSTL., June, 2003, http://www.findlaw.com.au/articles/printArticle.asp?id=9200. 41 The main argument for the protection of regulatory data is that the process of generating them is capital intensive. To allow second comers or generic drug makers to use this data without compensating their brand name counterparts amounts to free-ridding and is fundamentally an unfair commercial practice. 42 See CARLOS MARÍA CORREA, PROTECTION OF DATA SUBMITTED FOR THE REGISTRATION OF PHARMACEUTICALS: IMPLEMENTING THE STANDARDS OF THE TRIPS AGREEMENT 6 (2d prtg. 2002), available at http://apps.who.int/medicinedocs/pdf/h3009ae/h3009ae.pdf 43 Id. at 6, 14. 44 Id. at 6.



A third and, perhaps, the most prominent conventional theoretical

postulate for intellectual property is premised on reward and incentive.45 Due to its prominence, it warrants a little detailed interrogation. We have broached the relationship between this theoretical construct with the contractarian model as an aspect of instrumentalism implicated within the breadth of intellectual property theorization. At the core of this omnibus theory of intellectual property is the belief that reward for creativity is imperative for fostering more creativity and for ensuring a robust public domain or common pool of valuable information and knowledge. When a proper balance is struck between rewarding creators and fostering a rich public domain, the reward and incentive narrative rightly takes on a central role in the public-regarding aspect of intellectual property justification.

Promoting intellectual property as a catalyst for inventiveness and creativity bears the status of conventional wisdom.46 According to this logic, invention and creativity are fostered by the provision of various forms of reward as incentive to the original creators. Historically, outside the intellectual property matrix, alternative forms of reward or incentive for creativity are applied to support innovation and creativity. Indeed, the reward/incentive theory is virtually universal across civilizations.47

Forms of reward in intellectual property jurisprudence are constituted in diverse representations, such as patent/copyright royalties, licensing fees and variegated rents, and associated contractual rights. As the most prominent of its theoretical justifications, the applicability of that narrative to all regimes of

45 See EDITH PENROSE, THE ECONOMICS OF THE INTERNATIONAL PATENT SYSTEM (1951). See generally, Oddi, supra note 26 (evaluating the incentives offered by the modern U.S. patent system). Reward can serve as an incentive, whereas an incentive can be delivered as a form of reward. For the purpose of this paper, the two concepts are taken as symbiotic in a deliberately conflated manner. It is, however, recognized that the two terms do not necessarily share symbiotic objectives. 46 The reward and incentive argument is at the core of the law and economics approach to the intellectual property system. See generally WILLIAM M. LANDES & RICHARD A. POSNER, THE ECONOMIC STRUCTURE OF INTELLECTUAL PROPERTY LAW (2003) (restating core economic bases for intellectual property in a very balanced and objective analysis). 47 Awards, prizes, and honors, such as the prestigious Nobel laurel and other distinguished private, professional and public endowments, are acknowledged reward and incentive schemes that do not have the inherent limitations of the intellectual property system. These options were regular alternatives canvassed by the opponents of the patent system through its historically checkered evolution. See Kesselheim, supra note 33, at E306–07; see also Mossoff, supra note 8.


intellectual property is unassailable.48 Yet, it is perhaps, equally, the most problematic theory, not in terms of its logic, but in terms of its underlying presumptions and emphasis on profitability or the profit motive as the driver of creativity and innovation.

The logic of the incentive/reward theory does not support the thesis that without incentives, the wheels of creativity will falter or, in a worst case scenario, grind to a halt.49 The link between intellectual property and creativity remains anecdotal, speculative, presumptuous, and in need of further interrogation.50 In regard to patents, an evaluation of studies that have examined the link between patents and inventiveness, concludes as follows:

[I]n spite of generalized, polemical assertions of a causal link between patent regimes and inventiveness, the ‘most well reasoned studies of patent systems’ have failed to establish it. Indeed, economists are almost unanimous in their belief that there is no conclusive evidence to show that patent systems have any causal relationship with inventiveness. Surveys of business leaders (with the notable exception of pharmaceutical companies) typically place a low ranking on patents as a stimulant for research and development.51 It is certainly instructive that except in a few isolated cases,52

the patent system and its proponents refrain from taking credit for the

48 But see Ikechi Mgbeoji, Patents and Plants: Rethinking the Role of International Law in Relation to the Appropriation of Traditional Knowledge of the Uses of Plants (2002) (unpublished J.S.D. dissertation, Dalhousie University) (on file with Wake Forest Intellectual Property Law Journal) (arguing that “the reward theory does not explain or justify the phenomenon of inventiveness” in patent jurisprudence). 49 See Penrose, supra note 45, at 32; see also A. Samuel Oddi, The International Patent System and Third World Development: Reality or Myth?, 1987 DUKE L.J. 831 (arguing that the idea that intellectual property rights will encourage inventiveness in the Third World is a self-serving campaign by industrial countries in order to retain their industrial and technological hegemony, and that strict enforcement of intellectual property rights discourages technological take-off in developing countries). But cf. William M. Landes & Richard A. Posner, An Economic Analysis of Copyright Law, 18 J. LEGAL STUD. 325 (1989). 50 MGBEOJI, supra note 9, at 21. 51 Id. at 21; see also WILLIAM HYDE PRICE, THE ENGLISH PATENTS OF MONOPOLY: 1 HARVARD ECONOMIC STUDIES, 62 (Harvard Univ. Press 1913) (1906). 52 See, e.g., MGBEOJI, supra note 9, at 21 (ascribing the credit for “inventing” the patent system to England and linking that feat to that country’s industrial leadership position for over 200 years).



industrial revolution.53 Notable civilizations, including Imperial China,54 the Arab world, and undocumented pre-historic indigenous and local communities across the globe sustained their distinguished technological and scientific feats without a conventional intellectual-property system.55 Also, the customary legal regimes that promote creativity in indigenous and local communities are far from being regimes of exclusion like the conventional or western forms of intellectual property.56 The jury is still out in regards to the credibility of the underlying assumptions, despite their compelling logic,

53 See T.S. ASHTON, THE INDUSTRIAL REVOLUTION, 1760-1830 (Oxford Univ. Press 1964) (1948); PHYLLIS DEANE, THE FIRST INDUSTRIAL REVOLUTION (1965); PETER MATHIAS, THE FIRST INDUSTRIAL NATION: AN ECONOMIC HISTORY OF GREAT BRITAIN (3d ed., Routledge 2001) (1969) (arguing in opposition of the idea of a causal relationship between the patent system and the industrial revolution); Price, supra note 51; see also MOUREEN COUTLER, PROPERTY IN IDEAS: THE PATENT QUESTION IN MID-VICTORIAN BRITAIN (1991) (arguing that the effect of the patent system on the industrial revolution remains inconclusive). 54 See WILLIAM P. ALFORD, TO STEAL A BOOK IS AN ELEGANT OFFENCE: INTELLECTUAL PROPERTY LAW IN CHINESE CIVILIZATION 9-29 (1995); Brigitte Binkert, Why the Current Global Intellectual Property Framework Under TRIPS Is Not Working, 10 INTELL. PROP. L. BULL. 143, 147 (2006) (noting that communist ideology influenced the Chinese approach to intellectual property, which protects individual’s claim to intellectual property, but “inventions by State employees relating to national security or scientific advances that benefitted a larger part of society were state property.”); see also William P. Alford, Don’t Stop Thinking About…Yesterday: Why There Was No Indigenous Counterpart to Intellectual Property Law in Imperial China, 7 J. CHINESE L. 3 (1993); Richard Baum, Science and Culture in Contemporary China: The Roots of Retarded Modernization, 22 ASIAN SURV. 1166 (1982); Jianyang Yu, Protection of Intellectual Property in the P.R.C.: Progress, Problems, and Proposals, 13 UCLA PAC. BASIN L.J. 140 (1994). 55 See JOSEPH NEEDHAM, THE GRAND TITRATION: SCIENCE AND SOCIETY IN EAST AND WEST (Routledge 2005) (1969); JOSEPH NEEDHAM, SCIENCE AND CIVILISATION IN CHINA (1954); MGBEOJI, supra note 9, at 23 (doubting any universal basis for linking intellectual property, science and economic development) (quoting PHILOSOPHY OF INTELLECTUAL PROPERTY, supra note 1, at 15). 56 The community, more than the individual, is the key unit and model of creativity in many indigenous and non-Western societies. Consequently, there is a structured but limited model of exclusion of community members from the products of innovation. For example, in many African communities, different communal units such as family, age-grade, royal stool, kinship membership, etc., are custodians of traditional medicinal knowledge and innovation, which are often held in trust for the larger community. For intellectual property in non-Western societies, see WORLD INTELLECTUAL PROP. ORG., INTELLECTUAL PROPERTY NEEDS AND EXPECTATION OF TRADITIONAL KNOWLEDGE HOLDERS: WIPO REPORT ON FACT-FINDING MISSIONS ON INTELLECTUAL PROPERTY AND TRADITIONAL KNOWLEDGE 1998–99 (2001), available at http://www.wipo.int/export/sites/www/tk/en/tk/ffm/report/final/pdf/part1.pdf.


concerning the reward and incentive narrative of the intellectual-property system.57

Rather than invention or creativity, the commercialization of innovation drives intellectual property.58 For instance, patent provides investors and inventors much needed comfort to invest risk capital or to expend effort in the pursuit of innovation.59 Similarly, a publisher’s expectation of profit from a publishing enterprise is a factor of the monopoly granted by copyright. Publishing has little to do with the future creativity or economic prosperity of an individual author.60 The prospect of commercial success prods publishers to sign celebrity writers. The pop-culture appeal and politically explosive or socially seductive nature of the subjects that constitute the stuff of celebrity writers trump any consideration regarding their creativity and ingenuity. It is attractive for truly creative writers to “lend” their writing skills and talents to prominent figures or celebrities who are better placed to broker juicy and commercially viable publishing contracts.61

The same is true regarding publishers’ inclination to publish viable and popular subjects on the basis of their commercial appeal. It is hardly surprising that works that make the most meaningful contributions to research, innovation and knowledge are mostly published under various forms of public subsidy, as they are hardly commercially viable.62 Indeed, most of such works do not get published. The incentive and reward argument may well be associated 57 See Susan Scafidi, Digital Property/Analog History, 38 LOY. L.A. L. REV. 245, 246 (2004) (arguing that “intellectual property jurisprudence operates via largely unquestioned assumptions regarding factual truth and objectivity.”). 58 MGBEOJI, supra note 9, at 23-25. 59 Id. at 25. 60 Chroniclers of the evolution of the copyright system agree that the system primarily exists to feather the nests of printers, publishers, stationers, and different categories of middlemen more than writers or members of the “scribal industry.” See Yu, supra note 27, at 15-18. 61 It is customary for celebrities, political figures, and their spouses to sign lucrative publishing contracts to write their memoirs during their days in the political, social, or professional limelight. 62 For instance, many authoritative university publishers operate on one form of subsidy or another. Academic writings that make significant contributions to knowledge and innovation hardly earn any viable royalties. Most researchers and professors steeped in writing academic books are not lured by the promise of royalty and prospects of writing best sellers. Recently, a former United States First Lady (2001-2009), Laura Bush, was reported to have signed a multi-million-dollar book deal for her White House memoirs. Jeffrey A. Trachtenberg, First Lady, Scribner Reach Deal on Memoir, WALL. ST. J., Jan. 6, 2009, at B5. Mrs. Bush is not known to be a creative writer of note. The lucrative nature of the contract has nothing to do with her writing skills but, certainly, has everything to do with the subject of her “White House experience.”



with the profitability of inventions and creative works. But it needs to be distinguished from, and not conflated with, the promotion of inventiveness and creativity. Intellectual property creates a monopoly in a manner that potentially stifles competition. That way, it provides the desired guarantee for the profitability of only such innovations and creative endeavors that are commercially viable. This outcome is not the same thing as the promotion of creativity or innovation. At best, it ensures that creativity pursues or is driven by commercial success and profit.

When creativity is dictated by, or exclusively fused with the pursuit of commercial success and the profit motive, innovation in the nobler public interest areas that have little or no direct commercial overflows is fundamentally jeopardized. The public domain is short-changed. The logic of the reward theory shifts creative and inventive efforts outside the priorities of the larger society and far from the pursuit of what is good for the greater majority. Such logic yields an innovation and creative agenda that targets the needs of those who can afford them in accordance with market/economic considerations. In this dynamic, basic or platform research with no immediate, visible, direct or short term commercial application are fundamentally undermined. In order for any such research to become profitable, it must be moved away from the framework of the institutional public trust into the realm of exclusive private entrepreneurships.63 The results of such research are leveraged by artificial scarcity. They are delayed, fenced off from the public, and warehoused under elongated intellectual property terms for ultimate commercial exploitation. It does not matter that this approach freezes the evolution of innovation and stifles creativity in cutting edge areas such as genetics, genomics and proteomics.64 These issues are further explored in Part II.

Intellectual property’s focus on reward and incentive creates and foists a secretive and exclusive research and development culture which is alien to the communal and free-exchange ethos of scientific activities. Such research environments are highly lawyered domains subjected to intellectual property surveillance for enhancing the hoarding of information, even information on basic research, because of their commercial potential. Law and science now forge an alliance of convenience in the bid by intellectual property or profitability to dictate the course of research and development. Intellectual property 63 See Jocelyn Downie, The Power of Money: Commercialization of Research Conducted in Public Institutions, 11 U. OTAGO L. REV. 305 (2006) (N.Z.). See generally Jocelyn Downie & Matthew Herder, Reflections on the Commercialization of Research Conducted in Public Institutions in Canada, 1 MCGILL HEALTH L. PUBLICATION 23 (2007) (Can.). 64 See Mgbeoji & Allen, supra note 26; see also Bagley, supra note 24.


drives innovation in a direction that caters to the dictates and fancies of the affluent, engendering what analysts have tagged an epidemic of “affluenza.”65 This scenario displaces the role of necessity and other non-profit contingencies not accounted for by the reward and incentive theory but which condition innovation in the public interest.

The consequences of the reward and incentive-driven intellectual property order are evident in the pharmaceutical arena, a key site for research and development. Analysts agree on a palpable disconnect between the current pharmaceutical research agenda and the global health crises.66 This is obvious in the vacuum of audacity or lack of creative initiative in pharmaceutical research regarding orphan drugs and with respect to diseases endemic to the poor in the developed countries and in regions of poverty often depicted as the third world.67 This glaring lapse demonstrates the failure of the reward and incentive doctrine of intellectual property as an integral component of the market economic model. Increasingly, the independent private charitable sector,68 the United Nations and the World Health Organization69 are playing interventionist roles in

65 See JOHN KENNETH GALBRAITH, THE AFFLUENT SOCIETY (4th ed. 1984). See generally OLIVER JAMES, THE SELFISH CAPITALIST AND THE ORIGIN OF AFFLUENZA (2008) (elaborating on the culture of consumerism and society’s addiction to the acquisition of wealth and comfort and the unmitigated and reckless ambition to satisfy every desire in ways that escalate levels of inequality in society). 66 See Anup Shah, Pharmaceutical Corporations and Medical Research (Jan. 25, 2007), http://www.globalissues.org/article/52/pharmaceutical-corporations-and-medical-research; see also An Interview with Pat Mooney, MULTINATIONAL MONITOR, January/February 2000, at 33; Chakravarthi Raghavan, Bio-tech Patents Increase Costs for Dubious Drugs, July 3, 2007, http://www.sunsonline.org/trade/areas/intellec/07030197.htm. 67 See Shah, supra note 66. 68 Notably, the Bill and Melinda Gates Foundation, the William J. Clinton Foundation, the Global Network for Neglected Tropical Disease Control, and Universities Allied for Essential Medicines. These organizations and several others are committed to promoting, advocating, funding or sourcing for funding in support of diverse initiatives to address the high cost of drugs and essential vaccines and the paucity of medical research and medical services in remote third world communities ravaged by infant and maternal mortality and various other diseases, including but not limited to HIV/AIDS, malaria, tuberculosis and schistosomaisis. For an in-depth exploration of this trend, see generally Taiwo Oriola, Strong Medicine: Patents, Market, and Policy Challenges for Managing Neglected Diseases and Affordable Prescription Drug, 7 CAN. J.L. & TECH. 57 (2009). 69 The World Health Organization (“WHO”) initiatives for calling attention to and tacking the challenges posed by neglected diseases dates back to the 1970s. Today, there is a World Health Organization for Research and Training in Tropical Diseases which works in concert with the World Bank and the United Nations Development Program “to establish modalities for affordable and improved treatments for tropical and neglected diseases.” Oriola, supra note 68, at 104. Recently, the WHO has focused on the intersection of intellectual property and the subject of global health



support of alternative creative mechanisms to encourage research and development of drugs and other medical interventions that target “unviable markets” and underprivileged populations. This phenomenon clearly demonstrates the limits of the intellectual property systems and the free market model.70

In the absence of these public spirited and non-profit interventions, intellectual property’s emphasis on profit and reward has yielded a pharmaceutical research agenda that aims at a “cosmetic society,” a healthcare research priority and a healthcare system that and access to essential medicines, as evident in the activities and mandates of the WHO Commission on Intellectual Property, Innovation and Public Health and that of the more recently established Intergovernmental Committee Working Group on Public Health, Innovation and Intellectual Property. For further insights, see id. See also WHO, Draft Global Strategy and Plan of Action on Public Health, Innovation and Intellectual Property, WHO Doc. A/PHI/IGWG/2/2 (July 31, 2007); Susan K. Sell, The Quest for Global Governance in Intellectual Property and Public Health: Structural, Discursive, and Institutional Dimensions, 77 TEMP. L. REV. 363, 393-94 (2004). 70 In 2003 the World Trade Organization (“WTO”), through its General Council adopted without any dissention the 2003 WTO Decision on the Implementation of Doha Declaration (Paragraph 6) on TRIPS Agreement and Public Health. The decision allowed for compulsory licensing to pave the way for the manufacture of generic versions of patented medicines for exclusive export to countries lacking pharmaceutical manufacturing capacity. See Implementation of Paragraph 6 of the Doha Declaration on the TRIPS Agreement and Public Health (Aug. 30, 2003), Doc. WT/L/540 (Sept. 1, 2003). After a protracted five years of bureaucratic delay and red tape, in 2008, Canada was on record as the first country to fully implement the Declaration when it shipped the first consignment of generic AIDS drugs to Rwanda following a pact with that African country. Matthew Rimmer, Race Against Time: The Export of Essential Medicines to Rwanda, 1 PUB. HEALTH ETHICS 89, 94 (2008) (U.K.); First Generic AIDS Drugs Finally Headed from Canada to Africa, NAT’L UNION PUB. & GEN. EMP. NEWS, May 8, 2009, http://www.nupge.ca/news_2008 /n09my08a.htm. As part of its implementing legislation, in 2004 Canada amended its Patent Act by introducing twenty new paragraphs to section 21 of the Patent Act (para. 21.01-21.2) under the title of Use of Patents for International Humanitarian Purposes to Address Public Health Problems. Use of Patents for International Humanitarian Purposes to Address Public Health Problems, R.S.C., ch. P 4 § 21.01-.2 (2004) (Can.). According to the Act, the purpose of the amendments “is to give effect to Canada's and Jean Chrétien's pledge to Africa by facilitating access to pharmaceutical products to address public health problems afflicting many developing and least-developed countries, especially those resulting from HIV/AIDS, tuberculosis, malaria and other epidemics.” Id. § 21.01. This amendment was pursuant to precursor legislation amending the Patent and Food and Drugs Act (Jean Chretien Pledge to Africa Act). Richard Elliott, Delivering on the Pledge: Global Access to Medicines, WTO Rules, and Reforming Canada’s Law on Compulsory Licensing for Export, 3 MCGILL INT’L J. SUSTAINABLE DEV. L. & POL’Y. 23, 41-42 (2007) (Can.). For Canada’s initiative, see id. at 40-56. See generally Frederick M. Abbott, The WTO Medicines Decision: World Pharmaceutical Trade and the Protection of Public Health, 99 AM. J. INT’L L. 317 (2005).


ignore the sick and needy but cater to the wealthy and healthy who can afford to keep investments in cosmetic drugs and procedures viable.71 Recent pharmaceutical and “cosmecuetical” research and development in libido-enhancing drugs and anti-ageing products and procedures have been less problematic from the business perspective,72 in comparison to the controversy surrounding funding and access in regard to dedicated research and benefits regarding autism, Downs syndrome, malaria, typhoid, meningitis, yellow fever, river blindness, chistosomaisis, HIV/AIDS, and other major health care challenges of our time.73

Similar outcomes trail innovation in the agricultural arena. For example, despite major inroads in agricultural biotechnology in the past three decades, agricultural biodiversity remains a challenge.74 We have as yet to diversify our food resources from a few core agricultural crops.75 This is simply because following the methodical, but gradual, extension of the patentable subject matter to include plant and plant varieties and genetic materials in general, commercial viability (a.k.a. reward/incentive), and market forces are the factors that determine what agricultural crops should be supported by research and what others are not worthy of research and development effort.76 71 Miriam Karmel, Drugs for All Reasons: The Pharmaceutical Industry Now Targets Healthy People as Prime Targets, UTNE READER, July/Aug. 2003, http://www.utne.com/2003-07-01/DrugforAllReasons.aspx. 72 According to a partisan market report, three major industry players – L’Oreal SA, Avon Products Inc., and Estée Luader Companies Inc. – control annual sales of over thirty billion dollars in the anti-ageing product range. This excludes the figures for other rivals such as Revlon, Proctor & Gamble and Unilever (the latter is a consumer product giant with a significant stake in anti-ageing cosmetic products and toiletry brands). It also excludes the figures for small and medium level independent or subsidiary laboratories in the medical and pharmaceutical research complex. The figures could also be more astounding if it were to include those for the hair replacement segment of the anti-ageing business and product lines now dominated by the duo of Pfizer and Merck & Co. Inc. See generally Cosmeceuticals Market Research, http://www.researchwikis.com/Cosmeceuticals_Market_Research. 73 See Shah, supra note 66. 74 See Chidi Oguamanam, Agro-Biodiversity and Food Security: Biotechnology and Traditional Agricultural Practices at the Periphery of International Intellectual Property Regime Complex, 2007 MICH. ST. L. REV. 215, 224 (2007). 75 Id. See also VANDANA SHIVA, MONOCULTURES OF THE MIND: PERSPECTIVES ON BIODIVERSITY AND BIOTECHNOLOGY 114 (1993); SHELDON KRIMSKY & ROGER P. WRUBEL, AGRICULTURAL BIOTECHNOLOGY AND THE ENVIRONMENT: SCIENCE, POLICY AND SOCIAL ISSUES 239-40 (1996). 76 See Chidi Oguamanam, Genetic Use Restriction (or Terminator) Technologies (GURTs) in Agricultural Biotechnology: The Limits of Technological Alternatives to Intellectual Property, 4 CANADIAN J. OF L. & TECH. 59 (2005); see also PAT MOONEY & CARY FOWLER, SHATTERING: FOOD, POLITICS AND THE LOSS OF GENETIC DIVERSITY (1990). See generally PAT MOONEY, THE SEEDS OF THE EARTH: A PRIVATE OR PUBLIC RESOURCE? (1979).



The extension of intellectual property to the agro-

biotechnology sector and to plant genetic materials or gene sequences, in particular, help focus agricultural research and development on a few major food crops such as wheat, corn, rice, canola, beans, peas, etc.77 This is simply because the commercial viability of those crops is guaranteed by intellectual property. Interestingly, the spotlight on mono crops or cultivated crops undermines the need to focus agricultural research on harvested landraces and even on unexplored or wild species.78 Those categories are known to have comparative advantages due to their resilience against disease and other ecological challenges.79 This focus, even though less profitable and commercially unattractive, at least on the surface, provides better guarantees for food security and the sustainability of agricultural biodiversity.80

By far, agricultural biodiversity is a more compelling public necessity in regard to global food security and agricultural sustainability than the present concentration of research and innovation on mono crops.81 Ironically, genetic revolutions have been going on in traditional farmers’ fields in indigenous and local communities from time immemorial.82 Such revolutions are not supported by intellectual property; rather, they are necessary for the survival of these communities for which ecological harmony is first nature.83 Nonetheless, such genetic transformations have proven 77 See Oguamanam, supra note 74, at 224; see also MGBEOJI, supra note 9, at 51 (“[F]our crops–namely, wheat, rice, maize and barley–make up 90% of the world’s annual production of grain . . . the United Nations estimates that only twenty species supply 90% of the world’s food and just three–wheat, maize and rice–provide more than half.”). 78 MGBEOJI, supra note 9, at 50-86 (discussing “Implications of Biopiracy for Biological and Cultural Diversity”). 79 Id. 80 See Chidi Oguamanam, Intellectual Property Rights in Plant Genetic Resources: Farmers’ Rights and Food Security of Indigenous and Local Communities, 11 DRAKE J. AGRIC. L. 273, 297-306 (2006) [hereinafter Oguamanam, IP Rights]. see also Oguamanam, supra note 74, at 223-30, 234-40, 243-55. 81 See SHIVA, supra note 75, at 5-8; see also Oguamanam, IP Rights, supra note 80, at 297-306. 82 See Oguamanam, IP Rights, supra note 80, at 276-79. 83 See CHIDI OGUAMANAM, INTERNATIONAL LAW AND INDIGENOUS KNOWLEDGE: INTELLECTUAL PROPERTY, PLANT BIODIVERSITY, AND TRADITIONAL MEDICINE 6-12 (2006) [hereinafter INTERNATIONAL LAW AND INDIGENOUS KNOWLEDGE]; Surendra J. Patel, Can the Intellectual Property Rights System Serve the Interests of Indigenous Knowledge?, in VALUING LOCAL KNOWLEDGE: INDIGENOUS PEOPLES AND INTELLECTUAL PROPERTY RIGHTS 305-08 (Stephen Brush & Doreen Stabinski eds., 1996); Oguamanam, IP Rights, supra note 80, at 297-306; see also James D. Nations, Deep Ecology Meets the Developing World, in BIODIVERSITY 79, 79-82 (1988).


critical for the sustainability of crop and animal diversity and are therefore crucial for global food security.84

Contrary to what their proponents in the intellectual property debate would have us believe, reward and incentive do not exclusively explain the continuing flow of innovation and creativity.85 Indeed, a more objective position is that the promise of reward and other forms of incentive as guaranteed by intellectual property are competing factors, among several others, in the promotion of innovation. Also, the impact of reward and incentive are uneven in different sites of creativity and innovation. Unlike the case with pharmaceutical innovation,86 the profitability of genetic transformations happening in traditional farmers’ fields and other ground-breaking inventions are hardly self-evident and are scarcely driven by the promise of reward.

Necessity, and not profit, is the mother of invention, as much as invention is the mother of necessity. Serendipity, academic respect, value-realization, social esteem, peer prestige and other nobler ideals are midwives of invention and innovation. In fact, a jurist once argued that some creative geniuses will not forbear from inventive activity even when they are confronted with the threat of a jail term as a disincentive to invent.87 Many such inventors are propelled by other considerations not rationalized by reward, profit or other unseen benefits of intellectual property. In terms of priority, it would seem that these other variegated considerations would claim to be the drivers of innovation and creativity over anecdotal values of reward and incentive engendered by the intellectual property logic.

Creativity and innovation in indigenous and local communities are part of the dynamic nature of their cultural processes. Creativity and innovation arise in response to the ecological challenges these communities face, and constitute part of the imperative for the survival and sustainability of their cultures and civilizations.88 The extent of intellectual property’s potential to foster indigenous and local community innovation is debatable. But this is not the same as recognizing that intellectual property has the potential to propel indigenous and local community innovation to commercial

84 See Oguamanam, IP Rights, supra note 80, at 297-306; see also Oguamanam, supra note 74, at 223-30, 234-40, 243-55. 85 Raghaven, supra note 66 (arguing that “[t]he real innovators in modern medicine are traditional medical practitioners and more than half of the world's major drugs are based upon indigenous knowledge. . . . Patents are rewarding Biopiracy–not medical innovators”). 86 See MGBEOJI, supra note 9, at 21. 87 See id. at 23. 88 See Patel, supra note 83; Nations, supra note 83, at 79-80.



profitability.89 The problem, however, is that innovation in these communities is not necessarily premised on the capitalist considerations of the market economy. For example, the commitment of members of indigenous and local communities to sustain the diversities of animal and plant or crop genetic resources in their communities through various agricultural and ecologically wholesome practices is an imperative, not only for commercial considerations, but first and foremost, for their survival and lived reality.90

The importance of ecological and genetic diversity to a cohesive global, environmental order is one in which all humanity has a common stake.91 Intellectual property’s fusion with market economic considerations does not necessarily reckon with the public stake in biological and cultural diversity and environmental sustainability.92 It is hardly surprising that indigenous and local communities maintain a dialectical relationship with the conventional intellectual property system.93 In one breadth, intellectual property seems to be antithetical to indigenous and local communities’ worldviews and cultural orientation. In another, those communities

89 Today, even though creativity in many indigenous communities is under threat because of diverse factors that account for the fragmentation of those societies, intellectual property helps in making viable the profitability of creative and innovative ventures in indigenous communities. Today, Native American arts and Aboriginal crafts and other “exotic” creative endeavors in remote indigenous heartlands in Australasia, Africa, South America and Europe remain income-earning tourist treasures and subjects of intellectual property protection in many of those jurisdictions. See INTERNATIONAL LAW AND INDIGENOUS KNOWLEDGE, supra note 83, at 185. 90 See Patel, supra note 83, at 79-80; Oguamanam, supra note 74, at 220; Oguamanam, IP Rights, supra note 80, at 274; see also MARIE BATTISTE & JAMES Y. HENDERSON, PROTECTING INDIGENOUS KNOWLEDGE AND HERITAGE: A GLOBAL CHALLENGE (2000). 91 See the preambles to international environmental instruments, notably, the Convention on Biological Diversity and other instruments emanating from the 1992 Rio Summit on the Environment. E.g. Convention on Biological Diversity, pmbl., June 5, 1992, 1760 U.N.T.S. 142 (1993); see also Rio Declaration On Environment and Development, Braz., pmbl., June 13, 1992, U.N. Doc. A/CONF.151/26/vol. I, 31 I.L.M. 874 (Aug. 12, 1992). 92 See George Martin & Saskia Vermeylin, Intellectual Property, Indigenous Knowledge, and Biodiversity, 16 CAPITALISM, NATURE, SOCIALISM 27, 37-38 (2005). 93 Chidi Oguamanam, Patents and Traditional Medicine: Digital Capture, Creative Legal Interventions and the Dialectics of Knowledge Transformation, 15 IND. J. GLOBAL LEGAL STUD. 489, 490 (2008) (arguing that despite their reluctance to embrace intellectual property, the subject now poses a dilemma for many indigenous and local communities in regard to intellectual property’s potential both to undermine this epistemic ideology as well as its attractiveness as an instrument for their empowerment by providing reward for their knowledge).


understand the need to take intellectual property seriously94 in order to meaningfully participate as empowered stakeholders in the GKE – a concept we shall return to shortly. D) SOCIAL PLANNING

In addition to the preceding theories of intellectual property,

there is a fourth theory that has been espoused by an array of voices under different but related conceptual alignments. An elaborate interrogation of this fourth putative theory of intellectual property is outside the scope of this project. For convenience, this author adopts Harvard Law Professor William W. Fisher III’s characterization of this model as the “social planning theory” of intellectual property.95 Perhaps to underscore the novelty or evolutionary nature of this discourse, Fisher doubts whether it is appropriate to classify it as a theory.96 Still lacking a settled nomenclature, just as it lacks a distinctive theoretical status, the distinguishing feature of this school of thought is its focus on the search for a desired objective of intellectual property rights in ought terms. It alludes, in a reflective manner, to aspects of the fundamental objective of the intellectual property enterprise.

94 Id. at 491. 95 Fisher, supra note 1, at 8. Among the contemporary areas of interest for social planning advocates are the questions of intellectual property, copyright, the internet, and the “rights of publicity/personality” for celebrities. Also featured are the constitutional questions over how intellectual property rights, especially copyrights, shrink the sphere of freedom of speech and expression. Regarding arguments for social planning or public interest imperatives for intellectual property rights, see JULIE E. COHEN ET AL., COPYRIGHT IN A GLOBAL INFORMATION ECONOMY 3-60 (2002). See also James Boyle, A Politics of Intellectual Property Rights: Environmentalism for the Net?, 47 DUKE L. J. 87 (1997) (rejecting the over-protective tendency of intellectual property rights to support proprietary stakeholders at the expense of the broader public domain, while making a case for a “politics of intellectual property.” The purpose of this ‘politics’ is to re-invent the public domain to include broader coalition of interests, analogous to the environmental movement, capable of defending a shrinking public domain). See generally JAMES BOYLE, SHAMANS, SOFTWARE, AND SPLEENS: LAW AND THE CONSTRUCTION OF INFORMATION SOCIETY (1996); Ralph S. Brown, Jr., Advertising and Public Interest: Legal Protection of Trade Symbols, 57 YALE L.J. 1165 (1948), reprinted in 108 YALE L.J. 1619 (1999); Wendy J. Gordon, Introduction, 108 YALE L.J. 1611 (1999); Wendy J. Gordon & Sam Postbrief, On Commodifying Intangibles, 10 YALE J. L. & HUMAN. 135, 135-44, 150-61 (1998) (reviewing JAMES BOYLE, SHAMANS, SOFTWARE, AND SPLEENS: LAW AND THE CONSTRUCTION OF THE INFORMATION SOCIETY (1996) and MARGARET JANE RANDI, CONTESTED COMMODITIES (1st ed. 1996)); David Lange, Recognizing the Public Domain, 44 LAW & CONTEMP. PROBS.147, 171-78 (1981). 96 See Fisher, supra note 1, at 33, 35.



In a critical fashion, the concept of social planning draws from

orthodox justifications of intellectual property. As an aspirational project, it is an ongoing inquiry designed to respond to the dynamics and never-ending debates about the role of intellectual property rights in society. Thus, it seeks to explore the shortcomings of orthodox theories as applied to real cases in order to create space for the evolution of a social-policy oriented and/or public consideration in intellectual property rights.97 This involves the explanation of the “growth of intellectual property rights where traditional justifications for intellectual property do not [in a way that demonstrates] intellectual property [law]’s social effect and. . . [its role] as a tool for crafting cultural relations.”98 The social planning school of thought aspires towards a regime of intellectual property rights that advances a balanced cultural and a balanced competing stakeholders’ vision of intellectual property. It is essentially interested in the “role played by intellectual [property] works in the processes of social dialogue”99 and, by extension, social change.

According to Fisher, social planning is entrenched “in the proposition that property rights in general–and intellectual-property rights in particular–can and should be shaped so as to help foster the achievement [of a] just and attractive culture,”100 and perhaps more appropriately, a just and attractive society. Intellectual property provides a context for the creative expression of people’s interests in a wide array of political, economic, social and cultural configurations at individual, community, national and global scales.101 Thus, it plays a critical role, worthy of continued scrutiny, in “bolstering [and undermining] the discursive foundation of a democratic culture and civic association,”102 and in the economic and cultural empowerment and disempowerment of nations and peoples.103 It also mediates and escalates tensions inherent in societal relations. Finally, in the lens of social planning, intellectual property must strive to balance the utilitarian and instrumentalist economic arguments of orthodox theories with the need to increase the sphere of “‘public domain’ available for creative manipulation”104 and expression.

Its evolutionary status is conceded. However, like all conventional theories, the social planning narrative of intellectual

97 Id. 98 Madhavi Sunder, IP3, 59 STAN. L. REV. 257, 258 (2006). 99 Craig, supra note 7, at 1. 100 Fisher, supra note 1, at 6. 101 Id. at 7. 102 Id. 103 Id. 104 Id. See also COOMBE, supra note 5; Lessig, supra note 16, at 768.


property has its drawbacks. In a way, social planning appears to be an intellectual appeal for a return to the conceptual ideals of the intellectual property system, emphasizing the imperative for fair and equitable balancing of competing private and public interests and other inherent tensions implicated in intellectual property as an instrument of both law and policy.105 Apart from the reservation about social planning’s yet-to-crystallize theoretical status, the social planning approach puts too much emphasis on the amorphous concept of culture as if it is the only intellectual property paradigm. Also, the social planning vision is inherently paternalistic in its less democratic espousal of a vision of a desirable society. Such paternalism contrasts with the putative neutrality and objectivity of pre-existing theoretical orthodoxy in intellectual property law. It is hardly surprising that, in practice, courts prefer economic and other orthodox arguments to those based on social planning.106

The imperative for a competing vision of intellectual property in relation to prevailing theoretical orthodoxy is a reflection of the dynamic character of intellectual property. For instance, categories of the subject matters of intellectual property protection continue to expand. They remain open-ended. Similarly, the last several decades have witnessed radical adjustments to hitherto settled boundaries in order to accommodate intellectual property claims on new technological domains107 in ways that compromise pre-existing exceptions. Just as the social planning theory demonstrates, the dynamism of intellectual property is not limited to its subject matter. In a complementary fashion, it also extends to theoretical discourses. This is so, despite the stranglehold maintained by pre-existing theoretical orthodoxy in intellectual property jurisprudence.

The consequences and imperatives for shifting intellectual property goal posts could not have been more severe, in any other time, than in the extant GKE. The intellectual property dynamics encompassed in the GKE warrants articulation as a logical precursor to future theory and for policy outlook on intellectual property. This is the task of the concluding reflection in Part III of this Article. Before 105 In a way, it could be reduced to a critique of the conventional intellectual property theories. 106 The simplicity, logic and persuasiveness of theoretical orthodoxy of intellectual property makes for judicial efficiency more than the nuances, subtleties, and inherent sophistication in alternative analysis, such as a yet-to-crystallize theory of intellectual property. Moreover, the plasticity of orthodox theories would seem to take care of contributions of novel conceptions such as social planning which lack clear statutory accommodation in intellectual property laws. 107 For example, intellectual property has been extended to new technologies, notably integrated circuits, software, and to not so new innovations in plant breeding and other advances in the digital and biotechnology arenas.



that, we need to explore in Part II the amorphous concept of GKE as deployed in this article and its complex relationship with intellectual property.

PART II: DISCERNING THE GKE

A) THE CONCEPT OF GKE

Conceptually, the “GKE” is bereft of a precise analytical lever. However, in this present analysis, it is not depicted in the literal sense of scarcity or economy of useful knowledge. Rather, the GKE is used here to characterize the ascendency and rapid transformation of information, often depicted as a synonym of knowledge, and its generation and management, mainly with the help of computer-driven digital technologies in the spheres of economic, research, administration, service delivery and diverse industrial activities, often with special interest in data mining and biotechnology or biological/genetic engineering.108 One of the major consequences and realities of the GKE is that knowledge or information now constitutes, perhaps, the most crucial factor or tool of production, and has been the most important matrix in overall economic development since the late 20th century.109 In this account, the generation, ownership, and management, including the manipulation of information, are considered as pivotal in the contemporary global economic order which services, and is in turn, also serviced by the information (or post-industrial) society.110 108 See PETER F. DRUCKER, THE AGE OF DISCONTINUITY: GUIDELINES TO OUR CHANGING SOCIETY 263-86 (1968). Drucker has been credited with pioneering the use, elaboration and popularization of the phrase, “knowledge economy” in chapter 12 of his book. Further insight into the concept of GKE as it relates to the role of intellectual property can be found in PETER DRAHOS & JOHN BRAITHWAITE, INFORMATION FEUDALISM: WHO OWNS THE KNOWLEDGE ECONOMY? (2002) 109 Chidi Oguamanam, Local Knowledge as Trapped Knowledge: Intellectual Property, Power and Politics, 11 J. WORLD INTELL. PROP. 29, 31, n. 3 (2008). See also DRAHOS & BRAITHWAITE, supra note 108; Harry Hillman Chartrand, Ideological Evolution: The Competitiveness of Nations in a Global Knowledge-Based Economy (July 2006) (unpublished Ph.D. dissertation, Interdisciplinary Studies, University of Saskatchewan) (on file with the University of Saskatchewan), available at http://www.culturaleconomics.atfreeweb.com/Dissertation%204/0.0%20ToC.htm. 110 See FRITZ MACHLUP, THE PRODUCTION AND DISTRIBUTION OF KNOWLEDGE IN THE UNITED STATES (Princeton Univ. Press 1962); Susan Crawford, The Origin and Development of a Concept: The Information Society, 71 BULL. MED. LIBR. ASS’N


B) INTEGRAL ASPECTS AND KEY FEATURES OF THE GKE

As an economic model for post-industrial society,111 GKE is

associated with a number of factors with which it has some form of amorphous relationship in ways that are, sometimes, as complex as they are diverse. An analysis and conceptual articulation of the nature of these relationships is outside the scope of this Article. However, it bears mentioning, first, that the emergence of GKE correlates with or is integral to aspects of globalization.112 In fact, the GKE has an organic link with globalization. This is demonstrated in the rapid harvesting, transformation, trans-positioning, and transcribing of knowledge and information from multitudes of sites and domains across a borderless global and epistemic milieu.

Second, we have noted that the computer-driven digital revolution is a significant part of the GKE and information society that facilitates the generation, processing, diffusion, and manipulation of sensitive information for global dispersal, application, and exploitation in a neutral fashion.113 Third, the era of GKE is also one of biotechnology, which marks a radical shift in the life sciences regarding the deployment of plant, animal, and human genetic materials and inherent information in basic and applied research, resulting in unprecedented ramifications for innovation in health, agriculture, drug production, crime, and environmental management.

One underlining feature of all the three factors associated with the GKE is the practical visibility of digital technology in the deployment of vital information and knowledge that advances the neutralization of jurisdictional boundaries114 and the facilitation of other possibilities of the GKE. Digital technology expands the frontiers of GKE in several respects including the practical translation 380, 380 (1983) (crediting the origin of the phrase to eminent economist Fritz Machlup). 111 See DANIEL BELL, THE COMING OF POST-INDUSTRIAL SOCIETY: A VENTURE IN SOCIAL FORECASTING (Basic Books 1973). 112 In its simplest formulation, globalization is a reference to global harmonization, convergences, resistances, and erosions along complex economic, social-cultural, technological, and other diverse and innumerable transformative experiences of nations and peoples since the mid-20th century. 113 “Neutral” is a reference to the sense in which knowledge, for example dealing with traditional uses of plants, may be taken up from diverse cultural locales, de-contextualized and translated via a putative culturally neutral epistemic application (western science) for global exploitation. 114 See David R. Johnson & David Post, Law and Borders–The Rise of Law in Cyberspace, 48 STAN. L. REV. 1367 (1996); see also Dan Jerker B. Svantesson, Borders On, or Border Around–The Future of the Internet, 16 ALB. L.J. SCI. & TECH. 343 (2006).



of cyberspace or the internet as a domain of creativity, innovation, and wealth creation, and a critical site for socio-cultural interaction and democratic exchange within and across national boundaries.115 Further, as a result of digitization, the internet has become a knowledge and information-driven system that has not only revolutionized methods of conducting business and public administration, but one that has provided an alternative platform and system for trade and commerce through electronic commerce.116

In the area of copyright, digitization poses radical challenges for applicable jurisprudence, requiring reassessment of notions like originality, creativity, and copyright subject matter.117 Ironically, while facilitating exponential flow of information, digitization has also pushed innovation toward the creation of technology control measures or technological forms of intellectual property to leverage access to vital information. Similarly, it has opened up new legal and policy challenges for copyright, for example, in regard to peer-to-peer (P2P) file sharing, especially in the context of music copyright.118 In the

115 See generally LEGAL ISSUES IN ELECTRONIC COMMERCE (R. L. Campbell ed., 2002). 116 Electronic commerce refers to buying and selling of goods and services or the practice of commercial exchange in goods and services over the internet and other dedicated computer networks. The same concept where applied to the delivery and accessing of diverse public services to patrons, including citizens, is now referred to as e-governance. For a prophetic treatise of sorts on the concept of electronic commerce, see JIM SNIDER & TERRA ZIPORYN, FUTURE SHOP: HOW NEW TECHNOLOGIES WILL CHANGE THE WAY WE SHOP AND WHAT WE BUY (St. Martin’s 1992). See also INTERNET CULTURE (David Porter ed., Routledge 1997) (discussing an array of issues implicated in online communication and identity in cyberspace). 117 The following cases in US, Canada, and Australia underscore the transformation of copyright jurisprudence in the new digital and other technological environment: Feist Publ’ns, Inc., v. Rural Tel. Serv. Co., Inc., 499 U.S. 340 (1991); Tele-Direct (Publ’ns) Inc. v. Am. Bus. Info. Inc., [1998] 2 F.C. 22 (Can.); Telstra Corp. Ltd. v. Desktop Mktg. Sys. Pty Ltd. (2001) 181 A.L.R. 134 (Austl. F.C.). See also Théberge v. Galarie d’Art Petit Champlain Inc., [2002] 2 S.C.R. 336 (Can.); CCH Can. v. Law Soc’y of Upper Can., [2004] 1 S.C.R. 339 (Can.). See generally, Carys J. Craig, The Evolution of Originality in Canadian Copyright Law: Authorship, Reward and the Public Interest, 2 U. OTTAWA L. & TECH. J. 425 (2005) [hereinafter Evolution of Originality]; Daniel J. Gervais, Canadian Copyright post-CCH, 18 INTELL. PROP. J. 131 (2004); Teresa Scassa, Distinguishing Functional Literary Works from Compilations: Issues in Originality and Infringement Analysis, 19 INTELL. PROP. J. 253 (2006). 118 See, e.g., A&M Records, Inc. v. Napster Inc., 239 F. 3d 1004 (9th Cir. 2001) (on contributory infringement for P2P music file sharing), and Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) (holding that Grokster’s peer-to-peer file sharing system that operated only on computers running the Microsoft Windows operating system amounted to infringement of musical copyright). For a scathing critique of the Napster decision, see Lessig, supra note 16. See Generally, Eliza Shardlow Clark, Online Music Sharing in a Global Economy: The U.S. Effort


trademark regime, digitization and the internet have foisted a new jurisprudence around domain name and cyber-squatting, for example, resulting in a re-thinking of the pre-existing understanding of trademark and copyright infringement, as well as entirely new perspectives on jurisdiction.119 Finally, the scope of intellectual property claims in the virtual world is one issue debate ignited by activities in cyberspace.120

The interactive nature of cyberspace has created unexpected emancipation in “alterity”, resistance narrative,121 parody, satirization, content exclusivity, and refreshingly new discussions and focus on the user as a vital partner in the creative process.122 Also, cyberspace has opened a new way of evaluating the creative process as an interactive continuum and a practically collaborative and concerted adventure.123

to Command (or Survive) the Tidal Wave, 14 MINN. J. GLOBAL TRADE 141 (2004); Ross Dannenberg, Copyright Protection for Digitally Delivered Music: A Global Affair, 15 INTELL. PROP. & TECH. L.J. 12 (2006); Robert C. Paisentin, Unlawful? Innovative? Unstoppable?: A Comparative Analysis of the Potential Legal Liability Facing P2P End Users in the United States, United Kingdom and Canada, 14 INT’L J.L. & INFO. TECH. 195 (2006). 119 See Sheldon Burshtein, Jurisdiction in Internet Trade-Mark and Domain Name, 20 INTELL. PROP. J. 1 (2006) (considering both Canadian and American law governing jurisdiction in internet trademark and domain name disputes); see also Bradley J. Freeman & Robert J.C. Deane, Trade-Marks and the Internet: A Canadian Perspective, 34 U. OF BRIT. COLUM. L. REV. 345 (2001); Julie A. Rajser, Misunderstanding the Internet: How Courts are Overprotecting Trademarks Used in Metatags, L. REV. MICH. ST. U. DETROIT C. L. 427 (2001). 120 See Benjamine Duranske, SLPTO Offers Second Life Content Creators Suite of Intellectual Property Protection Tools, VIRTUALLY BLIND, http://virtuallyblind.com/2007/10/29/slpto-goes-live (Oct. 29, 2007) (promising real intellectual property protection for virtual assets). 121 See John Perry Barlow, A Declaration of the Independence of Cyberspace, http://homes.eff.org/~barlow/Declaration-Final.html (Feb. 8, 1996). While Barlow’s perceptions of cyberspace appears to be exaggerated or extremist, an important, non-disputable aspect of his claims, borne out by studies on the sociology of the internet culture, is that cyberspace empowers a networking of resistance and opposition to convention and general solidarity to communities that otherwise could have been marginalized in the deliberative and social constitutive processes. 122 See CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339 (Can.) [hereinafter CCH] and Galarie d’Art Petit Champlain Inc. v. Théberg, [2002] 2 S.C.R. 336 (Can.); see also Evolution of Originality, supra note 117, at 430 (arguing that the CCH decision marked a transition in Canadian Supreme Court jurisprudence, as the Court searched for a balance between author’s rights and the “public [users’] interest”). 123 Diverse interactive websites program for unprecedented collaborative endeavors, facilitating the coalescing of experts and skills from across the globe. For example, newer business models such as open source, open-access, and general public license, creative commons license, DevNat, and other sophisticated and targeted models for adaptation and distribution of creative works which capitalize on the non-rivlarous nature of digital materials. Perhaps only a few examples demonstrate this trend



Collectively, the impact and ubiquitous role of digitization as a key component of the GKE in the liberalization of information have consequences for privacy, individual freedom, free enterprise in the market economic model, and aspects of constitutional rights such as free speech and freedom of expression in democratic societies.124

Knowledge or information constitutes the defining feature of the post-industrial information society. They are pivotal elements of the GKE. Information and knowledge are intangible and are mainly generated by, and often classified as products of the mind or the intellect. Essentially, they are non-rivalrous in nature. As a mechanism for leveraging the allocation of rights over information and knowledge and their products, intellectual property is the currency of the GKE, now directly implicated in virtually all aspects of our socio-economic life. More than ever before, intellectual property is self-evidently an interdisciplinary subject-matter. It is hardly surprising that in the GKE, law and, of course, lawyers are hardly the super-sovereign discipline and actors with exclusive wisdom on intellectual property issues.125 better than the birth of Wikipedia. See DON TAPSCOTT & ANTHONY D. WILLIAMS, WIKINOMICS: HOW MASS COLLABORATING CHANGES EVERYTHING (Portfolio 2006) (considering the artistic, cultural, scientific, educational, governmental and economical advantages of peer production and collaboration through Web-enabled communities). 124 George Takach has described privacy as the first casualty of the information age. The rapid increase in the generation of information and the concerted manner in which such generation and manipulation of information occur not only present tension in regard to proprietary claims around information, but also in regard to the extent of informational privacy of the citizenry and the role of intellectual property right. Issues such as the scope of personal information and ownership of information in specific contexts, such as electronic health data, have implications for intellectual property. In the digital era, copyright and trademark laws are often on a collision course with constitutional rights in relation to free speech and its derivatives. For example, frequently, corporate entities seek to restrict disgruntled employees or consumer advocacy groups from linking or associating the corporation’s website/logo with labor-related protests or any other countervailing objectives. See generally GEORGE S. TAKACH, COMPUTER LAW (2d ed. 2003). 125 Virtually every sector of our contemporary socio-cultural, economic, and political lives now has to grapple with intellectual property as a matter of policy, law, and society. In addition to statute-based courses in intellectual property rights offered in law schools, recent curriculum developments in intellectual property reflect interdisciplinary approaches in a manner cognizant of the intersections it enjoys with diverse subject matters such as health, bio- and digital technologies, electronic commerce, agriculture, culture, ethics, indigenous knowledge, the environment, and biodiversity. Indeed, intellectual property is no longer an exclusive subject of interest to law schools, as various other disciplines have had to embrace it. See generally, Deborah Tussey, Ipods and Prairie Fires: Designing Legal Regimes for Complex Intellectual Property Systems, 24 SANTA CLARA COMPUTER & HIGH TECH. L.J. 105, 120 (2007) (advocating interdisciplinary approach to developing


C) THE GKE, INTELLECTUAL PROPERTY, AND BIOPIRACY

Digital technologies are complicit in the phenomenon of

biopiracy, which is one of the important incidences of the GKE. Biopiracy is the systemic transfer, mainly via the patent system, of biological resources and associated bio-cultural knowledge and information from the centers of global biodiversity and the homes of the world’s indigenous and local communities, to the centers of Western industrial complexes.126 Biopiracy is an offshoot of biotechnology which, as already indicated, is a feature of the new GKE. By some accounts over seventy-five percent of global biological resources and associated biological diversity are located in developing countries, the home to most indigenous and local communities.127

Biological resources are the critical raw material for biotechnology. In the GKE, increased concentration of research and development by Western industrial and scientific complexes on plant and animal genetic resources targets the biological resources in developing countries and other centers of origin of global biodiversity. A combination of bio- and digital technologies facilitate the harnessing of biological resources and associated indigenous or local knowledge in the developing countries of the South; a trend which analysts have associated with a unidirectional transfer of wealth and knowledge.128 In regard to knowledge, biological diversity is central to the epistemic and ecological worldview of many non-western, indigenous, and local communities of the global South. Their rich biological resources and biological diversity is the mainstay of the peoples’ medicinal, agricultural, environmental knowledge and stewardship.129 Also, for non-Western peoples, biological resources provide a vital platform for complex cultural practices, for practical

intellectual property systems, including cooperation among disciplines such as business, economics, statistics, and cognitive science). 126 See MGBEOJI, supra note 9, at 13l; Graham Dutfield, TRIPS-Related Aspects of Traditional Knowledge, 33 CASE WESTERN RES. J. INT’L L. 233, 237-38 (2001). See generally VANDANA SHIVA, BIOPIRACY: THE PLUNDER OF NATURE AND KNOWLEDGE (1997). 127 See INTERNATIONAL LAW AND INDIGENOUS KNOWLEDGE, supra note 83. 128 See Anupam Chander & Madhavi Sunder, The Romance of the Public Domain, 92 CAL. L. REV. 1331, 1346-47 (2004); see also Oguamanam, supra note 93, at 491. 129 See Patel, supra note 83; see also BATTISTE & HENDERSON, supra note 90.



engagement with their overall environment, and for the translation of their knowledge in addressing the challenges of their lived realities.130

Since the 1990s, indigenous ecological or environmental knowledge has been recognized as an aspect of received wisdom in international initiatives on biodiversity conservation and environmental management.131 In part, this stems from the realization that the indigenous, or local, knowledge of non-Western peoples is inseparable from their rich biological resources and is imbued with the ethics of sustainability. Consequently, the focus of biotechnology research and development on those resources is an exercise not only to appropriate the resources132 but, perhaps most importantly, to create the conditions for the uptake or transposition of associated local knowledge into Western scientific episteme.133 Biopiracy is less of a resource transfer issue than it is one of knowledge appropriation in which intellectual property plays a critical role.

The emergence of the GKE is accompanied by radical transformation of intellectual property jurisprudence. Intellectual property has been transformed from being a subject-matter of national laws to one governed at the global or international level.134 Accordingly, intellectual property has ceased to be a handy instrument at the disposal of sovereign nations to leverage their peculiar socio-economic interests.135 From being an acknowledged tool in restraint of trade, intellectual property has become, perhaps, one of the most proactive policy instruments in the promotion of trade. The pathway to this epochal metamorphosis in intellectual property was charted in a

130 See BATTISTE & HENDERSON, supra note 90; Patel, supra note 83; see also MGBEOJI, supra note 9; INTERNATIONAL LAW AND INDIGENOUS KNOWLEDGE, supra note 83; SHIVA, supra note 75. 131 This is evident in the recognition of indigenous knowledge in virtually all of the instruments agreed to in the 1992 United Nations Conference on Environmental and Development (the Rio Erath Summit), including Agenda 21, the Forest Principles, the Convention on Biodiversity. See Chidi Oguamanam, Protecting Indigenous Knowledge in International Law: Solidarity Beyond National Borders, 8 L. TEXT CULTURE 191, 209 & n.18 (2004). 132 See MGBEOJI, supra note 9; SHIVA, supra note 126. 133 David P. Fidler, Neither Science Nor Shamans: Globalization of Markets and Health in the Developing World, 7 IND. J. GLOBAL LEGAL STUD. 191, 212-13 (1999); Chidi Oguamanam, Between Reality and Rhetoric: The Epistemic Schism in the Recognition of Traditional Medicine in International Law, 16 ST. THOMAS L. REV. 59, 70 (2003) (discussing various ways and factors that facilitate the uptake of traditional medicine into western biomedical orthodoxy). 134 See Drahos, Universality of Intellectual Property, supra note 1. 135 This is especially so with the coming into effect of the TRIPS Agreement which commits all member nations of the WTO to a minimum standard of intellectual property protection, with little or no regard to individual members’ socio-economic priorities and needs.


non-democratic and coercive process that birthed the TRIPS Agreement in 1995.136 TRIPS is the single most authoritative international instrument on intellectual property. It imposes a base standard for intellectual property protection on the member states of the WTO.137 TRIPS marks a shift of sorts in the institutional framework for global intellectual property law making and governance from the World Intellectual Property Organization (“WIPO”) to the WTO.138 This institutional power play, which resulted in the usurpation of WIPO’s hitherto unchallenged sphere of influence in global governance of intellectual property by the WTO,139 is credited to the singular ideological initiative by the United States in linking intellectual property to trade at the Uruguay Round negotiations on the General Agreement on Trade and Tariffs (“GATT”).140

It is hardly a coincidence that these shifts in intellectual property jurisprudence occurred at the time of transition from an industrial to a post-industrial, or information, society, the era in which GKE emerged. Elsewhere, an analyst has observed that “TRIPS … represents an IP handmaiden … groomed for the service of

136 See Doris-Estelle Long, ‘Democratizing’ Globalization: Practicing the Policies of Cultural Inclusion, 10 CARDOZO J. INT’L & COMP. L. 217, 242 (2002); J.H. Reichman, The TRIPS Agreement Comes of Age: Conflict or Cooperation, 32 CASE W. RES. J. OF INT’L L. 441, 448 (2000); see also DRAHOS & BRAITHWAITE, supra note 108, at 12 (charging that the current international intellectual property order represented by the TRIPS Agreement, “largely represents the failure of the democratic process, both nationally and internationally”). 137 See Fidler, supra note 133, at 209. 138 See Marley L. Cheek, The Limits of Informal Regulatory Cooperation in International Affairs: A Review of Global Intellectual Property System, 33 GEO. WASH. INT’L L. REV. 277, 292 (2001); Laurence Helfer, Regime Shifting: The TRIPS Agreement and New Dynamics of International Lawmaking, 29 YALE J. INT’L L. 1, 20-23 (2004); see also Chidi Oguamanam, Regime Tension in the Intellectual Property Arena: Farmers’ Rights and Post TRIPS Counter Regime Trends, 29 DALHOUSIE L. J. 413, 415-20 (2006) (Can.); Peter K. Yu, Currents and Cross-Currents in the International Intellectual Property Regime, 38 LOY. L.A. L. REV. 323, 418 (2004). See generally Ruth L. Okediji, The International Relations of Intellectual Property: Narratives of Developing Country Participation in the Global Intellectual Property System, 7 SINGAPORE J. OF INT’L & COMP. L. 315 (2003). 139 See Christopher May, The World Intellectual Property Organization, 11 NEW POL. ECON. 435 (2006) (U.K.) (arguing WTO’s location of intellectual property in the international trade arena via the TRIPS Agreement dilutes, if not dissolves, the development thrust of WIPO); see also Gerald J. Mossinghoff & Ralph Oman, The World Intellectual Property Organization: A United Nations Success Story, 79 J. PAT. & TRADEMARK OFF. SOC’Y 691, 692-93 (1997). But see Paul Salmon, Cooperation Between the World Intellectual Property Organization and the World Trade Organization, 17 ST. JOHN’S J. LEGAL COMMENT. 429, 432 (2003) (arguing that “the [failed] mission of WIPO was part of the reason why intellectual property discussions moved to WTO”). 140 See Drahos, Universality of Intellectual Property, supra note 1, at 9.



globalization and internationalization of markets.”141 Intellectual property is required to play a critical role in supporting the “efficiency and distributive effects of the GKE.”142 Unprecedented technological breakthroughs in digitization and their ramifications in all sectors of socio-economic activities, as well as the growth of biotechnologies, compelled a stronger intellectual property regime in which “propertization” of knowledge is as central as an aggressive attempt at creating artificial scarcity over information.143 This approach to intellectual property jurisprudence has been described by renowned authors Drahos and Braithwaite as a perpetuation of “hegemony based on knowledge.”144 In their words, “the logic of hegemonic power based on knowledge is to lock up knowledge, to deal with ignorance selectively, to create a morality that judges knowledge to be a private good and to punish through the criminal apparatus of the state those who steal knowledge.”145

As a one-size-fits-all approach to intellectual property, the TRIPS Agreement is based on the United States’ domestic intellectual property standards. Strikingly, it extends intellectual property protection, specifically patents, to virtually all spheres of innovation and creativity, essentially forbidding any discrimination on the basis of the type of technology or innovation.146 TRIPS tightens critical leeway through which developing countries had previously deployed intellectual property in furtherance of national policy objectives.147

141 See Chidi Oguamanam, Localizing Intellectual Property in the Globalization Epoch: The Integration of Indigenous Knowledge, 11 IND. J. GLOBAL LEGAL STUD. 135, 164 (2004). 142 Peter Drahos & John Braithwaite, Hegemony Based on Knowledge: The Role of Intellectual Property, 21 L. IN CONTEXT 204, 204 (2004). 143 Id. at 205 See also DRAHOS & BRAITHWAITE, supra note 108. 144 See Drahos & Braithwaite, supra note 142, at 204. 145 Id. at 204. Under the TRIPS Agreement there is a stiffer sanction for an errant country on the subject of intellectual property, unlike the pre-TRIPS WIPO framework that lacked any credible enforcement mechanism. Also, the United States before and after the TRIPS Agreement, did not relent in its aggressive use of sanctions via the United States Trade Representative (“USTR”) office in the negotiation of post-TRIPS bilateral intellectual property agreements with economically weaker nations, thus, ensuring a climate in which intellectual property was a used as a tool of political, economic and commercial coercion. Id. at 214. 146 See TRIPS Agreement, supra note 23, art. 27, ¶ 1 (providing that “patents shall be available for any inventions, whether products or processes, in all fields of technology”). 147 This is exemplified in TRIPS’ tight regime on compulsory licensing under Article 31. But see World Trade Organization, Ministerial Declaration of 14 November 2001, WT/MIN(01)/DEC/1, 41 I.L.M. 746, ¶ 6 (2002) (“ . . . that WTO Members with insufficient . . . manufacturing capacities in the pharmaceutical sector could face difficulties in making effective use of compulsory licensing under the TRIPS


Not surprisingly, the post-TRIPS era marks a heightening of tensions between many technology and information rich countries and their counterparts in the developing countries.148 Shortly after it came into effect, the devastating consequences of a hegemonic intellectual property order imposed by TRIPS have been felt at diverse intersections, including health and access to essential drugs; human rights, biodiversity conservation, bioprospecting and biopiracy; market access and balance of trade; and technology transfer and questions about indigenous knowledge.149 Each of these implicates a complex intellectual property instigated socio-economic and moral crisis, resulting in the marginalization of the developing countries and the rest of the world’s indigenous peoples. This state of affairs facilitates a trend in which second comers easily fritter away indigenous knowledge and resources in ways that aggravate the development divide between them and the rest of the world.150 D) INTELLECTUAL PROPERTY EXPANSIONISM IN THE GKE

By broadening the scope of intellectual property protection,

specifically patents, the TRIPS Agreement constrains the pre-existing discretion of sovereign nations to exclude certain subject matters, such as pharmaceuticals, agro-chemicals, etc., from patentability as national interests may dictate.151 In the new GKE where “propertization” of knowledge assets is the norm, TRIPS’ approach of broadening the scope of intellectual property rights appears to have had fundamental impact on biotechnology innovation. Perhaps, next to variegated uses of data generated from diverse contexts as the core of digital and computing technologies, one of the major focuses of data collection or, more appropriately, information/knowledge collection in the GKE is on the life sciences or in the biological arena. Agreement [and] . . . instruct[ed] the [TRIPS] Council to find an expeditious solution to this problem . . . .”). 148 See Hegemony, supra note 142, at 214. 149 Tshimanga Kongolo & Folarin Shyllon, Panorama of the Most Controversial IP Issues in Developing Countries, 26 EUR. INTELL. PROP. REV. 258 (2004) (U.K.). See also Helfer, supra note 138; Reichman, supra note 136. 150 The list of crops or plant genetic resources implicated in the practice of biopiracy includes the following: Rosy Periwinkle (Ethiopia), Neem and Turmeric (India), Basmati (Indo-Pakistan), Enola Bean (Mexico), Hoodia Cactus (South Africa), Cow Pea (Nigeria), and Karela juice (India). 151 For instance, India and most developing countries never extended patent protection to pharmaceuticals and agricultural innovations and processes. Again, like most developing countries, India has since revised its Patent law to accommodate categories, including pharmaceutical products hitherto outside the province of patent protection. See Murray Lee Eiland, Patenting Traditional Medicine, 89 J. PAT. & TRADEMARK OFF. SOC’Y 45, 59-60 (2007).



Intellectual property’s historically recognized exceptions for

products of nature, naturally-occurring phenomena, discoveries, and life forms are now compromised by the exigencies of biotechnology.152 The same lax approach is adopted for the putative or inchoate exemption of business methods.153 Similarly, the standard of originality is now, more than before, an aggravated form of inexact science in copyright law. In the digital era, there is an attempt to accommodate, for purpose of copyright protection, different representations of data that would otherwise have traditionally qualified as facts outside the copyright domain.154

The advent of biotechnology marks a radical shift in intellectual property from industrial or techno-scientific invention to biologically-centered innovations, a shift from the physical sciences to life sciences. Under the new global intellectual property order at the service of GKE, patents extend to all forms of technologies, including biotechnology, without discrimination. It also extends to plants, plant varieties and animal resources, their associated biological processes for their production,155 human cell lines, DNAs, genes, etc.

This new regime of extension of intellectual property rights to biological or life sciences started in the United States in the 1970s through to the 1980s when it was affirmed by the famous endorsement of patents on “anything under the sun that is made by man.”156 What started by modest pressure from the horticultural industry in the United States, quickly turned to the realm of all plant and animal genetic materials in that country before being extended to other industrialized countries via a multilateral treaty, namely the

152 See Mgbeoji & Allen, supra note 26, at 85-86; see also Bagley, supra note 24, at 484-86. 153 While the basis upon which USPTO did not allow patents on business methods remained unclear and would seem not to be borne out by the patent history in that country (in 1799 a counterfeit note detecting device became the subject of patent protection), increased computer and internet driven inventions with commercial or business ramifications have forced USPTO to backtrack from its putative freeze on business method patents. In the 1998 decision in Street Bank & Trust Co. v. Signature Financial Group, Inc., the court preferred a textual analysis of the Patent Act and held that method of doing business was not an excluded subject matter under the Act. St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1375 (D.C. Cir. 1998), abrogated by In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). The decision opened the way for business method patents, an opening that has since been capitalized on by the digital technology and software subsector. 154 See Evolution of Originality, supra note 117 (regarding the debate over originality in copyright); see also Ray K. Harris & Susan Stone Rosenfield, Copyright Protection for Genetic Databases, 45 JURIMETRICS J. 225, 229-32 (2005). 155 TRIPS Agreement, supra note 23, art. 27. 156 Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (echoing a Senate committee report). See Bagley, supra note 24, at 485.


International Convention for the Protection of New Plant Varieties (“UPOV”), which champions the concept of plant breeders’ rights as a fairly novel regime of intellectual property.157 It crystallized at the global level in the 1990s via TRIPS. Today, judicial intervention in many jurisdictions, including the United States, Canada, Europe, and Japan, now extend patent protection, in one way or another, to life forms.158 The same is true of international law making in the intellectual property arena.

This new approach to intellectual property has prioritized the economic benefits of biotechnology-related knowledge and information over social policy considerations that traditionally restrained the extension of intellectual property to the realm of life.159 Economic benefits now trump social costs, cultural sensitivities, and philosophical and religious reservations regarding the “proprietization” of knowledge, and has extended intellectual property, particularly to the realm of life forms.160 These reservations are ignored by universalizing Western intellectual property standards under the TRIPS Agreement.

The gravitation of intellectual property interests from innovation in physical sciences and mechanical inventions toward advances in genetic or biotechnology edeavors is characterized by a lowering of the threshold for patentability, and expanding the scope of patent protection in disregard to traditional exemptions, especially those relating to products of nature and naturally occurring phenomena.161 The same is the case with the established standards of utility which are now less rigorously applied.162 Perhaps, nowhere is the trend in the extension of intellectual property to life forms and the

157 See Oguamanam, IP Rights, supra note 80, at 280; see also Oguamanam, supra note 76, at 61; Oguamanam, supra note 138, at 420. 158 Perhaps, there is to date, no better illustration of this trend than in the famous Harvard or oncomouse patent–a mouse genetically modified/predisposed to cancer for cancer research by researchers Philip Leder and Timothy A. Stewart at Harvard University. See Bagley, supra note 24, at 498. Patent for this “oncomouse” was granted in the United States, numerous European countries, and Japan. See Harvard College v. Canada (Commissioner of Patents), [2002] 4 S.C.R. 45, 2002 SCC 76 (Can.) In Canada, the mouse ran into troubled waters when the Supreme Court drowned it in the sea of the patentability debate by holding that it was not a patentable subject matter or a “manufacture” pursuant to s.2 of Canada’s Patent Act. See id.; see also Bagley, supra note 24 (for an analysis of the US, Canadian and European approaches to the oncomouse patent). 159 Bagley, supra note 24, at 481; Oguamanam, supra note 76, at 59-60; Mgbeoji & Allen, supra note 26, at 83-84. 160 Oguamanam, supra note 76, at 59-60; Mgbeoji & Allen, supra note 26, at 83-84. 161 Mgbeoji & Allen, supra note 26, at 86. 162 Id.



lowering of the standards of utility more sharply demonstrated than in the patentability of genes and genetic materials.163

Theoretically, genetic materials compare to chemical compounds which have been the subjects of patents for a longer time.164 Even though gene fragments are akin to chemicals, strictly, patent protection would apply only in relation to “isolated and purified DNA fragments, full length genes and protein products of genes provided their functions are known.”165 Ironically, the requirement for proper identifications of gene function or linking a gene sequence with its clear biological functions as proof of utility was ignored at the early onset of gene patents.166

Contemporary jurisprudence on patentability of genetic material now includes granting of patents on gene sequences with unknown or indeterminate functions under very presumptuous and speculative circumstances. Put another way, current practice in regard to gene patents is akin to “patenting discovery.”167 Given the nature of genetic material and its role in the biotechnology endeavors as a critical basic research tool, a stricter regime of patentability for gene sequences is called for. The opening up of the genetic subject matter or gene sequences to the patent process has “shortchange[d] the society by granting the inventors large and expansive rights over ‘areas’ or ‘spaces’ which have indeterminate boundaries and, thus, unfairly constrict the ability of members of the public in conducting research in such areas.”168 The more troubling part is that patent on gene resources with indeterminate functions freezes, or at best compromises, future opportunity to know more about the gene(s) and the proteins associated with its sequence. “Bottled up” in such patents are indescribable and unknown functions and potential uses that are beyond comprehension or imagination. Bogus gene patents have the potential to circumscribe indigenous peoples’ dealings with plant and animal resources.169 Given that such dealings occur outside the formal scientific matrix, it may not be easy to determine when, and which, indigenous experiences with a particular genetic resource contravene the open-ended rights of a gene patent holder.

163 Id. 164 Id. 165 Id. 166 Id. at 87 167 Id. at 86. 168 Id. at 88. 169 But cf. Heald, supra note 3 (arguing that patents on genetic materials do not inhibit indigenous and local communities from traditional application of their traditional knowledge relating to such genetic materials).


E) THE CHANGING RESEARCH LANDSCAPE Gene patents reveal a worrisome trend regarding the negative

impact of intellectual property on research into the GKE. Knowledge-based assets, such as genetic resources, now prod a new research culture in a post-industrial information society. This research culture is supervised, for the most part, by intellectual property rights which, as we have noted, is the currency of the GKE. It is now largely the norm for public institutions, such as universities, to partner with the private sector in a new model of research and development.170 Under this new framework, the public interest is vulnerable to being compromised. Indeed, the public may be shortchanged twice. First, gene patents lock up unquantifiable platform information, thereby depriving the public access to it. Second, as publicly funded institutions, the role of universities in such research partnerships is one that inadvertently or potentially results in the ultimate diversion of public funds to the private sector. Thus, the public partly subsidizes a research initiative in which it is short-changed. In reality, hardly does the public get rewarded for its contribution through, for example, a fair pricing and access mechanism to the resulting research product or its other benefits.

Under this research and development matrix, the delicate and blurry boundary between basic and applied research disappears, not surprisingly, at the expense of basic research. The private sector’s interest in research focuses on applied research, and in ways that understate the link between basic and applied research.171 In this emerging novel research and development dynamic, the private sector wants to play an interventionist role, setting and sometimes influencing or skewing the research agenda, and creating in the 170 This practice is sanctioned in the United State by the Bayh-Dole Act, also known as the Universities and Small Business Patent Procedures Act, a 1980 United States federal law that empowered universities with commercial rights to research results, and encouraged universities’ active engagement in the commercialization of innovations arising from their research activities. 35 U.S.C. §§ 200-12 (2006). In Canada, different policy initiatives, since the end of the WWII, were put in place to support commercialization of research in the universities. See Matt Herder, The Rhetoric of Innovation (2006) (LL.M Thesis, Dalhousie Law School) (chronicling, inter alia, transitions in Canada’s institutional framework for the promotion of research and developments in various technological arenas) (on file with Dalhousie Law School). For insight into the dynamics of universities’ relations with corporate bodies in the context of biotechnology research, see generally MARTIN KENNEY, BIOTECHNOLOGY: THE UNIVERSITY INDUSTRIAL COMPLEX (1986). 171 Mgbeoji & Allen, supra note 26, at 89 (arguing that “commercially-oriented research does not generally produce the innovative impact within the scientific community as research designed at characterizing basic biochemical or genetic processes.”). See also Downie & Herder, supra note 63, at 32.



process, an ethically susceptible public-private partnership. In such a context, the culture of research as a public enterprise, as well as the independence of the researcher/scholar, is rendered susceptible. Similarly jeopardized is the role of the university as a public trust.

Instead of serving as keen disseminators of important information, researchers are getting accustomed to hoarding or delaying the publishing of the results of their research, sometimes for years, pending the grant of a patent.172 In many cases and in terms of promotion in academia, the number of patents a researcher holds ranks superior to publications. The same is true for ranking of research-intensive departments or academic programs in universities and research institutions.173 When private interests sponsor research, little consideration is given to basic research and the publication or timely dissemination of research results. In all of these, the government is happy to relinquish or scale back its commitment to the universities without weighing the ultimate social costs of this form of role abdication, especially its implications for research and academic integrity and the public role of universities. In a nutshell, this has been the crisis of the research and development model for biotechnology’s symbiotic relationship with the universities.174

For the most part, because of intellectual property, research communities have broken into clusters of secretive and suspicious colleagues looking apprehensively over one another’s shoulders regarding intellectual property theft.175 Over all, the effect of an uncritical extension of patents on mere gene sequences with inadequate regard to their biological functions undermines the course of biological and biotechnology research, which relies on obtaining or building on vital information from diverse sources. In the biotechnology arena, there is a scramble for gene patents akin to the gold rush. Discerning researchers capitalize on the porous jurisprudence on gene patents to execute a policy of deliberate fencing or gene-grabbing, or what analysts have tagged the cultures of “patent-

172 See Mgbeoji & Allen, supra note 26, at 87 (reporting that in a survey of about 2100 life science researchers, it was found that almost 20% reported delaying, by over a six month period, the publication of research results for intellectual property reasons); see also Downie & Herder, supra note 63, at 37. 173 Downie & Herder, supra note 63, at 28. 174 See KENNEY, supra note 170 (hinting at the disruptive influences biotechnology industries have for scholarly traditions in universities, and the implications for the role of the universities and their relationships with and obligations to the public). 175 Downie & Herder, supra note 63, at 37 (“[T]rust between students and supervisors as well as between students can be undermined, as they may worry that the other would steal potentially valuable ideas or will intentionally or accidentally disclose them to others before the IP in the research is harnessed.”).


first-ask-questions-later”176 and “patent-first-litigate-later,”177 in order to ward off competition.178 This gene-grab syndrome totally undermines the nature of research in biotechnology, making it extremely expensive and impacting on and frustrating the cost and process of doing research with negative consequence on the price of resulting products and on an entire society. Nothing illustrates this better than the ongoing imbroglio over access to patented drugs, genetically modified seeds, other products of biotechnology and a host of ethical issues.179 F) CREDIBILITY CRISIS IN THE NEW INTELLECTUAL PROPERTY ORDER

Propertizing knowledge via intellectual property in the GKE

mainly benefits the technologically rich countries. It is no surprise that the sea change in intellectual property jurisprudence, introduced by the TRIPS Agreement, occurred at the behest of the United States-led technologically strong nations.180 However, the United States’

176 See Bagley, supra note 24. 177 Mgbeoji & Allen, supra note 26. 178 The controversy generated by the Utah-based Myriad Genetics, Inc. over its attempt at exclusive administration of cancer prediction tests pursuant to its patents on BRCA1 and BRCA2 genes that test for genetic predisposition to Cancer is usually cited as an extreme example of the wrong end of gene patents. Relying on its United States and other international patents, Myriad Genetics embarked on aggressive exercise of its right as an exclusive provider for genetic testing for hereditary breast cancer, putting it on a collision course with a number of countries in Europe, and some Canadian provinces. At a point, Myriad’s tests were more expensive to alternatives, up to a difference of $2650. For a detailed account of gene patenting in the context of BRCA1 and BRCA2, Myriad genetic, and associated controversies in the United States, Canada, and Europe, see Bryn Williams-Jones, History of a Gene Patent: Tracing the Development and Application of Commercial BRCA Testing, 10 HEALTH L. J. 123 (2002). 179 See Bita Amani & Rosemary Coombe, The Human Genome Diversity Project: The Politics of Patents at the Intersection of Race, Religion, and Research Ethics, 27 LAW & POL’Y 152 (2005); Josephine Johnston & Angela A. Wasunna, Patents and Biomedical Research and Treatments: Examining Concerns, Canvassing Solutions, HASTINGS CTR. REP., (SPECIAL REPORT), Jan.-Feb 2007, at S1; Daniel K. Kevles & Ari Berkowitz, The Gene Patenting Controversy: A Convergence of Law, Economic Interests, and Ethics, 67 BROOK. L. REV. 233 (2001); Carlos-Scott Lopez, Intellectual Property Reform for Genetically Modified Crops: A Legal Imperative, 20 J. CONTEMP. HEALTH L. & POL’Y 367 (2004). 180 Drahos & Braithwaite, supra note 142 (articulating the role and influence of the US pharmaceutical industrial complex on the emergence of the TRIPS Agreement as an economic policy strategy of the United States). For a detailed account of other factors and dynamics that influenced the text of the TRIPS Agreement, see DANIEL GERVAIS, THE TRIPS AGREEMENT: DRAFTING HISTORY AND ANALYSIS (3d ed. 2008). For insight into the political dynamics of TRIPS implementation, see CAROLYN DEERE, THE IMPLEMENTATION GAME: THE TRIPS AGREEMENT AND THE



vision of intellectual property in the GKE, as elaborated in the TRIPS Agreement, did not come unchallenged. The Agreement awakened unparalleled consciousness over both the devastating consequences and the potential of intellectual property for many at the receiving end of US hegemony over the operation of the GKE.

First, the legitimacy of the TRIPS Agreement continues to be contested, necessitating lame, but symbolic, attempts to revisit that document in light of human rights issues and variegated development imperatives that were completely ignored from the beginning.181 Second, developing countries and indigenous communities’ interests in intellectual property have been aroused such that they now actively engage, in a reflective and sobering manner, in charting a vision of intellectual property that addresses their interests.182 Third, never before has the interdisciplinary nature and ramifications of intellectual property been felt so much as to galvanize the coalescing of an expansive array of stake holders in the elaboration of policy discussions on the future of intellectual property.183

The foregoing trend facilitates forms of strategic resistance toward the WTO, and the TRIPS Agreement as a superior forum, and

GLOBAL POLITICS OF INTELLECTUAL PROPERTY REFORM IN DEVELOPING COUNTRIES (2009). 181 One symbolic example of this trend is the 2001 Doha Initiative, also known as the Development Round, of the WTO trade negotiations, which focused on the TRIPS Agreement and Public Health. World Trade Organization, Ministerial Conference of 14 November, 2001, WT/MIN(01)/DEC/1 (2001). This initiative gave rise to the Declaration on the TRIPS Agreement and Public Health—an attempt to “massage” the TRIPS Agreement in ways that respond to critics of the agreement who hold it culpable as an example of globalization’s negative effect, one that aggravates the development gaps and hardships in non-industrialized or developing countries as evident in lack of access to patented drugs in those countries, especially at a time when HIV/AIDS was creating a situation of national health crisis and emergency. World Trade Organization, Ministerial Declaration of 14 November, 2001, WT/MIN(01)/DEC/2 (2001). 182 Many discourses on the regime dynamics in international intellectual property rights identify alternative and concurrent for a in which developing countries have explored counter-regime responses to the TRIPS Agreement in their bid to enunciate a new vision of intellectual property. Perhaps the most notable of the diverse for a is the United Nations Convention on Biological Diversity (“CBD”) which provides an outlet for the elaboration of options for the protection of indigenous and local knowledge practices ignored in the TRIPS Agreement. See MGBEOJI, supra note 9. 183 Many NGOs and intergovernmental organizations that focus on health and access to essential medicines, human rights, the environment, biodiversity conservation, indigenous peoples and indigenous knowledge, and community development continue to play proactive roles at national and international fora. See Rosemary Coombe, The Recognition of Indigenous Peoples’ and Local Community Knowledge in International Law, 14 ST. THOMAS L. REV. 275 (2001); see also Oguamanam, supra note 131.


as the most authoritative agreement for intellectual property governance. At the institutional level, the WIPO continues to tread softly in its delicate and often tense relationship with WTO, engaging in the process of self-recreation, soul-searching and a quest for relevance in a post-TRIPS intellectual property era.184 While keeping touch with other sites for intellectual property law making, WIPO has continued to facilitate and support the WTO/TRIPS intellectual property agenda which is out of step with WIPO’s role during the period immediately preceding the conclusion of the TRIPS Agreement.185 WIPO’s Achilles heel has been to retain the waning confidence of developing countries while mediating its promotion and development agenda in regard to intellectual property.186

Perhaps the most important demonstration of resistance to WTO/TRIPS’ jurisdiction over intellectual property is the emergence of diverse fora at a global level, that provide alternative sites for regime shift in international intellectual property law-making.187 Akin to the connection which the United States made between intellectual property and trade which resulted in the co-optation of the WTO into the intellectual property equation, many developing countries have made similar connections between intellectual property and other sites and subject-matters of their collective socio-economic interests.188 Even though lacking politico-economic clout and the same deliberate scheming dedication the United States, Japan and the European Union deployed in bringing about TRIPS, developing countries and

184 See May, supra note 139. 185 See id.; see also Oguamanam, supra note 138. 186 May, supra note 139, at 91. 187 See note 138 and accompanying text. 188 In addition to vocal promotion of indigenous knowledge at many international fora, including the Convention on Biological Diversity (“CBD”) and the United Nations Educational, Scientific, and Cultural Organization (“UNESCO”) and within the United Nations framework, in 2007, developing countries pushed WIPO into adopting forty-five recommendations set out by the Provisional Committee on Proposals Related to a WIPO Development Agenda (“PCDA”). Formalization of WIPO’s development agenda is owed to the 2004 joint initiative of Brazil and Argentina. See May, supra note 139 at 440-41. The agenda seeks to tamper WIPO’s promotion of intellectual property with the developmental objectives of the United Nations, of which WIPO has been a specialized agency since 1974. The impression in the developing countries is that WIPO’s pursuit of a promotional objective, at the expense of a developmental imperative, panders to the trade-centered focus of intellectual property. Such an imbalance serves the interests of the United States-led industrialized countries, especially following the WTO-TRIPS regime coming into force. For further elaboration of the development agenda, see World Intellectual Property Organization, The 45 Adopted Recommendations under the WIPO Development Agenda (June 15, 2007), available at http://www.wipo.int/ip-development/en/agenda/recommendations.html.



indigenous peoples have now found the United Nations’189 processes, the Convention on Biological Diversity (“CBD”), the WIPO, (particularly through its Intergovernmental Committee on Intellectual Property, Traditional Knowledge and Folklore), (“UNESCO”),190 (“FAO”), and even the WTO as fora for canvassing their vision of a new intellectual property order.191

In these fora, developing countries and indigenous peoples have made a connection between intellectual property and diverse intersecting issues, including the protection of their indigenous knowledge and intangible cultural heritage, their need for access to essential medicines and health care, the protection of their biological diversity and aspects of their bio-cultural and agricultural knowledge, their economic empowerment, and their human dignity, freedom, creativity, identity and epistemic worldview.192 The lesson of this

189 The recent most symbolic outcome of this is the crystallization of the over two-century old struggle of indigenous peoples when the UN General Assembly formally adopted the 2007 United Nations Declaration on the Rights of Indigenous Peoples, on September 13, 2007. Declaration on the Rights of Indigenous Peoples, G.A. Res. 61/295, U.N. Doc A/61/L.67 (Sept. 7, 2007), available at http://www.un.org/esa/socdev/unpfii/documents/DRIPS_en.pdf. This Declaration was adopted by a majority of 144 states in favor, four votes against (Australia, Canada, New Zealand and the United States) and eleven abstentions (Azerbaijan, Bangladesh, Bhutan, Burundi, Colombia, Georgia, Kenya, Nigeria, Russian Federation, Samoa and Ukraine). The United Nations Declaration on the Rights of Indigenous Peoples Information Page, http://www.un.org/esa/socdev/unpfii/en/drip.html (last visited Sept. 13, 2007). 190 UNESCO is a specialized organ of the United Nations charged with inter alia “promoting collaboration among the nations through education, science and culture.” See CONST. UNESCO (adopted in London on Nov. 16, 1945 as amended). It has been the focal organ for diverse treaties on cultural rights and protection of intangible cultural heritage and folklore. See also Convention for the Safeguarding of the Intangible Cultural Heritage 2003, 12 INT’L J. OF CULTURAL PROP. 447, 447-58 (2005) (U.K.); Convention on the Protection and Promotion of the Diversity of Cultural Expressions, 13 INT’L J. OF CULTURAL PROP. 377, 377-91(2006) (U.K.). 191 Developing countries do not, however, completely abandon the WTO. For the most part, for example, they are open and amenable to taking advantage of the TRIPS provisions on geographical indications as a potential window of opportunity for the protection and commercialization of their geographic-sensitive products. In 1999, India enacted a law on geographical indications, the Geographical Indications of Goods (Registration and Protection Act). Geographical Indications of Goods (Registration And Protections) Act, No. 48 (1999). See Sunder, supra note 98, at 298; see also Irene Calboli, Expanding the Protections of Geographical Indications of Origin Under TRIPS: Old Debate of New Opportunity, 10 MARQ. INTELL. PROP. L. REV. 181 (2006); Patents and Traditional Medicine, supra note 93; S.K. Saom, Analysis of Prospective Geographical Indications in India, 8 J. OF WORLD INTELL. PROP. 679 (2005). 192 See BATTISTE & HENDERSON, supra note 90; MGBEOJI, supra note 9; INTERNATIONAL LAW AND INDIGENOUS KNOWLEDGE, supra note 83.


serendipitous counter-hegemonic international intellectual property regime-shopping is obvious. It demonstrates that the trade-centered vision of intellectual property which has imposed a universal standard of intellectual property protection suffers a legitimate deficit for not taking into consideration the peculiar needs of developing countries and indigenous peoples.193

PART III: COLLUSIONS

INTELLECTUAL PROPERTY DYNAMICS IN THE GKE

The critical perspectives on intellectual property theory offered

in Part I, and the outline of intellectual property’s multifaceted issue-linkages and connection with the GKE in Part II, provide the basis for articulating the dynamics of intellectual property in the GKE going forward. Understanding the intellectual property dynamics in the GKE is important for future theory, law, and policy making around intellectual property.

Moving forward, we have noted that there is no unified theory of intellectual property. Some theoretical perspectives are more relevant to specific intellectual property regimes than others. For example, the “contractarian” approach is more suited to patents, and, less obvious to copyrights than other regimes of intellectual property. Consistent with the fading influence of natural rights thinking, the non-absolute nature of intellectual property rights is more palpable than ever before, given the litany of public regarding exemptions to intellectual “propertarian” absolutism. Ironically, however, as intellectual property extends to non-conventional arenas, which forecloses pre-existing exceptions, it becomes imperative to accommodate newer exceptions for diverse policy reasons.

Policy and theorizing around intellectual property must now contend with the basis on which to include and exclude new subject matter in regard to intellectual property protection. Intellectual property’s capacity to grasp the new challenges posed by innovations in digital technology is part of its key dynamic. Digitization stretches theory and policy deliberations on intellectual property, perhaps more than only a few other (if any) technologies in history. For example, because of digitization, originality and creativity are issues for sophisticated disputes in copyright jurisprudence. With such practices as cyber-squatting and emergent rights regimes like domain names, the same is true regarding trademark. Even more challenging is the

193 See Oguamanam, supra note 183, at 285; see also Oguamanam, supra note 141, at 137.



theoretical basis for limiting or extending the scope of intellectual property rights in the virtual world. Can a patent holder or trademark owner sue for patent infringement in Second Life –the 3D virtual world? Digitization is instrumental to the upsurge of new technologies, business methods, the blurring of national and jurisdictional boundaries, and the liberalization of the creative enterprise. Each step of the way, traditional intellectual property notions are challenged as never before.

As categories of intellectual property rights remain open-ended, so is the potential for the evolution of justifications for intellectual property, especially for new and emergent regimes. Of notable interest is the subject of indigenous knowledge. The indigenous knowledge question implicates a gamut of issues, including the extension of patents to genetic resources. Since biological diversity and genetic resources is the heart of indigenous knowledge, intellectual property has stirred complex ethical and value-based questions over the “propertization” of nature and culture.194 Similarly, in the GKE, intellectual property now foists an important conceptual debate between capitalist and communal or democratized approaches to innovation.

Such a debate would not have been a major theoretical concern for the future of intellectual property, given the latter’s origins and evolutions in the Western capitalist and free market economy traditions. However, as an aspect of globalization, the new knowledge economic order is regulated by a harmonized intellectual property or knowledge protection legal framework. Despite their philosophical and ideological worldviews, indigenous and ancient civilizations now constituted into Westphalian nations states in developing countries are forced to play by the rules of the Western intellectual property tradition. The harmonization of the global intellectual property regime occurred at a time of major shift in innovation in the life sciences. Plant and animal genetic resources in indigenous and local communities across the globe are important resources for the life sciences industry. Indigenous bio-cultural knowledge and insights are critical in the advancement of life sciences and biotechnology in our increasingly cosmopolitan epistemic environment.

However, despite the contributions of indigenous and local communities to the global basket of knowledge, the new global intellectual property order exhibits palpable contempt for local

194 See Michael F. Brown, Can Culture be Copyrighted?, 139 CURRENT ANTHROPOLOGY 193, 199 (1998); Chidi Oguamanam, Local Knowledge as Trapped Knowledge: Intellectual Property, Culture, Power and Politics, 11 J. WORLD INTELL. PROP. 29, 43 (2008). See generally Patel, supra note 83.


knowledge. As already noted, without any mention or recognition of local knowledge innovation, it is easy to argue that the TRIPS Agreement disempowers local knowledge. Intellectual property has been associated with the escalation of the development divide between technology and information-rich industrialized countries and their technology-poor, but knowledge and biodiversity-rich, counterparts in the developing world. Intellectual property issue linkages in those countries have been less than flattering. A few examples of the litany of issues in the current problems of intellectual property in the developing world include access to essential drugs, food insecurity, exploitation of folklore, music, dance and other forms of expressive culture,195 and the unidirectional transfer of wealth from wealthy countries to impoverished ones. The cumulative outcome of this frustration with intellectual property is symbolized by biopiracy. The elaboration of biopiracy as a concept, a practice and a phenomenon is perhaps one of the key dynamics that has shaped and will continue to define the global intellectual property order in future just as it has done over the past three decades.

The biopiracy debate tasks the global intellectual property order in the knowledge economy to ensure fairness and equity. It also helps galvanize and focus resistance to the WTO’s institutional supremacy in relation to global intellectual property law-making. The paradigmatic shift from the WIPO to the WTO as the most authoritative regulatory body on intellectual property via the TRIPS Agreement is catalytic of North-South tension on intellectual property. Pressure groups have coalesced, solidarity has been forged, and alliances have been built amongst developing countries, indigenous and local communities and their sympathizers world-wide to re-think the TRIPS Agreement,196 albeit, with little success thus far.

Perhaps more important, this form of resistance has made a meaningful impact as they translate into creative regime-shopping, regime-shifting, or counter-regime approaches to intellectual property outside the WTO/TRIPS arena.197 Developing countries have resorted to venting their dissatisfaction with the present intellectual property order by exploring and sometimes exploiting other relevant international, institutional, or treaty outlets sympathetic to their cause.198 In terms of significance, resistance to TRIPS and the exploration of regime alternatives means that the institutional

195 See Olufunmilayo B. Arewa, TRIPS and Traditional Knowledge: Local Communities, Local Knowledge, and Global Intellectual Property Frameworks, 10 MARQ. INTELL. PROP. L. REV. 155, 176 (2006). 196 INTERNATIONAL LAW AND INDIGENOUS KNOWLEDGE, supra note 83, at 6-12. 197 See sources cited supra note 138 and accompanying text. 198 Id.



governance framework for global intellectual property is, and will continue to be, an aspect of the key dynamics of the intellectual property system.

The trade, market economic and intellectual property promotion ideology of the WTO/TRIPS framework would, as a matter of deliberate theoretical interest, be weighed alongside the developmental agenda and the vision of intellectual property championed by developing countries. Already that debate has begun to unravel at WIPO and WTO/TRIPS. Ultimately, however, theorization and policy debates on intellectual property may have to engage with rights proliferation in the intellectual property arena. While some are expressing concern over rights glut, others are pressing for the creation of a new intellectual property rights regimes.199

In the special case of life forms, theory and policy are already entangled with the desirability of intellectual property expansion to the realm of life. The appropriate parameter for this, as well as the basis for circumscribing such extension, would be issues for dedicated theoretical exploration. Theoretical perspectives on these will assist the courts to better wrestle with conflicting interpretations of statutory provisions that have characterized the issue of granting intellectual property protection on life forms.200

Another area in need of theoretical exploration and illumination is the subject of term extensions in intellectual property. The aggressive but subtle optimization and elongation of intellectual property term chips away from the “contractarian” analysis of intellectual property. For example, the premises for regulatory data protection, copyright term extension, and patent ever-greening rest mainly on industry practice or legislative fiat. A theoretical elaboration of the term elongation trend, especially in the context of the contractarian narrative of intellectual property, will be helpful in grappling with the inter-industry tension and the policy dilemma the vogue poses.

Intellectual property theoretical and policy dynamics in the knowledge economy must come to terms with the fluid and sophisticated sites of proliferation of creativity and innovation. As its anticipated outcome, this kind of introspection will help focus attention on alternative reward and incentive mechanisms outside intellectual property’s core. Not all forms of innovation are well suited for intellectual property protection. As we have seen, the extension of intellectual property to genes and platform technologies

199 See Heald, supra note 3, at 519. 200 See Bagley, supra note 24, at 470.


or to basic research circumscribes, rather than promotes innovation. Awards, prizes, special contracts, or creative open source schemes and other forms of incentives201 can be deployed in a dedicated and organic way to support the delivery of the promises of intellectual property, and to serve the public regarding objectives. That way, the intellectual property system will become more focused on relevant and more applicable innovations. Other reward or compensatory mechanisms for creativity are not necessarily in conflict with intellectual property. When they are applied to appropriate arenas of creativity and innovation, the overarching objectives of the intellectual property and public-regarding considerations, and an appropriate balance between private and public stakes in innovation, could be better served.

Related to the foregoing, a plural or more flexible approach to rewarding or recognizing creativity and innovation has other benefits. It would plug the loopholes and obviate the credibility deficit in the underlying presumptions of the reward and incentive narrative outlined in Part I(c). As we have seen, without the intellectual property-driven reward and incentive arrangement, the tide of creativity would continue to flow rather than ebb. Also, a pluralistic perspective will accommodate those other motivations of geniuses that have nothing to do with intellectual property and its promises. Thus, intellectual property would assume a more modest and balanced role as a single theoretical framework, among several others, underlying the creative and innovative enterprise.

Overall, in one sentence, the GKE poses complex policy and theoretical challenges to the extant intellectual property system. As monumental as those challenges appear, they are hardly strange to the dynamic and open-ended nature of intellectual property, and to theorizing about it. Historically, these issues have remained continual subjects of intellectual curiosity. A robust theoretical exploration of intellectual property vis a vis the features of the extant GKE will assist in realizing balanced and informed judicial and policy responses to current intellectual property challenges at national and international arenas.

201 Recently, charitable impulses are playing major intervention roles in promoting the distributive effects of the benefits of innovation. So far, this appears limited to funding support. See Oriola, supra note 68, at 67-70. As such initiatives expand, inventors and creators at individual or group levels may be inclined to lend their genius to the pubic regarding innovative objectives.

WAKE FOREST

INTELLECTUAL PROPERTY

LAW JOURNAL


NOTE

FASHION DESIGN: THE WORK OF ART THAT IS STILL

UNRECOGNIZED IN THE UNITED STATES

BIANA BORUKHOVICH*

INTRODUCTION

“Fashion is not something that exists in dresses only. Fashion is in the sky, in the street; fashion has to do with ideas, the way we live, what is happening.”1 For this reason, fashion designs are a work of art that should be granted protection. At the 2006 Academy Awards Show, actress Felicity Huffman wore a black gown created by twenty seven year old fashion designer Zac Posen.2 Within weeks of the show, copies of the dress were being sold in department stores for a fraction of the original price.3 This type of routine is known as design piracy.

Design piracy is the practice of copying original fashion designs and selling the apparel under a different label. Counterfeiting

∗ Biana Borukhovich is a painter, poet and writer who is working her way through law school in order to attain her dream career, which, she hopes, will combine fashion and law. Biana was born in Odessa, Ukraine in 1984 and moved to the United States with her family in 1991 to escape the anti-Semitism movement in the former USSR and to obtain a life full of choices. Biana's interest in the rights of fashion designers arose from watching her mother and grandmother toil in the fashion industry. As a result, Biana grew to have a genuine appreciation for the fashion field and the talents that contribute to this field.

1 Thinkexist, http://thinkexist.com/quotations/fashion/ (last visited Apr. 5, 2009).

2 Design Piracy Prohibition Act: Hearing on H.R. 5055 Before the Subcomm. on

Courts, the Internet and Intell. Prop., 109th Cong. 12 (2006) [hereinafter Hearings] (statements of Jeffrey Banks, fashion designer); Ruth La Ferla, Night of a Thousand

Knockoffs, N.Y. Times, Mar. 9, 2006, at G11. 3 Anne Bratskeir, The Foldinspiring Dresses: Pathway to the Prom, NEWSDAY,

May 18, 2006, at A42.

2009 FASHION DESIGN: THE WORK OF ART THAT IS

STILL UNRECOGNIZED IN THE UNITED STATES

156

is another form of copying designs. It is the practice of imitating fashion designs with the intent to deceive buyers of the apparel’s true content or origin by mimicking the details of the design and the name brand logo. “Everyone is against counterfeiting. Design piracy is exactly that. One has to copy the design first before attaching the counterfeit label. Design piracy is counterfeiting without the label.”4 However, while counterfeit articles are protected against in the United States within the Intellectual property field under trademark law, trade dress and copyright law, pirated designs receive no such protection.

Since copyright law in the United States does not protect useful articles,5 Congress has denied copyright protection to fashion designs because clothing garments have traditionally been viewed as useful articles rather than artistic creations.6 The author of counterfitchic.com takes an opposing view to the foregoing decision. “A ball gown is a work of art. What else are you going to do with it? Clean the house?”7 Unfortunately, Congress has not understood this fact yet.

Art is traditionally defined as the expression or application of human creative skill and imagination, typically in a visual form such as painting or sculpture, in which the works produced are appreciated primarily for their beauty or emotional power.8 It stands to reason, therefore, that fashion design would be considered art because fashion designers apply creative skills when drawing designs for original apparel that are acknowledged for their aesthetic appearance.

Continuing this logic, it would seem to follow that fashion designs should be protected by laws similar to those that protect other kinds of original artistic creations such as paintings or sculptures.9 Unfortunately, the United States lags woefully behind other countries in this regard.10

4 Laura Goldman, Fashion Piracy, BPCOUNCIL, 2007, http://www.bpcouncil.

com/apage/178.php (quoting Steve Kolb, executive director of the Council of Fashion Designers (CFDA)).

5 Emily S. Day, Comment, Double-Edged Scissor: Legal Protection for Fashion

Designs, 86 N.C.L. REV. 237, 246 (2007). 6 Jessica G. Jacobs, Copyright Protection for Fashion Design: A Legal Analysis

of the Design Piracy Prohibition Act, H.R. 2033, http://assets.opencrs.com/rpts/ RS22685_20070628.pdf; Carol Barnhart Inc. v. Economy Cover Corp.,773 F.2d 411, 414 (2d Cir. 1985); Esquire, Inc. v. Ringer, 591 F.2d 796, 796 (D.C. Cir. 1978).

7 Goldman, supra note 4. 8 Dictionary.com, http://dictionary.reference.com/browse/art (last visited Apr. 5,

2009). 9 Academic Honesty and Integrity, http://consortiumlibrary.org/

find/copyright_4. 10 Julie P. Tsai, Comment, Fashioning Protection: A Note on the Protection of

Fashion Designs in the United States, 9 LEWIS & CLARK L. REV. 447, 468 (2005).



157

As a result of the following deficiency in our government, counterfeiting and design piracy cost the U.S. economy between $200-$250 billion dollars per year, and counterfeit merchandise, as a whole, is responsible for the loss of 750,000 American jobs.11 In addition, the annual sales of pirated and counterfeit goods total around $600 billion, 5-7% of world trade, as estimated by the World Customs Organization. As a result, global sales lost to counterfeit goods are estimated at $512 billion.12

Furthermore, if copyright protection were to be granted to fashion designs, such protection would not only prevent pirates from copying designs, but would also diminish the sales of counterfeit goods. This domino effect would result from the fact that it would not only be illegal to mimic name brand logos, but also the designs. Therefore, the overall process of counterfeiting would be illegal.

In addition, major economic losses to the world economy are not the only consequence of counterfeiting. It is believed internationally that counterfeiting is used as a source of funds by the criminal world.13 “The Islamic Extremists linked to the World Trade Centre bombing in 1993 in New York reportedly raised cash for the outrage that caused death and millions of dollars worth of damage by selling counterfeit t-shirts.”14

Most people think that buying an imitation handbag or wallet is harmless, a victimless crime. But the counterfeiting rackets are run by crime syndicates that also deal in narcotics, weapons, child prostitution, human trafficking and terrorism. Ronald K. Noble, the secretary general of Interpol, told the House of Representatives Committee on International Relations that profits from the sale of counterfeit goods have gone to groups associated with Hezbollah, the Shiite terrorist group, paramilitary organizations in Northern Ireland and FARC, the Revolutionary Armed Forces of Colombia.15

11 The Int’l. Anticounterfeiting Coal., GET REAL - The Truth about

Counterfeiting, www.iacc.org/counterfeiting/counterfeiting.php (2008). 12 Id. 13 Counterfeit Clothing a Growing Problem, http://www.just-

style.com/article.aspx?Id=101100 (June 17, 2008); See also Consultant's Report on

“Theft of Intellectual Property - Piracy and Counterfeiting”, http://www.med.govt. nz/templates/MultipageDocumentPage____1831.aspx (Oct. 28, 2005).

14 Id. 15 Mike Masnick, If The Fashion Industry Doesn't Get Special Copyrights, The

Terrorists Will Win, http://techdirt.com/articles/20080215/135455266.shtml (Feb. 15, 2008).



158

If exploitation of talents is not enough for Congress to obtain protection for fashion designs, then maybe information about the underground world will help influence the United States government to make the final decision.

Such vindictive contributions to the underground world and enormous losses within the world economy should bring change to the governing laws of the United States; however, until now, Congress has

let the talents of multiple designers continue to be exploited. On March 30, 2006, U.S. Representative Robert Goodlatte introduced the

Design Piracy Prohibition Act (hereinafter, “DPPA”) to provide copyright protection for fashion designs,16 and on August 2, 2007,

New York State Senator Charles Schumer introduced the same bill in the Senate.17 Nevertheless, the bill is still pending in the United States

Senate.18 This article follows the progression of protection offered for

fashion designs within the United States. Part I discusses the attempts of fashion pioneers over the past century to establish protection for fashion designs as well as the present protection offered to fashion

designers and the types of designs that merit protection. Part II discusses the intellectual property protection provided for fashion

designs in other countries. Part III introduces and analyzes the proposed Design Piracy Prohibition Act and the newly passed bill, the

Enforcement of Intellectual Property Rights Act of 2008. Part IV discusses the arguments that have been made against and for

protection of fashion designs. The discussion of the proposed bill will lead the article into the conclusion, which discusses the need to recognize that fashion designs are a form of art that need further protection within the intellectual property field.

HISTORY

16 H.R. 5055, 109th Cong. (2d Sess. 2006); Goodlatte Introduces Legislation

Granting Protection to Fashion Designs, 71 PAT. TRADEMARK & COPYRIGHT J. 615; 615 (2006).

17 Design Piracy Prohibition Act, S. 1957, 110th Cong. (2007). References throughout this Note cite to H.R. 5055, the bill introduced in the House of Representatives; however, since the two bills are identical the analysis applies equally to S. 1957, the bill introduced in the Senate. At this time, the House has not passed the Bill.

18 Elizabeth F. Johnson, Note, Defining Fashion: Interpreting the Scope of the

Design Piracy Prohibition Act, 73 BROOK. L. REV. 729, 731 (2008).



159

The United States has a long history of fashion piracy,19 dating back to the copying of textile patterns in the nineteenth century.20 However, for numerous cultural reasons, intellectual property law in the United States has yet to develop as it has in other countries.21 This result is not due to a lack of effort or compliancy by the designers, but rather is the consequence of the designers’ inability to convince lawmakers to provide fashion designs the same protections given to other articles of intellectual property, such as books, movies, plays, and computer code.22 Due to these shortcomings, fashion designers have tried to combat the problem by creating their own procedures within the fashion field.

In 1932, a group of American fashion manufacturers formed the Fashion Originators Guild of America to monitor retailers and keep track of original designs in order to prevent counterfeiting and design piracy. For example, if one looks at vintage dresses from the thirties, they will be able to find labels reading “a registered original design with Fashion Originators Guild.”23 Retailers selling knockoffs were red-carded, and guild members would not sell their merchandise to red-carded stores.24 This routine was unpopular with the retailers, but it restrained copying. However, in 1941, the Supreme Court ruled that the manufacturers’ arrangement violated antitrust laws, and the knockoff artists stayed in business.25

Nevertheless, in the late 1950s and the 1960s, another attempt to provide protection for fashion designs was made. The National Committee for Effective Design Legislation tried to enact special copyright law that offered limited protection to all types of ornamental and industrial designs.26 As a result, these proposals eventually developed into the current version of the Copyright Act.27 Since 1914, Congress has considered over seventy bills to give copyright or copyright-like protection to clothing designs; however, these attempts

19 Susan Scafidi, Intellectual Property and Fashion Design, in 1 INTELLECTUAL

PROPERTY AND INFORMATION WEALTH 115, 118 (Peter K. Yu ed., 2006). 20 Susan Scafidi, Design Piracy Prohibition Act: Historical Regression (Mar.

10, 2008), http://www.counterfeitchic.com/2008/03/design_piracy_prohibtion_act _h.php.

21 Id. 22 Bennu Interests, Copyright Laws on Clothing, Aug. 7, 2008,

http://bennuinterests.wordpress.com/2008/08/07/copyright-laws-on-clothing/. 23 James Surowiecki, The Piracy Paradox, THE NEW YORKER, Sept. 4, 2007,

http://www.newyorker.com/talk/financial/2007/09/24/070924ta_talk_surowiecki. 24 Id. 25 Id. 26 Barbara Ringer, Alan Latman: An Appreciation, 59 N.Y.U. L. REV. 247, 248

(1984). 27 Scafidi, supra note 20.



160

have been futile.28 Currently, knockoffs are widespread and legal.29 In addition, failure to provide protection for fashion designs is

not only attributed to Congress’s failure to recognize fashion designs as a form of art, but also Congress’s concern about the consequences that may accompany such protection. These concerns include the belief that imitations help the fashion industry develop and that the pirates are doing the industry a favor by making these designs affordable and more wearable for the public, since most American consumers would not be able to afford the original garment.30 Although these concerns may have some merit, any negative outcome that may accompany the addition of protection for fashion designs is not outweighed by the consequences that result from the practice of counterfeiting and design piracy.

Currently, if fashion designers in the U.S. want to protect their work from pirates, they can look to Copyright, Patent, Trade Dress or Trademark Law. Although these designers would not be able to find protection for their designs within these fields, they would be able to attain protection for their company’s logos and other distinctive marks as well as fabric patterns.31

TRADEMARK PROTECTION UNDER THE LANHAM ACT

A trademark is a word, symbol, or phrase used to identify a

particular manufacturer or seller’s products and distinguish that product from the products of another.32 The trademark “Nike” and the Nike “swoosh,” for example, are trademarks that identify the shoes made by Nike and “[distinguishes] them from shoes made by other companies” such as Reebok or Adidas.33

Once a trademark qualifies for protection, “rights to a trademark can be acquired (1) by being the first to use the mark in commerce, or (2) by being the first to register the mark with the U.S. Patent and Trademark Office.”34 Because of such lenient requirements, trademark law is “the most practicable source of protection for fashion

28 Anne Theodore Briggs, Hung Out to Dry: Clothing Design Protection Pitfalls

in United States Law, 24 HASTINGS COMM. & ENT. L.J, 169, 171-200 (2002). 29 People v. Rosenthal, No. 2002NY075570, 2003 WL 23962174 (N.Y. Crim.

Ct. Mar. 4, 2003). 30 110th Congress – A bill to amend Title 17, Unites States Code, to Provide

Protection for Fashion Design, http://www.maplight.org/map/us/bill/71288/ default/committees/349 (2008).

31 Tsai, supra note 10, at 453. 32 15 U.S.C. § 1127 (2008). 33 Overview of Trademark Law, http://cyber.law.harvard.edu/metaschool/fisher

/domain/tm.htm (last visited March 25, 2009). 34 Id.



161

designers” today.35 Trademark law provides strong protection for company logos and other distinctive marks, which identify the source of the fashion design.36 The Second Circuit recently found that the color and design combination constituting a Louis Vuitton mark on its handbag collection qualified for trademark protection because it was inherently distinctive and had acquired secondary meaning.37 As a result, if a Louis Vuitton bag were counterfeited, the copycat would be liable for trademark infringement. However, using trademark law to protect anything more than counterfeit items has proven to be nearly impossible.38 This is due to the fact that it is legal to sell merchandise that copies the design and style of a product; however, it is against the law to sell goods that bear a counterfeit trademark.39

The foregoing concept is presented in the Louis Vuitton

Malletier v. Dooney & Bourke, Inc. case, in which the court held that Dooney & Bourke’s imitation of a Louis Vuitton bag design was legal because it was not likely to cause confusion among consumers and had not reduced the capacity of the design. Conversely, in New York City, counterfeit Louis Vuitton bags are often seized from sellers because they are illegal.40 Hence, the foregoing examples serve to prove that courts do not discriminate against design piracy, although they forbid counterfeiting.

TRADE DRESS PROTECTION UNDER THE LANHAM ACT

Trade dress is a subset of trademark law.41 The concept of

trade dress, which formerly was limited to the packaging of a product,42 now encompasses “the total image of a product and may

35 Lynsey Blackmon, The Devil Wears Prado: A Look at the Design Piracy

Prohibition Act and the Extension of Copyright Protection to the World of Fashion,

35 PEPP. L. REV. 107, 123 (2007).

36 Tsai, supra note 10, at 451-60. 37 Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 116 (2d Cir.

2006). 38 Blackmon, supra note 34, at 123. 39 Id. 40 Anthony Ramirez, Undercover on Canal St., With Louis Vuitton Impostors in

His Sights, N.Y. TIMES, Jan. 29, 2006, available at http://www.nytimes.com/2006 /01/29/nyregion/29canal.html?fta=y.

41 Susan Scafidi, Counterfeit Chic FAQs, http://faqs.counterfeitchic.com/ (last visited Apr. 5, 2009).

42 JEROME GILSON & ANNE GILSON LALONDE, 1 GILSON ON TRADEMARK

PROTECTION AND PRACTICE § 2A.01[1] (2006 ed.).



162

include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques.”43 To recover for trade dress infringement, the plaintiff must show that her design is nonfunctional and distinctive and that the infringer’s design is likely to cause consumer confusion as to the source of the design.44 Thus, while trademark law provides sufficient protection for fashion designers’ marks and logos, trademark and trade dress law do not provide strong protection against knockoffs of overall clothing or accessory design.

In Wal-Mart Stores, Inc. v. Samara Brothers, Inc., the Supreme Court held that a product’s design is distinctive, and therefore protectable, only upon a showing of secondary meaning.45 Similarly, in Inwood Laboratories, Inc. v. Ives Laboratories, Inc. the Court held that designers prove “secondary meaning” by showing that “in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.”46 These holdings have been applied in a recent case in which Louis Vuitton sued a small company named Haute Diggity Dog over a line of canine products called Chewy Vuiton.47 These products are decorated with a pattern (intertwined “C” and “V”) that resembles that of the famous Louis Vuitton logo (intertwined “V” and “L”).48 In the Louis Vuitton case, which involved both trademark and copyright infringement claims, the court began its trademark analysis by finding that the name “Chewy Vuiton” was an “obvious parody” of the famous Louis Vuitton mark.49 Given the strength and recognizable mark owned by Louis Vuitton, the court ultimately found that it was unlikely that a consumer would become confused about the origin of the Chewy Vuiton dog toys.50 Instrumental in the court’s decision was the fact that no actual confusion was shown by Louis Vuitton.51 The court was also persuaded by the fact of the obvious difference in degree of quality (or lack thereof in the case of the Chewy Vuiton dog toys and beds), as well as the fact that the substantial price on genuine Louis Vuitton goods creates an inherent sophistication naturally

43 John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir.

1983). 44 GILSON & LALONDE, supra note 42, § 2A.01[3]. 45 Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 216 (2000). 46 Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11 (1982) (citing

Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111, 118 (1938)). 47 Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 464 F. Supp. 2d

495, 498 (E.D. Va. 2006). 48 Id. 49 Id. at 499-500. 50 Id. at 499-503. 51 Id. at 502.



163

requiring the “buyers to exercise care before they part with their money.”52 The court found that the same facts that led to the finding of no trademark infringement weighted on the defendant’s side for the Fair Use analysis under the Copyright Act.53

PATENT

Similarly, patent law hardly contributes to the protection of

apparel. A patent is a set of exclusive rights granted by a state to an inventor for a limited period of time in exchange for a disclosure of an invention.54 To obtain a patent, “an invention must meet the following five requirements: patentable subject matter, the utility requirement, the novelty requirement, the non-obviousness requirement, and the description requirement.”55

If a garment passes all of the requirements needed to obtain a patent then it is protected with a design patent or utility patent. “A design patent protects the ornamental design, configuration, improved decorative appearance, or shape of an invention” for fourteen years.56 This patent is appropriate when the basic product already exists in the marketplace and is being improved upon not in function, but only in style.57 On the other hand, “a utility patent protects any new invention or functional improvements on existing inventions” and “lasts for twenty years from the date of filing.”58 To ensure the utility and design patents do not expire, the owner of the patent must pay maintenance fees to the United States Patent and Trademark Office.59 These fees are due at three and one-half, seven and one-half, and eleven and one-half years from the filing date and amount to roughly $3500 U.S. dollars for individuals and small businesses.60 Nevertheless, these fees do not encompass the filing fee, the issue fee, or the attorneys’ fees for processing the application.

Hence, the high cost of maintaining a patent is not the only negative aspect of obtaining a patent. The process of attaining a patent

52 Id. at 503 (quoting Charles of Ritz Group, Ltd. v. Quality King Distributors,

Inc., 832 F.2d 1317, 1323 (2d Cir. 1987)). 53 Id. at 507. 54 Cornell University Law School, Patent Law: An Overview,

http://topics.law.cornell.edu/wex/Patent (last visited Mar. 25, 2009). 55 Id. 56 R. Kayne, What is the Difference Between a Design Patent and a Utility

Patent? (2003), http://www.wisegeek.com/what-is-the-difference-between-a-design-patent-and-a-utility-patent.htm.

57 Id. 58 Id. 59

Id. 60

Id.



164

is also extremely time-consuming. A “cautious estimate” of a patent-pending time span for a design is twenty-six months.61 Since designs and patterns are usually short-lived, obtaining a patent for a design becomes pointless because by the time a manufacturer receives a patent for the manufacturer’s item, there is a high likelihood that the item has already been imitated. Therefore, the world of fashion cannot make effective use of the patent system.

In addition, if there were an expedited patent statute enacted, patents would still be of no use to fashion designs. This is due to the utility requirement that is needed to obtain a patent. Since fashion designs are viewed as useful articles rather than utilitarian creations, fashion designs are unlikely to meet the utility requirement.62 As a result, an expedited patent statute would be futile for fashion designs because it would not extend protection to such creations. However, if fashion designs were to be viewed as utilitarian creations rather than useful articles, such a statute would be attainable and beneficial to the fashion world because it would provide protection for fashion designs similar to that proposed in the DPPA.

COPYRIGHT

On the other side of the spectrum is copyright law, which

offers the most protection to fashion designs today but is extremely limited. Currently, copyright law only grants protection to the designer or other owners of an original design of a “useful article” that makes the article’s appearance attractive or distinctive to the buying public.63 However, the statute restricts the definition of a useful article to a “vessel hull, including a plug or mold.”64

In 1998, as part of the Digital Millennium Copyright Act, Congress enacted the Vessel Hull Design Protection Act, which provides limited protection to designs of vessel hulls.65 “The Committee noted that protection for boat designers was important because consumers could possibly be defrauded because they might not receive the same ‘quality and safety’ that they would receive from

61 Laura C. Marshall, Catwalk Copycats: Why Congress Should Adopt a

Modified Version of the Design Piracy Prohibition Act, 14 J. INTELL. PROP. L. 305, 312 (2007).

62 Leslie J. Hagin, A Comparative Analysis of Copyright Laws Applied to

Fashion Works: Renewing the Proposal for Folding Fashion Works into the United

States Copyright Regime, 26 TEX. INT’L L.J. 341, 349 (1991). 63 17 U.S.C. § 1301(a)(1) (2008). 64 17 U.S.C. § 1301(b)(2) (2008). 65 Megan Williams, Fashioning a New Idea: How the Design Piracy Prohibition

Act is a Reasonable Solution to the Fashion Design Problem, 10 TUL. J. TECH. &

INTELL. PROP. 303, 314 (2007).



165

a boat with an originally designed hull.”66 This begs the question: cannot the same argument be made for fashion designs? Without copyright protection, counterfeit or pirated goods may defraud consumers of apparel because they might not receive the same quality of goods they would receive from the initial design. Some of those who buy counterfeited goods are not aware of the poor quality of the articles because they assume that these items are just stolen goods.67 Therefore, Congress should revise the limited definition of useful articles and extend protection to fashion designs.

Currently, the Copyright Act defines “useful article” as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”68 Under the useful articles doctrine, designs can be protected “only if and only to the extent that such designs incorporate pictorial, graphic, or sculptural features that can be identified separately from and are capable of existing independently of the utilitarian aspects of the article.”69 This doctrine reflects Congress’s attempt to prevent manufacturers from acquiring monopolies on designs based only on the products function.70

In portions of the Copyright Act of 1976, Congress tried to clarify the holding of Mazer v. Stein, that a statuette forming the base of a lamp could be copyrighted. Congress did this by enacting a “separability” test for distinguishing the artistic elements of an object from its utilitarian function.71 According to the “separability” test, “‘pictorial, graphic, or sculptural’ features of a design may be copyrightable if those features are physically or conceptually separable from the useful features of the product.”72

Unfortunately, the vagueness of this test has led to inequitable results in many courts.73 In 1978, the D.C. Circuit held that an object is not copyrightable if an intrinsic function of the object is utilitarian.74 Additionally, in 1980, in a Second Circuit decision, the court held that a designer could obtain a copyright for his belt-buckle design because the “primary ornamental aspect” of the buckles was “conceptually separable from their subsidiary utilitarian function.”75

66 Id. 67 Ramirez, supra note 40. 68 17 U.S.C. § 101 (2008). 69 Hearings, supra note 2 (statement of the U.S. Copyright Office). 70 Briggs, supra note 28, at 181. 71 Marshall, supra note 61, at 315. 72 Id. 73 Id. 74 Esquire, Inc. v. Ringer, 591 F.2d 796, 804 (D.C. Cir. 1978). 75 Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir.

1980).



166

Within half a decade, the dissenting judge of another Second Circuit case, Carol Barnhart, Inc. v. Economy Cover Corp, introduced a different separability test from the original one presented by Congress: “for the design features to be ‘conceptually separate’ from the utilitarian aspects of the useful article that embodies the design, the article must stimulate in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function.”76 The Second Circuit has never adopted this test;77 however, two years after the Carol Barnhart decision, the Second Circuit changed the separability test yet again. According to the court, “If design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements. Conversely, where design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences, conceptual separability exists.”78 Although some aspects of clothing design, such as a particular fabric pattern or the lace and embroidery accents on a shirt, have passed the separability test without a problem,79 copyright protection for fashion designs is still unavailable in the United States and is in high demand. In Knitwaves, Inc. v. Lollytogs, the court held that “Fabric designs . . . are considered ‘writings’ for purposes of copyright law and are accordingly protectible.”80 In addition, in Express, LLC v.

Fetish Group, Inc., the court held that lace and embroidery accents that were totally irrelevant to the utilitarian functions of the manufacturer’s tunic were copyrightable.81 However, both of these cases upheld that clothing designs are not copyrightable and therefore are not offered any protection.

PROTECTION OF FASHION DESIGNS IN OTHER COUNTRIES Protection for fashion designs, however, is available in most other countries that have strong fashion industries such as France, Italy, and Great Britain. Similarly, other countries that are hardly

76 Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411, 422 (2d Cir.

1985). 77 Lim v. Green, No. 99-16538, 2000 U.S. App. LEXIS 29291, *2 (9th Cir. Nov.

13, 2000). 78 Brandir Int’l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir.

1987). 79 Marshall, supra note 61, at 315; Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d

996, 1002 (2d Cir. 1995); Express, LLC v. Fetish Group, Inc., 424 F. Supp. 2d 1211, 1215 (C.D. Cal. 2006).

80 Marshall, supra note 61, at 315 n.67; Knitwaves, 71 F.3d at 1002. 81 Express, 424 F. Supp. 2d at 1215.



167

recognized for fashion designs, such as India, have also provided intellectual property protection for their designers. Although these forms of protection have not eliminated counterfeiting or design piracy around the world, they have helped to avoid the kinds of losses that plague designers and the economy in the United States.

In Europe, fashion designs are afforded double protection under the National Laws of the individual European countries and the European Directive on the Legal Protection of designs (“E.U. Directive”).82 The Directive requires countries to enact laws to protect fashion designs under the guidance of standards contained in the Directive.83 For a design to be protected under the E.U. Directive, it must first be registered.84 But before the item can be registered, a design must display novelty, and have individual character.85 “The novelty element requires that no identical design, including one that differs only in immaterial details, has been made public before the date of registration.86 The individual character element requires that the design does not produce the same overall impression on an informed user as an already public design.”87 Once a design is registered, a registered owner has exclusive rights to his or her designs against even substantially similar designs.88 The design registration is valid for up to twenty-five years in member states and includes the “lines, contours, colors, shape, texture and/or material” elements of the design.89

NATIONAL LAWS OF THE INDIVIDUAL EUROPEAN COUNTRIES

France, the world’s fashion capital, has the world’s strongest

legal protection for fashion designs.90 French designers rely on the 1793 Copyright law, as amended in 1902, and the 1806 Industrial Design Law, as amended in 1909, to protect their designs.91 These acts provide the most liberal copyright protection to fashion designs under the “doctrine of the unity of art,” which forbids the exclusion of

82 Council Directive 98/71, 1998 O.J. (L 289) 28 (EC)(Implementation by the

twenty-five Member States was required not later than October 28, 2001); Id. art. 19, §1.

83 Williams, supra note 65, at 316. 84 Id. 85 Day, supra note 5, at 267. 86 Id. 87 Id. 88 Id. 89 Marshall, supra note 61, at 318. 90 Susan Scafidi, Intellectual Property and Fashion Design, 1 INTELLECTUAL

PROPERTY AND INFORMATION WEALTH 115, 117-18 (2006). 91 Id.



168

copyright protection solely on the basis of the work’s utilitarian function.92

France offers protection for fashion designs by “providing copyright protection once the design becomes popular with the general public.”93 When the design becomes popular with the general public, French copyright holders receive both patrimonial and moral rights at the moment they create an original work rather than at the point of public disclosure.94 Patrimonial rights incorporate “the exclusive rights to represent, reproduce, sell or otherwise exploit the copyrighted work of art and to derive a financial compensation there from.”95 A moral right is “essentially the right for the author to see both his name and his work of art respected.”96 This right passes to the author’s heirs or executor upon the author’s death, but may not be otherwise transferred or sold under any circumstances, by either the author or his legal successors.97

Copyright infringers in France are subject to both civil suits for damages and criminal penalties, including up to three years in jail and a fine of €300,000.98 In 1994, Yves Saint Laurent Couture (“YSL”) sued Ralph Lauren for infringement under French Copyright Law.99 The court found that a YSL women’s dinner-jacket dress, originally shown in 1970, then updated and returned to the runway in 1992, was sufficiently original to give the fashion house property rights in the design.100 The court also held that Ralph Lauren’s subsequent ready-to-wear dinner-jacket dress infringed the YSL design because the differences between it and the original were so slight that the average customer would not be able to distinguish them.101 YSL received a $385,000 monetary judgment against Ralph Lauren for its “theft” of the original design.102

In a more recent case from 2008, the French court found that a company known as Naf Naf was guilty of copying an Isabel Morant

92 Day, supra note 5, at 266. 93 Id. 94 Marshall, supra note 61, at 319. 95 Id. 96 Id. 97 Code de la propriete intellectuelle [C. Prop. Intell.], art. L111-1 (Fr.),

available at http://www.legifrance.gouv.fr/html/codes_traduits/cpialtext.htm. 98 LOVELLS & PAUL, HASTINGS, JANOFSKY & WALKER (EUROPE) LLP, 2 DOING

BUSINESS IN FRANCE § 17.06 (Release May 31, 2006). 99 Société Yves Saint Laurent Couture S.A. v. Société Louis Dreyfus Retail

Mgmt. S.A., [1994] E.C.C. 512, 514 (Trib. Comm. (Paris)). 100 Id. at 520. 101 Id. at 521. 102 Id. at 514-16.



169

dress despite the minor differences between the designs.103 The court ordered the “copycat” company to pay the designer €75,000, which is equal to approximately $120,000.104 Both of these cases introduce the severe punishments that were enforced by the French government due to the rise in design piracy.

Additionally, Italian copyright law extends protection to

“works of industrial design displaying creative character and per se artistic value.”105 Although, the Italian standard is much more stringent than the French one in that it requires not only registration, but also novelty, and individual character,106 it nonetheless provides some level of protection for fashion designers. In 1993, “Italy enacted the ‘Made in Italy’ legislation to guarantee that only items made in the country may bear the label and put further laws into effect that fine consumers several times the retail price of the original item for buying copied goods.”107

Furthermore, Great Britain is another European country that provides stringent protection for fashion designs. This protection applies to artistic works, unregistered design rights, and registered design rights.108 In Spain, the registered designs receive up to twenty-five years of protection in contrast to unregistered designs that are offered three years of protection.109 Under this scheme, a fashion design is granted copyright protection as long as it can be referenced back to a copyrighted drawing.110 “Infringement of a design right is determined by whether or not the second article, even if still in pieces not yet assembled, is an exact copy or substantially different from the original.”111 According to the intellectual property law of Great Britain, if a design is copied, the designer is entitled to damages and injunctions similar to that of owners of other types of intellectual

103 Susan Scafidi, No, No, Naf Naf (July 21, 2008) http://www.counterfeitchic.

com/2008/07/no_no_naf_naf.php. 104 Id. 105 ALBERTY MUSSO & MARIO FABIAM, INTERNATIONAL COPYRIGHT LAW AND

PRACTICE, § Italy §2(4)(c)(i) (Matthew Bender & Co. ed., 2008) (quoting ITALIAN

COPYRIGHT ACT, art. 2). 106 MUSSO & FABIAM, supra note 105. 107 Anya Jenkins Ferris, Real Art Calls for Real Legislation: An Argument

Against Adoption of the Design Prohibition Act, 26 CARDOZO ARTS & ENT. L.J. 559, 586 (2008).

108 Lionel Bently & William Cornish, INTERNATIONAL COPYRIGHT LAW AND

PRACTICE UK §2(4)(c) (Paul Edward Gellar ed., 2006). 109 Marshall, supra note 61, at 318. 110 Id. 111 Kristen Soehngen, Fashionably Late: The Evolution of Intellectual Property

Rights for Fashion Design in the United States, N.Y. ST. B.A. ENT., ARTS & SPORTS

L.J., Summer 2008, at 33, 33-34.



170

property.112 Nevertheless, the protection afforded to fashion designs in countries in which the design has previously been introduced is irrelevant once the apparel reaches the United States, because the United States stands as one of few countries with a major intellectual property law regime that does not protect fashion works.113 As a result, fashion designers all over the world are affected negatively by this circumstance.

TRIPS AGREEMENT

In 1994, the United States and other members of the World Trade Organization (“WTO”) signed the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”).114 The TRIPS Agreement was created to make international intellectual property rights uniform by setting a minimum level of protection that each country must provide.115 The Agreement’s provision on design rights, Article 25(2), states:

Each Member shall ensure that requirements for securing protection for textile designs, in particular in regard to any cost, examination or publication, do not unreasonably impair the opportunity to seek and obtain such protection. Members shall be free to meet this obligation through industrial design law or through copyright law. 116

However, the United States has not met its obligation through copyright or design law. The connotation of a textile is any cloth or goods produced by weaving, knitting, or felting.117 Hence, a textile design is a fabric design or fashion design. Since the United States

112 Id. at 34. 113 Shelley C. Sackel, Art is in the Eye of the Beholder: A Recommendation for

Tailoring Design Piracy Legislation to Protect Fashion Design and the Public

Domain, 35 AIPLA Q.J. 473, 492-93 (2007). 114 Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr.

15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Legal Instruments-Results of the Uruguay Round, 33 I.L.M. 81 (1994) [hereinafter TRIPS Agreement].

115 World Trade Organization, Intellectual Property: Protection and Enforcement, http://www.wto.org/english/thewto_e/whatis_e/tif_e/agrm7_e.htm (last visited Apr. 6, 2009).

116 Marshall, supra note 61, at 319. 117 Dictionary.com, http://dictionary.reference.com/browse/textile (last visited

March 28, 2009) (TRIPS agreement does not include a definition for textile or textile design).



171

does not secure protection for fashion designs, designers’ opportunity to seek protection is unreasonably impaired, and consequently, the United States is in breach of its duties under the Agreement. This dilemma is just another reason why the United States is obligated to adopt the Design Piracy Prohibition Act.

THE DESIGN PIRACY PROHIBITION ACT

Due to the fact that there is minimal protection for fashion,

many designers face what are often impossible obstacles in obtaining protection for their designs.118 The lack of legal protection that is offered for fashion designs is greatly reflected in the fashion industry, in which there is a considerable amount of copying within and between many parts of the trade.119 Due to these inequitable dealings, the DPPA was introduced.120 The DPPA is meant to extend copyright protection to fashion designs. Under this proposed bill, a fashion design is defined as “the appearance as a whole of an article of apparel, including its ornamentation.”121 In addition, the DPPA would “[e]xtend[] the definition of infringing article to include the design of any article that has been copied from an image of a protected design without the consent of the owner.”122 If the DPPA were enacted, it would “prevent anyone from copying an original clothing design in the United States and give designers the exclusive right to make, import, distribute, and sell clothes based on their designs.”123 Courts would be able to provide this protection through the DPPA by “appl[ying] the doctrines of secondary infringement and secondary liability to actions related to original designs.”124 These doctrines “provide an effective means of enforcement by placing liability on those who are benefiting from the infringement and are in a position to control or restrain it.”125

Furthermore, the fashion designs included under the DPPA would not only encompass outer garments, but would also include gloves, underwear, footwear, headgear, handbags, purses, tote bags,

118 Johnson, supra note 18, at 733-35. 119 Id. at 732. 120 Id. at 732-33. 121 Design Piracy Prohibition Act, S. 1957, 110th Cong. § 2(a)(2)(B) (2007).

122 U.S. CONG. RESEARCH SERV., S.1957: SUMMARY AS OF 8/2/2007— INTRODUCED, http://thomas.loc.gov/cgi-bin/bdquery/D?d110:2:./temp/~bdmQly: @@@D&summ2=m&|/bss/110search.html| [hereinafter S. 1957: SUMMARY].

123 Blackmon, supra note 35, at 132 (quoting Henry Lanman, Copycatfight: The

Rag Trade’s Fashionably Late Arrival to the Copyright Party, SLATE, Mar. 13, 2006, http://www.slate.com/id/2137954).

124 S. 1957: SUMMARY, supra note 122. 125 Id.



172

belts, and eyeglasses. However, the bill would exclude designs that have been in existence for more than three months before an application for copyright protection was filed and would limit available protection to a maximum of three years.126 Under this protection designers can seek recovery in the form of statutory damages of $250,000 or $5 per copy.127 Additionally, as is similar to other copyright protected articles, infringement would not be imposed on independently created fashion designs.128

Although this proposed bill is noteworthy in the sense that it offers protection to fashion designs, it lacks certain legislation that is important to decreasing the widespread acts of design piracy and counterfeiting. The DPPA should further include a regulation that imposes a fine on consumers of copied goods. Such a harsh law would cause many people to think twice before purchasing a knockoff and as a result people would be discouraged from buying pirated items. In addition, the Bill should also include a law that requires those who pirate a design to pay the original designer a fee for using the design after the proposed copyright protection expires. This type of law would compensate the designers for their hard work and would discourage pirates from copying designs. Accordingly, if the DPPA were to include the foregoing proposals, it would provide stronger protection against design piracy as well as counterfeiting.

RECENTLY APPROVED BILL

On October 13, 2008, the Enforcement of Intellectual Property

Rights Act of 2008, a “companion bill” to the DPPA, became law. The purpose of this piece of legislation was to enhance remedies for violations of intellectual property laws.129 This act amends federal copyright law to: (1) authorize, in lieu of a criminal action, civil copyright enforcement by the Attorney General; (2) provide that copyright registration requirements apply to civil (not criminal) infringement actions, and (3) provide a safe harbor for copyright registrations that contain inaccurate information.130 This act also amends the Trademark Act to: (1) revise treble damages provisions and double statutory damages in counterfeiting cases, and (2) prohibit

126 Williams, supra note 65, at 311. 127 Marshall, supra note 61, at 310. 128 Williams, supra note 65, at 311. 129 S. 3325, 110th Cong. (2008), available at http://www.publicknowledge.org/

pdf/110-s3325-20080926.pdf. 130 Prioritizing Resources and Organization for Intellectual Property Act of

2008, Pub. L. No. 110-403, 122 Stat 4256 (2008), available at http://thomas.loc.gov/ cgi-bin/bdquery/z?d110:SN03325:@@@L&summ2=m&.



173

the transshipment and exportation of goods bearing infringing marks.131 This bill gives our government the additional tools necessary to protect intellectual property by enhancing the civil and criminal penalties for intellectual property violations, thereby discouraging criminal organizations from entering the business of counterfeiting and piracy.132

These enhancements, brought about by the Enforcement of Intellectual Property Rights Act of 2008, help the fashion world to deter pirates by increasing the penalties imposed on pirates who infringe on articles already receiving protection within the intellectual property field for features such as marks and design logos. However, this act does not provide further protection for fashion designs themselves because fashion designs are not protected within the intellectual property field. Then again, this law does provide hope for fashion designers within the United States. If Congress passes the DPPA, in the same manner as it passed the Enforcement of Intellectual Property Rights Act of 2008, designers will not have to worry that copycats might profit from their toil and hard work. Most designers put in long hours to earn their salaries. A designer typically requires eighteen to twenty-four months to take a design from beginning sketches to final manufacture.133 After such long periods of dedication, “a designer can have the fruits of her labor stolen in a flash.”134

ARGUMENTS AGAINST PROTECTION FOR FASHION DESIGNS

Although it is obvious from the previous statements that protection for fashion designs is necessary, some scholars in the United States argue that the framework of free copying in this country actually benefits the fashion industry as a whole more so than the stricter laws in Europe.135 In a recent article, Professors Kal Raustiala and Christopher Sprigman argued that copying in the fashion industry does not impinge on creativity and may, in fact, produce greater innovation among

131 Id. 132 Patrick Leahy, Leahy, Specter, Bayh, Voinovich Introduce Intellectual

Property Rights Enforcement Legislation (2008), http://leahy.senate.gov/ press/200807/072408a.html.

133 BUREAU OF LABOR STATISTICS, U.S. DEP'T OF LABOR, OCCUPATIONAL

OUTLOOK HANDBOOK: FASHION DESIGNERS (2008-09 ed.), available at

http://www.bls.gov/oco/ocos291.htm. 134 Marshall, supra note 61, at 310. 135 Id. at 309.



174

designers.136 They note that the fashion industry stays stable in “low-IP equilibrium” and suggest that this stability is the outcome of two connected features of the industry: “induced obsolescence” and “anchoring.”137 Induced obsolescence is the phenomenon by which trends become distasteful to their initial, wealthy customers while knockoffs of these trends “diffuse to a broader clientele” at cheaper prices.138 Widespread copying forces the upscale fashion designers to create more new designs as the trend-of-the-moment becomes outdated.139 For this reason, the authors argue that design piracy actually works in designers’ favor “by inducing more rapid turnover and additional sales.”140

Another Professor, James Duesenberry, noted that the urge to acquire the prestige benefits earned by imitating the prevailing standard of living drives middle-class consumption behavior, which therefore is based not on the satisfaction of intrinsic wants but on wants generated as a result of observing the purchasing behavior of other consumers.141 However, even if these arguments are legitimate, they do not solve the primary problem, which is that “pirates cash in on other’s efforts and prevent designers in our country from reaping a fair return on their creative investments.”142 At the end of the day, in most cases, these copycats cause more damage to designers than anticipated. Or to put it another way: “Because these knockoffs are usually of such poor quality, these reproductions not only steal the designer’s profits, but also damage his or her reputation.”143 Due to these inequitable consequences, diminishing counterfeiting and design piracy must be a priority.

CONCLUSION

Although Congress has yet to enact legislation affording protection for fashion designs, such developments seem near at hand. Modern day fashion design has been increasingly perceived as art. In 2002, artist Takashi Murakami collaborated with designer Marc

136 Kal Raustiala & Christopher Sprigman, The Piracy Paradox: Innovation and

Intellectual Property in Fashion Design, 92 VA. L. REV. 1687, 1691 (2006). 137 Id. at 1699. 138 Id. at 1719. 139 Id. at 1721. 140 Id. at 1722. 141 Jonathan M. Barnett, Shopping for Gucci on Canal Street: Reflections on

Status Consumption, Intellectual Property, and the Incentive Thesis, 91 VA. L. REV. 1381, 1388 n.12 (2005).

142 Williams, supra note 65, at 310. 143 Id.



175

Jacobs to design four handbags and accessory collections for Louis Vuitton, a luxury fashion firm.144 These designs made for the Louis Vuitton collection are works of art and should be granted protection, since there is no difference between an artist drawing a painting or a design. Under this framework, one wonders if protection would be granted to fashion designs if designs were sketched on a canvas.

In addition, the popularity and frequency of collaborations between museums and designers further support the notion of fashion design as a form of art. In 2001, the Metropolitan Museum of Art (the “Met”) in New York City displayed over eighty items of clothing and accessories representing the fashion of First Lady Jacqueline Kennedy.145 The Met also has a permanent collection in its Costume Institute of over 75,000 costumes and accessories from seven centuries and five continents.146 Furthermore, museums dedicated to fashion have emerged in cities such as London, England and Kobe, Japan.147 The growth of fashion in museums demonstrates that fashion designs are a form of art. Museums in general are known as “places where works of art, scientific specimens, or other objects of permanent value are kept and displayed.”148 Since apparel is not a scientific specimen or an article of permanent value, it must be a work of art.

Ever since I was a little girl, fashion has been my life because my best friend and mentor, my mother, has worked as a technical designer. I have always loved going to work with her because it is like walking through a colorful museum filled with beautiful items that I cannot touch. I have spent years walking through the show rooms that are filled with unique garments that the world has yet to see, and I have witnessed hard-working designers in their cubicles who are stressed out about the mistakes that Chinese manufacturers have made. These scenes are etched into my memory and have given me a true appreciation for the fashion world. The designs that my mother

144 Louis Vuitton Malletier v. Dooney & Bourke, Inc., 340 F. Supp. 2d 415,

424-25 (S.D.N.Y. 2004). 145 The Metropolitan Museum of Art, Jacqueline Kennedy: The White House

Years - Selections from the John F. Kennedy Library and Museum, http:// www.metmuseum.org/special/Jacqueline_Kennedy/Kennedy_more.htm (last visited Apr. 5, 2009); Tsai, supra note 10, at 461.

146 Tsai, supra note 10, at 461. A similar exhibit featuring the work of Gianni Versace was displayed at the Met in 1997 and a Chanel exhibit was displayed in 2005. In addition, a “wildly successful” Giorgio Armani exhibit was displayed at the Guggenheim Museum in 2000. Samantha L. Hetherington, Fashion Runways Are No

Longer the Public Domain: Applying the Common Law Right of Publicity to Haute

Couture Fashion Design, 24 HASTINGS COMM. & ENT. L.J. 43, 45-46 (2001). 147 Tsai, supra note 10, at 461-62. 148 Dictionary.com, http://dictionary.reference.com/browse/museum (last visited

Apr. 5, 2009).



176

produces are truly art, and I hope that one day the United States government will also realize this fact.

WAKE FOREST INTELLECTUAL PROPERTY

LAW JOURNAL


DIGITAL TURF WARS: ISSUES AND SOLUTIONS RELATING TO CONCURRENT USE IN A

CYBERSPACE CONTEXT

Benjamin Prevas∗ Xiaoyong Yue+

INTRODUCTION

Trademark law is traditionally, characteristically territorial.1 As the Internet has developed, it has proven a challenge to the way trademark law is conceived of and applied. The extraterritorial, globalizing impact of cyberspace fails to mirror the physical, territorial nature of realspace;2 as such, it is often difficult to translate common law and statutory rules developed to govern the use of trademarks in realspace into a cyberspace environment. Setting aside the international implications of the Internet on trademark law, within the United States, the concurrent use doctrine presents a particularly difficult problem.3 There is little doubt that

∗ Benjamin Prevas received his J.D. from Wake Forest University School of Law in 2009. He was a member of the Wake Forest Intellectual Property Law Journal. + Xiaoyong Yue received his LL.M. from Wake Forest University School of Law in 2008. * Special thanks to Professor Simone Rose for her guidance and comments during the writing of this paper. 1 Miles J. Alexander & James H. Coil, III, Geographic Rights in Trademarks and Service Marks, 68 TRADEMARK REP. 101, 102 (1978) (“[T]rademark rights are generally… protected on a territorial basis in the geographic area where the mark has been… used or otherwise become known.”). 2 “Realspace” is used throughout this paper as a term of convenience. It is intended to represent that which is not “cyberspace,” such as brick-and-mortar stores, print media, and other physical manifestations in which a trademark may be embodied. 3 David S. Barrett, The Future of the Concurrent Use of Trademarks Doctrine in the Information Age, 23 HASTINGS COMM. & ENT. L.J. 687, 689 (2001) (“Concurrent use of trademarks doctrine is largely unique to the United States’ legal system.”).


“[w]hat had been coexistence of rights in the physical world [often] becomes a conflict between rights on the Internet.”4 This conflict is felt both by the businesses that seek to use the Internet to improve commercial gain and by the consumers using the Internet to find products or information.5 The increased likelihood—if not certainty—of confusion created by increased access to highly similar or identical trademarks, regardless of territory, combined with consumers who have limited information to begin with, may obliterate the viability of the concurrent use doctrine. This note takes a closer look at the concurrent use doctrine and the implications that arise when concurrent use moves into an Internet context. Part I describes the basic realspace doctrine of concurrent use, discussing both the ways in which concurrent use may arise and the rules that make concurrent use possible in the face of the basic goals of trademark law. Part II articulates the ways in which the realities of cyberspace conflict with those realspace concurrent use rules. Finally, Part III attempts to answer two basic questions: (1) what—if anything—should remain of the concurrent use doctrine in light of the substantial changes that the Internet has imposed upon it?; and (2) if concurrent use remains viable, then should that doctrine or the Internet be modified to account for these issues? In response to these questions, this paper suggests that the concurrent use doctrine should be preserved, and that creative solutions to approximate “territory” in the Internet context may be employed to harmonize realspace and cyberspace.

PART I: CONCURRENT USE IN REALSPACE

A. ESTABLISHING REALSPACE CONCURRENT USE RIGHTS In order to better understand the issues that arise out of the collision between the realities of the Internet and the concurrent use doctrine, it will be necessary to have a rough idea of the parameters of the concurrent use doctrine as it relates to the realspace context. 4 WORLD INTELLECTUAL PROP. ORG., INTELLECTUAL PROPERTY ON THE INTERNET: A SURVEY OF ISSUES 76 (2002), http://www.wipo.int/export/sites/www/copyright/en/ecommerce/pdf/survey.pdf. Note that the international nature of this comment, while significant, is disregarded here. The degree to which this statement is macrocosmic and thus applicable to the concurrent use doctrine within the United States should be self-apparent. 5 David S. Welkowitz, The Problem of Concurrent Use of Trademarks: An Old/New Proposal, 28 U. RICH. L. REV. 315, 326 (1994) (“[I]n today’s highly mobile society with nationwide media advertising [through media including the internet], concurrent usage becomes a far more serious issue for consumers, if not for business.”).

2009 DIGITAL TURF WARS:

ISSUES AND SOLUTIONS RELATING TO CONCURRENT USE IN A CYBERSPACE CONTEXT

179

Understanding the nature and scope of realspace concurrent use rules helps identify why it is difficult to apply these rules to Internet trademark use.

1. Common Law Concurrent Use: Tea Rose-Rectanus Doctrine The common law rule for establishing the right to concurrently use a mark was set forth in two cases: Hanover Star Milling Co. v. Metcalf6 and United Drug Co. v. Theodore Rectanus Co.7 Together, these cases have established the “Tea Rose-Rectanus Doctrine,” which establishes the context in which permissible concurrent use by two separate parties arises.8 Under the Tea Rose-Rectanus doctrine, a junior user may adopt a mark that is confusingly similar or identical to a mark already in use if that adoption is in a remote geographic region and in good faith.9

The essentials of concurrent use were set forth in Hanover Star Milling, where the court indicated that trademarks are not a property right in themselves, but rather the right to protect good will.10 Because a common law right in a trademark merely protects the good will, the right to use a mark extends only to the territory in which good will has actually been established.11 Where two competitors seek to use a similar or identical mark in the same market, the general rule protects the interests of the party who first adopted the mark because that party was the first to establish good will. However, when priority within a territory is not in question—such as in the case of remote uses of a mark—order of adoption is trumped by the good will established by each user in each territory.12 The Hanover Star Milling Court concluded that:

[W]here two parties independently are employing the same mark upon goods of the same class, but in separate markets wholly remote the one from the other, the question of prior

6 240 U.S. 403 (1916). 7 248 U.S. 90 (1918). 8 See generally 5 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 26:2 (4th ed. 2002). 9 Id. § 26:4. 10 Hanover Star Milling, 240 U.S. at 416 (“[I]t is the trade, and not the mark, that is to be protected.”). See also United Drug, 248 U.S. at 97 (“[T]he right to a particular mark grows out of its use, not its mere adoption; its function is simply to designate the goods as the product of a particular trader and to protect his good will against the sale of another’s product as his; and it is not the subject of property except in connection with an existing business.”). 11 Hanover Star Milling, 240 U.S. at 414. 12 Id. at 415.


appropriation [of the mark] is legally insignificant; unless, at least, it appear that the second adopter has selected the mark with some design inimical to the interests of the first user, such as to take the benefit of the reputation of his goods, to forestall the extension of his trade, or the like.13

Thus, the first user of the ‘Tea Rose’ mark in Hanover Star Milling was not entitled to enjoin the use of ‘Tea Rose’ by a good faith junior user in a remote geographic territory where the senior user had not previously established good will.14

The Hanover Star Milling holding is limited because, under the facts of the case, the conflicting marks were not interacting in a single market.15 The United Drug case followed, expanding the Hanover Star Milling rule to the case in which a senior user attempts to move into the junior user’s territory and displace the junior’s use of the mark.16 The senior user, who has not established good will in the junior’s territory, is not entitled to displace that junior user by virtue of relocation and chance prior-appropriation.17 “[The senior user], being the newcomer in that market, must enter it subject to whatever rights had previously been acquired there.”18

Again, one of the goals of trademark law, as articulated in Hanover Star Milling and United Drug, is to protect established good will. For this reason, the Tea Rose-Rectanus doctrine recognizes the possibility of remote parties adopting similar or identical marks in good faith, and developing good will under the use of those marks. Where remote parties have both established good will through the use of a mark, the doctrine protects the interests of both; it allows both 13 Id. See also United Drug, 248 U.S. at 100 (“[T]he general rule is that, as between conflicting claimants to the right to use the same mark, priority of appropriation determines the question. But the reason is that purchasers have come to understand the mark as indicating the origin of the wares, so that its use by a second producer amounts to an attempt to sell his goods as those of his competitor. The reason for the rule does not extend to a case where the same trade-mark happens to be employed simultaneously by two manufacturers in different markets separate and remote from each other, so that the mark means one think in one market, an entirely different thing in another. It would be a perversion of the rule of priority to give it such an application in our broadly extended country that an innocent party who had in good faith employed a trade-mark in one state, and by the use of it had built up a trade there, being the first appropriator in that jurisdiction, might afterwards be prevented from using it, with consequent injury to his trade and good will, at the insistence of one who theretofore had employed the same mark, but only in other and remote jurisdictions, upon the ground that its first employment happened to antedate that of the first-mentioned trader.”) (citations omitted). 14 Hanover Star Milling, 240 U.S. at 419. 15 5 MCCARTHY, supra note 8, § 26:2. 16 Id. 17 United Drug, 248 U.S. at 100. 18 Id. at 101.



181

users to continue use to the exclusion of the other in the territory of good will.

2. Concurrent Use Under the Lanham Act The adoption of the Lanham Act complicates concurrent use doctrine to some degree, but largely upholds the basic rationale of Hanover Star Milling and United Drug. Statutory restrictions prevent parties in certain circumstances from establishing concurrent rights in a similar or identical mark. However, while the Lanham Act restricts concurrent use rights in some ways, it leaves the Tea Rose-Rectanus rule largely intact and relevant.

a. Nationwide Constructive Use and Notice

The Lanham Act’s primary impact on the Tea Rose-Rectanus rule comes in the form of nationwide constructive use and notice under sections 1057(c) and 1072.19 Together, these two sections functionally eliminate the applicability of the Tea Rose-Rectanus rule by making it is impossible for junior user to adopt a mark remotely or in good faith after application and registration of a mark on the principal register.20 This is a substantial deviation from the common law rule because it no longer requires one to establish actual good will in a territory in order to preclude adoption by another party.21

Therefore, when sections 1057(c) and 1072 are read together, priority over all unclaimed territory in the United States is given to an applicant at the moment of application. While constructive notice is not given until registration is approved—preserving the possibility of

19 15 U.S.C. § 1072 (2006) (“Registration of a mark on the principal register . . . shall be constructive notice of the registrant’s claim of ownership thereof.”). 20 See id. (Registration, under section 1072, triggers nationwide constructive notice, which eliminates the possibility of good faith adoption of a mark. The Lanham Act also eliminates the possibility of adoption by a good faith remote junior user the moment that the application for registration is submitted.); id. § 1057(c) (“[T]he filing of the application to register [a] mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect."). In other words, section 1057(c) establishes nationwide constructive use, in addition to the nationwide constructive notice provided for in section 1072. 21 15 U.S.C.S. § 1072 (LexisNexis 2009), Interpretive Notes & Decisions, note 3 (“By eliminating defense of good faith and lack of knowledge on part of junior user, 15 USCS §§ 1072 and 1115 afford registrant nationwide protection for registered marks, regardless of geographic area in which registrant uses mark and even though junior user was first to use mark in its specific area.”).


good faith—the moment the application is filed is the moment at which no use can be remote; the filing of the application allows the applicant to claim all unclaimed territory.22 Thus, a user who attempts to adopt after an application for a mark is not a remote user, and a user who attempts to adopt after registration issues is neither remote nor in good faith. The Lanham Act thus significantly limits the effect of the Tea Rose-Rectanus doctrine, although it does not destroy the possibility of concurrent use.23

b. Preservation of a Concurrent User’s Rights The Lanham Act preserves concurrent use through concurrent registration—both voluntary and involuntary—and through protecting the rights of existing concurrent users. Sections 1051 and 1052(d) explain how concurrent registration occurs.24 Section 1051 covers voluntary concurrent registration; one can claim concurrent use in an application for registration. The verified statement by the applicant must specify:

(D) to the best of the verifier’s knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive, except that, in case of every application claiming concurrent use, the applicant shall— (i) state exceptions to the claim of exclusive use; and (ii) shall specify, to the extent of the verifier’s

knowledge— (I) any concurrent use by others; (II) the goods on or in connection with

which and the areas in which each concurrent use exists;

(III) the periods of each use; and

22 See Thrifty Rent-A-Car Sys., Inc. v. Thrift Cars, Inc., 831 F.2d 1177, 1181 (1st Cir. 1987) (holding that a non-registrant’s territory is frozen, and that such users are unable to acquire additional protection as against the registrant); see also discussion infra Part I.B.2. 23 Registration of one’s mark is not mandatory under the Lanham Act. Therefore, Tea Rose-Rectanus is still the applicable rule when no party seeks, or has yet sought, registration of the party’s trademark. The Lanham Act is not generally applicable in the concurrent use context until a party seeks registration of a mark, so prior to that point in time, the common law rules still govern. 24 15 U.S.C. §§ 1051, 1052(d) (2006).



183

(IV) the goods and area for which the applicant desires registration.25

In other words, in the case where concurrent use already exists, an applicant should claim that concurrent use in her application, thus voluntarily limiting the scope of her application. The registration, if granted, will be limited to the goods and territory for which the applicant applies. Therefore, existing, pre-application concurrent use is preserved when registration issues. If the applicant fails to volunteer the fact of concurrent use in her application, registration may still be granted, but the PTO will likely impose involuntary concurrent use limitations anyway under section 1052(d). Generally, registration will be refused if the mark in the application resembles another mark already registered or previously used in the United States when the mark in the application is likely to cause confusion, mistake, or deception.26 However, the Lanham Act provides an exception to this general rule:

[I]f the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of such use of the marks… concurrent registration may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce . . . . Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark.27

An applicant who has not disclosed concurrent use may still be subject to concurrent registration. The PTO can thus uphold the rights of concurrent users through limiting the applicability of registration even when the applicant has not specifically applied for limited rights.

The primary problem with the concurrent registration provisions is that the PTO and applicant may both miss the existence of a similar or identical mark in use by another that is likely to cause confusion, mistake, or deception. Full registration of the applicants mark may issue in spite of an existing concurrent user’s rights. The Lanham Act resolves this issue through opposition and cancellation

25 Id. § 1051(a)(3)(D) (emphasis added). 26 Id. § 1052(d). 27 Id.


proceedings. A trademark approved for registration is published in the Official Gazette to notify the public of registrations that will be issued.28 This notice alerts potential concurrent users to the forthcoming registration of a mark, and provides them with a thirty-day window to oppose it.29 Section 1063(a) provides the statutory authorization for opposition: “Any person who believes that he would be damaged by the registration of a mark upon the principal register… may, upon payment of the prescribed fee, file an opposition.”30 This opposition can lead to rejection of the applied-for mark if the PTO finds that the mark is likely to confuse, mislead, or deceive.

The opposition proceeding, however, will only by helpful to a concurrent user who consistently reads the Official Gazette in order to determine when another user has sought registration of a similar or identical mark; a concurrent user can easily miss the opportunity to oppose registration upon issuance of the registration. Cancellation proceedings thus further preserve the rights of a concurrent user. Section 1064 provides: “A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed . . . by any person who believes that he is or will be damaged . . . by the registration of a mark on the principal register.”31 There is no specific ground upon which a concurrent user may seek cancellation, but any cancellation proceeding may be brought against any mark “[w]ithin five years from the date of registration of the mark.”32 Therefore, a concurrent user whose use of a similar or identical mark has predated the application for registration has five years to learn of the registration, and to seek to cancel it or request the issuance of concurrent registrations.

After five years, a registered mark becomes incontestable, and a concurrent user loses the ability to petition for cancellation under section 1064.33 However, even in these circumstances, the Lanham Act recognizes and preserves the rights of a legitimate concurrent user; the registrant’s right to use the registered mark in commerce becomes incontestable, “except to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this

28 See id. § 1062. Note that in the case of a concurrent application, the publication in the Official Gazette will be published subject to a determination of the rights of the parties. 29 Id. § 1063. 30 Id. § 1063(a). 31 Id. § 1064. 32 Id. § 1064(1). 33 See id.



185

Act.”34 While cancellation of the registered mark is no longer possible, the registrant cannot infringe on the territorial rights established by a concurrent user prior to registration.35 In other words, the concurrent user always has the ability to contest an infringing use of the rights established through registration; a non-registered concurrent user can defend his mark within his territory through a common law infringement claim. The Lanham Act provides additional explicit protection for the rights of an intermediate junior user.36 The intermediate junior user is a user who adopts a mark already in use, but does so prior to application for registration; in other words, the intermediate junior user is the good faith remote junior concurrent user contemplated by the Tea Rose-Rectanus doctrine. 37 If a junior user adopts a mark in the period of time between the senior registrant’s adoption of the mark and application, then the junior user qualifies as a concurrent user and is protected under the provisions of section 1115(b)(5).38

Section 1115(a) establishes that “[a]ny registration” shall constitute prima facie evidence of “the registrant’s exclusive right to use the registered mark in commerce,” but also provides that another user of a similar or identical mark will not be precluded from “proving any legal or equitable defense” against that presumption.39 Section 1115(b) then provides a number of specific defenses available even against an incontestable mark, including a defense specifically tailored to protect the interests of an intermediate junior user:

(5) [Conclusive evidence of the right to use a registered mark shall be subject to the following defense:] That the mark whose use by a party is charged as infringement was adopted without knowledge of the registrant’s prior use and has been continuously used by such party… from a date

34 Id. § 1065 . Note that incontestability turns on (1) filing of the requisite affidavit alleging continued use between the fifth and sixth year of registration and (2) no prior administrative or legal challenges to the registerability of the mark. Id. 35 See also 5 MCCARTHY, supra note 8, § 26:38. See generally Thrifty Rent-A-Car Sys., Inc. v. Thrift Cars, Inc., 831 F.2d 1177 (1st Cir. 1987). 36 See also 5 MCCARTHY, supra note 8, § 26:38. See generally Thrifty Rent-A-Car, 831 F.2d 1177. 37 Alternatively, an intermediate junior user could have adopted the mark prior to the issuance of the senior user’s registration if adoption of the mark by the junior user occurred before November 16, 1989. 5 MCCARTHY, supra note 8, § 26:38. 38 GTE Corp. v. Williams, 904 F.2d 536, 541 (10th Cir. 1990). 39 15 U.S.C. § 1115(a) (2006).


prior to… the date of constructive use of the mark established pursuant to section 1057(c) of this title…40

As seen in this section, the Lanham Act preserves the right of a junior user who adopted the mark “without knowledge”—that is, in good faith—and has continued using the mark from a time prior to the registrant’s 1057(c) constructive use. While the section only implies the requirement of remoteness through its reference to section 1057(c), and fails to specifically address what is to happen in the case of good faith non-remote use prior to the application for registration, the Tea Rose-Rectanus doctrine prevents a non-remote junior user from being able to take advantage of this provision of the Lanham Act. Such a non-remote user is not entitled to any rights in the mark whatsoever. The Lanham Act thus incorporates concurrent use doctrine through a number of mechanisms. First, it brings concurrent use rights into the registration system through the concurrent registration process; concurrent registration can be voluntary under section 105141, or involuntary under section 1052.42 In cases where there has not been a concurrent registration, a non-registrant party may still oppose a mark prior to registration, or petition for its cancellation within five years of registration.43 As discussed, beyond the point of incontestability, the Lanham Act preserves the established rights of concurrent users against a registrant, provided the senior user has not abandoned its mark.44 Thus, the Lanham Act preserves concurrent use, but restricts the doctrine by limiting the time period in which concurrent rights can be established. B. SOLUTIONS TO REALSPACE CONCURRENT USE CONFLICTS Once the right to concurrent use is established, whether by the common law rules or in connection with the Lanham Act, the respective territorial rights of the concurrent users must be determined. Demarcation of the concurrent users’ territory balances the interests of the legitimate concurrent users with the thematic goals in trademark law.45 Territorial limitation facilitates this balance both by preventing

40 Id. § 1115(b)(5). 41 Id. § 1051(a)(3)(D)(i)-(ii). 42 Id. § 1052(d). 43 Id. § 1064(1). 44 Id. § 1127. 45 In particular, demarcating territory helps to preserve the source identification provided by concurrent marks and also prevents consumer confusion. See 1 MCCARTHY, supra note 8, § 2.8 (indicating that avoidance of confusion is a keystone of trademark law). See generally id. § 3:2 (identifying source identification as a central function of trademarks).



187

the overlap of similarly or identically named goods in a single place and by reducing the frequency with which individual consumers encounter those goods in a situation likely to cause confusion. The concurrent users can thus use their mark in their territory and establish good will under their mark without a likelihood of confusion.46

1. Common Law Tests for Establishing Territory

Courts have established three theories for determining the territory to which concurrent users are entitled: (1) market penetration, (2) zone of reputation, and (3) zone of natural expansion.47 Each of these theories justifies expansion of territorial rights into specific geographic areas based on the conduct of the trademark user. The core test is the Market Penetration Test, which grants a user territory based on realspace use in commerce.48 The Zone of Reputation and Zone of Natural Expansion Tests, when applied, extend a user’s rights beyond this core territory when the user has behaved in certain ways.49

a. Market Penetration Test The classic test for determining the territory of concurrent users under the common law scheme is the Market Penetration Test.50 The test looks to the degree that “a mark has been commercially used in a particular geographic area.”51 The idea behind this test is that good will can be presumed in areas where a user has established a requisite level of market activity.52 By looking to where the user is using the mark in commerce, the Market Penetration Test delineates 46 But see Thrifty Rent-A-Car Sys., Inc. v. Thrift Cars, Inc., 831 F.2d 1177, 1184 (1st Cir. 1987) (acknowledging that sometimes consumer confusion cannot be completely eliminated). 47 See generally William Jay Gross, The Territorial Scope of Trademark Rights, 44 U. MIAMI L. REV. 1075 (1990). 48 Use in commerce is the corner stone of establishing trademark rights; thus, the Market Penetration Test is theoretically the soundest form of establishing a user’s right to territory by requiring the user to have actually established rights in those territories through a prerequisite degree of use giving rise to a likelihood of confusion. Id. at 1084-85. 49 The courts have indicated a willingness to extend a user’s territory beyond the area in which use in commerce exists under the Market Penetration Test has occurred. However, because the user’s rights to these extra territories are not based on use, theoretically these territories are less worthy of protection. See Id. at 1085-86. 50 See generally 5 MCCARTHY, supra note 8, §§ 26:13 – 26:15. 51 Barrett, supra note 3, at 693. 52 5 MCCARTHY, supra note 8, § 26:13.


territory on the basis of the sort of activity that trademark law is designed to protect.53 When ruling on the territory to which concurrent users are entitled, courts generally consider a number of factors to determine whether a user has penetrated a given market. The test is not merely a question of minimal or prerequisite amounts of sales; as a general proposition, the court will look for a significant enough presence to pose a real likelihood of confusion among consumers in an area.54 To make this determination, the court will look at factors such as: (1) dollar value of sales, (2) number of customers as compared to the population of the state or region in which sales are occurring, (3) relative and potential growth of sales, and (4) length of time since significant sales have occurred.55

b. Zone of Reputation Test The Zone of Reputation Test expands territory established under the Market Penetration Test by attempting to accommodate the realities of nationwide advertising and the mobility of customers.56 Limiting territory to use is, to some degree, undermined by the ability of a user to easily communicate information about a mark to areas in which that user has no actual sales.57 It is thus possible for a user to establish some degree of brand recognition or good will in an area where no goods or services are offered for sale. On the one hand, the test is arguably not as well-founded as the Market Penetration Test because, in territories where the user cannot rely on the Market Penetration Test, the user lacks the requisite degree of use to establish trademark rights.58 However, good will can be

53 Use in commerce is the basis for establishing trademark rights, so it makes sense to base a user’s territorial rights on the geographic area in which such use has occurred. See 15 U.S.C. § 1051(a)(3)(C) (2006) (identifying use in commerce as a basis for trademark rights by making it a prerequisite to trademark registration). 54 Sweetarts v. Sunline, Inc., 380 F.2d 923, 929 (8th Cir. 1967). 55 Id. 56 5 MCCARTHY, supra note 8, § 26:17. 57 Travelodge Corp. v. Sirgusa, 228 F. Supp. 238, 243 (D.C. Ala. 1964) (“The traditional notions of limited market area pervading the earlier cases dealing with product trademarks are not persuasive in this day of modern communication and travel. Recent decisions involving restaurants and chain stores manifest this expanding concept of the market area for such establishments and the consequent reduced influence of the earlier cases.”). See also 5 MCCARTHY, supra note 8, § 26:17. 58 Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 416 (1916) (“[T]he mark, of itself, cannot travel to markets where there is no article to wear the badge”). See also Gross, supra note 47, at 1085-86 (“Theoretically . . . trademark protection should not extend beyond the area of actual market penetration. Moreover, where



189

established through consumer awareness without sales or physical presence of marked goods; this reality justifies the extension of a user’s rights into areas where awareness has been established.59 Additionally, if there is consumer awareness of a mark, then use of the mark by another could create a likelihood of confusion.60 Because good will, which trademark law seeks to protect, is not necessarily bound to market penetration, there seems to be adequate justification for using reputation as a legitimate basis for establishing territory.61

c. Zone of Natural Expansion Test The basic concept of the Zone of Natural Expansion is to protect the interest of a user who has continuously expanded the area in which her use of the trademark occurs. The Zone of Natural Expansion theory is premised on the idea that a user should be entitled to some additional breathing space.62 The courts have looked to a number of factors in determining what zones should be reserved for a user’s expansion, including: “(1) previous business activity; (2) previous expansion or lack there of; (3) dominance of contiguous areas; (4) presently-planned expansion; and, where applicable, (5) possible market penetration by means of products brought in from other areas.”63 trademark rights are acquired only by the use of the trademark—use requiring sales—it follows that the mark is not ‘used’ in an area in which there have been no sales.”). 59 See 5 MCCARTHY, supra note 8, § 26:16 (indicating that reputation prevents another’s use from being remote). 60 See Gross, supra note 47, at 1087 (“This protection is reasonable because when the reputation of a trademark has spread and become sufficiently well known in an area outside the area of actual market penetration, there is an increased likelihood that the consuming public will confuse the infringer's product or service with that of the legitimate user. Therefore, in order to protect both consumers and businesses, trademark rights should extend to this zone of reputation.”). 61 The Hanover Star Milling Co. opinion indicates: “Into whatever markets the use of a trademark has extended, or its meaning has become known, there will the manufacturer or trader whose trade is pirated by an infringing use be entitled to protection and redress.” 5 MCCARTHY, supra note 8, § 26:17 (quoting Hanover Star Milling, 240 U.S. at 415-16) (emphasis in original). 62 Id. § 26:20 (“The policy involved is that areas of exclusive trademark use should not necessarily be confined only to areas of actual use, but should be extended to give some ‘breathing space’ or a penumbra or zone of reasonable expansion for the future.”). 63 Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 523 (C.C.P.A. 1980) (citing Beatrice Foods Co. v. Fairway Foods, Inc., 429 F.2d 466, 475 (C.C.P.A. 1970)). See also 5 MCCARTHY, supra note 8, § 26:24 (“(1) . . . the geographical


The Zone of Natural Expansion theory is the most controversial basis for extending a user’s territory, primarily because it entitles a user to territory in which there is no established good will. Many courts criticize the theory because it is seen as imprecise and based on a legal fiction; there is no consistent way of determining the extent of the territory that should be reserved for the user.64 Furthermore, given the fact that a user who wishes to expand her trade can simply register her mark under the Lanham Act and reserve all vacant territory nationwide, the justification for extending a zone for expansion seems questionable.65

2. The Lanham Act and the Territorial Freeze The Lanham Act authorizes the Director of the PTO to determine the territory and rights of concurrent users when issuing concurrent registration: “In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode of place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.”66 This language does not explicitly require the Director to consider the common law tests when establishing the rights of the concurrent users, but it is possible that those tests impact how the Director will prescribe the limitations to be placed on the non-registrant’s territory. The registrant, on the other hand, is entitled to much greater rights. Under the Lanham Act, application for registration, "constitute[s] constructive use of the mark, conferring a right of priority, nationwide in effect."67 This language substantially modifies the common law rules for territory. Under the common law rule, any unoccupied territory was up for grabs, and either concurrent user could claim that territory by penetrating the market or establishing a reputation with consumers that lived there; there was essentially a race to acquire rights in available space.68 The Lanham Act, however,

distance from the senior user's actual location to a point on the perimeter of the zone of expansion[;] (2) . . . the nature of the business [and whether it already have a large or small zone of actual market penetration or reputation[;] (3) . . . the history of the senior user's past expansion . . . [; and] (4) [whether] it [would] require an unusual ‘great leap forward’ for the senior user to enter the zone, or [whether] the zone [is] so close to existing locations that expansion would be (or is) a logical, gradual, step of the same length as those previously made.”). 64 Gross, supra note 47, at 1088. 65 5 MCCARTHY, supra note 8, § 26:23. See also Gross, supra note 47, at 1088. 66 15 U.S.C. § 1052(d) (2006). 67 Id. § 1057(c). 68 5 MCCARTHY, supra note 8, § 26:13. This assumes, of course, that neither of the concurrent users is content with their existing territory or intends to stay put.



191

gives unclaimed territory to the registrant. The territory of any other party with a claim to concurrent rights is frozen at the moment of application.69 The registrant is thus entitled to all other space, but may only enforce that right in circumstances under which there is an actual likelihood of confusion; other users may intrude on this territory, but when the registrant reaches that territory they must make way to his superior rights.70

PART II: THE PROBLEMS

A. THE INTERNET PROBLEM: CYBERSPACE AS EXTRATERRITORIAL SPACE

Concurrent use problems arise in the Internet context because Internet-based use will generally have a global impact irrespective of territorial boundaries. This extraterritorial scope is problematic because use by a concurrent user on the Internet will generally be accessible to consumers in territories to which the concurrent user has no rights. It becomes particularly difficult for concurrent users or the traditional realspace legal framework to effectively regulate what the consumer encounters on the Internet.71 69 Id. § 26:45 (“Whatever scope of territorial rights the junior user had at the date of registration . . . are protected, but no more.”). See also Thrifty Rent-A-Car Sys., Inc. v. Thrift Cars, Inc., 831 F.2d 1177, 1181 (1st Cir. 1987) (“A pre-existing good faith user’s rights are frozen to the geographical location where the user has established a market penetration as of the date of registration. Such users are unable thereafter to acquire additional protection superior to that obtained by the federal registrant.”) (emphasis added). 70 Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358, 364 (2d Cir. 1959) (“Therefore if the use of the marks by the registrant and the unauthorized user are confined to two sufficiently distinct and geographically separate markets, with no likelihood that the registrant will expand his use into defendant's market, so that no public confusion is possible, then the registrant is not entitled to enjoin the junior user's use of the mark.”). But see Gastown Inc. of Delaware v. Gastown Inc., 331 F. Supp. 626, 632 (D. Conn. 1971) (limiting the Dawn Donut Rule to cases where there is not a highly mobile population of customers who, through their mobility, create an essentially regional market). Note, however, that some courts have more recently upheld the Dawn Donut Rule. See, e.g., Minnesota Pet Breeders Inc. v. Schell & Kampeter, Inc., 41 F.3d 1242, 1246 (8th Cir. 1994) (indicating that the nationwide right conferred by registration does not entitle the owner to injunctive relief unless there is a present likelihood of confusion). 71 WORLD INTELLECTUAL PROP. ORG., INTELLECTUAL PROPERTY ON THE INTERNET: A SURVEY OF ISSUES 72 (2002), http://www.wipo.int/export/sites/www/copyright/en/ecommerce/pdf/survey.pdf. (“When a trademark is used on the Internet it is immediately visible to a global


Access to concurrent marks is only part of the problem; confusion also becomes possible because it is relatively easy for a consumer to believe, mistakenly, that she is visiting a particular website belonging to a particular user.72 A consumer seeking a user’s website must rely on a domain name or a search engine to access that website, but these suggestive means of navigation may easily direct a consumer to the wrong website. Given the extraterritorial nature of the Internet, two theoretical concurrent use issues arise. First, what is the impact of concurrent marks on unclaimed territory when the marks are used on the Internet? Second, can access to a concurrent mark on the Internet be the basis for infringement when the mark is viewed in another concurrent user’s established territory? B. INTERNET USE AND UNCLAIMED TERRITORY The first question essentially asks whether or not the Internet may be used to claim or establish a user’s right to territory; part of this inquiry is to determine whether the traditional territory rules—Market Penetration, Reputation, and Natural Expansion—are still feasible tests in the Internet context. The Market Penetration Test could, arguably, survive in the Internet context. One commentator has suggested as much: “In the Information Age, the new question for the courts is to what degree the Internet affects these market penetration analyses regarding sales volume. The answer is, very little.”73 Internet sales still require realspace delivery of the purchased goods or services, and the volume of sales in the territories into which the goods are delivered, for example, could still be the basis for the traditional Market Penetration analysis.74 Thus, the core Market Penetration territory can still be

audience and may be considered to have global effect. This particular feature of the Internet makes it difficult for businesses to foresee in which [territories] their business activities might become legally relevant. Due to the particularities of Internet technology, it is often difficult to fit the “use” of a trademark on the Internet into traditional legal concepts of use in the physical world.”). Even though WIPO here contemplates the international implications of the Internet problem, the commentary is no less applicable to the issues as they arise in the United States under the concurrent use system. 72 Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1057 (9th Cir. 1999) (“In the Internet context, in particular, entering a web site takes little effort—usually one click from a linked site on a search engine’s list; thus, web surfers are more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store’s ownership.”). 73 Barrett, supra note 3, at 695. 74 Id.



193

established by Internet use by relying on the necessary degree to which Internet-based sales are still tied to realspace. The Sweetarts Market Penetration factors may become more difficult to apply in cases where sales volume in a particular territory is limited, but Market Penetration could still be determined at the discretion of a court applying the factors in an intelligent way. Like the Market Penetration Test, the Reputation Test is still a feasible means of determining territory through Internet use. Internet-based advertising could be used to establish brand-recognition in territories outside of the core Market Penetration territory. However, due to the global scope of the Internet, the reputational zone could quickly become much more extensive than under some of the traditional modes of advertising. A user who is able to effectively and efficiently take advantage of Internet-based advertising may be able to quickly claim all territory that is unclaimed through establishing reputation.75 This may disadvantage smaller concurrent users who previously had the luxury of some time to expand their reputational zone but cannot afford to implement effective Internet advertising.76 The most significant analytical problem associated with the Reputation Test in the Internet context is determining how much reputation is sufficient to entitle a user to the territory. There is no clear articulation of a standard for determining the degree of reputation required to establish territorial rights.77 Like the Market Penetration Test, a court is best equipped to make this factually driven determination, particularly in the Internet context. However, to make the Reputation Test feasible with the Internet, it might be worthwhile to set a high 75 Note also that Internet advertising that is sufficient to quickly establish territory beyond a user’s zone of market penetration may also be effective enough to begin to establish a zone of reputation in another concurrent user’s territory. This creates a likelihood, if not a certainty, of confusion and may provide an argument against the Reputation Test in the Internet context. On the one hand, this would incentivize effective Internet advertising while at the same time increasing the likelihood of confusion that trademark law seeks to prevent. 76 This is not to suggest that trademark law should have a preference for small business, but merely to indicate the degree to which the Reputation Test, in the Internet context, becomes a much more powerful means of acquiring the right to territory. 77 Hanover Star Milling, often cited as the basis for the Reputation theory, merely states: “Into whatever markets the use of a trademark has extended, or its meaning has become known, there will the manufacturer or trader whose trade is pirated by an infringing use be entitled to protection and redress.” Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 415-16 (1916). The ‘its meaning has become known’ language hardly provides a workable standard or gauge by which to determine a requisite degree of reputation.


standard for reputation;78 otherwise, acquiring territorial trademark rights via Internet use could quickly become as efficient as registration of a trademark through the PTO.79 The Zone of Natural Expansion Test is very problematic in the Internet context. Should establishing a website constitute expansion for the purpose of determining a past history of expansion? Should Internet-based sales into new territories count for purposes of determining routine expansion? The major problem with the Zone of Natural Expansion Test in the Internet context is that it is far too abstract.80 “[T]he sheer number of business sites and restricted sites makes it difficult to apply the test.”81 Given the general disfavor that the Zone of Natural Expansion Test now faces, the Internet may be just another reason to abandon that theory of territorial expansion altogether. Commentators have suggested that, at least in the Internet context, the Zone of Natural Expansion Test should be “disregarded as unworkable.”82 Although the Internet makes the traditional rules for establishing territory more complex, it does not necessarily follow that there is a fundamental incompatibility. In terms of establishing concurrent trademark rights, Internet use could be a valid means for evaluating territorial expansion under the current system. The Internet may create certain imbalances that might recommend minor tweaks to the way in which the traditional tests are applied—or abandonment in the case of the Zone of Expansion Test—but the tests are still a feasible means of determining territory. The alternative option would be to divorce Internet use from the process of establishing territorial trademark rights, although doing so might prove to be unworkable.83 The fact that there is some rational way to preserve the territory tests and apply them to Internet-based activity might, therefore, suggest the continued use of those tests when possible or necessary.

78 A possible standard would look for awareness or recognition by a certain high percentage of the consumers in the area. Alternatively, the reputation standard could be treated like a “famous” standard such as the one for determining dilution under the Lanham Act. See, e.g., 15 U.S.C. § 1125(c)(2)(A) (2006). 79 In other words, without a high standard for reputation, the Internet could be used as a means of essentially establishing constructive notice, but without the benefit to others of being able to search for the mark through the PTO and the principal register. This would undermine the apparent legislative intent to incentivize registration of trademarks under the Lanham Act. 80 Barrett, supra note 3, at 705. 81 Id. at 706. 82 Id. 83 If, for example, reputation has been established in a territory through Internet use, then not assigning that territory to the user who has established reputation may lead to future confusion when another mark physically invades that territory.



195

C. INTERNET USE AND CLAIMED TERRITORY The second question created by concurrent use in the Internet context, namely, how to evaluate claimed territory, is the more interesting and problematic issue. Any use of a concurrent mark on the Internet is essentially viewable everywhere, including within another concurrent user’s territory. While there do not seem to be any cases in which Internet access to a concurrent user’s trademark in another concurrent user’s territory has been considered an infringement, the consumer’s ability to encounter an outsider’s mark in a claimed territory creates a likelihood of confusion. The fact that a likelihood of confusion exists could justify a finding of infringement. The potential for a finding of infringement theoretically suggests that either (1) concurrent users should be forbidden from using the Internet; (2) the Internet should essentially make concurrent use unworkable; or (3) the law must accept the fact that a likelihood of confusion will exist and choose, against the principles of trademark law, not to respond. Therefore, in order to avoid confusion and preserve concurrent use in light of Internet technology, it seems necessary to formulate a solution to this problem.

PART III: SOLUTIONS

In order to preserve the concurrent use doctrine, the territorial nature of the doctrine and the extraterritorial nature of the Internet must be reconciled. This section proposes a number of solutions in response to the compatibility problems. However, in order to evaluate the viability of these solutions, it is first important to identify the specific types of use on the Internet that may give rise to a likelihood of confusion. After defining the specific use-types of concern, each solution can be evaluated in light of how it will resolve or fail to resolve problems arising out of each use. A. USES ON THE INTERNET There are at least five different ways in which a consumer might encounter a mark on the Internet. Analysis of any workable solution for concurrent use should, in some way, attempt to resolve the problems associated with each Internet use-type. Therefore, the main focus in analyzing these use-types is to determine the way in which each use creates a likelihood of confusion and the degree to which a


solution resolves that potential for confusion.84 A solution’s ability to resolve the confusion of each use-type should act as a rough measure of the solution’s effectiveness.

1. Internet-as-Domain Name Uses The first type of use to be considered is the trademark-as-domain name use. Companies frequently register ‘[trademark].com’ as their domain name because it is easy to remember or find. There are strategic incentives for doing this; oftentimes when a consumer does not know the web address for a website, that consumer is likely to “hazard[] a guess at the domain name . . . [;] [commonly] the company name followed by ‘.com.’”85

In the concurrent use setting this can be particularly troublesome. Two users may be entitled to use a given mark concurrently, but there can only be one website with the ‘[trademark].com’ address. Therefore, at least one concurrent user will be unable to use the ‘[trademark].com’ website; instead, that user will have to settle for some variation. The concurrent user could use a separate top-level domain indicator, like ‘.biz,’ but, as the Brookfield court noted, a consumer looking for the site of either concurrent user is likely to start with the ‘[trademark].com’ website.86 The consumer might not realize that the site they have found at ‘[trademark].com’ is not the site they were looking for. The lesser known top-level domain designations are not yet familiar to consumers and a consumer who finds a confusing website at the ‘[trademark].com’ address might not even look for a second website. Confusion is thus likely to occur.

2. Search Engine Results The second relevant Internet-based use is the search engine result. A consumer trying to locate a user’s website may use a search engine to find the desired website by merely typing in the trademark. In the case of concurrent users, the search engine will presumably reveal at least one result for each concurrent user. The consumer, at this point, may be unable to determine which search result leads to the desired website, and confusion will arise. Furthermore, depending on

84 An analysis of likelihood of confusion is central to any evaluation of a solution because preventing confusion is central to trademark law. See 1 MCCARTHY, supra note 8, § 2.8 (“[T]he keystone of unfair competition law which relates to trademarks is the avoidance of a likelihood of confusion in the minds of the buying public.”). 85 Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1044-45 (9th Cir. 1999). 86 Id.



197

what method the search engine uses to generate and rank its results, a user may only initially encounter one concurrent user’s website, and it may not be the intended website. The search engine, while creating a likelihood of confusion, may do so to a lesser degree than a guessed domain name alone. If the search engine does provide results for each concurrent user, then at least the consumer will be alerted to the fact that there are multiple parties each using the same trademark.87

3. Hyperlinks and Banner Advertisements A consumer may initially encounter a mark in the form of a hyperlink or banner advertisement encountered on another website. Here, the consumer might not even initially have intended to visit a user’s site, but might be inspired by the presence of a hyperlink and choose to pursue it. Like a domain name, a hyperlink or banner advertisement may give little to no information about its source or the website to which it leads. A consumer who recognizes the mark advertised but does not realize that there are concurrent users of that mark may become confused when following the link or ad.

4. Display of Trademark or Logo-Mark on User’s Webpage Another Internet-based use is the display of a trademark or logo-mark within the website itself. This use is less problematic than the domain name use because a consumer will first have to get to the website before seeing the mark; in other words, the consumer is likely to first encounter the mark within the domain name or on a search engine before reaching the website. This form of use is characteristically different than the other forms identified here because it does not cause confusion; it merely perpetuates it. Because the consumer could not access the website without first using the domain name, a search engine, or some other hyperlink it is likely that the consumer will either know she is where she intended to be or will have already been confused before the point at which she encounters the displayed mark. This characteristic difference is important because solutions that eliminate confusion prior to website access may render this use harmless.

87 This, of course, assumes that the consumer does not merely select the first relevant search result without reading further. The search result list, in the case of a hastier consumer, may be no better than the domain name in terms of confusion.


5. Use of Mark In the Context of Third Party Sales

A final Internet-based use arises in the context of third party merchants on the Internet. In particular, marks may be encountered while browsing or purchasing goods through an Internet merchant or Internet superstore like Amazon.com or Overstock.com. If the third party seller markets the goods of both concurrent users, then a consumer purchasing goods through that seller may encounter both concurrent marks. An inability to differentiate between source or an impulse purchase of goods is likely to confuse the consumer. B. SPECIFIC SOLUTIONS TO THE INTERNET PROBLEM The following proposals may provide some meaningful way of preserving concurrent use in light of the Internet. While none of these solutions is a perfect fix for the problem, some seem more feasible than others. Each solution has advantages, but is also subject to some criticism. In light of the possibility that there may not be a perfect solution, these potential solutions may at least form the basis for a discussion about how to resolve concerns about confusion while allowing concurrent users to benefit from the commercial advantages the Internet offers.

1. Choosing Not to Recognize a Problem

One way to deal with the perceived Internet problem is to ignore it altogether.88 In other words, perhaps the wisest course is to admit that realspace and cyberspace have fundamental incompatibilities, at least where trademark law is concerned, and to accept that certain problems may arise out of those incompatibilities. While this solution may preserve some confusion problems, it is possible that confusion is preferable to grossly over-inclusive solutions the implications of which extend beyond the concern of trademark law.89 The primary advantage of this solution is that it requires neither the imposition of restrictions on the Internet itself, nor a restructuring

88 This seems to be the approach currently favored by the courts. 89 The Internet is a powerful tool by virtue of the ability to communicate information quickly over long distances and to an enormous audience. Restricting the free-flow of information and communication on the Internet in order to bring it into compliance with an area of law that is only occasionally implicated is a grossly over-inclusive solution. In order to avoid imposing such restrictions on the Internet, it may be easier to accept confusion in the Internet context, and preserve the realspace concurrent use doctrine as is.



199

of current law—along with correspondingly necessary realspace implications. This solution is extremely easy to implement—nothing needs to be done.

While ignoring problems presented by the Internet may be an easy course of action, and while avoiding over-inclusive, restrictive solutions should factor into the development of any reasonable solution, it seems hasty to disregard the possibility of finding a tailored solution to the problem in the name of ease. Furthermore, this solution fails to address the issue of confusion or any of the use-types that create confusion on the Internet.90 Therefore, while there is an argument for taking this course of action, it is of little help when it comes to developing a cohesive law of trademarks that is responsive to Internet issues.91

2. Abandonment of Concurrent Use Doctrine

Another approach would be to abandon the concurrent use

doctrine in the realspace context. This solution, like the previous solution, sees the realspace and cyberspace realities as fundamentally incompatible, but favors the cohesive legal theory that the previous solution fails to provide. This solution avoids imposing restrictions on the Internet, and resolves confusion arising out of concurrent use by prohibiting concurrent use outright. Furthermore, this solution addresses all of the use-types that create confusion on the Internet; a consumer on the Internet encountering a familiar mark used in any way would be able to rely on the fact that the mark seen is indicative of the single source entitled to use of that mark.

However, choosing to abandon legal doctrines that have realspace advantages just because those doctrines are incompatible with certain technological developments might do disservice to the rationale that created those doctrines in the first place.92 Furthermore, 90 This solution, in fact, makes no apology about the fact that confusion will continue in an Internet context. 91 Due to the fact that prevention of confusion is central to the purpose of trademark law, continuing to allow confusion in some contexts while not in others seems contrary to the basic goals of trademark law. It is hard to imagine how allowing confusion in one circumstance while abhorring it in another can be justified in a theoretical legal context. 92 The courts in United Drug Co. and Hanover Star Milling Co. felt that the creation of a concurrent use doctrine was justified and appropriate. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 96-100 (1918); Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 413-16 (1916). Because good will could be developed separately in different regions, absent notice through registration, it is inequitable to


this solution fails to dictate what should be done with existing concurrent rights; concurrent users have already established good will under concurrent marks, and to force one or both of those users to rebrand and start over would be expensive and grossly inequitable given each rebranding user’s detrimental reliance on the concurrent use doctrine itself. Without eliminating existing concurrent rights, however, the effectiveness of this solution would be severely undermined.

Therefore, this solution is a possible approach, and would certainly resolve confusion problems, but seems to face a number of practical, implementation-based difficulties that might prevent the solution’s viability.

3. Imposition of Disclaimers Concurrent use could work on the Internet if it were possible to dispel arising confusion quickly. Concurrent users could be required to place disclaimers on their web-pages indicating the source of the mark used and alerting the consumer to the possibility that they are not where they intended to be. The primary advantage to the imposition of disclaimers is that it preserves concurrent use in the realspace context, avoids imposing significant or over-inclusive restrictions on the Internet, and arguably resolves confusion. Additionally, this solution addresses all of the use-types that cause confusion. Domain name, search engine, and hyperlink uses all lead to the website where the disclaimer would dispel confusion. The disclaimer would also attempt to prevent a displayed mark on the web-page from perpetuating confusion. Finally, the disclaimer idea could potentially be extended to a third-party merchant setting by having the merchant disclose the source of the product.93 penalize users who adopted a mark and developed good will just because an unknown user elsewhere adopted the mark first and failed to provide notice through relatively easy means. See United Drug Co., 248 U.S. at 100; Hanover Star Milling Co., 240 U.S. at 415-16. Trademarks may still be developed in the realspace context without Internet display or exposure; when this is the case, the legitimate interests and investment of a junior good faith user in acquired good will should be protected provided the junior user qualifies for concurrent use. It seems grossly unfair to affect junior users of this type—even if they represent a minority of cases—just because of the development of the Internet in more recent years. 93 Two issues arise in the third-party merchant context. First, it may seem unreasonable to impose a burden of having to develop and post disclaimers on a third-party merchant, particularly when a merchant is not simultaneously selling the goods of two distinct concurrent users. This issue may be unavoidable; confusion will arise in the third-party web-based merchant setting if there are concurrent users on the Internet. If there is an unwillingness to impose some burden on the third-party merchant, than this confusion will be unavoidable. A simple disclaimer may



201

Disapproval of the disclaimer solution already exists, and there is already general criticism of the effectiveness of disclaimers in the Internet context. As one court put it:

[A] domain name and home page address [or a search engine result or hyperlink] are external labels that, on their face, cause confusion among Internet users and may cause Internet users who seek plaintiff’s website to expend time and energy accessing defendant's web site. Therefore . . . a disclaimer on defendant’s home page would not be sufficient to dispel the confusion [already] induced.94

Furthermore, depending on how the disclaimer is made, a consumer may never see it, choose not to read it, or misunderstand it.95 There are ways to make disclaimers more effective. For example, the disclaimer requirement could force a concurrent user to use an intermediate web-page to which a search engine result, hyperlink, or domain name would first lead.96 This would act as a portal to the actual web-page and alert the consumer to the ownership of the mark and the website at the earliest possible time. While there may be a small degree of initial confusion prior to reaching the intermediate web-page, that small degree of confusion might not justify rejecting an otherwise potentially workable solution.97 Therefore, although currently disfavored, the disclaimer might be more effective and useful to trademark law than currently thought.

be the least burdensome possibility available. Second, the merchant may not even be aware of the concurrent use circumstances. This second issue could easily be resolved by requiring the concurrent users who provide the merchant with goods to give notice of concurrent use. 94 Planned Parenthood Fed’n of Am., Inc. v. Bucci, 42 U.S.P.Q.2d (BNA) 1430, 1441 (S.D.N.Y. 1997). See also SNA, Inc. v. Array, 51 F. Supp. 2d 542, 553 (E.D. Pa. 1999) (“[T]he relevant confusion that the domain name causes is drawing the web user to the site in the first place, and the disclaimer cannot fix that.”). 95 Welkowitz, supra note 5, at 360. 96 Another option would be a pop-up or clickwrap-style disclaimer, although in light of the proliferation of pop-up windows and advertising on the Internet, disclaimers taking this form might quickly be disregarded. 97 The confusion issue, here, must be looked at from both sides. While one could argue that a consumer who ignores an intermediate disclaimer prior to reaching the site, and subsequently becomes confused, is the cause of his own confusion, and therefore not someone about whom the law should worry. The bigger problem is the potential harm that the confusion might cause to the concurrent user who becomes misrepresented in that consumer’s mind after the confusion. If a consumer is able to bypass the disclaimer without taking time to read it fully, then there will always be the possibility of harm, and this may further justify the general disapproval of the disclaimer solution, even when disclaimers are made more obvious.


4. Regionalization of TLDs The regionalized TLD98 solution can be conceptualized in a number of different ways, but the basic idea is to reserve the “.com” or “.biz” TLDs for registrants while creating new region specific TLDs for non-registrants. This approach would create some connection between realspace territory and cyberspace by explicitly referring to territory in the domain name.

A major flaw of this solution is that it primarily targets only the domain name use problem; a user who inputs a domain name will know where the domain name will lead because of the TLD suffix. The search engine result and hyperlink uses will still have the potential to cause confusion because the consumer might not look at the destination’s domain name; the domain name, in connection with these uses, will only serve to act as a disclaimer. As noted above in the discussion of disclaimers, the effectiveness the domain name would have on dispelling confusion from these other uses would depend upon whether or not the consumer who reaches the web-page through a search engine or hyperlink looks at the domain name. This solution altogether ignores the third-party merchant use.

Additionally, this solution has a number of shortcomings. First, the average consumer generally will not know the registration status of a trademark; in order for this solution to be meaningful, the consumer must know (1) the fact that trademarks can be registered, (2) the existence of concurrent users, and (3) the identity of the concurrent user whose mark is registered. The average consumer will likely not have all of this information, if any. Second, even if the consumer has all of this information, if they know they are dealing with a non-registrant, then the appropriate regionalized domain name might not be obvious; the consumer may not know the concurrent user’s state of origin and may be unable to determine an appropriate domain name. Furthermore, concurrent use territory is not necessarily statewide;99 it is possible for a concurrent user only to have territory in a city or county. The more specific the TLD region must be in order to account for concurrent use, the more unworkable the solution becomes; the consumer’s job of determining the domain name becomes too difficult.

Other administrative problems make this solution nearly unworkable. First, the PTO governs registration of trademarks while

98 TLD is a common abbreviation for “Top Level Domain Name” and refers to the suffix added to website names. The “.com” or “.biz” TLDs are good examples. 99 Gross, supra note 47, at 1089 (“[A] majority of courts have . . . held that separate trade areas may exist within state boundary lines.”).



203

ICANN100 registers domain names. The fact that a single entity does not govern the registration of both trademarks and domain names forces a high degree of cooperation and communication between both agencies; this may create inefficiencies and be unduly burdensome on both agencies. Second, under current ICANN policy, geographic generic TLDs can only be created with documented support from the relevant government authority;101 this would require a state government or other governmental entity to join both ICANN and the PTO in establishing these TLDs. Furthermore, the global nature of domain names undermines the ability of this solution to work because United States law alone should not be able to dictate international domain name registration procedure. Finally, ICANN is in the process of lifting the tight regulation that had until recently been placed on TLDs.102 With the potential opening of an endless number of TLDs, region-specific, uniform TLDs may not be a viable solution.

5. IP Geolocation Restrictions IP geolocation relies on technology to fix the problems that technology has created; it also reduces the gap between realspace and cyberspace by fitting cyberspace into the realspace territory scheme. When computers access the Internet, they must do so using an Internet Protocol number—commonly referred to as an ‘IP address.’ It is possible, using software, to determine the IP address of a consumer who is requesting access to a website.103 Importantly, IP addresses are 100 ICANN is the Internet Corporation for Assigned Names and Numbers. ICANN is a non-profit organization whose primary responsibility is to coordinate domain names in order to facilitate use of the Internet. See generally ICANN, About, http://www.icann.org/en/about/ (last visited May 14, 2009). 101 See ICANN, New gTLD Program Explanatory Memorandum: Proposed Process for Geographic Name Applications (Oct. 22, 2008), http://www.icann.org/en/topics/new-gtlds/geographic-names-22oct08-en.pdf. 102 ICANN is in the process of adopting new rules that would allow anyone to apply for a new TLD designation. Under this process, applicants for a domain name need not be restricted to the twenty-one existing TLDs. See generally ICANN, New gTLD Program: Draft Applicant Guidebook (Draft RFP) (Oct. 24, 2008), http://www.icann.org/en/topics/new-gtlds/draft-rfp-24oct08-en.pdf. 103 See IP2LOCATION.com, http:// www.ip2location.com (last visited June 14, 2009), for an example of IP geolocation software is IP2Location. IP2Location’s website indicates that: “IP2Location is a geo IP solution to help you to identify visitor's geographical location, i.e. country, region, city, latitude, longitude, ZIP code, time zone, connection speed, ISP and domain name, IDD country code, area code, weather station code and name using a proprietary IP address lookup database and technology without invading the Internet user's privacy.” Id. By visiting the


distributed in realspace, so the software that determines the IP address can also determine where in the country or world the user is located. This is a process known as IP Geolocation. Given this technological possibility, a concurrent user who chooses to have a website could restrict users from outside her realspace territory from accessing the website.104 In other words, this solution could impose a realspace analogue onto the cyberspace context. It has been estimated that geolocation is highly accurate and can determine a visitor’s location within fifty miles,105 so the possibility of error related to this solution should be considered, but may not be prohibitive. This solution resolves many of the use-types that cause confusion. First, it prevents access to all displayed marks, except for the one with territorial rights in the area. Second, while geolocation will not prevent input of a domain name for a concurrent user that is not entitled to the consumer’s geographic area, it will prevent access to the site; this may prevent confusion, particularly once consumers understand why they are being blocked. A similar result holds true for hyperlinks and search engine results. While it might be unfairly burdensome and possibly technically impractical to require third party websites to implement geolocation software to limit how and when certain banners, hyperlinks, or search engine results appear on a consumer’s screen, geolocation would still prevent the consumer’s access to the website. So long as the consumer is adequately educated about why they are being blocked, this solution will resolve the confusion quickly. 106 There are a number of potential criticisms to the solution, however. First, it fails to address the third-party merchant problem at all. Second, it may be overinclusive; restricting free access on the

website, a live demo of the software will display the visitor’s geographic location on the company’s homepage; this demonstrates the viability of the technology. 104 Note that this ability to restrict access to certain users based on territory is contrary to assumptions made by some courts within the past decade. E.g., ACLU v. Reno, 217 F.3d 162, 166 (3rd Cir. 2000) (stating “current technology does not permit a Web publisher to restrict access to its site based on the geographical locale of each particular Internet user”). 105 AHARON KELLERMAN, THE INTERNET ON EARTH: A GEOGRAPHY OF INFORMATION 195 (2002) (stating that geolocation software is 98% accurate at the country level, and 85% accurate at the city level.) See also SUBHAJIT BASU, GLOBAL PERSPECTIVES ON E-COMMERCE TAXATION LAW 304 n. 50 (2007) (indicating that geolocation software providers claim to be able to locate an individual within 50 miles of his actual location). 106 Note that a consumer who believes they have input the correct domain name may be frustrated when blocked. While it is possible for this frustration to translate into harm to the good will of the user the consumer thought owned the domain name, education about what being blocked represents may prevent this harm. This may, however, be a concern.



205

Internet seems contrary to its nature and advantages. Furthermore the restrictions would be absolute and not subject to exceptions; there are a number of circumstances in which a consumer on the Internet intending to visit the website of and patronize a concurrent user in a different territory would be blocked.107 Additionally, this solution fails to provide a rule regarding unclaimed territory; may the concurrent users allow users in unclaimed territory to access their websites, or must they block those individuals too? Another significant criticism is that this solution may be prohibitively expensive or technical for small concurrent users to implement. Finally, it is possible to circumvent IP geolocation with a certain degree of technical knowledge.108 This solution may be somewhat overinclusive, but it does not appear to be grossly so. Additionally, it would likely only be implemented on websites of concurrent users in the commercial context; for this reason it would generally preserve the free-flow of information on the Internet and only restrict access in a limited set of circumstances. Therefore, while there are problems with this solution, it is a viable option.

6. Third-Party Merchant Solutions Two final solutions are specific to the third-party merchant use. They are presented because the other solutions generally fail to address this use-type, and it may be necessary to resolve the third-party merchant issues separately. There are two possible variants: (1) treat the third-party Internet-based store as territory itself, or (2) 107 As an example, a consumer may wish to order flowers for his mother on Mother’s Day. Currently, he can access a local florist in his mother’s area to order the flowers and have them delivered. This particular consumer would not be confused, and would intend to patronize that concurrent user. The goods and services would be provided in that concurrent user’s territory and would not infringe on the rights of the concurrent user in the consumer’s territory. IP geolocation restrictions would prevent this legitimate transaction. 108 A consumer with a high degree of technical knowledge can, for example, access the Internet with their computer by using another computer as a proxy. The consumer’s computer will communicate with another computer, and then use that computer’s IP address to access the Internet. In this way, it is possible to deceive the IP geolocation software. However, the average consumer will not know how to do this, and a consumer that knows how to do this may be doing it intentionally to access a blocked website, diminishing the likelihood of confusion. Thus, while proxying may be a valid criticism, it may not destroy the viability of the solution. For a general explanation of web proxying, see ARI LUOTONEN, WEB PROXY SERVERS (1998).

http://www.amazon.com/exec/obidos/search-handle-url/ref=ntt_athr_dp_sr_1?%5Fencoding=UTF8&search-type=ss&index=books&field-author=Ari%20Luotonen


prevent a third-party seller from selling the goods of concurrent users into territory in which those users have no rights. The first variant resolves the confusion problem because it prevents the possibility of having two confusingly similar or identical marks available at the same time on a single Internet-based store. This may be particularly important in the Internet-store context because the consumer is often provided with only a picture and name of a product and will generally be unable to readily determine its quality; thus, a concurrent user’s good will can be protected when his goods are of a vastly superior quality. The major criticism of this approach is that it is a significant and, arguably, unfair restraint on a third-party’s ability to choose how to operate its business. There is an additional possibility that the third-party merchant’s good will could be harmed, even if slightly, in the mind of consumers who believe that the merchant should have been providing products that it does not. Furthermore, this approach may place one concurrent user at a significant market disadvantage.109 Therefore, while this is a potential solution, its impact on the parties involved may caution against it. The second variant resolves some of the issues the first solution creates. It does not restrain the third-party merchant’s ability to choose what goods it will sell. Instead, it merely places territorial restrictions on the way in which those goods may be offered. It also limits the market disadvantage felt by the concurrent users. However, this variant is subject to a number of criticisms. First, it does not resolve the issue of consumer confusion at the point of sale; consumers still encounter confusingly similar or identical marks in the Internet store. Second, it fails to dictate a rule with regard to unclaimed territory. Can the merchant sell the goods of either user into unclaimed territory, or is the seller prohibited from selling either into the unclaimed territory? Third, this solution may impose a substantial administrative burden on the third-party merchant. Finally, in the Internet context it is possible for the consumer to purchase the goods but have them shipped directly to a different recipient. Should the restrictions of this solution apply to the billing address of the consumer, the shipping address of the recipient, or both? The consumer that makes the purchase may intend to purchase a particular good that could not be shipped into the recipient’s territory; therefore,

109 Market disadvantage may not be a significant criticism in light of the fact that the same may be true in a realspace setting. A non-registrant may be left with very little territory when a concurrent user registers her mark.



207

this solution may restrict sales in cases when there would be no confusion.110 Both of these third-party merchant solutions appear to be extremely problematic. For this reason, both might be ill advised. However, because there is a definite likelihood of confusion in the Internet-store context, it may be worthwhile to try one of these solutions and troubleshoot until a more well-tailored approach can be fashioned. Alternatively, the third-party merchant disclaimer previously alluded to111 might be an option. Working on the premise that Internet-based confusion should be resolved, it would seem odd to leave confusion in this one context unresolved. Creative thinking and careful analysis may provide better solutions than the ones presented here, but these may serve as a worthwhile starting point.

PART IV: CONCLUSION

Established concurrent use doctrine seems to be incompatible with the realities of the Internet, and this fact should not be ignored. It is unclear what the best approach is toward reconciling concurrent use with the apparent incompatibility, if at all. The solutions presented in this paper are not perfect and do not resolve every nuance of the problem. They do, however, illustrate the possibility of creative solutions capable of preserving concurrent use rights in an Internet context. Of the solutions presented here, the imposition of IP geolocation restrictions on commercial websites appears to be the strongest candidate for adoption. By creating active protection of trademark users’ realspace territorial rights, IP geolocation restrictions work without requiring work and time investments by consumers who may be unaware of the issue in the first place or unwilling to invest the work and time to differentiate concurrent users. While IP geolocation restrictions will limit the ability of a user to navigate the Internet to some degree, the restrictions need only be imposed in the commercial context and are, therefore, somewhat tailored to the concurrent use issues; restriction need not be too overbroad.

Prevention of confusion is an important goal in trademark law, and ignoring the problem is an insufficient response; without a more

110 It should be noted that this final criticism also arises in the realspace context; therefore, because we are willing to live with this problem in the realspace context, it might not be a significant problem in the cyberspace context either. 111 See supra Part III.B.3.


proactive solution, the potential for confusion is only perpetuated. Therefore, solutions like the ones here presented should be considered, discussed, and criticized until an appropriate solution can be crafted. Furthermore, the imposition of IP geolocation restrictions should be a good starting point for this discussion.

WAKE FORESTipjournal.law.wfu.edu/files/2009/09/issue.9.2.pdfWAKE FOREST INTELLECTUAL PROPERTY LAW JOURNAL SPRING 2009 BEYOND THEORIES: INTELLECTUAL PROPERTY DYNAMICS IN THE GLOBAL

Documents